This case presents the question whether the overall shape of certain outdoor lighting fixtures is eligible for copyright as a "work of art." The Register of Copyrights determined that the overall shape or configuration of such articles is not copyrightable. The district court disagreed, and issued a writ of mandamus directing the Register to enter the claim to copyright. Esquire, Inc. v. Ringer, 414 F. Supp. 939 (D.D.C.1976). For the reasons expressed below, we reverse.

Although the issues involved are fairly complex, the facts may be briefly stated. Appellee, Esquire, Inc. (Esquire) submitted three applications to the Copyright Office for registration of what it described as "artistic design(s) for lighting fixture(s)."1 Photographs accompanying the applications showed stationary outdoor luminaries or floodlights, of contemporary design, with rounded or elliptically-shaped housings.2 The applications asserted that the designs were eligible for copyright protection as "works of art." 17 U.S.C. § 5(g).

The Register of Copyrights (Register) refused to register Esquire's claims to copyright. The principal reason given was that Copyright Office regulations, specifically 37 C.F.R. § 202.10(c) (1976), preclude registration of the design of a utilitarian article, such as lighting fixtures, "when all of the design elements . . . are directly related to the useful functions of the article. . . . "3 The fixtures, according to the Register's analysis, did not contain "elements, either alone or in combination, which are capable of independent existence as a copyrightable pictorial, graphic, or sculptural work apart from the utilitarian aspect."4 Esquire twice requested reconsideration of its copyright applications,5 and was twice refused.6

Esquire then filed suit in the district court, seeking a writ of mandamus directing the Register to issue a certificate of copyright for its lighting fixture designs. This time, Esquire met with success. The court, per Judge Gesell, concluded that registration was compelled by Mazer v. Stein, 347 U.S. 201, 74 S. Ct. 460, 98 L. Ed. 630 (1954), where the Supreme Court upheld the copyright of statuettes intended to be mass-produced for use as table lamp bases. The district court reasoned that to uphold the issuance of the copyrights in Mazer, but deny Esquire's applications, would amount to affording certain copyright privileges to traditional works of art, but not to abstract, modern art forms. The court went on to find that "(t)he forms of the articles here in dispute are clearly art" and concluded that they were "entitled to the same recognition afforded more traditional sculpture." 414 F. Supp. at 941. The court also suggested that registration of Esquire's designs was compelled by prior "interpretative precedent." Id. This appeal followed.

The heart of the controversy in this case involves, in the district court's words, an "elusive semantic dispute" over the applicable regulation, 37 C.F.R. § 202.10(c). We have divided our analysis of this dispute into two parts: Part II considers whether the Register adopted a permissible interpretation of the regulation; Part III, whether the regulation, as interpreted, was properly applied to the facts presented by Esquire's applications.7

Section 5(g) of the Copyright Act of 1909, 17 U.S.C. § 5(g), indicates that "(w)orks of art; models or designs for works of art" are eligible for copyright.8 The terse language of the statute is more fully elaborated in regulations drafted by the Register pursuant to Congressional authorization.9 The provision at issue, 37 C.F.R. § 202.10(c), provides as follows:

(c) If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.

The parties have advanced conflicting interpretations of § 202.10(c). The Register interprets § 202.10(c) to bar copyright registration of the overall shape or configuration of a utilitarian article, no matter how aesthetically pleasing that shape or configuration may be. As support for this interpretation, the Register notes that the regulation limits copyright protection to features of a utilitarian article that "can be identified separately and are capable of existing independently as a work of art." The Register argues that this reading is required to enforce the congressional policy against copyrighting industrial designs, and that it is supported by the continued practice of the Copyright Office and by legislative history.

