Statement of Marybeth Peters
The Register of Copyrights
before the
Subcommittee on Courts and Intellectual Property
Committee on the Judiciary

United States House of Representatives
105^th Congress, 1^st Session

October 23, 1997

Vessel Hull Design Protection Act of 1997 (H.R. 2696)

Mr. Chairman, members of the Subcommittee, thank you for the opportunity to testify today on this proposed legislation. H.R. 2696, the “Vessel Hull Design Protection Act of 1997,” would add a new chapter to title 17, creating a sui generis intellectual property right in the original designs of boat hulls.

On a number of occasions in the past, the U.S. Copyright Office has testified before Congress in support of design protection legislation. It is a long-held view of the Office that a gap exists in legal protection for the designs of useful articles. Existing bodies of federal intellectual property law do not provide appropriate and practical coverage for such designs, while state law is largely preempted in this area. Consequently, while considerable investment and creativity may go into the creation of innovative designs, they often can be copied with impunity.

Unlike earlier bills we have supported, H.R. 2696 is not a general design protection bill. It covers only a single category of useful articles: vessel hulls and component parts thereof. However, it utilizes a basic framework that has been proposed in the past for general design protection legislation. The bill is based largely on H.R. 1790, which was introduced by Congressman Gephardt in the 102d Congress, and was itself based on earlier proposals by Congressman Gephardt and Congressman Moorhead in the 101st Congress.

While the Copyright Office at present takes no position regarding the need for a federal statute specifically to protect the narrower category of designs of boat hulls, we support the overall framework of this bill, and believe it appropriately accomplishes the goal of protecting innovative hull designs from duplication.

We do, however, have some concerns related to the subject matter of the bill, primarily administrative in nature. The bill would place significant new responsibilities on the Copyright Office, requiring us to establish an administrative structure for examination, registration and publication of designs, adjudication of certain disputes, and maintenance of a public record. We are still studying the impact of these administrative provisions on the Office, and will submit detailed comments to the Subcommittee on a later date.

Background

Prior Congressional Consideration

The issue of federal legislation to protect industrial designs is not new in the United States. Congress has taken up the matter on repeated occasions since 1914. Design protection bills passed the House in the 71st Congress,¹ and the Senate in the 87th, 88th and 89th Congresses.²

In the 91st through 94th Congresses, design protection was coupled with the copyright general revision bill then pending in the Senate. The version of the copyright revision bill passed by the Senate in 1975 included a separate title on design protection.³ The House Subcommittee, however, concluded that design protection should be considered separately from copyright revision. The copyright revision bill was enacted without a design protection component in October 1976, and became effective on January 1, 1978.

Design protection bills were introduced in each Congress from the 96th through the 102d. Extensive hearings were held by the Subcommittee in 1990 and 1992.⁴ There has been no further action in Congress on the general design protection issue since the 1992 hearing.

The issue of protection for the narrower category of boat hull designs is of more recent vintage. The first bills in Congress specifically to protect vessel hull designs from unauthorized duplication were introduced in both the House and Senate just one year ago this week.⁵ The Copyright Office comment on these bills. We have done no independent analysis of the need for legislation on this specific category of subject matter, and neither proponents nor opponents of such legislation have contacted the Copyright Office in this regard.

Protection Available under Existing Law

All of these proposals have sprung from a perceived lack of adequate protection at the federal level for the designs of useful articles. All three branches of federal intellectual property protection — copyright, patent and trademark — protect certain aspects of useful articles. In the aggregate, however, they do not provide adequate coverage⁶ for the following reasons:

First, copyright protection for the designs of useful articles is extremely limited. The design of a useful article⁷ is protected under copyright “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.⁸ According to the House report accompanying the copyright revision bill, the test for separability can be met by showing either physical or conceptual separability.⁹ The purpose of the test is “to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design.¹⁰ In keeping with this congressional intent, courts have applied the separability test in a way that excludes most industrial designs from copyright protection.¹¹ The Copyright Office has been similarly restrictive in its registration practices.¹²

