Andrew LEICESTER, Plaintiff-Appellant, v. WARNER BROTHERS, a corporation; Warner Home Video, Inc., a corporation; Warner Bros. Consumer Products, a corporation; DC Comics, a corporation; Atlantic Recording Corporation, a corporation, and Does 1-20, Defendants-Appellees, 232 F.3d 1212

Opinion by Judge RYMER; Concurrence by Judge TASHIMA; Dissent by Judge FISHER. RYMER, Circuit Judge: In 1994, the 801 Tower in downtown Los Angeles and four towers that form its streetwall on the south side of the building became the Second Bank of Gotham in Batman Forever. Andrew Leicester, an artist known for large scale public art, claims copyright protection for these towers along with other artistic works he created in a courtyard space called the Zanja Madre. He registered the whole of Zanja Madre as a “sculptural work” and sued Warner Brothers for infringement.

Following a bench trial, the district court found that the streetwall towers (even though they have artistic elements) are part of the “architectural work.” As such, the court concluded, pictures taken of the streetwall towers along with the 801 Tower are not infringing pursuant to the exemption for pictorial representations of buildings in the Architectural Works Copyright Protection Act of 1990. 17 U.S.C. § 120(a).

Leicester argues that the court erred by refusing to consider the Zanja Madre as a unitary sculptural work, and by construing the 1990 Act so as to eliminate separate protection for sculptural works attached to buildings. We disagree that the court erred in either respect (or in any other), and affirm. I R & T Development Corporation (R &

T) purchased a plot of land at the southwest corner of Figueroa and Eighth Streets in Los Angeles from the Los Ange-les Community Redevelopment Agency (CRA) with plans to construct a 24-story office building. In 1988, R & T hired TAC International (TAC) to design the building, which was to be called the 801 Tower. John Hayes was the main architect for the project. The CRA required property owners either to make a “percent for art” expenditure or to pay CRA to construct public art in connection with the development.

R & T chose to provide its own artistic development, and commissioned Andrew Leicester in August 1989 to carry it out within a courtyard space on the south side of the building. The artistic development had to satisfy both the owners and the CRA. Because the 801 Tower would not occupy the entire lot, the CRA required a streetwall extending from the base of the Tower to the property line in order to recreate the feeling of traditional downtown streets in which buildings touch each other so as to create a continuous wall on both sides of the street.

The Agency also expected the building facade and entrance to the courtyard to share common artistic and architectural elements. Leicester and Hayes worked together to this end. Leicester developed three plans for the artistic elements, the first of which was rejected by the CRA; the second was rejected by R & T; and the third (for Zanja Madre as it now exists) was approved. After approval of the final design in 1991, Leicester and R & T executed a written contract acknowledging that Zanja Madre was a product of the collaborative design efforts of the artist and architect.

The artistic development consists of separate artistic works intended by Leicester to tell an allegorical story of the history of Los Angeles. In the courtyard proper, there is a fountain consisting of a rock split by an arrowhead from which water flows through a channel representing the “Mother Ditch,” or Zanja Madre, which brought water to Los Angeles in its early history. Also inside the perimeter of the courtyard are two sets of two towers representing the city — two building towers and two towers with drill bits on top.

The fountain area and garden, which has benches for public use, represents a mountainous area around Los Angeles that is a source of the city’s water. Five more towers and gates are aligned along the Figueroa Street side of the courtyard, forming a wall and the entrance to the courtyard and the 801 Tower. This is the “streetwall” portion of the artwork. Of the five towers comprising the street-wall, the two closest to the building (the “smoke towers”) are topped by a brass metalwork design illustrating smoke flattening out under an inversion layer.

The two tallest towers (the “lantern towers”) have a lantern topped with grillwork. The lanterns are at the same height and recall those affixed to the building; the tower bases likewise recall the pilasters of the building. The lantern towers are lit at night (like the lanterns on the building). The grillwork assembly consists of concentric rings that symbolize 1930s-era radio waves and modern telecommunications signals. Between the two lantern towers is a fifth, shorter tower which is capped by a vampire figure and to which the main gates are attached.

When closed, the gates represent a vampire bat derived from William Mulholland’s statement that Los Angeles is a “water vampire.” There is also a streetwall consisting of three additional smoke towers (identical to those on perimeter of the courtyard) that extends westerly from the building to the property line on Eighth Street. This streetwall is not part of Zanja Madre or of Leicester’s copyright claim.