Esquire on the other hand, interprets § 202.10(c) to allow copyright registration for the overall shape or design of utilitarian articles as long as the shape or design satisfies the requirements appurtenant to works of art originality and creativity.10 Esquire stresses that the first sentence of § 202.10(c) reads in its entirety, "If the Sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art." Esquire maintains that it designed its lighting fixtures with the intent of creating "works of modernistic form sculpture,"11 and therefore that their Sole intrinsic function is not utility. Esquire also contends that the language of § 202.10(c) referring to "features . . . which can be identified separately and are capable of existing independently as a work of art" is not inconsistent with its interpretation. In effect, Esquire asserts that the Shape of the lighting fixtures is the "feature" that makes them eligible for copyright as a work of art. Esquire argues that its reading of § 202.10(c) is required by the decisions of the Supreme Court in Mazer v. Stein, 347 U.S. 201, 74 S. Ct. 460, 98 L. Ed. 630 (1954) and Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S. Ct. 298, 47 L. Ed. 460 (1903).

We conclude that the Register has adopted a reasonable and well-supported interpretation of § 202.10(c).

The Register's interpretation of § 202.10(c) derives from the principle that industrial designs are not eligible for copyright. Congress has repeatedly rejected proposed legislation that would make copyright protection available for consumer or industrial products.12 Most recently, Congress deleted a proposed section from the Copyright Act of 1976 that would have " create(d) a new limited form of copyright protection for 'original' designs which are clearly a part of a useful article, regardless of whether such designs could stand by themselves, separate from the article itself."13 In rejecting proposed Title II, Congress noted the administration's concern that to make such designs eligible for copyright would be to create a "new monopoly"14 having obvious and significant anticompetitive effects.15 The issues raised by Title II were left for further consideration in "more complete hearings" to follow the enactment of the 1976 Act.16

In the Register's view, registration of the overall shape or configuration of utilitarian articles would lead to widespread copyright protection for industrial designs. The Register reasons that aesthetic considerations enter into the design of most useful objects. Thus, if overall shape or configuration can qualify as a "work of art," "the whole realm of consumer products garments, toasters, refrigerators, furniture, bathtubs, automobiles, etc. and industrial products designed to have aesthetic appeal subway cars, computers, photocopying machines, typewriters, adding machines, etc. must also qualify as works of art."17

Considerable weight is to be given to an agency's interpretation of its regulations. "(T)he ultimate criterion is the administrative interpretation, which becomes of controlling weight unless it is plainly erroneous or inconsistent with the regulation." Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414, 65 S. Ct. 1215, 1217, 89 L. Ed. 1700 (1945); Accord, Udall v. Tallman, 380 U.S. 1, 16-18, 85 S. Ct. 792, 13 L. Ed. 2d 616 (1965); Stein v. Mazer, 204 F.2d 472, 477 (4th Cir. 1953), Aff'd., 347 U.S. 201, 74 S. Ct. 460, 98 L. Ed. 630 (1954). This is particularly so if an administrative interpretation relates to a matter within the field of administrative expertise and has been consistently followed for a significant period of time. Southern Mutual Help Ass'n v. Califano, 187 U.S.App.D.C. 307, 574 F.2d 518, 526 (1977). The Register's interpretation of § 202.10(c) reflects both administrative expertise and consistent application.

The regulation in question attempts to define the boundaries between copyrightable "works of art" and noncopyrightable industrial designs. This is an issue of long-standing concern to the Copyright Office, and is clearly a matter in which the Register has considerable expertise.18

Whether the Register's interpretation has been consistently followed for a significant period of time is somewhat less clear. Since the Copyright Office does not publish opinions explaining registration decisions, there is little evidence bearing directly on this point. What evidence exists, however, indicates that the Register's construction has been followed consistently.19 The district court suggested, without elaboration, that prior registration decisions create an "interpretative precedent" favoring Esquire's position. 414 F. Supp. at 941. But we think this confuses the Test employed by the Copyright Office in evaluating the copyrightability of utilitarian articles with the Results that obtained after the test was applied. The Register's test requires the application of subjective judgment, and given the large volume of copyright applications that must be processed there may be some results that are difficult to square with the denial of registration here.20 But this does not mean that the Register has employed different standards in reaching these decisions. The available evidence points to a uniform and long-standing interpretation of § 202.10(c), and accordingly this interpretation is entitled to great weight.