Second, design patents are difficult and expensive to obtain, and entail a lengthy examination process. An applicant for a design patent must meet the generally applicable standards of invention¹³ — e.g., novelty and non-obviousness.¹⁴ Many original designs that provide a distinguishable and appealing variation over prior designs for similar articles will fail to meet these standards. Even under the reduced fee schedule for small entities, the filing fee for a design patent is $165, the issue fee is $225, and the maintenance fees over the life of the patent are $3,155. This does not include attorneys’ fees for prosecuting the application. It is our understanding that the process of applying for a design patent can take several years, which exceeds the life expectancy of the market for many designs.

Third, trademark law does not provide general protection for designs as such. Rather, it protects certain product configurations that serve to identify the source of the product.¹⁵ Aspects of product design that do not serve to identify source are not protected.16) Even to the extent that a product configuration qualifies for protection under trademark law, the protection is only against uses of the design that confuse or mislead consumers, or create a substantial likelihood of such confusion.¹⁷

Fourth, supplementary protection is not available at the state level. Boat hull design serves to illustrate the point: In order to curb a practice known as “plug molding,” whereby an impression of a boat hull is taken and used to reproduce the hull design, some states enacted anti- plug molding statutes. In 1989 the Supreme Court held that Florida’s anti-plug molding statute was invalid under the doctrine of federal preemption.¹⁸The Court reasoned that Congress’ decision to leave the subject matter in the public domain under federal intellectual property law precluded states from enacting such a prohibition.¹⁹

Observations

The Copyright Office has several general observations about the bill and the contrast between copyright protection and the new form of protection the bill would create. We follow with more detailed observations on the scope of subject matter under the bill, formalities for obtaining protection, the knowledge requirement in the provisions defining infringement, the relation between copyright and design protection, and the administrative provisions of the bill.

General

H.R. 2696 would create a new intellectual property right in the designs of vessel hulls. It would protect hull designs, whether or not they meet the separability standard for copyright protection. Protection is secured through registration of the design with the Copyright Office within one year of making the design available to the public. Any vessel hull design that is original and attractive or distinctive in appearance can be registered within the designated time period, without regard to national origin.²⁰ Protection commences upon publication of the registration, and lasts for ten years.²¹

Protection under the bill is narrower in scope than copyright protection. The bill protects against making or importing for sale or use in trade, and against sale or distribution for sale or use in trade, of any vessel hull embodying a protected design. The design may be reproduced in other media, as in print advertising, and may be displayed without liability. The protection is qualified by exclusions for sellers and distributors who act without knowledge and for reproduction for teaching or analysis. In addition, there are other fairly broad general exclusions for acts without knowledge.

Scope of Subject Matter

Spare Parts

During prior Congressional consideration of design protection, controversy focused on the extension of protection to the design of spare parts, including automobile crash parts and, potentially, machine parts. The automobile insurance industry and consumer groups warned of the potential impact of protection on the price to consumers of replacement parts for automobiles and other machinery. Those issues are not implicated by this bill, since its coverage is limited to boat hulls.

Ornamentality

H.R. 2696 is not limited to ornamental designs, but covers any “original design of a vessel hull which makes the vessel attractive or distinctive in appearance . . . .” The Copyright Office supports this approach.²² We do not believe that limiting the subject matter of the current bill to ornamental designs would be necessary or appropriate. In the present context of protection for boat hulls, limiting protection to purely ornamental designs would so severely limit the coverage of the bill as to be self-defeating. Vessel hulls are not in themselves ornamental. It is our understanding that it is the overall design of the hull itself, not separate ornamental features that may appear in connection with the hull, for which protection is sought.²³

Moreover, in surveying the field of design protection generally, we do not see a principled reason to refuse protection for non-ornamental designs that are both attractive or distinctive in appearance and nonfunctional. The critical distinction is functionality versus nonfunctionality.²⁴ Functional elements of industrial designs are properly the province of utility patents and should not be protected by design legislation. The low threshold for protection under the bill would not serve as an appropriate basis for removing functional aspects of boat hull designs from the public domain. To this end, section 1202(4) denies protection to a design that is “dictated solely by a utilitarian function of the article that embodies it.”

