Statement of the United States Copyright Office
before the
Subcommittee on Courts,
the Internet, and Intellectual Property,
Committee on the Judiciary

United States House of Representatives
109th Congress, 2nd Session

July 27, 2006

Protection for Fashion Design

The Copyright Office submits this written statement to the House Subcommittee on Courts, the Internet and Intellectual Property in connection with the Subcommittee's July 27, 2006 hearing on H.R. 5055, which would amend Title 17 of the United States Code to provide protection for fashion designs.

Summary

Congress has long considered offering sui generis protection for designs of useful articles, and came close to enacting such legislation as part of the Copyright Act of 1976. In 1998, as part of the Digital Millennium Copyright Act, Congress finally enacted such legislation, but limited its scope of the protection to the designs of vessel hulls.⁽¹⁾ The Vessel Hull Design Protection Act is codifed in Chapter 13 of Title 17. While the form of protection offered in chapter 13 is in many respects similar to the protection offered by copyright law, it is nevertheless a sui generis regime distinct from copyright law.

Over the past year, the Copyright Office has engaged in many discussions with proponents of extending the protection offered under Chapter 13 to fashion designs. Based on those discussions, the tentative view of the Office is that there may well be merit to the view that fashion designs should be given protection similar to that enjoyed by vessel hull designs, but the Office does not believe it has thus far been presented with sufficient information to reach a conclusion on the need for such legislation. The Office looks forward to hearing the testimony of parties who would be affected by such legislation, which should shed greater light on the nature and scope of the problem that the legislation is intended to address.

However, without taking a position on the overall merits of such legislation, the Office has worked with the proponents of the legislation on the legislative language that would amend Chapter 13. The Office is pleased that the proponents of the legislation have been receptive to the Office's suggestions, almost all of which have been included in H.R. 5055. The Office believes that if Congress concludes that fashion design protection legislation should be enacted, H.R. 5055 provides a sound basis for balancing competing interests.

Background

1. 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,⁽²⁾ and the Senate in the 87th, 88th and 89th Congresses.⁽³⁾

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.⁽⁴⁾ 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.⁽⁵⁾ There has been no further action in Congress on the general design protection issue since the 1992 hearing.

However, the 105^th Congress considered and enacted more limited design protection legislation in 1998 as part of the Digital Millennium Copyright Act (“DMCA”). Title V of the DMCA, the Vessel Hull Design Protection Act (“VHDPA”), offered sui generis protection to the design of vessel hulls. That legislation, codified in Chapter 13 of Title 17, was based largely on the previous legislation, but narrowed the subject matter of protection from designs of useful articles in general to designs of vessel hulls.

The specific problem addressed in the VHDPA was “hull splashing.” As this Committee explained:

Boat manufacturers invest significant resources in the design and development of safe, structurally sound, and often high-performance boat hull designs. Including research and development costs, a boat manufacturer may invest as much as $500,000 to produce a design from which one line of vessels can be manufactured. When a boat hull is designed and the design engineering and tooling process is complete, the engineers then develop a boat “plug” from which they construct a boat “mold.” The manufacturer constructs a particular line of boats from this mold.

In contrast, those intent on stealing the original boat design, such as Thunder Craft, can simply use a finished boat hull in place of the manufacturer's plug to develop a mold. This practice is referred to in the trade as “splashing a mold.” The copied mold can then be used to create a line of vessels with a hull seemingly identical to that appropriated from the design manufacturer.

