[Federal Register: March 24, 1995 (Volume 60, Number 57)]
[Notices]
[Page 15605-15606]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr24mr95-129]
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LIBRARY OF CONGRESS
Copyright Office
[Docket No. 95-3]
Registrability of Pictorial, Graphic, or Sculptural Works Where a
Design Patent Has Been Issued
AGENCY: Copyright Office, Library of Congress.
ACTION: Policy decision and amendment of regulations.
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SUMMARY: The Copyright Office of the Library of Congress issues this
policy decision to clarify its practices and to amend the regulations
regarding the registrability of claims to copyright in pictorial,
graphic, and sculptural works for which a design patent has been
issued. Under the current regulations, a copyright claim in a patented
design, or in a scientific or technical drawing in an application of an
issued patent is refused registration under the so-called ``election
doctrine.'' We believe there is no longer any legal justification for
the continuation of this practice.
EFFECTIVE DATE: April 24, 1995.
FOR FURTHER INFORMATION CONTACT: Marilyn J. Kretsinger, Acting General
Counsel, Copyright GC/I&R, P.O. Box 70400, Southwest Station,
Washington, D.C. 20024. Telephone: (202) 707-8380. Telefax: (202) 707-
8366.
SUPPLEMENTARY INFORMATION: Under the current Copyright Act, copyright
is secured at the time of creation of the work without the necessity of
any formalities, such as registration of an eligible unpublished work
or publication with copyright notice, required under the 1909 Act. A
patent, on the other hand, must be pursued through the process of
examination in [[Page 15606]] the Patent Office. The Commissioner of
Patents actually determines the patentability of an invention or design
and grants the patent.
The current regulations, 37 CFR 202.10(a) and (b), reflect the
Copyright Office's policy of accepting the doctrine of ``election of
protection.'' For many years, the Copyright Office required claimants
to elect between patent or copyright protection of useful pictorial,
graphic, or sculptural expressions. The origin of this policy can be
traced to a 1910 decision, Louis de Jonge & Co. v. Breuker & Kessler
Co., 182 F. 150 (C.C.S.E.D. Pa. 1910), aff'd, 191 F. 35 (3d Cir. 1911),
aff'd, 235 U.S. 33 (1914), wherein the court held that a claimant could
elect to secure protection under either patent or copyright but could
not secure both. Similarly, in 1927, the D.C. Court of Appeals, in In
re Blood, 23 F.2d 772 (D.C. Cir.1927) embraced the election doctrine.
The primary basis for the existing Copyright Office policy was the
Second Circuit's decision in Korzybski v. Underwood & Underwood, Inc.,
36 F.2d 727 (2d Cir. 1929). The court ruled that ``[a]n inventor who
has applied for and obtained a patent cannot extend his monopoly by
taking out a copyright.'' ``The filing of the application for the
patent * * * was a publication [and full disclosure of the invention]
that entitled anyone to copy the drawings [representing the
invention].'' Id. at 729 (parenthetical added). However, in a landmark
decision, Mazer v. Stein, 347 U.S. 201 (1954), the Supreme Court ruled
that the same disclosure or publication might support a design patent
and a copyright. ``Neither the Copyright statute nor any other says
that because a thing is patentable it may not be copyrighted.'' Id. at
217. The Court, however, expressly refused to entertain the issue of
whether the grant of either monopoly precluded that of the other. A few
years later, in Vacheron & Constantin-LeCoultre Watches, Inc. v. Benrus
Watch Co. Inc., 155 F. Supp. 932 (S.D.N.Y. 1957), modified, 260 F.2d
637 (2d Cir. 1958), the district court rejected arguments that seeking
copyright protection precluded securing design patent protection.
Indeed, the overlapping protection concerns two distinct statutory
monopolies; and the doctrine of Korzybski ``must rest upon the
assumption that the owner of the statutory monopoly has some power to
protect his `work,' for otherwise any dedication would be without
consideration.'' 260 F.2d at 642.
In 1968, the Copyright Office reviewed the election policy and
reaffirmed its position on two grounds--public policy considerations
and the publication with notice requirement. The public policy ground
was based on the theory that it is an undue extension of the patent
monopoly to allow, after the patent has expired, a copyright for the
same design. If copyright protection were allowed to subsist, the
public would be deprived from exploiting the work for the duration of
the copyright. The second ground was a more practical one. The patent
procedure required publication in the Official Gazette without notice
of copyright. Since the 1909 Copyright Act required a notice of
copyright on all published copies to secure and maintain copyright
protection, this requirement foreclosed copyright protection for the
patent drawings and placed the work in the public domain.
Prior to 1974, The United States Patent and Trademark Office had an
election policy similar to that of the Copyright Office. The Patent
Office discontinued this requirement in view of the decision in In re
Yardley, 493 F.2d 1389 (C.C.P.A. 1974), wherein the court stated that
even though there is a definite overlap, ``Congress has not provided
that an author inventor must elect between securing a copyright or
securing a design patent.'' Id. at 1394. ``[T]he mere fact'', said the
court ``that the copyright will persist beyond the term of any design
patent which may be granted does not provide a sound basis for
rejecting appellant's patent application.'' Id. at 1395. Reassessing
its policy, the Copyright Office chose to follow Korzybski instead of
Yardley, on the rationale that the latter case was limited to an
interpretation of the design patent act while Korzybski interpreted the
Copyright Act.
The Copyright Office regulations based on the election doctrine
have been criticized. In his treatise on copyright, Nimmer observes:
Without offering the rationale of publication or any other
basis, Copyright Office Regulations under the 1909 Act simply
provided that once a patent has been issued, copyright registration
would be denied to a work of art and to a scientific or technical
drawing. There appears to be no statutory or other justification for
this position. 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.<SUP>1
\1\David Nimmer and Melville B. Nimmer, Nimmer on Copyright
Sec. 2.19 (1994).
We agree.
In consideration of the foregoing, the Copyright Office is issuing
this Policy Decision and amending 37 CFR chapter II in the manner set
forth below.
PART 202--[AMENDED]
1. The authority citation for part 202 continues to read as
follows:
Authority: Section 702, 90 Stat. 2541, 17 U.S.C. 702.
2. In Sec. 202.10, paragraphs (a) and (b) are removed, the existing
paragraph (c) is redesignated as paragraph (b), and a new paragraph (a)
is added to read as follows:
Sec. 202.10 Pictorial, graphic, and sculptural works.
(a) In order to be acceptable as a pictorial, graphic, or
sculptural work, the work must embody some creative authorship in its
delineation or form. The registrability of such a work is not affected
by the intention of the author as to the use of the work or the number
of copies reproduced. The availability of protection or grant of
protection under the law for a utility or design patent will not affect
the registrability of a claim in an original work of pictorial,
graphic, or sculptural authorship.
Marybeth Peters,
Register of Copyrights.
Dated: March 14, 1995.
Approved by:
James H. Billington,
The Librarian of Congress.
[FR Doc. 95-7363 Filed 3-23-95; 8:45 am]
BILLING CODE 1410-30-P