We are concerned, however, that section 1202(4) as currently phrased may not be a sufficient bulwark against protection of functional elements of a design. Since the provision denies protection to designs that are dictated solely by function, designs that are dictated partly or even predominantly by function are protectible. Unless it is made clear that protection for such designs extends only to nonfunctional elements, there is a risk that functional aspects of designs will be subject to protection under the bill.

Formalities for Obtaining Protection

The bill requires both notice and registration for obtaining protection. Although the Berne Convention forbids conditioning the exercise and enjoyment of copyright rights on formalities, the United States is under no such constraint with respect to sui generis design protection.²⁵ Because the both notice and registration will serve to inform designers as to which designs are protected and may not be copied, and because a registration system will assist in compiling a valuable public record of innovative designs, the Copyright Office supports these provisions.

Notice Requirement

A design notice must be placed on any protected design,²⁶ or design for which protection is sought, that is made public. Three elements comprise the design notice: (1) the words “Protected Design”, the abbreviation “Prot’d Des.”, or the symbols “D” in a circle or “*D*,” (2) the year protection begins, and (3) the owner’s name or recognizable abbreviation, a generally- accepted alternative designation, or any distinctive identification of the owner that is approved and recorded in advance by the Register of Copyrights.²⁷ The notice must be located so as to give reasonable notice of design protection while the vessel hull embodying the design is passing through normal channels of commerce. Omission of the notice does not cause loss of protection, but does prevent recovery against certain infringers.²⁸

The Copyright Office supports the notice provisions, but has some concerns about its projected role in approving and recording distinctive identifications of design owners for use in design notices. Section 1206 may create an overlap with the federal system for administering trademarks which could, potentially, lead to conflicting determinations of distinctiveness by the Copyright Office and the Patent and Trademark Office and place the Copyright Office in the middle of trademark disputes between private parties.²⁹

Standard for Protectibility and Registrability

Section 1201(a)(1) establishes a two-pronged standard for protectibility under the Act: originality and appearance. Only designs that are original and attractive or distinctive in appearance are protected.

An original design is one that “is the result of the designer’s creative endeavor that provides a distinguishable variation over prior work pertaining to similar articles which is more than merely trivial and has not been copied from another source.³⁰ Both the requirement of originality and its particular definition in the bill are drawn from copyright law. Originality is a threshold requirement for copyright protection.³¹ Thus, although the bill would create a sui generis form of protection, courts and the Copyright Office would be able to draw upon a substantial body of copyright case law as a starting point in applying the bill’s originality standard.

By contrast, the appearance prong of the standard for protection has no clear antecedent in copyright law. “Attractiveness” — or aesthetic merit generally — is not required for copyright protection.³² “Distinctiveness” is not a copyright concept, although it is a familiar term in trademark law: arbitrary or fanciful marks are said to be “inherently distinctive” and may be registered without proof that they have acquired secondary meaning in the minds of consumers.³³ This trademark law usage of the term “distinctive” may not be particularly helpful or even relevant when applied to boat hull designs. Consequently, courts and the Copyright Office will be required to develop appropriate benchmarks for attractiveness and distinctiveness in applying the appearance prong of the standard for protection.