In the 1991 contract between Leicester and R & T, Leicester gave R & T a “perpetual irrevocable license to make reproductions” of Zanja Madre “including but not limited to reproductions used in advertising, brochures, media, publicity, and catalogs or other similar publications.” Leicester also agreed that he would “not make any duplicate, three-dimensional reproductions” of the Zanja Madre or grant permission to others to do so. In July 1994, Warner Bros, obtained written permission from R & T to use the premises of the 801 Tower for filming Batman Forever.

Leicester and the architect were not consulted, nor was the Zanja Madre mentioned in the agreement although the parties understood that Warner Bros, would film the property line along Figueroa. The 801 Tower and the two lantern towers and two smoke towers in the streetwall appear briefly as background in a few scenes in the movie. The building is the Gotham City bank where nefarious deeds occur before Batman comes to the rescue. The balance of Zanja Madre — the vampire tower and the courtyard portion — do not appear in the film.

In addition, Warner Bros, built a miniature model of the 801 Tower that included a miniature of the Zanja Madre for a special effects shot, and the two lantern towers and two smoke towers along with the building were shown in the videotape taken from the movie as well as in some promotional items. Leicester registered the Zanja Madre for copyright as a sculptural work in 1995 and brought this suit against Warner Bros, for copyright infringement, unfair competition, and interference with prospective business relations.

The parties agreed to a bifurcated trial in which the court was first to decide in a non-jury phase whether § 120(

a) applies to Warner Bros.’s use of the Zanja Madre; whether the use was permissible under a valid license or otherwise; whether Leicester is the sole author of Zanja Madre or any portion used by Warner Bros.; and whether Leicester owns a copyright to the Zanja Madre, or any portion used by Warner Bros., and its scope. Remaining issues were to be tried in a second phase to a jury.

After trial on Phase I, including a site visit, the court found that R & T had an exclusive license to sublicense three-dimensional reproductions to Warner Bros, and did so, but that it did not have the right to sublicense Warner Bros, to make photographic or other pictorial copies of Zanja Madre.

However, the court found that the two lantern towers and the two smoke towers have functional aspects designed to be part of the building plan and from their appearance are designed to match up with the architecture of the building; it also found that the artistic work at the tops are incorporated into the tower structure and design, and are therefore an integrated part of the “architectural work.” Consequently, the court held that Warner Bros, did not infringe Leicester’s copyright because 17 U.S.C. § 120(

a) exempts pictorial representations of architectural works from copyright infringement.

It declined to construe the 1990 amendments as Leicester urged, to leave intact the previously authorized protection for sculptural works that were “conceptually separable” from the building of which they are a part, concluding instead that the intent of Congress was to substitute the new protection afforded architectural works for the previous protection sometimes provided under the conceptual separability test for non-utilitarian sculptures (such as gargoyles and stained glass windows) incorporated into a work of architecture. Accordingly, the court entered judgment for Warner Bros.

Leicester has timely appealed. II Much of the appeal turns on the standard of review. We have not previously decided how to review a district court’s determination that part of a work such as the Zanja Madre is part of a larger architectural work. However, we have held that the proper copyright classification of a work is a question of fact. See Poe v. Missing Persons, 745 F.2d 1238, 1242 (9th Cir.1984) (whether the work is a “swimsuit” or a “work of conceptual art” is a question of fact).

We have also indicated that whether copyrightable expression by two different authors have merged into a unitary whole is a question of fact, see S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir.1989), as is the question whether episodes of a television series should be considered “separate works” or parts of “one work.” See Columbia Pictures Television v. Krypton Broadcasting, 106 F.3d 284, 295 (9th Cir.1997), rev’d on other grounds, Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 118 S.Ct. 1279, 140 L.Ed.2d 438 (1998). In Carter v.

Helmsley-Spear, Inc., 71 F.3d 77 (2d Cir.1995), the court of appeals for the Second Circuit had to decide whether the trial court correctly found that a work of art is a single piece of art to be analyzed under the Visual Artists Rights Act of 1990 as a whole rather than separate works to be considered individually. In doing so, it held that this finding was a factual one to be reviewed under the clearly erroneous standard. See id. at 83.

It follows from Carter, which concerned a similar issue, as well as from our own precedent, that we should review for clear error the district court’s determination that the smoke and lantern towers comprising the streetwall are part of the design of the building. III Leicester argues that the Zanja Madre is a unitary sculptural work that the district court effectively mutilated by severing four of its eight towers and treating them as part of the building. He points out that any three-dimensional, non-utilitarian, original, creative work qualifies as a “sculptural work,” relying on Kamar Int’l, Inc. v.

