Brandir International, Inc., Plaintiff-Appellant, v. Cascade
                Pacific Lumber Co., d/b/a Columbia Cascade Co., 
               Defendant-Appellee, and David L. Ladd, Register of 
            Copyrights, United States Copyright Office, Third-Party 

                                  No. 86-6260


              834 F.2d 1142; 1987 U.S. App. LEXIS 15867; 5 U.S.P.Q.2D
                    (BNA) 1089; Copy. L. Rep. (CCH) P26,200

                            March 2, 1987, Argued 
                           December 2, 1987, Decided

OAKES, Circuit Judge:

   In passing the Copyright Act of 1976 Congress attempted to distinguish
between  [*1143]  protectable "works of applied art" and "industrial designs not
subject to copyright protection." See H.R. Rep. No. 1476, 94th Cong., 2d Sess.
54, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5667 (hereinafter H.R.
Rep. No. 1476). The courts, however, have had [**2]  difficulty framing tests by
which the fine line establishing what is and what is not copyrightable can be
drawn. Once again we are called upon to draw such a line, this time in a case
involving the "RIBBON Rack," a bicycle rack made of bent tubing that is said to
have originated from a wire sculpture. (A photograph of the rack is contained in
the appendix to this opinion.) We are also called upon to determine whether
there is any trademark protection available to the manufacturer of the bicycle
rack, appellant Brandir International, Inc. The Register of Copyright, named as
a third-party defendant under the statute, 17 U.S.C. § 411, but electing not to
appear, denied copyrightability. In the subsequent suit brought in the United
States District Court for the Southern District of New York, Charles S. Haight,
Jr., Judge, the district court granted summary judgment on both the copyright
and trademark claims to defendant Cascade Pacific Lumber Co., d/b/a Columbia
Cascade Co., manufacturer of a similar bicycle rack. We affirm as to the
copyright claim, but reverse and remand as to the trademark claim.

   Against the history of copyright protection well set out in the [**3]
majority opinion in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411,
415-18 (2d Cir. 1985), and in Denicola, Applied Art and Industrial Design: A 
Suggested Approach to Copyright in Useful Articles, 67 Minn. L. Rev. 707, 709-17
(1983), Congress adopted the Copyright Act of 1976. The "works of art"
classification of the Copyright Act of 1909 was omitted and replaced by
reference to "pictorial, graphic, and sculptural works," 17 U.S.C. § 102(a)(5).
According to the House Report, the new category was intended to supply "as clear
a line as possible between copyrightable works of applied art and uncopyrighted
works of industrial design." H.R. Rep. No. 1476, at 55. The statutory definition
of "pictorial, graphic, and sculptural works" states that "the design of a
useful article, as defined in this section, shall be considered a pictorial,
graphic, or sculptural work only if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing [**4]  independently of, the
utilitarian aspects of the article." 17 U.S.C. § 101. n1 The legislative history
added gloss on the criteria of separate identity and independent existence in

     On the other hand, although the shape of an industrial product may be
     aesthetically satisfying and valuable, the Committee's intention is
     not to offer it copyright protection under the bill. Unless the shape
     of an automobile, airplane, ladies' dress, food processor, television
     set, or any other industrial product contains some element that,
     physically or conceptually, can be identified as separable from the
     utilitarian aspects of that article, the design would not be
     copyrighted under the bill.

H.R. Rep. No. 1476, at 55.

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

   n1 The statute also defines "useful article" as one "having an intrinsic
utilitarian function that is not merely to portray the appearance of the article
or to convey information. An article that is normally a part of a useful article
is considered a 'useful article.'" 17 U.S.C. § 101.

- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**5]