Section 1213(a) directs the Register of Copyrights to determine whether or not an application for registration “relates to a design which on its face appears to be subject to protection,” and, if so, to register the design. It is not clear whether, in applying the protectibility standard, the Register is obliged to compare the design with registered and other known designs. We believe that such an examination process would be contrary to the spirit of the bill. Requiring a search of prior art could result in delays and expenses of a similar magnitude to those experienced under the design patent system. Even requiring a search of previously registered designs (similar to the search of registered trademarks conducted in connection with a trademark application) would significantly increase the cost of examining applications and could result in delays similar to those experienced by trademark applicants. In either case, comparison with existing designs would impede the bill’s purpose of providing relatively quick and inexpensive protection to vessel hull designers. Nor would it advance the bill’s purpose of providing a public record of protected designs. Consequently, we recommend clarification in the legislative history that no such comparison is required in examining applications for protection under the bill.

Knowledge Requirement for Infringement

Section 1209(c) broadly excludes infringing acts taken without knowledge. It states that “[i]t shall not be an infringement . . . to make, have made, import, sell, or distribute, any vessel hull embodying a design which was created without knowledge that a design was protected under this chapter and was copied from such protected design.” The provision does not state expressly whether constructive knowledge will defeat the exception, and, if so, whether registration of the design acts as constructive notice.

Making actual knowledge an element that must be proven in every infringement case would create an incentive to ignore facts indicating that the design is protected. Such a perverse incentive can be avoided by clarifying that the knowledge requirement is satisfied by actual or constructive knowledge. Registration of a design should suffice to establish this level of knowledge. A design notice that conforms to the requirements of section 1206 should also suffice to establish this level of knowledge, or at least raise a presumption of actual knowledge.

Relation to Copyright Protection

It appears that section 1229 would require designers to make an election between protection under the bill and protection under design patent and/or copyright. With respect to any election between design protection and design patents, we defer to our colleagues from the Patent and Trademark Office. With respect to copyright protection we have two concerns.

The first concern is conceptual. The Copyright Office opposes election of remedies in this context just as we have opposed it in the context of an election between protection under copyright and design patent law.³⁴ We do not believe that the existence or enforcement of protection under the Copyright Act should bear upon the existence or enforcement of protection under design legislation. The standards for obtaining the two forms of protection differ, as do the scope and duration of protection. But the two forms of protection are intended to provide incentives for creating valuable subject matter. Forcing an election does not further that goal and, to the extent that protection under one or another regime may be uncertain, could undermine that goal by forcing designers to gamble on one form of protection or the other. Provided that the two regimes do not permit a double recovery for a single infringement, there is no harm that we can discern in allowing designers to seek protection and redress under either or both systems.³⁵

Our other concern is more technical. The Copyright Office does not believe that there is a workable way of forcing an election between copyright and design protection, since copyright protection is automatic: the moment a work is fixed in a tangible medium of expression it is protected under the Copyright Act.³⁶ The bill seems to acknowledge this by forcing an election between copyright registration and design protection. Section 1229 states that obtaining a copyright registration voids protection under the bill. A copyright registration, however, does not confer copyright protection.³⁷ The provision, therefore, does not effectively require a choice between the two forms of protection.

It does, however, require a choice between design protection and judicial enforcement of a copyright — but only for authors from the U.S. and a small number of foreign countries. Under section 411 of the Copyright Act, U.S. authors, and authors from foreign countries that are not members of either the Berne Union or the World Trade Organization, cannot bring suit for copyright infringement without first registering their works.³⁸ Authors from Berne or WTO countries, however, are not required to register their works prior to suit, and would thus be free to enforce their copyrights without foregoing protection under the design bill.

This provision would have at least three undesirable consequences. First, it would discriminate against U.S. designers. While all designers would be able to enjoy both forms of protection at the outset, only U.S. designers would be forced to make an election once they seek to pursue an infringer. Second, it would force designers to gamble on the existence of copyright protection in elements of designs. Since the only way to know with certainty that any element of a design is protected by copyright is to obtain a judicial determination, an election between design protection and copyright registration forces designers to abandon the design right at a time when they cannot be certain that they have any copyright protection. Third, it would deter copyright registration of designs. By retaining the registration system when the present Copyright Act was enacted in 1976, and when it was revised in 1988 in connection with our adherence to the Berne Convention, Congress has reaffirmed the value of the registration system to the public.³⁹ Part of the value of this system is its comprehensiveness. This provision would undermine that system by penalizing designers for registering their works. Even registrations under the design bill would not substitute adequately for a comprehensive database of copyright registrations.