The Register's interpretation of § 202.10(c) finds further support in the legislative history of the recently enacted 1976 Copyright Act.21 Although not applicable to the case before us,22 the new Act was designed in part to codify and clarify many of the regulations promulgated under the 1909 Act, including those governing "works of art."23 Thus, the 1976 Act and its legislative history can be taken as an expression of congressional understanding of the scope of protection for utilitarian articles under the old regulations. "Subsequent legislation which declares the intent of an earlier law is not, of course, conclusive . . . . But the later law is entitled to weight when it comes to the problem of construction." Federal Housing Administration v. The Darlington, Inc., 358 U.S. 84, 90, 79 S. Ct. 141, 145, 3 L. Ed. 2d 132 (1958).

The House Report indicates that the section of the 1976 Act governing "pictorial, graphic and sculptural works" was intended "to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design."24 The Report illustrates the distinction in the following terms:

. . . 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. The test of separability and independence from "the utilitarian aspects of the article" does not depend upon the nature of the design that is, Even if the appearance of an article is determined by esthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable. And even if the three dimensional design contains some such element (for example, a carving on the back of a chair or a floral relief design on silver flatware), Copyright protection would extend only to that element, and would not cover the over-all configuration of the utilitarian article as such.

H.Rep. No. 1476, 94th Cong., 2d Sess. 55 (1976), U.S.Code Cong. & Admin.News 1976, p. 5668 (emphasis added).

This excerpt is not entirely free from ambiguity. Esquire could arguably draw some support from the statement that a protectable element of a utilitarian article must be separable "physically Or conceptually " from the utilitarian aspects of the design. But any possible ambiguity raised by this isolated reference disappears when the excerpt is considered in its entirety. The underscored passages indicate unequivocally that the overall design or configuration of a utilitarian object, even if it is determined by aesthetic as well as functional considerations, is not eligible for copyright. Thus the legislative history, taken as congressional understanding of existing law, reinforces the Register's position.

The legislative history of the 1976 Act also supports the Register's practice of ascribing little weight to the phrase "sole intrinsic function." As noted above, See TAN 11 Supra, Esquire contends that as long as the overall shape of a utilitarian article embodies Dual intrinsic functions aesthetic and utilitarian that shape may qualify for registration. But the new Act includes a definition of "useful article," referred to by the House Report as "an adaptation" of the language of § 202.10(c), H.R. Rep. No. 1476, Supra n.13, at 54, U.S.Code Cong. & Admin.News 1976, p. 5668, which provides:

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.

17 U.S.C. § 101 (1976) (emphasis added). In deleting the modifier "sole" from the language taken from § 202.10(c), the draftsmen of the 1976 Act must have concluded that the definition of "useful article" would be more precise without this term. Moreover, Congress may have concluded that literal application of the phrase "sole intrinsic function" would create an unworkable standard. For as one commentator has observed, "(t)here are no two-dimensional works and few three-dimensional objects whose design is absolutely dictated by utilitarian considerations."25

The district court basically ignored the foregoing considerations. Instead, it advanced two reasons for rejecting the Register's interpretation of § 202.10(c) as a matter of law. It concluded, first, that the Register's construction was inconsistent with the Supreme Court's decision in Mazer v. Stein, 347 U.S. 201, 79 S. Ct. 141, 3 L. Ed. 2d 132 (1954). Second, it found that the Register's interpretation amounted to impermissible discrimination against abstract modern art. We respectfully disagree on both counts.

We are unable to join in the district court's broad reading of Mazer v. Stein, supra.26 The principal issue in Mazer was whether objects that are concededly "works of art" can be copyrighted if incorporated into mass-produced utilitarian articles. The Register had issued copyright certificates for the statuettes of Balinese dancing figures created with the intent to reproduce and sell them as bases for table lamps. The Court noted that the "long-continued construction of the statutes" by the Copyright Office permitted registration of the statuettes as "works of art." 347 U.S. at 213, 74 S.Ct. at 468. It then concluded that there was "nothing in the copyright statute to support the argument that the intended use or use in industry of An article eligible for copyright bars or invalidates its registration." Id. at 218, 74 S.Ct. at 471 (emphasis added).

