Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Company, Incorporated Dan Chase, and Lilly Chase

Citations: 74 F.3d 488; 37 U.S.P.Q. 2d (BNA) 1571; 1996 U.S. App. LEXIS 1095; 1996 WL 31195Docket: 94-2139

Court: Court of Appeals for the Fourth Circuit; January 29, 1996; Federal Appellate Court

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The appeal addresses the copyrightability of animal mannequins used by taxidermists, specifically whether they qualify as "useful articles" or "sculptural works" under the Copyright Act. The court concluded that the mannequins, which are designed with artistic features to represent animals, are not "useful articles" and thus eligible for copyright protection. The court also affirmed the lower court's evidentiary and damage rulings.

Superior Form Builders, Inc., represented by Tommy Knight, creates animal mannequins using traditional sculpting methods, crafting each from clay over an armature of wood and bones, followed by fiberglass molding to produce polyurethane forms. Knight views these mannequins as artistic expressions, having entered them into art contests with some winning awards. 

Knight registered the copyrights for his mannequins with the U.S. Copyright Office and assigned them to Superior Form. In January 1992, Dan Chase Taxidermy Supply Co., under the guise of a fictitious company, ordered four mannequins from Superior Form. Subsequently, Chase Taxidermy produced its own forms using these mannequins with little modification and registered them as their own, attaching a copyright notice in their catalog.

Chase Taxidermy, claiming to be the world's largest taxidermy supply company, offered over 3,000 forms in its catalog while asserting that each form is legally copyrighted. It warned against competitors copying its designs. In September 1993, Superior Form sued Chase for copyright infringement regarding four animal mannequins purchased from Superior Form. Lilly Chase was also named but was dismissed due to lack of personal jurisdiction. Superior Form sought $400,000 in statutory damages and attorney's fees. Chase argued that the mannequins were "useful articles" lacking copyrightable sculptural features, but the district court denied this motion, determining the mannequins were copyrightable as they served no utilitarian function beyond representing animals.

The case went to trial, where the jury found in favor of Superior Form, awarding them $100,000 for each of the four copied works. The court later awarded Superior Form $74,104.50 in attorney's fees, emphasizing the need for substantial damages to deter Chase's ongoing infringement. Chase appealed the judgment. The court then addressed whether the Copyright Act provides protection for Superior Form's mannequins, confirming that it protects original works of authorship, including sculptural works, and that originality is key to copyright eligibility. However, it clarified that copyright does not extend to ideas or facts, emphasizing that it rewards originality rather than effort.

Authors can freely use ideas and facts but cannot copy another author's expression. Copyright protection applies to original works that embody the author's creative effort, such as an animal sculpture, even if it depicts a realistic subject. Multiple sculptors can create their own versions of the same subject and each can obtain copyright for their unique expressions. However, if a work lacks originality—such as a casting that mirrors the original without creative input—copyright protection is unavailable. In this case, Knight's sculptures are deemed original since he creates them from scratch, forming clay sculptures rather than merely copying. 

Chase argues that the mannequins produced by Superior Form are utilitarian tools for taxidermy and therefore not copyrightable, referencing a case that ruled human mannequins used for clothing displays as non-copyrightable. Superior Form contends that its mannequins are sculptural works with artistic merit, asserting that any utilitarian function is conceptually separable from their artistic features. The Copyright Act defines "useful articles" as those with intrinsic utilitarian functions beyond merely portraying appearance, but sculptural works can be copyrightable despite having utilitarian aspects, provided that the sculptural features can exist independently of those aspects.

The copyrightability of works is determined by the separability of their sculptural and utilitarian aspects. When these elements are inseparable, the work cannot be copyrighted but may be eligible for design patent protection. For example, a uniquely designed chair cannot be separated from its utilitarian function, thus it lacks copyright protection. Conversely, a statue created solely for expressive purposes retains its copyright even when employed in a functional context, as illustrated in Mazer v. Stein.

Chase's argument regarding Superior Form's animal mannequins suggests they serve a utilitarian role by displaying animal skins, but this fails to recognize the creative expression inherent in mannequins compared to ordinary stuffing materials. The mannequin's design, including its posture and form, contributes artistic expression that remains visible even when covered, making it distinct from mere utilitarian objects.

Consequently, mannequins designed for displaying trophy animals can receive copyright protection since their primary function is to artistically represent the animal form. The court agrees with the district court's finding that the mannequins are not merely useful articles, as their utility is fundamentally tied to their expressive portrayal of animals.

While there could be an argument for the mannequins having a utilitarian function beyond mere appearance, this function is conceptually separable from their sculptural features. The court references earlier cases that support the notion of conceptual separability when artistic elements can be distinguished from functional design. Additionally, the decision in Carol Barnhart does not alter this outcome; the court found that the human mannequins used for clothing displays did not possess aesthetically separable features from their utilitarian use, reinforcing the distinction between artistic intent and functional application.