For all of these reasons, the Copyright Office recommends deletion of any reference to copyright or copyright registration from section 1229.

Administrative Provisions

Section 1231 designates the Register of Copyrights as “Administrator” of the design protection system and the Copyright Office as the “Office of the Administrator.” We would be pleased to serve this function, assuming that the technical and financial aspects can be resolved satisfactorily.

The bill would give the Copyright Office significant new responsibilities. It requires the Copyright Office to establish a new administrative structure to (a) receive and examine applications for registration of designs and issue registrations, (b) publish registered designs, (c) handle appeals from denials of design registration, (d) adjudicate disputes between owners of registered designs and parties seeking cancellation of the registration, and (e) maintain a public record of registrations and drawings or other pictorial representations of registered designs. In addition, the Copyright Office is given the responsibility for issuing regulations, including regulations setting reasonable fees for the services provided under the bill. Some of these responsibilities are extensions of activities already performed by the Copyright Office in administering the copyright registration system. However, some functions, such as publication of registrations and adjudication of cancellation proceedings, are entirely new.

Our study of these matters is still at a preliminary stage. The most pressing issue we have identified so far is the question of cost. The uncertainty as to the number of registrations for boat hull designs that are likely to be filed makes it difficult to gauge the degree to which there will be sufficient revenue from user fees to cover the additional cost of putting in place the new administrative structure contemplated in the bill.

To some extent, the administrative cost of the bill can be reduced through the use of technology. For example, the Administrator could be given clear discretion to publish registrations exclusively online, saving the cost of producing a hard-copy publication. In addition, we are reviewing the bill to determine whether any changes are required to permit us to accept and process applications electronically through the Copyright Office Electronic Registration, Recordation & Deposit System (CORDS) that we are currently developing. We will be submitting detailed comments to the Subcommittee, and look forward to working with you on these matters.

Recommendations

1. Scope of Protection for Registered Designs. To address the concern identified above regarding the scope of protection for registrable designs that contain functional aspects, we recommend adding a new subsection (b) to section 1202 that states: “In no case does protection under this chapter extend to any element of a design that is dictated solely by a utilitarian function of the article that embodies it, or 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 design.”

2. Election Between Copyright and Design Protection. As discussed above, we recommend the deletion of any reference to copyright or copyright registration in section 1229.

3. Examination Procedure. As discussed above, we recommend clarifying in the legislative history that in examining applications for registration, the Register is not expected to conduct an examination of other known designs to determine whether the design is original, and attractive or distinctive in appearance.

4. Knowledge Standard for Infringement. The Copyright Office recommends that it be clarified that the knowledge requirement for infringement can be satisfied by actual or constructive knowledge. Registration of a design should suffice to establish this level of knowledge. A design notice that conforms to the requirements of section 1206 should also suffice to establish this level of knowledge, or at least raise a presumption of actual knowledge.

5. Administrative Provisions Generally. We will submit further recommendations to the Subcommittee regarding the administration of the design protection system by the Copyright Office as contemplated in the bill.

Conclusion

The Copyright Office supports the bill, subject to the suggestions and comments set forth in this statement. We will continue to examine the administrative provisions of the bill in particular, and look forward to working closely with the Subcommittee.

¹H.R. 11852, 71st Cong., 2d Sess. (1930).

²S. 1884, 87th Cong., 2d Sess. (1962); S. 776, 88th Cong., 1st Sess. (1963); S. 1237, 89th Cong., 1st Sess. (1965).

