2005 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

8-30-2005

Kay Berry Inc v. Taylor Gifts Inc

Precedential or Non-Precedential: Precedential

Docket No. 04-3809

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PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

___________

NO. 04-3809

___________

KAY BERRY, INC.

Appellant

v.

TAYLOR GIFTS, INC.;

BANDWAGON, INC.

___________

On Appeal from the United States District Court 

for the Western District of Pennsylvania

(Civil No. 03-1305)

District Judge: Honorable Donetta W. Ambrose

___________

Argued May 3, 2005

BEFORE: McKEE, VAN ANTWERPEN and WEIS, Circuit

Judges

(Filed: August 30, 2005)
2

Andrew B. Katz (Argued)

Fox, Rothschild, O’Brien & Frankel, LLP

2000 Market Street

10 Floor th

Philadelphia, PA 19103

William L. Stang

Fox, Rothschild, O’Brien & Frankel, LLP

625 Liberty Avenue

29th Floor

Pittsburgh, PA 15222

Counsel for Appellant

William E. Hilton (Argued)

Gauthier & Connors, LLP

225 Franklin Street

Suite 3300

Boston, MA 02110

John R. McGinley, Jr.

Eckert, Seamans, Cherin & Mellot, LLC

600 Grant Street

44th Floor

Pittsburgh, PA 15219

Counsel for Appellees
3

___________

OPINION

___________

VAN ANTWERPEN, Circuit Judge

Before us is an appeal from an order granting summary

judgment in favor of the defendant-Appellees on a copyright

infringement claim. Appellant Kay Berry, Inc. (“Kay Berry”)

claims that Appellees Taylor Gifts, Inc. (“Taylor”) and

Bandwagon, Inc. (“Bandwagon”) infringed its copyright on

its sculptural work – a garden rock cast with a poem found in

the public domain. The United States District Court for the

Western District of Pennsylvania granted summary judgment

after determining that Kay Berry’s copyright registration was

invalid and that the sculptural work was not entitled to

copyright protection. We will reverse.

I. FACTUAL BACKGROUND AND PROCEDURAL

HISTORY

Kay Berry designs, manufactures, markets and sells

“Garden Accent Rocks,” which it describes as decorative,

cement-cast, outdoor sculptures typically resembling rocks or

stones, inscribed with writings. On July 7, 1997, Kay Berry

applied for a copyright registration for its entire line of

Garden Accent Rocks. It provided its Garden Accent Rock

Catalog (the “Catalog”) as the document specimen for the

registration. The Catalog identified each sculpture by

number and featured a description and photograph of each
4

individual work. The United States Copyright Office issued

Kay Berry a Copyright Registration Certificate (the

“Certificate”) with an effective date of July 1, 1997. The

Certificate identified the scope of the Certificate’s subject

matter as simply “[s]culptural works with design and text.” 

One of Kay Berry’s best-selling Garden Accent Rocks

is Sculpture No. 646, a rectangular object having a stone-like

appearance and a verse inscribed on the face. The verse

appears in five lines, inscribed in a right-leaning font with the

first letter of each word capitalized:

If Tears Could Build A

Stairway, And Memories

A Lane, I’d Walk Right Up

To Heaven And Bring

You Home Again

(Appellant App. at 8.) 

During 2003, Bandwagon began supplying to Taylor,

and Taylor began marketing and selling, a “Memory Stone,”

which was similar to Kay Berry’s Sculpture No. 646. Like

Sculpture No. 646, the Memory Stone was a rectangular

object with a stone-like appearance featuring the exact same

verse that appears on Sculpture No. 646. The Memory

Stone’s verse was also laid out in the same five-line format,
5

each word also began with a capital letter, and the entire verse

also appeared in a right-leaning font. 

Kay Berry sued Taylor and Bandwagon for copyright

infringement and moved for a preliminary injunction

prohibiting the Appellees from selling the Memory Stone. On

December 8, 2003, a United States Magistrate Judge issued a

Report and Recommendation suggesting that the District

Court deny Kay Berry’s motion. The District Court adopted

the Magistrate’s Report and Recommendation, without

change, in an order dated February 23, 2004.

At about the same time, on February 6, 2004,

Appellees had filed an amended motion for summary

judgment on the infringement claim. On August 2, 2004, the

Magistrate issued a Report and Recommendation suggesting

that the District Court grant the motion. On August 30, 2004,

the District Court adopted the Magistrate Judge’s Report and

Recommendation as its own opinion and granted summary

judgment in favor of Appellees. This timely appeal followed. 