The court determined that the author did not fix a mode of expression in a tangible form for displaying or portraying the article, distinguishing between the human mannequins in *Carol Barnhart* and Standard Form's animal mannequins, which serve to permanently portray animals. The court disagreed with *Carol Barnhart*'s potential implications regarding the protection of an author's expression in tangible mediums. It referenced *Mazer* to highlight the distinction between copyright protection for artistic expression and design patents for ornamental designs, affirming that intended use in industry does not invalidate copyright registration. Consequently, the originality of expression in Superior Form's plastic mannequins is protectable under the Copyright Act.

Chase argued that a new trial was warranted due to the district court's evidentiary rulings and jury instructions. The court reviewed these for abuse of discretion, finding none. Chase's claim that Knight's mannequins were not original was countered by his own admissions that Knight created them from scratch using plaster masks as models. The court allowed some evidence regarding the originality of Superior Form's mannequins but did not permit Chase to claim they were entirely copied from preexisting works. The court's instructions regarding originality were upheld, emphasizing that the jury did not need to consider this issue since the court recognized Superior Form's mannequins as original works.

Chase also contended that the court improperly limited his defense against claims of intentional infringement by excluding evidence of reliance on counsel's advice about the copyrightability of taxidermy mannequins. While reliance on counsel could indicate a lack of willfulness in infringement, the court did not prevent Chase from presenting such evidence, only deferring one instance where Chase sought to explain counsel's advice.

Chase's counsel was directed by the court to explore a different line of questioning but had the opportunity to revisit the topic of the witness's opinion on copyright infringement later, which Chase chose not to pursue. The district court's management of this issue was deemed appropriate. Chase also contended that the court wrongly excluded evidence regarding an Alabama ruling on the copyrightability of fish mannequins. However, the court allowed Chase to express his understanding of the ruling without permitting him to interpret its legal implications for the jury. The district court noted that Chase had sufficient opportunity to explain his interpretation of the Alabama case. 

Chase further argued that the jury instruction on willful infringement was misleading; however, since he acknowledged the instruction's accuracy and failed to propose any alternative, the court found no error. Lastly, Chase challenged the $400,000 in statutory damages awarded to Superior Form as excessive, arguing it did not correlate with any actual damages and was disproportionate to his gross revenue from the mannequins. The court reiterated that under the Copyright Act, statutory damages can be awarded if willful infringement is proven, with the jury having broad discretion to award up to $100,000 for each work infringed. The review standard for such awards is highly deferential, affirming the district court's decisions.

The jury received proper instructions regarding its discretionary authority under the Copyright Act, emphasizing the consideration of willfulness in determining damages. Key factors included the defendants' history of copyright infringement, their potential unresponsiveness to deterrence or rehabilitation, their knowledge of copyright laws, any misleading statements, and indications of awareness or recklessness concerning copyright infringement.

Evidence indicated that Dan Chase Taxidermy became the largest taxidermy supplier by willfully copying competitors' molds, with Chase admitting that 150 to 200 out of 3,000 molds in his catalog were derived from competitors. Chase had faced multiple copyright infringement lawsuits, including cases from Sportsmen On Film, Inc. and Jonas Brothers, both resulting in admissions of wrongdoing and settlements. Additionally, he is currently being sued by 11 plaintiffs for similar allegations.

At trial, inconsistencies arose in Chase's claims that taxidermy mannequins are not copyrightable, as he previously asserted that his mannequins were copyrighted and threatened legal action against infringers. After a judge ruled a particular form non-copyrightable, Chase altered his catalog's copyright statements, yet continued to affix copyright notices to his products, claiming it was a tactic to deter copying.

Chase, a member of the National Taxidermy Association, disregarded the Association's ethical rule against reproducing forms without specific permission, labeling it as meaningless and merely for show. Evidence indicated willful infringement through Chase's deceitful acquisition of four Superior Form mannequins, where he used pseudonyms, removed the original copyright notice, and replaced it with his own. The jury reasonably concluded that illegal copying was a regular practice for Chase's business, warranting maximum statutory damages.

Regarding attorney fees, Chase contended that such fees should not be automatically awarded and argued that Superior Form was sufficiently compensated through statutory damages, making additional fees excessive. However, the court maintained discretion under 17 U.S.C. § 505 to award attorney fees, considering factors like party motivation and the reasonableness of legal positions. Despite Chase's claim of a reasonable basis for questioning the copyrightability of animal mannequins, the court found no good faith in his legal stance, noting his ongoing practice of copying competitors’ mannequins while simultaneously claiming copyright for his own.

Chase's actions, including applying for copyrights while warning others against infringement, contradicted his arguments about copyrightability. The district court deemed his conduct outrageous and concluded that it had properly exercised discretion in awarding attorney fees. Thus, the district court's judgment was affirmed.