³S. 22, 94th Cong., 1st Sess. (1975); S. Rep. No. 94-473, 94th Cong., 1st Sess. (1975).

⁴A more detailed account of the history of design protection legislation can be found in the written statement of Ralph Oman, then-Register of Copyrights, submitted to this Subcommittee on September 27, 1990. Industrial Design Protection: Hearings Before the Subcomm. on Courts, Intellectual Property, and the Administration of Justice of the House Comm. on the Judiciary, 101st Cong., 2d Sess., on H.R. 902, H.R. 3017 and H.R. 3499, at 436 (Ser. No. 101-138) (Comm. Print 1991) (hereinafter “Copyright Office 1990 Testimony”).

⁵H.R. 4159, 104th Cong., 2d Sess. (1996); S. 2103, 104th Cong., 2d Sess. (1996).

⁶See Ralph S. Brown, Design Protection: An Overview, 34 UCLA L. Rev. 1341, 1341-44 (1987).

⁷The Copyright Act defines “useful article” as “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 part of a useful article is considered a ?useful article’.” 17 U.S.C. § 101 (definition of “useful article”).

⁸” 17 U.S.C. § 101 (definition of “pictorial, graphic, and sculptural works”).

⁹H.R. Rep. No. 1476, 94th Cong., 2d Sess. 55 (1976).

¹⁰” Id.

¹¹See, Brandir Int’l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987); Norris Indus. v. International Tel. and Tel. Corp., 696 F.2d 918 (11th Cir. 1983).

¹²In order to register a copyright claim in the design of a useful article, the Copyright Office requires pictorial, graphic or sculptural features that are either physically separable or “while physically inseparable by ordinary means from the utilitarian item, are nevertheless clearly recognizable as a pictorial, graphic or sculptural work which can be visualized on paper, for example, or as a free-standing sculpture, as another example, independent of the shape of the useful article . . . .” Compendium II of Copyright Office Practices § 505.03 (1984).

¹³35 U.S.C. § 171.

¹⁴35 U.S.C. §§ 102, 103.

¹⁵1 J. Thomas McCarthy, Trademarks and Unfair Competition 229-35 (1973) (hereinafter “McCarthy”).

¹⁶Id. at 232.

¹⁷Id. at 233-35.

¹⁸Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989).

¹⁹Id. at 159-60, 167-68.

²⁰Designs that are first registered abroad within six months of applying for protection under the bill receive the priority date of the earlier foreign application.

²¹Copyright protection, by contrast, lasts for the life of the author plus fifty years or, for works where there is not an identifiable human author (i.e., works made for hire, anonymous and pseudonymous works), seventy-five years from publication or 100 years from creation, whichever expires first. 17 U.S.C. § 302.

²²In the past the Copyright Office has expressed concern about extending the subject matter of design protection to include not only ornamental designs of useful articles, but industrial designs generally. Differences between the present bill and past proposals mitigate some of those concerns expressed in connection with earlier proposals. For example, the absence of an ornamentality requirement was one of the ways in which past proposals extended coverage to spare parts. As mentioned above, the spare parts issue is not implicated by this bill because its coverage is limited to vessel hulls. In addition, the Copyright Office’s concern about extending protection to non-ornamental designs was heightened by language in earlier proposals that rendered protectible designs that were intended to be attractive or distinctive in appearance to the public. Those bills’ reliance on a subjective standard raised a danger that virtually any design would fall within the subject matter of the proposed protection. The current bill, however, avoids this danger by using an objective test, protecting “any design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public.”

²³In any event, separable ornamental features may already be protected under copyright, so there would be little need to create a new form of protection that only covered such features.

²⁴See Brown, supra note 6 at 1341.

²⁵In fact, several other countries have adopted registration systems for design protection. See Copyright Office 1990 Testimony, at 454-74.

