Proline Concrete Tools, Inc. v. Dennis et al

Filing 91

ORDER granting 88 Motion to Compel Registration of Copyright Claims. The sculptures used to create the decorative concrete stamps are copyrightable. Signed by Judge Larry Alan Burns on 7/13/12. (All non-registered users served via U.S. Mail Service)(kaj)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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PROLINE CONCRETE TOOLS, INC., a
California corporation,

CASE NO. 07cv2310-LAB (AJB)

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ORDER GRANTING MOTION TO
COMPEL REGISTRATION OF
COPYRIGHT CLAIMS

Plaintiff,
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vs.

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GORD DENNIS, an individual,
CADILLAC CONCRETE PRODUCTS,
LTD., an unknown business form located
in British Columbia, Canada, CREATIVE
URETHANE CONCEPTS, INC., a South
Carolina Corporation, UNIVERSAL
BUILDING PRODUCTS, INC., an Illinois
Corporation, LEGACY DECORATIVE
CONCRETE SYSTEMS , INC., an Illinois
Corporation, SOLOMON COLORS, INC.,
an Illinois Corporation, and DOES 1
through 20, inclusive,

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Defendants.

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Proline Concrete Tools has filed a motion for the Court to compel registration of its
copyright claims after the Copyright Office Register refused to register them.

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The works Proline seeks to copyright are rock and stone sculptures that are used

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to make decorative concrete stamps. They are called Appian Cobble Stone “A”, Appian

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Cobble Stone “B”, Castle Stone, Grand Sandstone Groutable, and Random Garden

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Stone. The process is straightforward: “Plaintiff makes a mold of each sculpture. The

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mold serves as a die for the purpose of impressing the three dimensional design of the

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sculpture into large expanses of wet concrete.” (Doc. No. 88 at 2). To be clear, Proline

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seeks to copyright only the original sculptures, not the decorative stamps that are made

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from them.

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I.

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Legal Background
Proline asserts that the Court must review the Register’s rejection of its copyright

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claims de novo. It relies on Atari Games Corp. v. Oman, 888 F.2d 878, 887 (D.C. Cir.

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1989). The Court disagrees with Proline’s reliance on Atari, however.

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There are two ways for a party to challenge the Register’s decision to deny a

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copyright claim. The first way is to file an infringement action under the Copyright Act

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and ask for judicial review of the Register’s decision as part of that action. See 17 U.S.C.

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§ 411(a); Darden v. Peters, 488 F.3d 277, 285 (4th Cir. 2007). The Register must be

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served with a copy of the complaint, and the Register can opt to become a party to the

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action with respect to the issue of registrability by entering an appearance within 60 days

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of service. This is what Proline has done in this case, although the Register has opted

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not to join.

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Alternatively, a party can challenge the Register’s decision under the

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Administrative Procedure Act. 17 U.S.C. § 701(e). Atari was an Administrative

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Procedures Act case, and did not address the standard of review in infringement actions.

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Paul Morelli Design, Inc. v. Tiffany And Co., 200 F. Supp. 2d 482, 485 n.3 (E.D. Pa.

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2002). Thus, the standard of review in Atari isn’t applicable here.

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The Ninth Circuit has spoken, however, on the standard of review applicable in

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infringement action like this one. See Batjac Productions. v. GoodTimes Home Video

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Corp., 160 F.3d 1223, 1230 (9th Cir. 1998). Batjac involved the Register’s determination

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that once a movie passes into the public domain the underlying screenplay passes into

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the public domain, too. Id. at 1225-26. The Ninth Circuit recognized that the Register

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“has the authority to interpret the copyright laws and its interpretations are entitled to
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judicial deference if reasonable.” Id. at 1223 (citing Marascalco v. Fantasy, Inc., 953 F.2d

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469, 483 (9th Cir. 1991)). While Batjac is not identical to this case (the Register actually

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appeared to defend its rejection), the Court will follow its standard of review and ask

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whether the Register’s rejection of Proline’s copyright claims was reasonable. See

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Zhang v. Heineken N.V., 2010 WL 4457460 at *6 (C.D. Cal. 2010) (citing Batjac and

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deferring to Register’s decision if reasonable); Paul Morelli Design, 200 F. Supp. 2d, at

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485 (same).

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II.

