Statement of Marybeth Peters
The Register of Copyrights
Subcommittee on Courts and Intellectual Property
Committee on the Judiciary
United States House of Representatives
105th Congress, 1st 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
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.
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
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 Floridas 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
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
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
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
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.
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.
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 Protd Des., or the symbols D in a
circle or *D*, (2) the year protection begins, and (3) the owners
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
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 designers 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 bills 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 bills purpose of providing
relatively quick and inexpensive protection to vessel hull designers. Nor would
it advance the bills 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.
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
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.
- 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.
- Election Between Copyright and Design Protection. As discussed above, we
recommend the deletion of any reference to copyright or copyright registration
in section 1229.
- 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.
- 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.
- 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.
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
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).
11See, Brandir Intl, 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
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 Offices 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
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
authors 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.
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
3617 U.S.C. § 102(a).
37This contrasts with issuance of a design patent, which does confer
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 PTOs
Official Gazette must access that information through public libraries.