   As courts and commentators have come to realize, however, the line Congress
attempted to draw between copyrightable art and noncopyrightable design "was
neither clear nor new." Denicola, supra, 67 Minn. L. Rev. at 720. One aspect of
the distinction that has drawn considerable attention is the reference in the
House Report to "physically or conceptually" (emphasis added) separable
elements. The District of Columbia Circuit in Esquire, Inc. v. Ringer, 192 U.S.
App. D.C. 187, 591 F.2d 796, 803-04 (D.C. Cir. 1978) (holding outdoor lighting
fixtures ineligible for copyright), cert. denied, 440 U.S. 908, 59 L. Ed. 2d
456, 99 S. Ct. 1217 (1979), called this an "isolated reference" and gave it no
significance. Professor Nimmer, however,  [*1144]  seemed to favor the
observations of Judge Harold Leventhal in his concurrence in Esquire, who stated
that "the overall legislative policy . . . sustains the Copyright Office in its
effort to distinguish between the instances where the aesthetic element is
conceptually severable and the instances where the aesthetic element is
inextricably interwoven with the utilitarian aspect of the [**6]  article." 591
F.2d at 807; see 1 Nimmer on Copyright § 2.08[B] at 2-93 to 2-96.2 (1986). But 
see Gerber, Book Review, 26 U.C.L.A. L. Rev. 925, 938-43 (1979) (criticizing
Professor Nimmer's view on conceptual separability). Looking to the section 101
definition of works of artistic craftsmanship requiring that artistic features
be "capable of existing independently of the utilitarian aspects," Professor
Nimmer queries whether that requires physical as distinguished from conceptual
separability, but answers his query by saying "there is reason to conclude that
it does not." See 1 Nimmer on Copyright § 2.08[B] at 2-96.1. In any event, in
Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.
1980), this court accepted the idea that copyrightability can adhere in the
"conceptual" separation of an artistic element. Indeed, the court went on to
find such conceptual separation in reference to ornate belt buckles that could
be and were worn separately as jewelry. Kieselstein-Cord was followed in [**7]
Norris Industries, Inc. v. International Telephone & Telegraph Corp., 696 F.2d
918, 923-24 (11th Cir.), cert. denied, 464 U.S. 818, 78 L. Ed. 2d 89, 104 S. Ct.
78 (1983), although there the court upheld the Register's refusal to register
automobile wire wheel covers, finding no "conceptually separable" work of art.
See also Transworld Mfg. Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95 (D. Del.
1982) (finding conceptual separability sufficient to support copyright in
denying summary judgment on copyrightability of eyeglass display cases).

   In Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985), a
divided panel of this circuit affirmed a district court grant of summary
judgment of noncopyrightability of four life-sized, anatomically correct human
torso forms. Carol Barnhart distinguished Kieselstein-Cord, but it surely did
not overrule it. The distinction made was that the ornamented surfaces of the
Kieselstein-Cord belt buckles "were not in any respect required by their
utilitarian functions,  [**8]  " but the features claimed to be aesthetic or
artistic in the Carol Barnhart forms were "inextricably intertwined with the
utilitarian feature, the display of clothes." 773 F.2d at 419. But cf.  Animal 
Fair, Inc. v. Amfesco Indus., Inc., 620 F. Supp. 175, 186-88 (D. Minn. 1985)
(holding bear-paw design conceptually separable from the utilitarian features of
a slipper), aff'd mem., 794 F.2d 678 (8th Cir. 1986). As Judge Newman's dissent
made clear, the Carol Barnhart majority did not dispute "that 'conceptual
separability' is distinct from 'physical separability' and, when present,
entitles the creator of a useful article to a copyright on its design." 773 F.2d
at 420.

   "Conceptual separability" is thus alive and well, at least in this circuit.
The problem, however, is determining exactly what it is and how it is to be
applied. Judge Newman's illuminating discussion in dissent in Carol Barnhart, 
see 773 F.2d at 419-24, proposed a test that aesthetic features are conceptually
separable if "the article . . . stimulate[s] in the mind of the beholder a
concept that is separate from the concept evoked [**9]  by its utilitarian
function." Id. at 422. This approach has received favorable endorsement by at
least one commentator, W. Patry, Latman's The Copyright Law 43-45 (6th ed.
1986), who calls Judge Newman's test the "temporal displacement" test. It is to
be distinguished from other possible ways in which conceptual separability can
be tested, including whether the primary use is as a utilitarian article as
opposed to an artistic work, whether the aesthetic aspects of the work can be
said to be "primary," and whether the article is marketable as art, none of
which is very satisfactory. But Judge Newman's test was rejected outright by the
majority as "a standard so ethereal as to amount to a 'nontest' that would be
extremely difficult, if not impossible, to administer or apply." 773 F.2d at 419