“Hull splashing” is a problem for consumers, as well as manufacturers and boat design firms. Consumers who purchase copied boats are defrauded in the sense that they are not benefitting from the many attributes of hull design, other than shape, that are structurally relevant, including those related to quality and safety. It is also highly unlikely that consumer know that a boat has been copied from an existing design. Most importantly for the purposes of promoting intellectual property rights, if manufacturers are not permitted to recoup at least some of their research and development costs, they may no longer invest in new, innovative boat designs that boaters eagerly await.⁽⁶⁾

Although boat designers had previously enjoyed protection against hull splashing under the laws of some states, in 1989 the Supreme Court had held such laws unconstitutional under the doctrine of federal preemption.⁽⁷⁾ The 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. ⁽⁸⁾

In enacting the VHDPA, Congress did not consider whether to expand the newly enacted Chapter 13's sui generis design protection to designs of useful articles other than vessel hulls, but it did offer a summary of some of the arguments for and against a more general federal design protection law:

Critics from the academy as well as private industry have expressed their concerns that design protection possibly upsets a critical balance struck in intellectual property law, especially the law of patents: namely, that the promotion of innovation must, at some point, give way to imitation and refinement through imitation, both of which are “. . . necessary to invention itself and the very lifeblood of a competitive economy.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989) [hereinafter Bonito Boats]. These critics fear that comprehensive design legislation, practically applied, might diminish rather than stimulate net commercial activity throughout the economy. Their reasoning is that threshold requirements for protection under most design schemes are less demanding than those under traditional intellectual property law. This would result in increased litigation and a general unwillingness to manufacture competing products.

Advocates of design protection insist that these concerns are overstated. They argue that, in the absence of creative development, there can be no imitation. In addition, if the threshold requirements for design protection are more easily met than those applying to copyright, trademark, and patent law, the solution is to offer less protection (usually measured by duration).⁽⁹⁾

2. Design Protection Available under Existing Law

Past proposals for sui generis design protection legislation 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 provide only limited coverage⁽¹⁰⁾ for the following reasons:

First, copyright protection for the designs of useful articles is extremely limited. The design of a useful article⁽¹¹⁾ 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.”⁽¹²⁾ According to the House report accompanying the copyright revision bill, the test for separability can be met by showing either physical or conceptual separability.⁽¹³⁾ 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.”⁽¹⁴⁾ In keeping with this congressional intent, courts have applied the separability test in a way that excludes most industrial designs from copyright protection.⁽¹⁵⁾ The Copyright Office has been similarly restrictive in its registration practices.⁽¹⁶⁾

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 invention⁽¹⁷⁾—e.g., novelty and non-obviousness.⁽¹⁸⁾ 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 $100, the issue fee is $400, and the maintenance fees over the life of the patent are $3,500. 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.⁽¹⁹⁾ Aspects of product design that do not serve to identify source are not protected.⁽²⁰⁾ 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.⁽²¹⁾

Fourth, supplementary protection is not available at the state level. Boat hull design serves to illustrate the point: As noted above, 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 Bonito Boats, the Supreme Court held that Florida's anti-plug molding statute was invalid under the doctrine of federal preemption. The 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.⁽²²⁾

3. Protection under the Vessel Hull Design Protection Act

Although Chapter 13 of Title 17 currently offers protection only for designs of vessel hulls, H.R. 5055 would extend that protection to fashion designs as well. Therefore, it is necessary to understand the design protection regime of Chapter 13.⁽²³⁾

Chapter 13 is written in the form of a general design protection statute offering protection to “an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public.” ⁽²⁴⁾ However, the statute's definition of a “useful article” is restricted to vessel hulls:

A “useful article” is a vessel hull, including a plug or mold, which in normal use has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article which normally is part of a useful article shall be deemed to be a useful article.⁽²⁵⁾

Thus, the statute was written is such a way that it could later be amended to cover designs of useful articles in general, simply by revising the statutory definition of “useful article” to reflect the plain meaning of that term. Alternatively, it could be amended to cover additional specific types of useful articles by revising the statutory definition to add those specific useful articles.

