What do you do? what are your remedies? could you stop the umbrella manufacturer from manufacturing and marketing your umbrella? could you stop the retail store from selling your umbrella? Most importantly, do you have copyright protection on your drawings? what about the umbrella described in the drawings? should you seek patent protection of your umbrella immediately?
The scenario above describes not so rare fact pattern and illustrates the dynamics intersection of mechanic drawings and intellectual property law. Many mechanical engineers remain unsure about whether their mechanical drawings are copyrightable, how far the copyright protection reaches, and whether they should apply for patent protection of their designs, which usually costs more and needs to overcome onerous patentability requirements. This article offers information on the current state of copyright protection of mechanical drawings, while distinguishing the copyright protection of mechanical drawings from the copyright protection of architectural drawings.
1. A general introduction of U.S.
Copyright affords the copyright owner the exclusive right to reproduce, sell, create derivative work, perform, and display the copyrighted work.[6] A copyright is automatically created when a copyrightable work is fixed in a tangible medium, regardless of whether the work has been published or registered with the U.S. Copyright Office.[7] The protection is available to both published and unpublished works. A copyright notice is not required for an unpublished work.[8] However, the copyright owner is not precluded from posting a copyright notice on publicly distributed copies of the work.[9]
2. Copyright protection for mechanic drawings.
Mechanic drawings usually are drawings of a useful article, such as an umbrella. By definition, mechanic drawings are a form of graphic communication used in transforming an idea into physical form. Therefore, mechanic drawings often contains concise and clear specifications of the three-dimensional structure of the useful article embodying the idea and, sometimes, the method or process of making the article. Consequently, copyright protection for mechanical drawings is a collection of copyright protections for various components of the drawings, including the two-dimensional drawings (traditionally, the blueprints), the three-dimensional structure derived from the drawings, the idea embodied in the design, and, if applicable, the method or process of making the structure. The scope of copyright protection for mechanical drawings depends upon the depth of the protection for each of these components.
(i) The two-dimensional mechanical drawings are protectable under copyright law.
Two-dimensional mechanical drawings are considered as a copyright protectable "expression," not "a useful article." Current copyright law provides for copyright protection to two-dimensional technical drawings.[10] Generally, the Copyright Office recognizes published or unpublished two-dimensional drawings as including diagrams or models, illustrating scientific or technical works or formulating scientific or technical information in linear form, such as a mechanical drawing or an engineering diagram.[11]
Consistent with the Copyright Office's position, courts have recognized the copyright protection for various mechanical drawings. As eloquently stated by one court deciding on the copyright protection over the blueprints of a pharmaceutical machine to place medicinal pills into blister packs, mechanical drawings exist "to convey information as to size, form and assembly." Because the drawings' sole utility is to explain the arrangement and relation of parts of the article depicted, the drawings cannot be considered useful articles under § 101."[12] Other mechanical drawings that courts have confirmed copyright protection include drawings for automotive wheel covers,[13] eyeglass displays,[14] printing presses,[15] medical cabinets,[16] stabilizer benders, welders, and other special machinery used to manufacture parts for cars and trucks,[17] and an electric vacuum device.[18] Consequently, in the above scenario, the mechanical drawings of the umbrella are entitled to copyright protection at the moment of their creation.
(ii) The copyright protection for the three-dimensional structure derived from mechanical drawings extends only to the artistic features of the structure that are separable from the utilitarian aspects of the structure.
Current copyright law limits the scope of copyright protection for "a useful article" to the "artistic craftsmanship," but not the "mechanical or utilitarian aspects."[19] "A useful article" is "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."[20] The useful article doctrine was first articulated by the Supreme Court in Mazer v. Stein in 1954.[21] The doctrine is codified in the definition of "[p]ictorial, graphic, and sculptural work" in the 1976 Act, which states that "such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned."[22] The three-dimensional structure derived from mechanical drawings is usually a useful article. Therefore, the copyright protection for the three-dimensional structure extends only to the artistic features of the structure.