Russ Berrie & Company, 657 F.2d 1059, 1061 (9th Cir.1981). The Zanja Madre is obviously three-dimensional, original and creative, and in his view, it is “non-utilitarian” because it is not humanly habitable, it is not a building, and it can’t become “functional” simply because it is physically or aesthetically oriented to the 801 Tower. In any event, Leicester contends, the towers are conceptually separate from the building and are protectable as a sculptural work after the 1990 Act as they were before. A Title 17 U.S.C. § 102(

a) defines eight categories of original works of authorship that are afforded copyright protection.

Section 102(a)(8) protects “architectural works” and § 102(a)(5) protects “pictorial, graphic, and sculptural works” (PGS works).

Classification of the Zanja Madre as an architectural work is critical because unlike PGS works, architectural works are afforded a more limited copyright protection: The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place. 17 U.S.C. § 120(a); see also R.M.S. Titanic, Inc. v. Haver, 171 F.3d 943, 970 n. 5 (4th Cir.1999).

Prior to 1990, the Copyright Act afforded no protection to architectural works. Buildings were considered to be “useful articles,” not protected by the Copyright Act. See Paul Goldstein, Copyright § 2.15.1, at 2:183 (1999) (“Structures built from architectural plans will often fail to qualify as pictorial, graphic, or sculptural works because their ‘intrinsic utilitarian function’ makes them ‘useful articles.’”). As defined by the Copyright Act, 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. An

article that is normally a part of a useful

article is considered a ‘useful article.’ ” 17 U.S.C. § 101. Clear examples of useful articles include automobiles, food processors, and television sets. See Gay Toys, Inc. v. Buddy L. Corp., 703 F.2d 970, 973 (6th Cir.1983). Although buildings were not protected prior to 1990, an architect’s plans and drawings were protected as a PGS work.

Title 17 U.S.C. § 101 defines PGS works as follows: “Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. 17 U.S.C. § 101. On March 1, 1989, the United States joined the Berne Convention for the Protection of Literary and Artistic Works.

To comply with this treaty obligation, Congress passed the Architectural Works Copyright Protection Act of 1990 (AWC-PA), establishing a new category of copyright protection for works of architecture. See H.R. Rep. 101-735, at 4-10. As defined in 17 U.S.C. § 101, an “architectural work” is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features. 17 U.S.C. § 101.

Congress did not afford architectural works full copyright protection; rather, it exempted the making of pictorial representations of architectural works from copyright infringement. The House Report notes that “[architecture plays a central role in our daily lives, not only as a form of shelter or as an investment, but also as a work of art. It is an art form that performs a very public, social purpose.” H.R. Report 101-735, at 12. The Report explains the reason for exempting pictorial representations of architectural works from copyright infringement: Architecture is a public art form and is enjoyed as such.

Millions of people visit our cities every year and take back home photographs, posters, and other pictorial representations of prominent works of architecture as a memory of their trip. Additionally, numerous scholarly books on architecture are based on the ability to use photographs of architectural works. These uses do not interfere with the normal exploitation of architectural works.

Given the important public purpose served by these uses and the lack of harm to the copyright owner’s market, the Committee chose to provide an exemption, rather than rely on the doctrine of fair use, which requires ad hoc determinations. H.R. Rep. 101-735, at 22. B Against this backdrop, the district court found that the lantern towers and the smoke towers, including the decorative elements at the top, are part of the 801 Tower as a whole. As it explained, each tower appears to be an integrated concept which includes both architectural and artistic portions.

The court rejected Leicester’s assumption that the decorative portion should be looked at alone as conceptually separate, artistic embellishments of the whole; rather, it found, the artistic and architectural impression is one created by the towers as a whole, complementing the pilasters and continuing the theme of the third floor lanterns of the building. Thus, it concluded, the four towers are part of the design plan of the building. These findings are well supported in the record. The four towers form a streetwall that extends the building to the property line.

The streetwall was not a creative aspect of Leicester’s work; it was an architectural element mandated by the CRA, which required a structure with sufficient mass to establish the street edge and be no higher than three stories. Thus, the streetwall’s two highest columns (the lantern towers) are limited to three stories.

Professor Louis Naidorf, Dean of the Woodbury University School of Architecture and Design, testified that streetwalls are traditionally considered as architectural features: “Particularly in modern urban design, streetwalls are one of the basics of the architectural vocabulary, along with columns, windows, and doors.” The streetwall matches the building and gives the impression that the building continues to the end of the property line.