Design protection for vessel hulls is for a period of ten years and is available only for original designs that are embodied in an actual vessel hull: no protection is available for designs that exist only in models, drawings, or representations. Staple or commonplace designs, “such as a standard geometric figure, a familiar symbol, an emblem, or a motif, or another shape, pattern, or configuration that has become standard, common, prevalent or ordinary” are not protected.⁽²⁶⁾ The statute also sets forth several circumstances under which an otherwise original design does not receive protection. A design that is embodied in a vessel hull “that was made public by the designer or owner in the United States or a foreign country more than two years before the date of application for registration” of the design is not eligible.⁽²⁷⁾ Section 1332 states that there is no retroactive protection: no protection is “available for any design that has been made public under § 1310(b)⁽²⁸⁾ before” October 28, 1998, the effective date of the VHDPA.⁽²⁹⁾ And designs may not be protected under chapter 13 of title 17 if they have design patent protection under title 35 of the United States Code.⁽³⁰⁾ As a result, vessel hulls protected under chapter 13 lose that protection if they acquire U.S. design patent protection.

Unlike copyright law, where protection arises at the moment of creation, an original design is not protected under chapter 13 until it is made public or the registration of the design with the Copyright Office is published, whichever date is earlier. Once a design is made public, an application for registration must be made no later than two years from the date on which the design was made public. Making a design public is defined as publicly exhibiting it, distributing it or offering it for sale (or selling it) to the public with the design owner's consent.⁽³¹⁾ Only the owner of a design may make an application for registration.⁽³²⁾

Once an application for registration is received by the Copyright Office, it is evaluated for completeness and sufficiency under the provisions set forth in chapter 13. If the Office refuses to register a design, the applicant may seek reconsideration by filing a written request within three months of the refusal.⁽³³⁾ Should such refusal be upheld, the applicant may seek judicial review of the final refusal.⁽³⁴⁾ For those applications deemed sufficient, a registration certificate is issued which includes a reproduction of the drawings or other pictorial representations of the design.⁽³⁵⁾ Notification that a registration has been made must be published by the Copyright Office, and the effective date of the registration is the date on which publication of it is made.⁽³⁶⁾ The Copyright Office publishes registrations by posting them on the Copyright Office web site.

Any person who believes that he or she will be damaged by a registration made by the Office under chapter 13 “may upon payment of the prescribed fee, apply to the Administrator⁽³⁷⁾ at any time to cancel the registration on the ground that the design is not subject to protection under this chapter, stating the reasons for the request.” ⁽³⁸⁾

Protected designs that are made public must bear a proper design notice.⁽³⁹⁾ Unlike notice of copyright, which is permissive, notice on a vessel hull design is mandatory. The design notice must state that the design is protected and contain the year in which the protection first commenced along “with the name of the owner [of the design], an abbreviation by which the name can be recognized, or a generally accepted alternative designation of the owner.”⁽⁴⁰⁾ A distinctive identification of the owner may be substituted for the actual name, provided that the distinctive identification has been previously recorded with the Copyright Office. Once a design has been registered, use of the registration number in place of the date of protection and name of the owner on the design notice is sufficient.⁽⁴¹⁾ A design notice must be affixed to a location on the vessel so as to give “reasonable notice” that the vessel contains a protected design.⁽⁴²⁾

The owner of a design is entitled to institute an action for infringement of his or her design provided that he or she has first obtained a registration certificate from the Copyright Office.⁽⁴³⁾ An infringement suit may be brought in Federal⁽⁴⁴⁾ court or all of any part of a dispute may be settled by arbitration if the parties to an infringement dispute agree.⁽⁴⁵⁾Remedies available for design infringement include damages, the infringer's profits, attorney's fees, injunctive relief and seizure and forfeiture of the infringing goods.⁽⁴⁶⁾ Chapter 13 also sets forth penalties for anyone who brings an infringement action knowing that the registration of the design was obtained through false or fraudulent representation, who knowingly makes a false representation in order to obtain a registration, or who knowingly applies a design notice to an unprotected vessel hull design.⁽⁴⁷⁾

The Proposed Legislation

H.R. 5055 would make very few changes to Chapter 13. While the Copyright Office takes no position at present with respect to the merits of extending design protection to fashion designs, we believe that if it determined that such protection is warranted, H.R. 5055 in almost all respects strikes the proper balance.