II. JURISDICTION AND STANDARD OF REVIEW

The District Court had jurisdiction pursuant to 28

U.S.C. §§ 1331 and 1338(a). This Court has jurisdiction

pursuant to 28 U.S.C. § 1291. We exercise plenary review

over the District Court’s grant of summary judgment and

employ the same analysis required of the District Court to

determine whether there are any issues of material fact that

would enable the nonmoving party to prevail. Hamilton v.

Leavy, 117 F.3d 742, 746 (3d Cir. 1997). Summary judgment
6

is appropriate when “there is no genuine issue as to any

material fact and . . . the moving party is entitled to a

judgment as a matter of law.” Fed. R. Civ. P. 56(c). At the

summary judgment stage, we view all evidence and consider

all reasonable inferences in a light most favorable to the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S.

242, 255 (1986).

III. ANALYSIS

“To establish a claim of copyright infringement, a

plaintiff must establish: (1) ownership of a valid copyright;

and (2) unauthorized copying of original elements of the

plaintiff’s work.” Dun & Bradstreet Software Servs., Inc. v.

Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir. 2002). In

granting summary judgment in favor of Appellees, the

District Court relied on a Report and Recommendation which

concluded that: (1) Kay Berry did not have a valid registration

over its multiple works because they were not sufficiently

related, (2) Sculpture No. 646 contained no copyrightable

subject matter, and (3) Sculpture No. 646 embodied an

expression that was inseparable from an underlying idea. For

the reasons set forth below, we will reverse.

A. Kay Berry’s Registration

We begin by addressing the validity of Kay Berry’s

copyright registration. According to 17 U.S.C. § 411(a), “no

action for infringement of the copyright in any United States

work shall be instituted until preregistration or registration of

the copyright claim has been made in accordance with this
7

title.” See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp.,

354 F.3d 112, 115 (2d Cir. 2003); Xoom, Inc. v. Imageline,

Inc., 323 F.3d 279, 283 (4th Cir. 2003). Kay Berry claims

that Sculpture No. 646 was properly registered under

Certificate of Registration VA857-542, which covers “Garden

Accent Rocks,” described as “[s]culptural works with design

and text.” Along with Registration VA857-542, Kay Berry

deposited its Garden Accent Rocks catalog, which featured

pictures and descriptions of more than one hundred

sculptures, including Sculpture No. 646. Kay Berry claims

that this registration covers Sculpture No. 646 along with all

of the other works featured in the catalog. The District Court

disagreed, reasoning that the individual works featured in the

catalog were not validly registered because they were not

sufficiently related to each other to qualify for registration as

a group of works as required by 17 U.S.C.§ 408(c)(1). We

believe that this reasoning improperly ignored the governing

copyright registration regulations and caused the District

Court to evaluate Kay Berry’s registration under the incorrect

statutory provision.

1. Group Registration

Initially, Kay Berry argued that its Garden Accent

Rocks were properly registered as a group of related works

pursuant to 17 U.S.C. § 408(c)(1). The statute states in

relevant part:

The Register of Copyrights is authorized to specify by

regulation the administrative classes into which works

are to be placed for purposes of deposit and
8

registration, and the nature of the copies or

phonorecords to be deposited in the various classes

specified. The regulations may require or permit, for

particular classes . . . a single registration for a group

of related works.

17 U.S.C. § 408(c)(1) (2005). Relying on Behnam Jewelry

Corp. v. Aron Basha Corp., 45 U.S.P.Q.2d 1078, 1087-88

(S.D.N.Y. 1997), Kay Berry claimed that when Congress

enacted § 408(c), it specifically attempted to liberalize the

copyright laws so as to allow a group of works to be

registered together, under a single registration, as long as they

were minimally connected. Kay Berry argued that, under this

permissive standard, its works were sufficiently related and

therefore validly registered as a group of works under the

applicable statutory provision.

Although we agree that § 408(c) represents a

liberalization of the copyright laws, it does not define the

requirements for a valid copyright registration. The

applicable subsection states only that “[t]he regulations may

require or permit, for particular classes . . . a single

registration for a group of related works. 17 U.S.C. § 

408(c)(1) (emphasis added). 