The issue here whether the overall shape of a utilitarian object is "an article eligible for copyright" was not addressed in Mazer. In fact, under the Register's interpretation of § 202.10(c), the dancing figures considered in Mazer would clearly be copyrightable. The statuettes were undeniably capable of existing as a work of art independent of the utilitarian article into which they were incorporated. And they were clearly a "feature" segregable from the overall shape of the table lamps. There is thus no inconsistency between the copyright upheld in Mazer and the Register's interpretation of § 202.10(c) here.

The district court's second conclusion is somewhat more problematical. The court found, in effect, that that Register's interpretation of § 202.10(c) amounted to impermissible discrimination against designs that "emphasize line and shape rather than the realistic or the ornate . . . ." 414 F. Supp. at 941.

We agree with the district court that the Copyright Act does not enshrine a particular conception of what constitutes "art." Id.27 As Justice Holmes noted in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251, 23 S. Ct. 298, 300, 47 L. Ed. 460 (1903), "(i)t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations . . . ." Neither the Constitution nor the Copyright Act authorizes the Copyright Office or the federal judiciary to serve as arbiters of national taste. These officials have no particular competence to assess the merits of one genre of art relative to another. And to allow them to assume such authority would be to risk stultifying the creativity and originality the copyright laws were expressly designed to encourage. Id. at 251-52, 23 S. Ct. 298; Accord, Mazer v. Stein, supra at 214, 79 S. Ct. 141.

But in our view the present case does not offend the nondiscrimination principle recognized in Bleistein. Bleistein was concerned only with conscious bias against one form of art in that case the popular art reflected in circus posters. Esquire's complaint, in effect, is that the Register's interpretation of § 202.10(c) places an inadvertent burden on a particular form of art, namely modern abstract sculpture. We may concede, for present purposes, that an interpretation of § 202.10(c) that bars copyright for the overall design or configuration of a utilitarian object will have a disproportionate impact on designs that exhibit the characteristics of abstract sculpture. But we can see no justification, at least in the circumstances of this case, for extending the nondiscrimination principle of Bleistein to include action having an unintentional, disproportionate impact on one style of artistic expression. Such an extension of the nondiscrimination principle would undermine other plainly legitimate goals of copyright law in this case the congressional directive that copyright protection should not be afforded to industrial designs.

At oral argument, Esquire proposed for the first time a test which it claimed would respect the principle disfavoring the copyright of industrial designs, and yet would not impose a differential burden on modernistic art forms. Esquire suggested that the overall design or configuration of a utilitarian article should be copyrightable as a work of art if its shape is original and creative, and it exhibits "a sufficient quantity of intellectual labor" to distinguish it from everyday industrial designs. However, Esquire was unable to cite any authority in support of this proposed test. Moreover, such a test would pose obvious administrative difficulties, and would appear to thrust the Copyright Office and the courts into the very role Esquire argues so forcefully against as overseers of the relative "worth" or value of different forms of art. Accordingly, we find no basis for requiring the Register to consider Esquire's belated suggestion.

Given that the Register adopted an appropriate interpretation of § 202.10(c), the question remains whether the regulation was properly applied to the materials presented by Esquire's copyright claims. In general, the Copyright Act "establishes a wide range of selection within which discretion must be exercised by the Register in determining what he has no power to accept." Bouve v. Twentieth Century-Fox Film Corp., supra 74 U.S.App.D.C. at 273, 122 F.2d at 53; Accord, Op. Att'y Gen., 183 U.S.P.Q. 624, 628 (1974); 30 Op. Att'y Gen. 422, 424 (1915). Here, the application of the regulation to the facts presented by Esquire's copyright applications unquestionably involved the exercise of administrative discretion.28

When the question of the application of the regulation was raised at oral argument, Esquire took the position that its copyright applications should be read as requesting registration for only Part of a utilitarian object. Specifically, Esquire maintained that it sought registration for the Housing of each fixture, not for the design of the entire lighting assembly including base, housing, electrical fixture, and light bulb. But Esquire's applications were not so limited. Each characterized the work for which registration was sought as an "artistic design for lighting fixtures."29 The photographs accompanying the applications portrayed both housings and bases for the lighting fixtures. No lesser feature was singled out as being that for which registration was sought. On the basis of these submissions, the Register could quite reasonably conclude that Esquire was claiming a copyright for the overall design of its outdoor lighting fixtures. The denial of registration in these circumstances did not amount to an abuse of discretion.