    [*1145]  Perhaps the differences between the majority and the dissent in
Carol Barnhart might have been resolved had they had before them the Denicola
article on Applied Art and Industrial Design: A Suggested Approach to Copyright
in Useful Articles, supra. There, Professor Denicola points out that although
the Copyright Act of 1976 was an effort [**10]  "'to draw as clear a line as
possible,'" in truth "there is no line, but merely a spectrum of forms and
shapes responsive in varying degrees to utilitarian concerns." 67 Minn. L. Rev.
at 741. Denicola argues that "the statutory directive requires a distinction
between works of industrial design and works whose origins lie outside the
design process, despite the utilitarian environment in which they appear." He
views the statutory limitation of copyrightability as "an attempt to identify
elements whose form and appearance reflect the unconstrained perspective of the
artist," such features not being the product of industrial design. Id. at 742.
"Copyrightability, therefore, should turn on the relationship between the
proffered work and the process of industrial design." Id. at 741. He suggests
that "the dominant characteristic of industrial design is the influence of
nonaesthetic, utilitarian concerns" and hence concludes that copyrightability
"ultimately should depend on the extent to which the work reflects artistic
expression uninhibited by [**11]  functional considerations." n2 Id. To state
the Denicola test in the language of conceptual separability, if design elements
reflect a merger of aesthetic and functional considerations, the artistic
aspects of a work cannot be said to be conceptually separable from the
utilitarian elements. Conversely, where design elements can be identified as
reflecting the designer's artistic judgment exercised independently of
functional influences, conceptual separability exists.

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

   n2 Professor Denicola rejects the exclusion of all works created with some
utilitarian application in view, for that would not only overturn Mazer v. Stein
, 347 U.S. 201, 98 L. Ed. 630, 74 S. Ct. 460 (1954), on which much of the
legislation is based, but also "a host of other eminently sensible decisions, in
favor of an intractable factual inquiry of questionable relevance." 67 Minn. L.
Rev. at 741. He adds that "any such categorical approach would also undermine
the legislative determination to preserve an artist's ability to exploit
utilitarian markets." Id. (citing 17 U.S.C. § 113(a) (1976)).

- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**12]

   We believe that Professor Denicola's approach provides the best test for
conceptual separability and, accordingly, adopt it here for several reasons.
First, the approach is consistent with the holdings of our previous cases. In
Kieselstein-Cord, for example, the artistic aspects of the belt buckles
reflected purely aesthetic choices, independent of the buckles' function, while
in Carol Barnhart the distinctive features of the torsos -- the accurate
anatomical design and the sculpted shirts and collars -- showed clearly the
influence of functional concerns. Though the torsos bore artistic features, it
was evident that the designer incorporated those features to further the
usefulness of the torsos as mannequins. Second, the test's emphasis on the
influence of utilitarian concerns in the design process may help, as Denicola
notes, to "alleviate the de facto discrimination against nonrepresentational art
that has regrettably accompanied much of the current analysis." Id. at 745. n3
Finally, and perhaps most importantly, we think Denicola's test will not be too
difficult to administer in practice. The work itself will continue to give "mute
testimony" of its [**13]  origins. In addition, the parties will be required to
present evidence relating to the design process and the nature of the work, with
the trier of fact making the determination  [*1146]  whether the aesthetic
design elements are significantly influenced by functional considerations.

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

   n3 We are reminded not only by Judge Gesell in the district court in Esquire,
414 F. Supp. 939, 941 (D.D.C. 1976), but by Holmes in Bleistein v. Donaldson 
Lithographing Co., 188 U.S. 239, 251-52, 47 L. Ed. 460, 23 S. Ct. 298 (1903), by
Mazer v. Stein, 347 U.S. at 214, and by numerous other opinions, that we judges
should not let our own view of styles of art interfere with the decisionmaking
process in this area. Denicola suggests that the shape of a Mickey Mouse
telephone is copyrightable because its form is independent of function, and "[a]
telephone shape owing more to Arp, Brancusi, or Moore than Disney may be equally
divorced from utilitarian influence." 67 Minn. L. Rev. at 746. This is true, of
course, of the artist Christo's "Running Fence," approved (following Professor
Nimmer) as an example of conceptual separability in Keiselstein-Cord, 632 F.2d
at 993.

- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**14]

   Turning now to the facts of this case, we note first that Brandir contends,
and its chief owner David Levine testified, that the original design of the
RIBBON Rack stemmed from wire sculptures that Levine had created, each formed
from one continuous undulating piece of wire. These sculptures were, he said,
created and displayed in his home as a means of personal expression, but
apparently were never sold or displayed elsewhere. He also created a wire
sculpture in the shape of a bicycle and states that he did not give any thought
to the utilitarian application of any of his sculptures until he accidentally
juxtaposed the bicycle sculpture with one of the self-standing wire sculptures.
It was not until November 1978 that Levine seriously began pursuing the
utilitarian application of his sculptures, when a friend, G. Duff Bailey, a
bicycle buff and author of numerous articles about urban cycling, was at Levine
's home and informed him that the sculptures would make excellent bicycle racks,
permitting bicycles to be parked under the overloops as well as on top of the
underloops. Following this meeting, Levine met several times with Bailey and
others, completing the designs for the RIBBON [**15]  Rack by the use of a
vacuum cleaner hose, and submitting his drawings to a fabricator complete with
dimensions. The Brandir RIBBON Rack began being nationally advertised and
promoted for sale in September 1979.

   In November 1982 Levine discovered that another company, Cascade Pacific
Lumber Co., was selling a similar product. Thereafter, beginning in December
1982, a copyright notice was placed on all RIBBON Racks before shipment and on
December 10, 1982, five copyright applications for registration were submitted
to the Copyright Office. The Copyright Office refused registration by letter,
stating that the RIBBON Rack did not contain any element that was "capable of
independent existence as a copyrightable pictorial, graphic or sculptural work
apart from the shape of the useful article." An appeal to the Copyright Office
was denied by letter dated March 23, 1983, refusing registration on the above
ground and alternatively on the ground that the design lacked originality,
consisting of "nothing more than a familiar public domain symbol." In February
1984, after the denial of the second appeal of the examiner's decision, Brandir
sent letters to customers enclosing copyright notices [**16]  to be placed on
racks sold prior to December 1982.

   Between September 1979 and August 1982 Brandir spent some $ 38,500 for
advertising and promoting the RIBBON Rack, including some 85,000 pieces of
promotional literature to architects and landscape architects. Additionally,
since October 1982 Brandir has spent some $ 66,000, including full-, half-, and
quarter-page advertisements in architectural magazines such as Landscape 
Architecture, Progressive Architecture, and Architectural Record, indeed winning
an advertising award from Progressive Architecture in January 1983. The RIBBON
Rack has been featured in Popular Science, Art and Architecture, and Design 384
magazines, and it won an Industrial Designers Society of America design award in
the spring of 1980. In the spring of 1984 the RIBBON Rack was selected from 200
designs to be included among 77 of the designs exhibited at the Katonah Gallery
in an exhibition entitled "The Product of Design: An Exploration of the
Industrial Design Process," an exhibition that was written up in the New York 

   Sales of the RIBBON Rack from September 1979 through January 1985 were in
excess of $ 1,367,000. Prior to the [**17]  time Cascade Pacific began offering
for sale its bicycle rack in August 1982, Brandir's sales were $ 436,000. The
price of the RIBBON Rack ranges from $ 395 up to $ 2,025 for a stainless steel
model and generally depends on the size of the rack, one of the most popular
being the RB-7, selling for $ 485.

   Applying Professor Denicola's test to the RIBBON Rack, we find that the rack
is not copyrightable. It seems clear that  [*1147]  the form of the rack is
influenced in significant measure by utilitarian concerns and thus any aesthetic
elements cannot be said to be conceptually separable from the utilitarian
elements. This is true even though the sculptures which inspired the RIBBON Rack
may well have been -- the issue of originality aside -- copyrightable.

   Brandir argues correctly that a copyrighted work of art does not lose its
protected status merely because it subsequently is put to a functional use. The
Supreme Court so held in Mazer v. Stein, 347 U.S. 201, 98 L. Ed. 630, 74 S. Ct.
460 (1954), and Congress specifically intended to accept and codify Mazer in
section [**18]  101 of the Copyright Act of 1976. See H.R. Rep. No. 1476 at
54-55. The district court thus erred in ruling that, whatever the RIBBON Rack's
origins, Brandir's commercialization of the rack disposed of the issue of its