For copyright protection, the artistic features in the three-dimensional structure derived from mechanical drawings must be able to, physically or conceptually, exist independently as a work of art. According to the 1976 Act, "the design of a useful article…shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design 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."[23] Accompanying the passage of 1976 Act, House Report No. 1476 explains that "[a] two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like"; and "the same is true when a statue or carving is used to embellish an industrial product or…is incorporated into a product without losing its ability to exist independently as a work of art."[24] Courts' interpretation of this seperability test has been consistent with the statutory requirement and the legislative history. When confirming the copyright protection for the ornamental aspect of two belt buckles, the Second Circuit noted that, while utilitarian objects such as belt buckles could not be copyrighted, elements that were physically or conceptually separable and that were capable of existing independent of the article's utilitarian aspect could be copyrighted.[25] Similarly, when considering copyright protection for an eyeglass display, a Delaware
However, the high aesthetic value of a useful article does not confer the article copyright protection. The House Report accompanying the 1976 Act emphasizes that the fact that "the shape of an industrial product may be aesthetically satisfying and valuable" does not confer the industrial product copyright protection.[28] The 1976 Act rejects copyright protection to design elements directly related to the useful function of the article. The notion has been reinforced by courts' action. For example, in Esquire, Inc. v. Ringer, an appeals court affirmed the Copyright Office refusal to register certain outdoor lighting fixture stating that the overall shape of certain outdoor lighting fixture is eligible for copyright protection as a "work of art."[29] Therefore, no matter how aesthetically pleasing it may be, the structure derived from mechanical drawings is not entitled to copyright protection in the absence of the artistic features separable from the utilitarian aspects.
Going back to our umbrella engineer case, if the wind-resistant umbrella includes an original artistic design printed on the cover fabric or an original sculpture on the handle, the artistic print or the sculpture would be protected under copyright law as artistic features conceptually or physically separable from the function of the umbrella. However, the fact that the overall shape of the umbrella is artistically appealing would not entitle the umbrella to the copyright protection.
(iii) The idea and process in mechanical drawings are not copyright protectable.
Ideas and process are not protectable under copyright law. Copyright law protects the ''expression'' of a work of authorship, but not the ''idea'' being expressed. This idea-expression dichotomy of copyright law was first explained by the Supreme Court in Baker v. Selden, in which protection was sought for original bookkeeping forms contained in a book explaining a new method of bookkeeping.[30] The court held that exclusive rights to the "useful art," such as methods of bookkeeping described in a book, was only available by patent; the description itself was protectable by copyright.[31] The Copyright Act codifies the idea-expression dichotomy in 17 U.S.C. § 102(b), which provides that "[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such a work."
Various courts have held that ideas and processes described in mechanical drawings are not protectable under copyright law. In Herbert Rosenthal Jewelry Corp. v. Kalpakian,[32] plaintiff has a copyright for "a pin in the shape of a bee formed of gold encrusted with jewels."[33] Plaintiff argued that its copyright was infringed by defendant's line of jeweled bees. The appellate court found that "[a] jeweled bee pin" is an "idea" and that plaintiff's particular design was an "expression" of the jeweled bee pin idea.[34] The court refused to enforce plaintiff's copyright, declaring that enforcing plaintiff's copyright would "effectively prevent others from engaging in the business of manufacturing and selling jeweled bees."[35] In National Medical Care, Inc. v. Espiritu, the court rejected the copyright protection of the specification for installing the medical cabinet structure described in the mechanical drawings.[36] In Niemi v. Am. Axle Mfg. and Holding, Inc., the court held that the process for manufacturing the machineries described in the mechanical drawings is not eligible for copyright protection.[37] Therefore, it is well established that ideas and processes described in mechanical drawings are not protectable under copyright law.
Going back to our umbrella engineer case, the unique arrangement of ribs and stretchers that makes the umbrella wind-resistant most likely will be judged as an idea. Therefore, the arrangement will not be protectable under copyright law. In addition, the installation instruction in the mechanical drawings is not entitled copyright protection under 17 U.S.C. § 102(b).
3. Copyright infringements.
The copyright protection on the two dimensional drawings grants the engineer owner the right to control the reproduction, distribution, and creation of derivation work of the two dimensional drawings.[38] In our hypothetical umbrella engineer case, the engineer's friend reproduces and distributes the drawings without authorization from the engineer and, therefore, has infringed up the engineer's copyright on the two-dimensional drawings. However, our engineer may not have an action against the umbrella manufacturer and the retail store.
First, court has held that the manufacture of a useful article from a copyrighted technical drawing is not copyright infringement. In Niemi, the court confronted the issue whether the use of copies, or derivatives of copies, of copyrighted technical drawings to manufacture a machine is an act of copyright infringement. The court held that the manufacture of a machine from a copyrighted technical drawing is not copyright infringement.[39]
Second, it has been held that an as‑built structure or feature is not an infringing copy of a technical drawing. In National Medical Care, Inc., when examining the technical drawings of medical cabinets, the court described the medical cabinets as useful articles, which have "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."[40] The court decided that a technical drawing's copyright simply does not give the copyright owner the exclusive right to build a structure as depicted in the drawing, and the owner has no claim against another who builds a structure from an infringing plan.[41] The court held that an as‑built structure or feature cannot be an infringing copy of a technical drawing.