The streetwall towers are designed to appear as part of the building; indeed, the court found based on considerable evidence that Hayes was a joint author with Leicester of the lantern and smoke towers. The bases of the towers are identical to those of the building pilasters for the first three floors, constructed with the same pink granite and green marble. The lanterns on the lantern towers match the lanterns attached to the building at its third floor level; they are made of the same material and are at the same height as those on the building.

The streetwall towers are positioned to match the distance between any two pilasters of the building. Additionally, there is a streetwall consisting of three smoke towers on the opposite corner of the building on Eighth Street, placed the same distance apart as the pilasters. These towers are identical to the two streetwall smoke towers closest to the building on Figueroa. Leicester concedes that the Eighth Street towers are not part of the Zanja Madre.

As Professor Naidorf observed, the lantern towers and smoke towers that form the Figueroa streetwall as well as the smoke towers on the Eighth Street side of the building serve “the architectural and urban design purpose of defining the street frontage and enhancing the pedestrian level of the complex.” In addition, the Zanja Madre streetwall serves the functional purpose of channeling traffic into the courtyard, as metal gates, which open and close for control, latch onto the lantern towers.

Nevertheless, Leicester argues that the court erred when it concluded that because the towers were placed in alignment with the building to give a visual effect of a wall, used the same marble to give the impression that the building continued until the end of the property line, and had identically appearing base features and visually matching design features on the building, that the towers are therefore part of the building plan because those features at most contribute to the visual effect of the Zanja Madre.

Leicester contends that visual effects cannot impart usefulness to the four towers, thereby making the Zanja Madre a “building.” He points out that these visual effects are not “intrinsic” to the towers nor do they render the towers intrinsically inhabitable as a “building.” For this reason, he submits, the court erred in relying on these features. We disagree that these points matter, however, given the district court’s finding that the smoke and lantern towers are part of the architectural work and the building plan.

In the relevant sense, “building” includes structures “that are used, but not inhabited by human beings,” H.R. Rep. 101-735, at 20, and § 101’s protection of an “architectural work” extends to the “overall form as well as the arrangement and composition of spaces and elements in the design” of a building. The 801 Tower’s streetwall seems plainly covered as an “arrangement and composition of spaces and elements” in the building’s design.

Leicester also submits that the district court erred by finding that the four columns functioned to direct and control traffic into a courtyard adjacent to the 801 Tower, but we don’t see how as they clearly support the gates that control access both to the courtyard and to the building. While Leicester correctly points out that the aesthetic features of the smoke and lantern towers do not contribute to the access control function, we are not convinced that for this reason alone the district court incorrectly found that the towers should be considered as a unit and as part of the 801 Tower as a whole.

Leicester further maintains that the streetwall towers are a sculptural work which is “conceptually separate” from the building and thus independently entitled to copyright protection. Again, the district court found otherwise and we cannot say its finding lacks support. The street-wall towers were designed to extend the building visually, which they do along both Figueroa and Eighth. The Eighth Street smoke towers are equally integrated and serve the same purpose on Eighth as the Figueroa Street smoke towers do on Figueroa.

This is powerful evidence that they (together with the additional two lantern towers on Figueroa) are part of the functional and architectural vocabulary of the building. C Because the streetwall towers are part of the architectural work, § 120(

a) applies. It allows the public the right to photograph public buildings including, in this case, the streetwall smoke and lantern towers unless, as Leicester contends, the 1990 amendments specifically provide for the continued separate protection of sculptural works attached to buildings. Leicester’s position is that the Berne Convention did not require taking away copyright protection for PGS works, and Congress did not do so when it passed the AWPCA implementing the Convention.

He relies in particular upon passages in the legislative history indicating that certain works of authorship which may separately qualify for protection as PGS works may be permanently embodied in architectural works, and that in such cases the author (if the same for both works) may elect whether to seek a remedy under § 102(a)(5) or 102(a)(8). See, e.g., H.R. Rep. 101-735, at 19 n. 41; H.R. Rep. 101-735, at 19.