“It is elementary that the meaning of a statute must, in

the first instance, be sought in the language in which the act is

framed, and if that is plain, and if the law is within the

constitutional authority of the law-making body which passed
9

it, the sole function of the courts is to enforce it according to

its terms.” Caminetti v. United States, 242 U.S. 470, 485

(1917). Here, the language plainly does not grant to all

copyright applicants a general right to register a group of

works under a single registration. Our conclusion that the

plain language of § 408(c)(1) merely allows the Register of

Copyrights to determine what types of works are eligible for

group registration is confirmed by the more stringent

language of § 408(c)(2), which mandates that the Register of

Copyrights establish regulations permitting group registration

of works appearing in periodicals. See 17 U.S.C. § 408(c)(2)

(“Without prejudice to the general authority provided under

clause (1), the Register of Copyrights shall establish

regulations . . . .”) (emphasis added).

The Register of Copyrights has exercised the authority

delegated by § 408(c)(1) by promulgating rules allowing for

group registration for “automated databases,” “related

serials,” “daily newspapers,” “contributions to periodicals,”

“daily newsletters,” and “published photographs.” See 37

C.F.R. §§ 202.3(b)(4)-(9). Kay Berry, however, describes its

Garden Accent Rocks as “sculptural works.” Since the

Register of Copyrights has not promulgated regulations

allowing for group registration of sculptural works, we

conclude that Kay Berry’s registration is not valid under the

current group registration provisions.

2. Single Work Registration

Kay Berry alternatively contends that its copyright

registration is valid as a “single work” under 37 C.F.R. §
 “‘Publication’ is the distribution of copies . . . of a work 1

to the public by sale or other transfer of ownership, or by rental,

lease, or lending. The offering to distribute copies . . . to a group

of persons for purposes of further distribution, public

performance, or public display, constitutes publication.” 17

U.S.C. § 101. “‘Copies’ are material objects . . . in which a

work is fixed by any method now known or later developed, and

from which the work can be perceived, reproduced, or otherwise

communicated . . . .” Id. Therefore, under these definitions, a

copy of Sculpture No. 646 was published in the Catalog.

10

202.3(b)(3). This provision describes a single work, “[i]n the

case of published works,” as “all copyrightable elements that

are otherwise recognizable as self-contained works, that are

included in a single unit of publication, and in which the

copyright claimant is the same.” 37 C.F.R. §

202.3(b)(3)(i)(A). The classic example of a single work is a

board game. The board, the playing pieces, and the

instructions may all be individually entitled to copyright

protection, but since they are packaged as a single unit (the

game itself), it is appropriate to allow the copyright owner to

register the entire game, and protect the individual elements

through that single registration. Kay Berry claims that its

copyright registration covers its catalog deposit, and that

Sculpture No. 646, which was published in the catalog, is an

individually recognizable element of that single work and is

therefore entitled to the benefits of registration under the

“Single Work” provision.1

“Single Work” registration is separate and distinct

from “Group Registration.” The group registration provisions
11

were enacted pursuant to 17 U.S.C. § 408(c)(1), and were

based on Congress’s desire to liberalize the registration

process. See H.R. Rep. No. 94-1476, at 154 (1976), reprinted

in 1976 U.S.C.C.A.N. 5659, 5770. The single work

registration provision, by contrast, was promulgated pursuant

to the language of 17 U.S.C. § 408(a), which states that “the

owner of copyright or of any exclusive right in the work may

obtain registration of the copyright claim . . . .” 17 U.S.C. §

408(a) (emphasis added). This provision codified the preexisting Copyright Office practice of allowing copyright

owners to register multiple works published together as a

single work for a single fee. See Registration of Claims to

Copyright, 43 Fed. Reg. 965, 966 (Jan. 5, 1978) (codified at

37 C.F.R. pt. 202). At the time this provision was established,

the Copyright Office had “reserved for implementation in a

separate proceeding, the possibility of providing for ‘a single

registration for a group of “related works”[’] under paragraph

(c)(1) of section 408.” Id.

The single work registration regulation is distinct from

the group registration regulation and has different qualifying

requirements. The single work registration regulation is silent

on whether the individual, self-contained elements of the

“single work” be “related” in order to be registered. Instead,

single work registration requires, in the case of published

works, that all of the self-contained works be “included in a

single unit of publication” and share the same copyright

claimant. 37 C.F.R. § 202.3(b)(3)(i)(A).

 In Benham Jewelry, 45 U.S.P.Q.2d at 1087-88, the

District Court confused the requirements for single work
12

registration and group registration. The court erroneously

concluded that the single work regulation was promulgated

pursuant to 17 U.S.C. § 408(c) not 408(a) and failed to note

the distinct regulatory requirements for single work

registration and group registration. Id. Although Benham

Jewelry quoted the single work registration regulation,

including its requirement of a “single unit of publication,” the

court repeatedly mentioned and discussed the requirements

for “single registration for multiple related works” or group

registration. Id.