1. Protection for Fashion Designs

The major amendment, of course, would be the extension of design protection to fashion designs, by amending § 1301(a) to provide that “A fashion design is subject to protection under this chapter” and by amending § 1302(b) to include “an article of apparel” in the definition of “useful articles” subject to protection. The bill would make clear that for purposes of Chapter 13 a fashion design is the appearance as a whole of an article of apparel, including its ornamentation. The bill elaborates on what would constitute “apparel” for purposes of Chapter 13:⁽⁴⁸⁾

1. an article of men's, women's, or children's clothing, including undergarments, outerwear, gloves, footwear, and headgear;
2. handbags, purses, and tote bags;
3. belts; and
4. eyeglass frames.

As noted above, the Copyright Office takes no position at this time as to whether Chapter 13 should be amended to include protection for fashion designs. Proponents of such legislation have provided the Office with anecdotal evidence that fashion designers are harmed by the sale of “knockoffs” of high-end fashion designs. To be persuaded of the need for such legislation, we would have to see more such evidence, as well as some evidence quantifying the nature and extent of the harm suffered by fashion designers due to the lack of legal protection for their designs. To the extent that the Office has been presented with anecdotal evidence, that evidence relates to clothing designs. While there may well be similar evidence relating to the items identified in subparagraphs B, C and D of proposed § 1301(b)(9), the Office currently is not aware of such evidence.

(A) Term of Protection

In general, the protection for fashion designs would be identical to the existing protection for vessel hull designs, but with some significant exceptions. First, the term of protection for fashion designs would be only 3 years rather than the 10 years of protection offered to vessel hull designs. Proponents of the legislation have explained that the purpose of the legislation is to protect designs of haute couture during the period of time in which such high-end clothing is sold at premium prices of thousands of dollars and to prevent others from marketing clothing with those designs at substantially lower prices during that initial period, thereby undercutting the market for a hot new fashion design. Because the peak demand for such designs is relatively short-lived, a 3-year term is considered adequate to satisfy the designer's reasonable expectation of exclusivity.

The Office applauds the proponents of fashion design legislation for seeking a modest term of protection that appears to be calibrated to address the period of time during which fashion designs are most at risk of being infringed and during which fashion designers are most likely be harmed by the sale of infringing goods. The Office would find it difficult to support fashion design legislation that offered such protection for the 10-year term enjoyed by vessel hull designs, but considers the 3-year term to be reasonable, assuming that the proponents of the legislation are able to make the case for protection.

(B) Time Frame for Registration

Because the term of protection for fashion designs would be significantly shorter than the term of protection for vessel hull designs, existing provisions⁽⁴⁹⁾ in Chapter 13 denying protection to a design that is embodied in a useful article that was made public more than 2 years before the application for registration of the design would be amended, with respect to fashion designs but not with respect to vessel hull designs, by changing the 2 year period to a period of 3 months. The purpose of this provision is to require prompt registration of protected designs, which gives notice to the world that design protection is claimed. While registration within 2 years may be considered relatively prompt with respect to vessel hull designs that are protected for a total of 10 years, a 2-year window to register a fashion design that is entitled to protection for only 3 years and that likely is already starting to go “out of fashion” after 2 years would make registration a relatively meaningless formality.

Because offering legal protection to fashion designs would be a new form of legal protection and because we have been informed and believe that protection should and would be claimed only for a small proportion of fashion designs—i.e., primarily designs of haute couture for apparel sold at prices of four figures and more—the Office believes that a strong registration requirement as well as the notice requirement currently found in Chapter 13 are essential to any fashion design protection legislation. Competitors should be given clear notice of and opportunity to learn of a designer's claim of protection, so that they may avoid encroaching on the rights of a designer who wishes to claim protection under the new law. A requirement of prompt registration serves that purpose.

H.R. 5055 would also amend § 1310(b), which provides that a design is made public (thereby triggering the period in which an application for registration must be made) by clarifying that one of the circumstances that constitute making a design public—when a useful article embodying the design is “offered for sale or sold to the public”—applies to “individual or public sale.” We believe that this amendment is probably declarative of the existing meaning of §1310(b).