Whether or not Leicester may have some other claim for a different infringement of his copyright in the Zanja Madre towers as a sculptural work, we believe he has none for a pictorial representation of the 801 Tower and its streetwall embodying a protected architectural work. Otherwise, § 120(a)’s exemption for pictorial representations of buildings would make no sense. When copyright owners in ar-ehitectural works were given protection for the first time in 1990, the right was limited by § 120(

a) so that publicly visible buildings could freely be photographed. See H.R. Rep. 101-735, at 11-12, 21-22. This reflected a shift from the prior regime of relying on “ad hoc determinations” of fair use. Id. at 21-22. Having done this, it would be counterintuitive to suppose that Congress meant to restrict pictorial copying to some, but not all of, a unitary architectural work. Accordingly, we agree with the district court that § 120(

a) applies. IV We can resolve Leicester’s remaining contentions summarily. First, he argues that the district court exceeded its authority by deciding three issues reserved by the parties for the jury trial phase, but we disagree. Whether R & T gave Warner Bros, a sublicense to make three-dimensional works is clearly encompassed by the Phase I issue of whether any of Warner Bros.’s uses of the Zanja Madre are permissible under a valid license or sublicense or otherwise. The issue of whether Warner Bros’s use of the Zanja Madre was an infringement is implicated by the district court’s answer to the question whether § 120(

a) applies to any of the uses of the Zanja Madre. Further, Leicester argues that the court improperly jumped the gun and merely assumed that the Batman film constituted a “pictorial representation” of the Zanja Madre. However, this issue must be considered in determining the applicability of § 120(

a) to Warner Bros.’s uses of the Zanja Madre. Therefore, the district court did not overstep its bounds. Finally, Leicester argues that the district court erred in ruling that Warner Bros, acquired a license from R & T to make a three-dimensional miniature model of the Zanja Madre. R & T’s ability to sublicense turns on whether R & T had an exclusive right to make Zanja Madre miniatures. See Harris v. Emus Records Corp., 734 F.2d 1329, 1333 (9th Cir.1984).

The contract provides: In view of the intention that the WORK in its final dimension shall be unique, the ARTIST shall not make any duplicate, three-dimensional reproductions of the final WORK, nor shall the ARTIST grant permission to others to do so.

The ARTIST grants to the OWNER, to the OWNER’S related corporate entities, and to the OWNER’S assigns a perpetual irrevocable license to make reproductions of the WORK including but not limited to reproductions used in advertising, brochures, media publicity, and catalogs or other similar publications, provided that these reproductions are made in a tasteful and professional manner. Leicester claims that R & T did not have an exclusive right to make Zanja Madre miniatures because the contract only prohibited Leicester from making identical duplicates of the Zanja Madre.

Although the words “duplicate, three-dimensional reproductions” can conceivably mean identical duplicate sculptures the same size and scale as the original, it would be unreasonable to interpret the term as so narrowly limited. Otherwise, the license would be meaningless, for Leicester could make an exact replica of the Zanja Madre 99% of its size. The purpose of the provision is to ensure that the Zanja Madre remains “unique,” and the contract provides no exception for smaller reproductions. Thus, the contract must be read to prohibit all three-dimensional reproductions.

Accordingly, the district court correctly construed the contract as conferring on R & T an exclusive right to make three-dimensional representations of the Zanja Madre of all sizes; therefore, R & T could sublicense that right to Warner Brothers. AFFIRMED. . The court thus held that the special effects miniature of the Zanja Madre was duly licensed. . The court further found that the streetwall portion of the Zanja Madre was jointly created by Hayes and Leicester, but this finding has no effect on this appeal. .

Courts have traditionally accorded copyright protection to PGS works that are embodied or incorporated within a useful

article (i.e. a carving on the back of a chair or an engraving in a glass vase). See William F. Patry, 1 Copyright Law and Practice 274-76 (1994).

PGS works shall include works artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. 17 U.S.C. § 101.

Thus, only PGS works that "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article” qualify for copyright protection. This is what is known as "separability.” Courts have recognized two types of separability: physical separability, and conceptual separability. Physi-eal separability means that a "pictorial, graphic or sculptural feature incorporated into the design of a useful

article ... can be physically separated from the

article without impairing the article’s utility and if, once separated, it can stand alone as a work of art traditionally conceived.” Goldstein, § 2.5.3, at 2:64. Conceptual separability means that a pictorial, graphic or sculptural feature "can stand on its own as a work of art traditionally conceived, and ... the useful

article in which it is embodied would be equally useful without it.” Id. at 2:67. . Footnote 41 of the Report states: "The subcommittee was aware that certain works of authorship which may separately qualify for protection as pictorial, graphic, or sculptural works, may be permanently embedded in architectural works. Stained glass windows are one such example. Election is inappropriate in any case where the copyright owner of a pictorial, graphic, or sculptural work embodied in an architectural work is different from the copyright owner of the architectural work.”