## Facts

- Esquire, Inc. designed contemporary stationary outdoor luminaires (“Elliptra” fixtures) featuring rounded or elliptical housings and applied to register the designs as “works of art” under the 1909 Copyright Act.
- The applications described the subject matter as “artistic design(s) for lighting fixture(s)” and claimed copyright in the fixtures’ overall configuration.
- The Register of Copyrights refused registration under 37 C.F.R. § 202.10(c), which denies registration for the design of a utilitarian article when all design elements are directly related to the article’s useful functions.
- The Register determined the fixtures lacked any design elements capable of independent existence as a pictorial, graphic, or sculptural work apart from the fixtures’ utilitarian aspects.
- After two unsuccessful requests for reconsideration, Esquire sued in federal district court seeking mandamus to compel registration.
- The district court ordered the Register to issue registrations; the Register appealed.

## Issues

1. Whether the overall shape or configuration of utilitarian outdoor lighting fixtures is eligible for copyright registration as a “work of art” under the 1909 Act.
2. Whether the Register reasonably applied 37 C.F.R. § 202.10(c) to deny registration on the ground that the fixtures’ design elements were not separable from their utilitarian function.
3. Whether mandamus could issue to compel registration where the Register’s refusal was based on a lawful, non-abusive exercise of discretion.

## Decision

- The D.C. Circuit reversed the district court and denied mandamus.
- The court held the Register properly refused registration because the fixtures’ overall configuration constituted the design of a utilitarian article with no separable copyrightable features.
- The court accepted the regulation’s exclusion of designs whose elements are all directly related to useful function as a reasonable implementation of the statutory line between copyright and patent.
- The court rejected the view that aesthetic appeal or “modern art” character alone makes a utilitarian object’s overall shape copyrightable.
- A concurrence agreed the result and cautioned against extending copyright into industrial design absent separable artistic features.

## Legal Principles

- Under the 1909 Act, copyright in “works of art” does not extend to the utilitarian aspects of useful articles.
- A useful article is copyright-protectable only to the extent it contains artistic features that are physically or conceptually separable from utilitarian function.
- The Copyright Office may deny registration for a utilitarian article’s design when all design elements are directly related to the article’s useful functions, consistent with the copyright–patent distinction.
- In an action for mandamus to compel registration, judicial review is limited; relief is unavailable absent a clear legal duty or an unlawful or abusive refusal by the Register.

## Conclusion

The court held that Esquire’s lighting fixtures, as utilitarian articles, were not eligible for copyright protection for their overall configuration because no separable artistic features existed apart from the fixtures’ functional design, and the Register’s refusal to register was lawful and not subject to mandamus.


Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978)