4. Provisions Relating to Infringement

The bill would also amend Chapter 13 in a few respects that would affect not only fashion designs, but vessel hull designs as well. For example, § 1309, which addresses infringement of protected designs, would be amended in two respects. First, an existing provision that it shall not be an act of infringement to make, import, sell, or distribute, any article embodying a design which was created without knowledge that the design was protected and was copied from such protected design would be amended to provide that the alleged infringer must not have had “reasonable grounds to know that protection for the design is claimed.” The Office considers this to be a reasonable amendment.

Section 1309 would also be amended, in subsection (e), to clarify that an infringing article need not be copied directly from an article incorporating the protected design, but may also be copied from an image of the protected design. The Office considers this language to be a mere clarification that is simply declarative of the plain meaning of the existing language of § 1309(e).

The final amendment to § 1309 would be more significant. It would add a new subsection (h) that would ensure that the existing doctrines of secondary liability that are part of the copyright law will also apply to design protection under Chapter 13. In our discussions with representatives of fashion designers, we were told of the existence of websites that offer detailed photographs of new fashion designs immediately after those designs have appeared for the first time on the runways of major fashion houses. Such websites apparently charge subscription fees and serve a clientele of clothing manufacturers who design knockoffs based on the photographs appearing on the websites. Early drafts of this legislation would have provided for liability for publishing such photographs. We believed that such a provision would encounter significant First Amendment problems and might deter reasonable and desirable news reporting. We suggested that a preferable means of addressing the problem would be to clarify that the doctrines of secondary liability such as contributory infringement, vicarious liability, and inducement of infringement as recently addressed in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,⁽⁵⁰⁾ apply under the design protection law. This provision makes sense not only as a more reasonable way of addressing the problem of publication of photographs to facilitate infringement, but also as a general matter of sound policy. The same policy considerations that have led to the adoption of these doctrines of secondary liability in the law of copyright would appear to apply equally with respect to design protection.

5. Examination by the Copyright Office

Another provision—requested by the Office—would amend §1313(a), which currently provides that when the Copyright Office examines an application for registration of a design, that examination involves a determination whether or not the application relates to a design which on its face appears to be subject to protection under this chapter. The amendment would replace “subject to protection under this chapter” with “within the subject matter protected under this chapter,” clarifying that the Office does not make judgments as to whether a particular design is sufficiently original or distinctive to qualify for protection, but rather examines the depiction of the design to ensure that it relates to the type of design (currently, a design of a vessel) protected under Chapter 13. Since the Office commenced its registration of vessel hull designs over 7 years ago, the Office has generally refrained from passing judgment on what is or is not an “original” design or a design that makes a vessel hull “attractive or distinctive,” requirements for protection under § 1301(a). The Office has no expertise in the design of vessels and cannot judge what is “original” in a vessel hull design. Moreover, the statute offers no clear guidance that would assist the Office in judging what is “attractive or distinctive” to the public in a vessel hull design. In contrast, the Office has made determinations, applying the statutory criteria, as to whether a particular design is a design of a vessel hull. Occasionally, the Office has rejected an application because, in the Office's judgement, it does not relate to the design of a vessel hull - e.g., when it is apparent that the design does not relate to a craft “that is designed and capable of independently steering a course on or through water through its own means of propulsion” and “that is designed and capable of carrying and transporting one or more passengers.”⁽⁵¹⁾

The Office's experience with vessel hull registration has persuaded the Office that a statutory clarification of the Office's examining function would be desirable. Whether a design of a vessel hull meets these statutory requirements is more appropriately determined by a court of law, in an adversary proceeding in which evidence is presented (including the possibility of expert testimony) that permits a more informed determination on these matters.