In addition to confusing the regulatory provisions,

Benham Jewelry conducted an analysis that combined the

requirements of group registration and single work

registration. The court concluded that the jewelry was

sufficiently “related” both because it was “marketed as a

single line” and shared the same “basic design” and had other

visual elements in common. Id. at 1088. Because it

improperly melded the “single unit of publication”

requirement of single work registration and the “relatedness”

requirement of group registration, Benham Jewelry concluded

that the “single unit of publication” requirement was

superfluous where the works at issue were sufficiently related. 

Id. This conclusion is incorrect because relatedness is not a

requirement for single work registration. As we have shown,

the single work registration regulation arises from a different

statutory provision than the group work registration regulation

and, as a result, we cannot ignore the single unit of

publication requirement as did Benham Jewelry.

In Donald Bruce & Co. v. B.N. Multi Com Corp., 964
We further note that we are unable, on this record, to 2

determine whether Sculpture No. 646 was first published in the

Kay Berry’s catalog. The government, in an amicus curiae brief

submitted at our request, stated that only those individual works

first published in the single work will be covered by the single

work registration, citing U.S. Copyright Office, Compendium II:

Compendium of Copyright Office Practices § 607.01 at 600-11

13

F. Supp. 265, 268-69 (N.D. Ill. 1997), the court made a

similar analytical error. In that case, the court said that the

group registration provision for “single registration for a

group of related works” was at issue rather than the provision

for a single work. Id. at 268. However, during its discussion

of the relatedness requirement of group registration, the court

in Donald Bruce considered whether including otherwise

unrelated works in a “single unit of publication” might satisfy

the relatedness requirement for group registration. In other

words, the court suggested that including items in a single

unit of publication might serve as a proxy for relatedness. 

This would improperly meld the group registration and single

work registration requirements. 

Both Benham Jewelry and Donald Bruce fail to

account for the fundamental distinction between single work

registration under 37 C.F.R. § 202.3(b)(3), and group

registration under 37 C.F.R. § 202.3(b)(4). This distinction is

significant. In this instance, Kay Berry’s garden accent rocks

may not be sufficiently “related” but they were included in a

single unit of publication and the copyright claimant is the

same so, regardless of their relatedness, they may be

registered pursuant to the single work registration regulation. 

2
(1984) (“Works that are otherwise recognizable as selfcontained may be registered on a single application and upon

payment of a single fee, if they are first published in a single

unit of publication and the copyright claimant of all works in the

unit is the same.”) (emphasis added). The government claimed

that to the extent that the single work contains both new and

preexisting matter, it is a “compilation” or a “derivative work.”

See 17 U.S.C. § 101 (2005). Accordingly, it contended, the

copyright “extends only to the material contributed by the author

of such work, as distinguished from the preexisting material

employed in the work.” See 17 U.S.C. § 103(b) (2005).

Furthermore, the government claimed, “[t]he copyright in such

work is independent of, and does not affect . . . any copyright

protection in the preexisting material.” See id.

On remand, the District Court will need to determine in

the first instance whether this presents a barrier to Kay Berry’s

registration. Although the issue is not before us on appeal, we

note that decisions of this Court and others counsel that

registration of a collective work is sufficient to support an action

for infringement of the underlying self-contained parts. Educ.

Testing Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986)

(“Although compilations or ‘collective’ works may include

uncopyrightable works, as well as previously copyrighted

works, the fact that the registration was for compilations does

not preclude protection for the material therein contributed by

the author.”); see also Xoom, Inc., 323 F.3d at 284 (owner of

copyright in the collective work and underlying works was the

same and therefore could maintain an action for infringement of

the underlying works); Streetwise Maps v. VanDam, Inc., 159

F.3d 739, 747 (2d Cir. 1998) (where the copyright owners are

14
the same, a registration certificate for a later work is sufficient

to maintain an action for infringement of the pre-existing work).

15

B. Sculpture No. 646 is entitled to Copyright Protection

Next, the District Court concluded that Sculpture No.

646 lacked any protectible configuration or design. We

disagree.

“To qualify for copyright protection, a work must be

original to the author . . . mean[ing] only that the work was

independently created by the author (as opposed to copied

from other works), and that it possesses at least some minimal

degree of creativity.” Feist Publ’ns, Inc. v. Rural Tel. Serv.