   Had Brandir merely adopted one of the existing sculptures as a bicycle rack,
neither the application to a utilitarian end nor commercialization of that use
would have caused the object to forfeit its copyrighted status. Comparison of
the RIBBON Rack with the earlier sculptures, however, reveals that while the
rack may have been derived in part from one of more "works of art," it is in its
final form essentially a product of industrial design. In creating the RIBBON
Rack, the designer has clearly adapted the original aesthetic elements to
accommodate and further a utilitarian purpose. These altered design features of
the RIBBON Rack, including the spacesaving, open design achieved by widening the
upper loops to permit parking under as well as over the rack's curves, the
straightened vertical elements that allow in- and above-ground installation of
the rack, the ability to fit all types of bicycles and mopeds, and the
heavy-gauged tubular construction [**19]  of rustproof galvanized steel, are all
features that combine to make for a safe, secure, and maintenance-free system of
parking bicycles and mopeds. Its undulating shape is said in Progressive 
Architecture, January 1982, to permit double the storage of conventional bicycle
racks. Moreover, the rack is manufactured from 2 3/8-inch standard steam pipe
that is bent into form, the six-inch radius of the bends evidently resulting
from bending the pipe according to a standard formula that yields bends having a
radius equal to three times the nominal internal diameter of the pipe.

   Brandir argues that its RIBBON Rack can and should be characterized as a
sculptural work of art within the minimalist art movement. Minimalist sculpture
's most outstanding feature is said to be its clarity and simplicity, in that it
often takes the form of geometric shapes, lines, and forms that are pure and
free of ornamentation and void of association. As Brandir's expert put it, "The
meaning is to be found in, within, around and outside the work of art, allowing
the artistic sensation to be experienced as well as intellectualized." People
who use Foley Square in New York City see in the form of minimalist [**20]  art
the "Tilted Arc," which is on the plaza at 26 Federal Plaza. Numerous museums
have had exhibitions of such art, and the school of minimalist art has many

   It is unnecessary to determine whether to the art would the RIBBON Rack
properly would be considered an example of minimalist sculpture. The result
under the copyright statute is not changed. Using the test we have adopted, it
is not enough that, to paraphrase Judge Newman, the rack may stimulate in the
mind of the reasonable observer a concept separate from the bicycle rack
concept. While the RIBBON Rack may be worthy of admiration for its aesthetic
qualities alone, it remains nonetheless the product of industrial design. Form
and function are inextricably intertwined in the rack, its ultimate design being
as much the result of utilitarian pressures as aesthetic choices. Indeed, the
visually pleasing proportions and symmetricality of the rack represent design
changes made in response to functional concerns. Judging from the awards the
rack has received, it would seem in fact that Brandir has achieved with the
RIBBON Rack the highest goal of modern industrial design, that is, the
harmonious fusion of function and aesthetics. [**21]  Thus there remains no
artistic element of the RIBBON  [*1148]  Rack that can be identified as separate
and "capable of existing independently of, the utilitarian aspects of the
article." Accordingly, we must affirm on the copyright claim.

   As to whether the configuration of Brandir's bicycle rack can be protected
under either section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), or New York
State unfair competition law, we are reminded that the design of a product
itself may function as its packaging or protectable trade dress. See LeSportsac,
Inc. v. K mart Corp., 754 F.2d 71, 75 (2d Cir. 1985). The district court
dismissed Brandir's claims, saying that its analysis of the copyright issue was
sufficient to dispose of the Lanham Act and common law claims. The court stated
"the design feature of the Ribbon Racks is clearly dictated by the function to
be performed, namely, holding up bicycles. If the steam pipes were not bent into
the design, but instead remained flat, the bicycles would not stand up, they
would fall down."  [**22]  But as Judge Newman noted in his dissent in Carol 
Barnhart, 773 F.2d at 420 n. 1, the principle of conceptual separability of
functional design elements in copyright law is different from the somewhat
similar principle of functionality as developed in trademark law. For trademark
purposes, he pointed out, a design feature "has been said to be functional if it
is 'essential to the use or purpose of the article' or 'affects the cost or
quality of the article.'" Id. (quoting Inwood Laboratories, Inc. v. Ives 
Laboratories, Inc., 456 U.S. 844, 850 n. 10, 72 L. Ed. 2d 606, 102 S. Ct. 2182
(1982)); see LeSportsac, Inc. v. K mart Corp., 754 F.2d at 75-76 (trade dress of
a product is eligible for protection if it has acquired a secondary meaning and
is nonfunctional). n4

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

   n4 Because the district court viewed the rack as entirely functional, it
therefore did not reach the next step of determining whether Brandir's RIBBON
Rack had acquired secondary meaning by the time Cascade started to manufacture
its bicycle rack.

- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**23]

   Here, the district court limited its inquiry to determining whether portions
of the RIBBON Rack performed the function of a bicycle rack. But the fact that a
design feature performs a function does not make it essential to the performance
of that function; it is instead the absence of alternative constructions
performing the same function that renders the feature functional. Thus, the true
test of functionality is not whether the feature in question performs a
function, but whether the feature "is dictated by the functions to be performed,
" Warner Bros. Inc. v. Gay Toys, Inc., 724 F.2d 327, 331 (2d Cir. 1983) (quoted
in LeSportsac, Inc. v. K mart Corp., 754 F.2d at 76), as evidenced by available
alternative constructions. See Metro Kane Imports, Ltd. v. Rowoco, Inc., 618 F.
Supp. 273, 275-76 (S.D.N.Y. 1985), aff'd mem., 800 F.2d 1128 (2d Cir. 1986)
(finding high-tech design of orange juice squeezer not dictated by function to
be performed as there was no evidence that design permitted juicer to be
manufactured at lower [**24]  price or with altered performance). There are
numerous alternative bicycle rack constructions. The nature, price, and utility
of these constructions are material issues of fact not suitable for
determination by summary judgment. n5 For example, while it is true that the
materials used by Brandir are standard-size pipes, we have no way of knowing
whether the particular size and weight of the pipes used is the best, the most
economical, or the only available size and weight pipe in the marketplace. We
would rather think the opposite might be the case. So, too, with the dimension
of the bends being dictated by a standard formula corresponding to the pipe
size; it could be that there are many standard radii and that the particular
radius of Brandir's RIBBON Rack actually required new tooling. This issue of
functionality on remand should be viewed in terms of bicycle racks generally and
not one-piece undulating bicycle racks specifically. See id. at 330-32; see also
In re DC Comics, Inc., 689 F.2d 1042, 1045 (C.C.P.A. 1982) (dolls generally and
not Superman dolls are the class by  [*1149]  which functionality is
determined). We reverse and remand as [**25]  to the trademark and unfair
competition claims.

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

   n5 Indeed, in addition to the numerous bicycle racks on the market, one may
observe trees, awning supports, parking meters, signs, fire plugs, and many
other objects used as bicycle racks.

- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -

   Judgment affirmed as to the copyright claim; reversed and remanded as to the
trademark and unfair competition claims.



   WINTER (In Part)


   WINTER (In Part)


    [*1150]  WINTER, Circuit Judge, concurring in part and dissenting in part:

   Although I concur in the reversal of the district court's grant of summary
judgment on the trademark and unfair competition claims, I respectfully dissent
from the majority's discussion and disposition of the copyright claim.

   My colleagues, applying an adaptation of Professor Denicola's test, hold that
the aesthetic elements of the design of a useful article are not conceptually
separable from  [*1151]  its utilitarian aspects if "form and function are
inextricably intertwined" in the article,  [**26]  and "its ultimate design [is]
as much the result of utilitarian pressures as aesthetic choices." Applying that
test to the instant matter, they observe that the dispositive fact is that "in
creating the Ribbon Rack, [Levine] has clearly adapted the original aesthetic
elements to accommodate and further a utilitarian purpose." (emphasis added).
The grounds of my disagreement are that: (1) my colleagues' adaptation of
Professor Denicola's test diminishes the statutory concept of "conceptual
separability" to the vanishing point; and (2) their focus on the process or
sequence followed by the particular designer makes copyright protection depend
upon largely fortuitous circumstances concerning the creation of the design in

   With regard to "conceptual separability," my colleagues deserve considerable
credit for their efforts to reconcile Carol Barnhart Inc. v. Economy Cover Corp.
, 773 F.2d 411 (2d Cir. 1985) with Kieselstein-Cord v. Accessories by Pearl, 
Inc., 632 F.2d 989 (2d Cir. 1980). In my view, these cases are not reconcilable.
Carol Barnhart paid only lip service to the fact that the "conceptual
separability" of an article's [**27]  aesthetic utilitarian aspects may render
the design of a "useful article" a copyrightable "sculptural work." 17 U.S.C. §
101 (1982). Actually, the Carol Barnhart majority applied a test of physical
separability. They thus stated:

     What distinguishes [the Kieselstein Cord] buckles from the Barnhart
     forms is that the ornamented surfaces of the buckles were not in any
     respect required by their utilitarian functions; the artistic and
     aesthetic features could thus be conceived of as having been added to,
     or superimposed upon, an otherwise utilitarian article. The unique
     artistic design was wholly unnecessary to performance of the
     utilitarian function. In the case of the Barnhart forms, on the other
     hand, the features claimed to be aesthetic or artistic, e.g., the
     life-size configuration of the breasts and the width of the shoulders
     are inextricably intertwined with the utilitarian feature, the display
     of clothes.