6. Cancellation

The Office also requests that the Subcommittee consider an additional amendment not currently included in H.R. 5055: the repeal of §1313(e), which provides for an administrative inter partes cancellation proceeding in the Copyright Office. We believe that disputes between a designer and a third party over whether the designer is entitled to claim protection in the design of a vessel hull or an article of apparel are best resolved in the courts, which are better equipped to weigh the evidence and make such determinations. Indeed, Chapter 13 already gives the courts the power to cancel registrations. ⁽⁵²⁾ Removing the administrative cancellation provision would not remove the possibility of cancellation, but would simply ensure that such determinations are made by the institutions that are most competent to make them.

7. Recovery for Infringement

The proposed legislation would also revise the existing provision governing damages for infringement. Section 1323(a) currently provides:

Damages. - Upon a finding for the claimant in an action for infringement under this chapter, the court shall award the claimant damages adequate to compensate for the infringement. In addition, the court may increase the damages to such amount, not exceeding $50,000 or $1 per copy, whichever is greater, as the court determines to be just. The damages awarded shall constitute compensation and not a penalty. The court may receive expert testimony as an aid to the determination of damages.

H.R. 5055 would increase the amounts set forth in § 1323(a) to “250,000 or $5 per copy.” We note that the effect of this amendment would be that the “increased” damages available under Chapter 13 would exceed the maximum award of statutory damages available for copyright infringement, which is only $150,000 in cases of willful infringement. While the Office takes no position at present as to whether, in principle, an award of $250,000 should be permitted under this provision of Chapter 13, Congress should not enact such a provision in a vacuum, without giving due consideration to the analogous provision in the Copyright Act. We are not suggesting that the maximum award of statutory damages should necessarily be increased, but only that we are skeptical that the maximum award for infringement of a protected design should exceed the maximum award for copyright infringement.

In any event, the Office considers the existing § 1323(a) to be hopelessly confusing. In its first sentence, § 1323(a) provides for an award of “damages adequate to compensate for the infringement.” In the second sentence, § 1323(a) permits the court to increase the damages to up to $50,000 or $1 per copy (which H.R. 5055 would increase to $250,000 or $5 per copy) as the court determines to be just. And in its final sentence, § 1323(a) states that the damages awarded “shall constitute compensation and not a penalty,” suggesting that if the court has correctly calculated the damages under the first sentence, there will be no occasion in which the court may increase the damages under the second.

The Office recommends that Congress consider a complete revision of § 1323(a) that would offer clearer guidance relating to the calculation of damages for infringement. It may well be that the second sentence of this provision serves no purpose if indeed the damages it provides for are purely compensatory. In contrast, it may be that the statute should be clarified to permit an award beyond mere compensation in certain cases—e.g., cases involving willful infringement.

8. Savings Clause

The final amendment included in H.R. 5055 would amend the savings clause, § 1330, which currently provides that nothing in Chapter 13 shall annul or limit

1. common law or other rights or remedies, if any, available to or held by any person with respect to a design which has not been registered under this chapter; or

2. any right under the trademark laws or any right protected against unfair competition.

The amendment would add a third class or rights not affected by any provisions of Chapter 13:

3. any rights that may exist under provisions of this title other than this chapter.

We believe this is a sensible amendment. In fact, with respect to fashion designs, there will be certain circumstances in which a fashion design might obtain some protection under the copyright law. Although articles of clothing are useful articles and therefore enjoy limited if any copyright protection,⁽⁵³⁾ there will be some instances in which a fashion design, or at least certain aspects of a fashion design, would enjoy some degree of copyright protection. Offering sui generis protection to fashion designs should not result in any diminution of whatever copyright protection might exist for such designs.

9. No Retroactive Effect

In reviewing H.R. 5055 as this hearing approached, the Office has identified an additional amendment that should be considered. Section 1332 provides:

Protection under this chapter shall not be available for any design that has been made public under section 1310(b) before the effective date of this chapter.

The effective date of Chapter 13 was October 23, 1998. The purpose of § 1332 was to provide for protection of vessel hull designs prospectively, but to deny protection to designs that had been made public before the legislation was effective.