Co., 499 U.S. 340, 345 (1991) (internal citations omitted). A

sculptural work’s creativity derives from the combination of

texture, color, size, and shape, as well as the particular verse

inscribed and the way the verse is presented. It means

nothing that these elements may not be individually entitled to

protection; “all creative works draw on the common

wellspring that is the public domain. In this pool are not only

elemental ‘raw materials,’ like colors, letters, descriptive

facts, and the catalogue of standard geometric forms, but also

earlier works of art that, due to the passage of time or for

other reasons, are no longer copyright protected.” Tufenkian

Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338

F.3d 127, 132 (2d Cir. 2003). When an author combines

these elements and adds his or her own imaginative spark,

creation occurs, and the author is entitled to protection for the
16

result. Feist Publ’ns, Inc., 499 U.S. at 345. This is true even

when the author contributes only a minimal amount of

creativity. Id. at 348 (factual compilations may be

copyrightable when the author “chooses which facts to

include, in what order to place them, and how to arrange the

collected data so that they may be used effectively by

readers.”); see also Reader’s Digest Ass’n, Inc. v.

Conservative Digest, Inc., 821 F.2d 800, 806 (D.C. Cir. 1987)

(although no element of magazine cover – ordinary lines,

typefaces, and colors – is entitled to coyright protection, the

distinctive arrangement is entitled to protection as a graphic

work). 

Here, Kay Berry claims that it selected an inspirational

poem from the public domain, adapted that poem to make it

visually and rhythmically appealing, and then cast it on its

own sculptural work. For these reasons, as well as those set

forth above, we conclude that this quantum of creativity is

sufficient to qualify for copyright protection. See Feist

Publ’ns., 499 U.S. at 348; Reader’s Digest Ass’n, 821 F.2d at

806.

C. Kay Berry’s Copyright Registration Does Not Extend

to an Idea

We next turn our attention to the second part of the

infringement inquiry – whether Appellees improperly copied

Sculpture No. 646, and specifically, whether the expression

Kay Berry seeks to protect has merged with an unprotectible

idea. Copying refers to the act of infringing any of the

exclusive rights that accrue to the owner of a valid copyright,
17

as set forth at 17 U.S.C. § 106, “including the rights to

distribute and reproduce copyrighted material.” Ford Motor

Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291 (3d Cir.

1991). It may be demonstrated by showing that the

defendant had access to the copyrighted work and that the

original and allegedly infringing works share substantial

similarities. Id.; see also Dam Things from Denmark v. Russ

Berrie & Co., 290 F.3d 548, 561 (3d Cir. 2002); Whelan

Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222,

1231-32 (3d Cir. 1986). 

“Substantial similarity,” in turn, is further broken down

into two considerations: “(1) whether the defendant copied

from the plaintiff’s work and (2) whether the copying, if

proven, went so far as to constitute an improper

appropriation.” Atari, Inc. v. North American Philips

Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir. 1982),

superceded in part by Fed. R. Civ. P. 52(a) (as amended

1985). “First, the fact-finder must decide whether there is

sufficient similarity between the two works in question to

conclude that the alleged infringer used the copyrighted work

in making his own.” Whelan Assocs., 797 F.2d at 1232. A

showing of substantial similarity in this sense, coupled with

evidence that the infringing author had access to the original

work, permits a fact-finder to infer that the infringing work is

not itself original, but rather is based on the original. At this

stage of the inquiry, expert testimony is permissible to help

reveal the similarities that a lay person might not ordinarily

perceive. Id. Direct evidence of copying or an admission by

the infringing author would satisfy this test as well. Dam

Things from Denmark, 290 F.3d at 562.
18

“Not all copying, however, is copyright infringement.” 

Feist Publ’ns, 499 U.S. at 361. Even if actual copying is

proven, “the fact-finder must decide without the aid of expert

testimony, but with the perspective of the ‘lay observer,’

whether the copying was ‘illicit,’ or ‘an unlawful

appropriation’ of the copyrighted work.” Whelan Assocs.,

797 F.2d at 1232. The focus in this second step is “whether

the substantial similarities relate to protectible material.” Dam

Things from Denmark, 290 F.3d at 562. “Phrased in an

alternative fashion, it must be shown that copying went so far

as to constitute improper appropriation, the test being the

response of the ordinary lay person.” Universal Athletic Sales

Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975) (citing

Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)). Part of this

inquiry involves distinguishing between the author’s

expression and the idea or theme that he or she seeks to

convey or explore.