Going back to our umbrella engineer case, absent a separable and, therefore, protectable artistic features in the umbrella, the umbrella constructed by the umbrella manufacture and sold by the retail store will not be considered as an infringing copy of the engineer's mechanical drawings. In addition, under Niemi court's rationale,[42] the umbrella manufacturer did not commit copyright infringement when constructing the umbrella according to the instruction in the technical drawings. Therefore, our umbrella engineer most likely will not be able to launch any significant copyright infringement action against the manufacture and the retail store.
4. Distinguishing the copyright protection of mechanical drawings from the copyright protection of architectural drawings.
Mechanical drawings are distinguishable from architectural drawings under copyright law. Mechanical drawings are only protectable under one category, i.e., as "pictorial, graphic, or sculptural works" under 17 U.S.C. §102(a)(5). There is no separate copyright protection for the three-dimensional structure of a useful article depicted in mechanical drawings. In comparison, architectural drawings are protected under the Architectural Works Copyright Protection Act of 1990 (AWCPA), which provides two layers of protection for this type of drawings. First, under 17 U.S.C. §102(a)(5), architectural drawings are eligible for copyright protection as "pictorial, graphic, or sculptural works." Second, under 17 U.S.C. §102(a)(8), architectural drawings are eligible for copyright protection as "architectural work." 17 U.S.C. § 101 defines an "architectural work" as "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings." Therefore, the Architectural Works Copyright Protection Act of 1990 provides the copyright of a three-dimensional building depicted in architectural drawings as a separate copyright from the two-dimensional drawings.
In conclusion, the copyright protection for mechanical drawings depends upon the protection on the two-dimensional drawings and the artistic features in the three-dimensional structure derived from the drawings. The idea embodied in the design and the method or process of making the structure are not protectable. In addition, it is worth noting that the as-build structure made according to the mechanical drawings of a useful article is not considered an infringing copy of the article. Therefore, the copyright protection of mechanical drawings is very limited. To protect a design idea and the utilitarian features in the design, the engineer should seek patent protection upon an invention of an ingenious design for a useful article. As for the umbrella engineer in our hypothetical case, in the absent of any copyright protectable artistic features in the umbrella, seeking patent protection might be the only route to save his work from being commercially exploited by others.
Thanks for reading.
Connie
connie@patentonomy.com
www.patentonomy.com
[1] 17 U.S.C. §102(a).
[2] The Copyright Act of 1909, § 4.
[3] Id.
[4] 17 U.S.C. §102.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id. at § 401(a) (A valid copyright notices includes: 1) the symbol , or the word "copyright" or the abbreviation "corp."; 2) the year of the first publication; and 3) the name of the owner of the copyright. After March 1, 1989 , the use of a copyright notice is not longer mandatory. The absence of a copyright notice may exonerate an alleged "innocent' infringer liable for actual or statutory damages. After March 1, 1989 , as a result of the United States United States
[10] Supra note 5.
[11] 37 C.F.R. § 202.12(a) (1959).
[12] Gemel Precision Tool v. Pharma Tool Corp., 1995 U.S.
[13] Norris Industries, Inc. v. International Telephone and Telegraph Corp. and David L. Ladd, 1981 U.S.
[14] Trans-world Manufacturing Corporation v. Al Nyman & Sons, Inc., 1982 U.S. Dist. LEXIS 15279 (Del. July 16, 1982).
[15] Tensor Group, Inc. v. Global Web System Inc., 1998 U.S.
[16] National Medical Care, Inc. v. Espiritu, 284 F. Supp. 2d. 424 (S.D.W.Va. 2003).
[17] Niemi v. Am. Axle Mfg. & Holding Inc., 2006 U.S. Dist. LEXIS 50153 (E. D. Michigan, July 24, 2006 ); See also, Niemi v. NHK Spring Co., 2007 U.S. Dist. LEXIS 63502 (N. D. Ohio, Aug. 2007).
[18] Gusler v. Fischer, 2008 U.S.
[19] Supra note 5.
[20] Id.
[21] Mazer v. Stein, 347 U.S. U.S.
[22] Supra note 5.
[23] Id.
[24] H.R. Rep. No. 1476, 94th Cong., 2d. Sess. 55, reprinted in 1976 U.S. Code Cong. & Ad. News 5668;
[25] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. N.Y.
[26] Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95, 98-99 (D. Del.
[27] Id.
[28] H.R. Rep., supra note 24.
[29] Esquire, Inc. v. Ringer,192 U.S. App. D.C.
[30] Baker v. Selden , 101 U.S.
[32] Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971).
[33] Id.
[34] Id.
[35] Id.
[36] National Medical Care, Inc., supra note 16.
[37] Niemi, 2006 U.S.
[38] 17 U.S.C. §106.
[39] Niemi, supra note 37.
[40] National Medical Care, Inc., supra note 16.
[41] Id.
[42] Niemi, supra note 37.
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