For the aforesaid reasons, the decision of the district court is

Reversed.

I concur in the judgment of reversal. I also concur in Judge Bazelon's opinion which I understand to hold that the provision of the Copyright Act limiting design copyright protection to "works of art," 17 U.S.C. § 5(g) (1976), authorizes the issuance of the pertinent Copyright Office regulations, 37 C.F.R. § 202.10(c) (1977), and that both statute and regulations may be interpreted to preclude registration (a) of the design of a useful article, however aesthetically valuable, and (b) of any elements of the design unless they can be identified separately from the utilitarian aspects of the design. Esquire contends that the restrictive passage of section 202.10(c), which refers to situations where "the sole intrinsic function of an article is its utility," must be read narrowly, so as to make the prohibition on registration inapplicable where an article possesses from the outset not only utility but an aesthetically original and pleasing design form. I join in the rejection of that contention. Form follows function, in the credo of one school of art. Yet the overall legislative policy against monopoly for industrial design 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 article.

I add a word to note that Judge Bazelon's opinion reflects the court's premise that the district court had jurisdiction of this action even though Esquire requested issuance of a writ of mandamus to the Register of Copyrights.

The courts have issued mandatory instructions to federal officials notwithstanding the wording of Federal Rule of Civil Procedure 81(b), which by its terms abolishes the writ of mandamus in the federal district courts.1 The rule permits equivalent relief, and the courts have issued orders that "for brevity, we may still speak of as . . . 'mandamus.' "2

The Mandamus and Venue Act of 1962, 28 U.S.C. § 1361 (1970), authorizes district courts generally to issue writs of mandamus to federal officials and "to issue appropriate corrective orders where Federal officials are not acting within the zone of their permissible discretion but are abusing their discretion or otherwise acting contrary to law."3 Although 28 U.S.C § 1361 applies only in case of a "duty owed to plaintiff," it is not bounded by the hoary strictures of old mandamus law.

Apart from an action in mandamus, which may retain residual rigidity, there is jurisdiction to provide declaratory relief under the 1976 amendment to 28 U.S.C. § 1331. That eliminated the jurisdictional amount requirement for any federal question in an "action brought against the United States, any agency thereof, or any officer or employee thereof in his official capacity." Now section 1331 broadly confers jurisdiction on federal courts to review agency action "subject only to preclusion-of-review statutes created or retained by Congress." Califano v. Sanders, 430 U.S. 99, 105, 97 S. Ct. 980, 984, 51 L. Ed. 2d 192 (1977). Regulations implementing federal statutes have the "force and effect of law"4 and cases arising under them are cases arising "under . . . laws . . . of the United States." 28 U.S.C. § 1331(a) (1970).5

As Judge Bazelon's opinion notes (fn. 28) the 1976 revision of the Copyright Act permits a copyright claimant to bring an infringement action even though the copyright has not been registered. 17 U.S.C. § 411 (1976). That statutory provision permits review of the Register's negative decision, and gives the Register an option to intervene. But the Copyright Act requires an infringement, and the claimant may wish to seek prior relief, I. e., to obtain the copyright registration, precisely in order to avoid the infringement and its disastrous business consequences.6

As for litigation involving details of application of a regulation, the Register of Copyrights has broad discretion. In this case, as Judge Bazelon points out, the application of the regulation to the facts involved the exercise of administrative discretion, and the denial of registration in the circumstances did not amount to an abuse of discretion. The subject-matter of copyrights is such as to suggest that rarely if ever will a ruling denying an application for copyright on the basis of the application of a regulation be considered a contravention of a duty owed to the applicant. There is jurisdiction but no large likelihood of successful invocation.