 773 F.2d at 419 (emphasis added). In contrast, Kieselstein-Cord focused on the
fact that the belt buckles at issue could be perceived as objects other than
belt buckles:

     We see in appellant's belt [**28]  buckles conceptually separable
     sculptural elements, as apparently have the buckles' wearers who have
     used them as ornamentation for parts of the body other than the waist.

 632 F.2d at 993.

   My colleagues' adaptation of the Denicola test tracks the Carol Barnhart
approach, whereas I would adopt that taken in Kieselstein-Cord, which allows for
the copyrightability of the aesthetic elements of useful articles even if those
elements simultaneously perform utilitarian functions. n1 The latter approach
received its fullest elaboration in Judge Newman's dissent in Carol Barnhart,
where he explained that "for the [artistic] design features to be 'conceptually
separate' from the utilitarian aspects of the useful article that embodies the
design, the article must stimulate in the mind of the beholder a concept that is
separate from the concept evoked by its utilitarian function." 773 F.2d at 422
(Newman, J., dissenting).

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

   n1 Indeed, Kieselstein-Cord approved Professor Nimmer's example of Christo's
"Running Fence" as an object whose sculptural features were conceptually, but
not physically, separable from its utilitarian aspects.  632 F.2d at 993; see 1
Nimmer on Copyright § 2.08[B] at 2-96.1 & n. 112.2 (1987). The fact that the
Running Fence's aesthetic features were "inextricably intertwined" with its
functional aspects, however, creates doubt as to whether it is a copyrightable
"sculptural work" under Carol Barnhart or the instant decision.

- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**29]

   In other words, the relevant question is whether the design of a useful
article, however intertwined with the article's utilitarian aspects, causes an
ordinary reasonable observer to perceive an aesthetic concept not related to the
article's use. The answer to this question is clear in the instant case because
any reasonable observer would easily view the Ribbon Rack as an  [*1152]
ornamental sculpture. n2 Indeed, there is evidence of actual confusion over
whether it is strictly ornamental in the refusal of a building manager to accept
delivery until assured by the buyer that the Ribbon Rack was in fact a bicycle
rack. Moreover, Brandir has received a request to use the Ribbon Rack as
environmental sculpture, and has offered testimony of art experts who claim that
the Ribbon Rack may be valued solely for its artistic features. As one of those
experts observed: "If one were to place a Ribbon Rack on an island without
access, or in a park and surround the work with a barrier, . . . its status as a
work of art would be beyond dispute." n3

- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -

   n2 The reasonable observer may be forgiven, however, if he or she does not
recognize the Ribbon Rack as an example of minimalist art. [**30]

   n3 The Copyright Office held that the Ribbon Rack was not copyrightable
because it lacked originality. There may be some merit in that view in light of
the Ribbon Rack's use of standard radii. This issue, however, was not raised in
defendant's motion for summary judgment, was not addressed by the district
court, and is not implicated here.

- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -

   My colleagues also allow too much to turn upon the process or sequence of
design followed by the designer of the Ribbon Rack. They thus suggest that
copyright protection would have been accorded "had Brandir merely adopted . . .
as a bicycle rack" an enlarged version of one of David Levine's original
sculptures rather than one that had wider upper loops and straightened vertical
elements. I cannot agree that copyright protection for the Ribbon Rack turns on
whether Levine serendipitously chose the final design of the Ribbon Rack during
his initial sculptural musings or whether the original design had to be slightly
modified to accommodate bicycles. Copyright protection, which is intended to
generate incentives for designers by according property rights in [**31]  their
creations, should not turn on purely fortuitous events. For that reason, the
Copyright Act expressly states that the legal test is how the final article is
perceived, not how it was developed through various stages. It thus states in
pertinent part:

     the design of a useful article . . . shall be considered a . . .
     sculptural work only if, and only to the extent that, such design
     incorporates . . . sculptural features that can be identified 
     separately from, and are capable of existing independently of, the 
     utilitarian aspects of the article.

 17 U.S.C. § 101 (1982) (emphasis added).

   I therefore dissent from the decision so far as it relates to
copyrightability but concur in its discussion and holding as to the trademark
and unfair competition claims.