Analysis

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Copyright protection is granted to “original works of authorship fixed in any tangible

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medium of expression, now known or later developed, from which they can be perceived,

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reproduced, or otherwise communicated, either directly or with the aid of machine or

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device.” 17 U.S.C. § 102(a). Among the works of authorship that can be protected are

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those that are “pictorial, graphic, and sculptural.” 17 U.S.C. § 102(a)(5). The works

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Proline wishes to copyright are sculptural.

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The Register denied Proline’s copyright claims on two different bases. Each basis
is individually sufficient to reject the claims, and the Court will address them individually.

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A.

Slavish Copies

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The first basis for denial of registration by the Register was that Proline’s works

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are “slavish copies of un-copyrightable objects and, as such, do not contain a sufficient

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amount of original authorship to support copyright claims.” (Doc. No. 88-4 at 2.) The

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Register opined that the works are slavish copies because they just replicate natural

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stones and their features:

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[T]hese works have been created by molding actual stones
and this process conveys cut marks, defects and other
qualities appearing on natural stone. This process is a slavish
reproduction to duplicate the appearance of natural stone and
slavish reproductions are not subject to copyright because
they lack the minimum amount of original artistic material to
support copyright registrations. Also, the specific qualities
appearing on natural stone, such as cut marks, defects and
the like are merely un-copyrightable effects.
(Doc. No. 88-4 at 2).
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In response, Proline clarifies that the process by which the sculptures are created

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does not involve the molding of actual stones. Contrary to the Register’s analysis, “the

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sculptures are not molds of existing stones or rocks. They are created from the artists

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interpretation of stones and rocks he has observed.” (Doc. No. 88 at 9).

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The Court agrees. The sculptures are not slavish copies of natural stones but

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rather Proline’s original sculptures. This seems to be a clear misunderstanding on the

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part of the Register that confused its analysis and led it to conclude that the sculptures

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are slavish copies of natural objects. Its rejection of the copyright claims was therefore

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not reasonable, and is not entitled to deference.

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B.

Useful Articles

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The second basis for denial of registration by the Copyright Register was that

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Proline’s works are useful articles, which as a general rule cannot be copyrighted. (Doc.

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No. 88-4 at 2). A useful article is “an article having an intrinsic utilitarian function that is

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not merely to portray the appearance of the article or to convey information. An article

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that is normally a part of a useful article is considered a ‘useful article.’” 17 U.S.C. § 101.

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Clear examples of useful articles include automobiles, food processors, and television

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sets. See Gay Toys, Inc. v. Buddy L. Corp., 703 F.2d 970, 973 (6th Cir.1983).1

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After reviewing Proline’s sculptures and the process by which they are created, the

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Court finds they are not useful articles. Indeed, they have no intrinsic utilitarian function

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other than to “portray the appearance” of the sculptures. 17 U.S.C. § 102(a)(5). The fact

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that they are made to serve some utilitarian purpose doesn’t change that. A painting isn’t

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any less copyrightable, for example, just because it is used to cover a hole in the wall.

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Useful articles can be given copyright protection if they “incorporate[ ] pictorial,
graphic, or sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article.” (Doc 88-4 at 2, citing 17
U.S.C. § 101). The Court doesn’t need to reach this issue, of course, if it finds the work at
issue isn’t a useful article to begin with. See Masquerade Novelty , Inc. v. Unique
Industries, Inc., 912 F.2d 663, 670 (3rd Cir. 1990) (“If a sculptural work is not a ‘useful article’
because its sole ‘utilitarian function... is ... to portray the appearance of the article,’ then it
remains copyrightable ... and a court need not analyze whether its utilitarian function is
separable from the work’s sculptural elements.”).
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The Register’s conclusion seems again to result from its confusion over how

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Proline creates the sculptures and what exactly it seeks to copyright. (“[A]nother basis for

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refusing these registrations is the concrete stamps are ‘useful articles’ which do not

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contain any separable authorship needed to sustain a claim to copyright.”) (Doc 88-4 at 2

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(emphasis added).) Because of this misunderstanding, the Register wrongly concluded

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that the sculptures are useful articles. As a result, its rejection of the copyright claims on

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Useful Article grounds is not reasonable, and is not entitled to deference.

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III.

Conclusion

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For the foregoing reasons, Proline’s motion to compel registration of its copyright

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claims is GRANTED. The sculptures used to create the decorative concrete stamps are

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copyrightable.

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IT IS SO ORDERED.
DATED: July 13, 2012

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HONORABLE LARRY ALAN BURNS
United States District Judge

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