It is a fundamental premise of copyright law that an

author can protect only the expression of an idea, but not the

idea itself. See 17 U.S.C. § 102(b); see also Baker v. Selden,

101 U.S. 99, 103-04 (1880); Franklin Mint Corp. v. Nat’l

Wildlife Art Exch., Inc., 575 F.2d 62, 64-65 (3d Cir. 1978). 

Thus, an author may base his work on the same inspiration as

that of an earlier work, but he may not “‘copy the copy.’” 

Franklin Mint, 575 F.2d at 65 (quoting Bleistein v. Donaldson

Lithographing Co., 188 U.S. 239, 249 (1903)). When

determining whether two works are substantially similar, a

fact-finder must determine whether the later work is similar

because it appropriates the unique expressions of the original

author, or merely because it contains elements that would be
19

expected when two works express the same idea or explore

the same theme. 

Nearly every work involves a blend of idea and

expression. Because an author can only demonstrate

substantial similarity by referencing those aspects of his work

that embody his creative contribution, he will have a more

difficult time proving infringement if his work contains only a

minimal amount of original expression. Universal Athletic

Sales, 511 F.2d at 908 (“[B]etween the extremes of conceded

creativity and independent efforts amounting to no more than

the trivial, the test of appropriation necessarily varies.”). As

one court has explained:

[A] copyright on a work which bears practically a

photographic likeness to the natural article . . . is likely

to prove a relatively weak copyright. This is not to say

that, as a matter of law, infringement of such a

copyright cannot be inferred from mere similarity of

appearance, but only that the plaintiff's burden will be

that much more difficult to sustain because of the

intrinsic similarities of the copyrighted and accused

works.

First Am. Artificial Flowers, Inc. v. Joseph Markovits, Inc.,

342 F. Supp. 178, 186 (S.D.N.Y. 1972). The First Circuit has

endorsed this view, explaining that when there is only a

limited number of ways to express an idea “the burden of

proof is heavy on the plaintiff who may have to show ‘near

identity’ between the works at issue.” Concrete Mach. Co. v.

Classic Lawn Ornaments, Inc., 843 F.2d 600, 606-07 (1st Cir.
20

1988) (citing Sid & Marty Krofft Television v. McDonald’s

Corp., 562 F.2d 1157, 1167 (9th Cir. 1977)).

In some instances, there may come a point when an

author’s expression becomes indistinguishable from the idea

he seeks to convey, such that the two merge. Educ. Testing

Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986). In these

circumstances, no protection is available for the expression;

otherwise, the copyright owner could effectively acquire a

monopoly on the underlying art or the idea itself. Id. Merger

is rare, however, and is generally found in works with a

utilitarian function, id. (citing Brown Instrument Co. v.

Warner, 161 F.2d 910 (D.C. Cir. 1947); M.M. Bus. Forms

Corp. v. Uarco, 472 F.2d 1137 (6th Cir. 1973)). This Court

has never found an instance in which a completely aesthetic

expression merged into an idea. For instance, in Masquerade

Novelty, Inc. v. Unique Indus., 912 F.2d 663, 666 (3d Cir.

1990), this Court dealt with a case in which the plaintiff sued

the defendant for infringing its copyright on humorous nose

masks designed to resemble the noses, snouts, and beaks of

different animals. Although the issue of substantial similarity

was not before the Court, we recognized that “copyrights

protect only expressions of ideas and not ideas themselves,”

and explained:

By holding that Masquerade’s nose masks are

copyrightable, we do not intimate that it has the

exclusive right to make nose masks representing pig,

elephant and parrot noses. On remand, it will be

Masquerade’s burden to show that Unique’s nose

masks incorporate copies, in the copyright law sense,
21

of Masquerade’s sculptures, rather than sculptures that

derive their similarity to Masquerade’s sculptures

merely from the commonality of the animal subjects

both represent. 

Masquerade Novelty, 912 F.2d at 671-72 (internal citation

omitted). 

Here, as in Masquerade Novelty, the protectible

originality of the allegedly infringed work is to be found, if at

all, solely in its appearance. Kay Berry claims that Appellees

infringed its copyright not by using the same public domain

poem, or inscribing a rock with text, but by copying the

specific combination of elements it employed to give

Sculpture No. 646 its unique look. Although the evidentiary

burden upon it is high, for the reasons we have discussed, we

conclude that Kay Berry is entitled to the opportunity to

demonstrate that the Memory Stone is neither a unique

creation, nor the unavoidable expression of a common idea,

but rather an impermissible copy of Sculpture No. 646. We

will therefore reverse and remand to the District Court.