²⁶Section 1206 states that the design shall be marked with the notice, although it is presumably intended that the notice appear on any vessel hull embodying the design. This could be clarified by stating the notice requirement as follows:

Whenever any design for which protection is sought under this chapter is made public under section 1210(b), the owner of the design shall, subject to the provisions of section 1207, mark any vessel hull embodying the design, or have such vessel hull marked, legibly with a design notice . . . .

²⁷A registration number can be substituted for the second two elements once a registration has issued.

²⁸Omission of notice does not prevent recovery for infringement against persons who, after written notice of the design protection, begin an undertaking leading to infringement. It does prevent recovery against a person who began an undertaking leading to infringement before receiving notice. No injunction may be issued against such an infringer unless the owner of the design reimburses the infringer for any reasonable expenditure or obligation in connection with an undertaking incurred before written notice of design protection. The owner of the design bears the burden of providing written notice of design protection.

²⁹The disputes that have arisen between trademark owners and owners of Internet domain name registrations illustrate the potential difficulties that could arise if the Copyright Office were required to approve and record distinctive identifications of design owners.

³⁰” Section 1201(b)(1).

³¹Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). A work is original under copyright law if it is the author’s own creation and exhibits a modicum of creativity. Id. Derivative works — works based on preexisting works — must exhibit a more than trivial distinguishable variation from those preexisting works. Waldman Publishing Corp v. Landoll, Inc., 43 F.3d 775, 782 (2d Cir. 1994); 1 Melville Nimmer and David Nimmer, Nimmer on Copyright § 3.01, at 3-2 (1997).

³²Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903).

³³1 J. Thomas McCarthy, Trademarks and Unfair Competition 346 (1973).

³⁴Registrability of Pictorial, Graphic, or Sculptural Works Where a Design Patent has been Issued, 60 Fed. Reg. 15605 (1995). In this rulemaking, the Copyright Office repealed a regulation that had barred registration of a pictorial, graphic, or sculptural work for which a design patent has been issued. The Office agreed with criticism of the former policy in the Nimmer treatise, which stated in part: “It would seem on principle that if a work otherwise meets the requirements of copyrightability, it should not be denied such simply because the claimant happens to be entitled to supplementary protection under other legislation.” Id. at 15606 (quoting Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 2.19 (1994).

³⁵As a practical matter the overlap between the two forms of protection is likely to be minimal in the narrow subject matter of the bill. The extent to which elements of boat hull designs meet the separability test under copyright appears to be quite limited. We anticipate that infringement actions will most often proceed under the sui generis protection created by the bill during its ten-year term of protection since that would avoid the need for proprietors to identify physically or conceptually separable artistic features. Many of these designs will no longer have commercial value after the expiration of the ten-year term.

³⁶17 U.S.C. § 102(a).

³⁷This contrasts with issuance of a design patent, which does confer protection.

³⁸The pending bill to implement the new WIPO copyright treaties, H.R. 2281, would amend this section of the Copyright Act to eliminate the requirement that a work be registered prior to commencing an infringement action for all foreign works. H.R. 2281, 105th Cong., 1st Sess. § 2(d) (1997).

³⁹In 1993, the Library of Congress Advisory Committee on Copyright Registration and Deposit (ACCORD) concluded that “information obtained through registration — information bearing on authorship, dates of creation and publication, the ownership and duration of copyright — can be extremely valuable not only for business transactions such as transferring rights, and obtaining permissions or licenses, but also for resolving legal disputes, providing biographical information, and so forth.” Robert Wedgeworth and Barbara Ringer, ACCORD: Report of the Co-Chairs 7 (1993).

⁴⁰We believe that electronic publication on the Internet would reach a vastly greater proportion of the public than hard-copy publication, at a small fraction of the cost. Those who do not have direct access to the Internet would be able to access our electronic publications at the Copyright Office and through public libraries, much the way that those who do not subscribe to the PTO’s Official Gazette must access that information through public libraries.