H.R. 5055 contains no provision amending § 1332, meaning that if enacted, it would offer protection to fashion designs that had been made public prior to its enactment. Presumably, the same judgment that Congress made in extending protection to vessel hull designs should apply in extending protection to fashion designs, and§ 1332 should be amended to deny protection for any fashion designs that have been made public before the effective date of H.R. 5055.

Should Fashion Design Legislation be Enacted?

As stated above, the Office does not yet have sufficient information to make any judgment whether fashion design legislation is desirable. Proponents of legislation have come forward with some anecdotal evidence of harm that fashion designers have suffered as a result of copying of their designs, but we have not yet seen sufficient evidence to be persuaded that there is a need for legislation. We look forward to the Subcommittee's hearing, at which proponents of the legislation will have an opportunity to make their case and at which the voices of other affected parties can be heard.

If the case is made for fashion design protection, we believe that H.R. 5055 offers an appropriate, balanced legislative proposal. We have suggested some minor amendments that we believe would improve the legislation, and we believe that some of the amendments included in H.R. 5055 and in our statement above are worthy of consideration whether or not fashion design legislation is enacted.⁽⁵⁴⁾

As always, the Office would be pleased to assist the Subcommittee as it continues its consideration of this legislation.

1. Digital Millennium Copyright Act of 1998, Pub. L. 105-304, Title V, 112 Stat. 2860 (1998).

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

3. S. 1884, 87th Cong. (1962); S. 776, 88th Cong. (1963); S. 1237, 89th Cong. (1965).

4. S. 22, 94th Cong. (1975); S. Rep. No. 94-473, 94th Cong. (1975).

5. A 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 (1991).

6. H.R. Rep. No. 105-436 at 13 (1998).

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

8. Id. at 159-60, 167-68.

9. H.R. Rep. No. 105-436 at 12 (1998).

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

11. The 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”).

12. 17 U.S.C. § 101 (definition of “pictorial, graphic, and sculptural works”).

13. H.R. Rep. No. 1476, 94th Cong. 55 (1976).

14. Id.

15. See 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).

16. In 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).

17. 35 U.S.C. § 171.

18. Id. §§ 102, 103.

19. J. Thomas McCarthy, Trademarks and Unfair Competition, 229-35 (1973).

20. Id. at 232.

21. Id. at 233-35.

22. 489 U.S. at 159-60, 167-68.

23. The following description of the existing vessel hull design protection law is taken largely from the November 2003 joint study by the Copyright Office and the Patent and Trademark Office, The Vessel Hull Design Protection Act: Overview and Analysis, available at http://www.copyright.gov/reports/vhdpa-report.pdf.

24. 17 U.S.C. § 1301(a)(1).

25. Id. § 1301(b)(2).

26. Id. § 1302.

27. Id. § 1302(5).

28. Id. § 1310(b) defines when a design is made public.

29. Id. § 1332.

30. See id. § 1329.

31. Id. § 1310(b).

32. Id. § 1310(c).

33. Id. § 1313(b).

34. Id. § 1321(b).

35. Id. § 1314.

36. Id. §§ 1313(a) and 1315.

37. Id. § 1331. The Administrator of the VHDPA is the Register of Copyrights.

38. Id. § 1313(c).

39. Id. § 1306.

40. Id. § 1306(a)(1).

41. Id. § 1306(a)(2).

42. Id. § 1306(b).

43. Id. § 1321(a).

44. See 28 U.S.C. § 1338.

45. 17 U.S.C. § 1321(d).

46. Id. §§ 1321-1324.

47. Id. §§ 1325-1327.

48. H.R. 5055, 109^th Cong. § 1301(b)(9) (2006).

49. Id. §§ 1302(5) and 1310(a).

50. 125 S.Ct. 2764 (2005).

51. Id. § 1301(b)(3).

52. See Id. 17 U.S.C. § 1324.

53. See Id. § 101 (definition of “pictorial, graphic and sculptural works”: “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.”). See also the discussion above relating to copyright protection for the designs of useful articles.

54. See the discussion above relating to §§ 1313(a) and (e).

Note: This text is slightly revised to correct a typographical error.