Court: Court of Appeals for the Second Circuit; June 26, 1996; Federal Appellate Court
In Carol Barnhart Inc. v. Economy Cover Corp., the court determined that human torso mannequins were not copyrightable sculptural works, leading to a current case concerning the copyrightability of fish mannequins. The court concluded that taxidermy is distinct and therefore warrants separate consideration. It found that the district court prematurely applied the merger doctrine, which asserts that when an idea and its expression merge, copyright protection is lost. The plaintiffs, designers of taxidermy mannequins, claimed copyright infringement by Dan Chase Taxidermy Supply Co., after the district court ruled that most animal mannequins were copyrightable due to their artistic detail, except for the fish mannequins, which lacked sufficient detail beyond the idea of a realistic fish. The plaintiffs registered their fish mannequins with the U.S. Copyright Office, which grants them a presumption of protection, placing the burden on Dan Chase to prove their invalidity. Under the Copyright Act, while "useful articles" are not protected, the distinction between utilitarian and sculptural works complicates the case, as the fish mannequins serve a practical purpose yet may contain artistic elements. The court acknowledged the artistic intent behind the creation of the mannequins but also recognized their functional role as mounts for animal skins.
Objects that may be classified as "useful articles" are generally considered non-copyrightable; however, many such objects can possess artistic craftsmanship, and if they have "physically or conceptually separable" artistic features, they may be eligible for copyright protection. The district court did not determine whether the fish mannequins in question were useful articles or if they had separable artistic features. Instead, it concluded that most of the disputed animal forms were not useful articles and many had separable artistic aspects. Ultimately, the court ruled that even if the fish mannequins had artistic components, they were not copyrightable because the limited ways to express a realistic fish body meant that the expression merged with the idea itself, a principle known as the merger doctrine.
The merger doctrine posits that copyright protects only the expression of an idea, not the idea itself; if there are very few ways to express an idea, protecting the expression would effectively protect the idea. Courts typically assess the merger issue in the context of infringement rather than copyrightability. For accurate evaluation, all contested expressions should ideally be presented before the court, as the merger inquiry examines whether all realistic fish mannequins would be substantially similar.
The appellate court found that the district court applied the merger doctrine too early in the proceedings. While Kregos allows for the merger question to be addressed before evaluating evidence of substantial similarity, such instances are rare. The preference is to resolve the merger issue after all evidence has been presented. In this case, while eight of the plaintiffs' fish mannequins were admitted as exhibits, the defendants’ mannequins were not reviewed, leaving uncertainty about whether all realistic fish are sufficiently similar to warrant the conclusion that copyrighting any of them would equate to copyrighting an idea rather than an artistic work.
The district court's conclusion regarding copyright protection for fish mannequins lacks a solid evidentiary basis as it did not consider the plaintiffs' original mannequins alongside the defendants' copies. A more comprehensive analysis, including a comparison of different carvers' works, is necessary to determine if the designs are dictated by the lifelike nature of the fish, which could influence the copyrightability decision. The court's determination on substantial similarity should be made after further evidence is presented; thus, the judgment is vacated and the case is remanded for a hearing.
Dan Chase argues that fish mannequins are "useful articles" and therefore ineligible for copyright protection, drawing parallels to a previous case involving human torsos used for clothing display. However, the court disagrees, emphasizing that fish mannequins serve a distinct purpose in portraying the complete appearance of the fish, not merely as mounts for skins. Unlike the torsos in Barnhart, which primarily served a utilitarian function, fish mannequins are designed for aesthetic viewing, qualifying them for copyright protection under the Copyright Act. Consequently, even if considered "useful articles," their primary function of representation makes them copyrightable. The case is remanded for further proceedings to examine evidence of substantial similarity.
