[Federal Register: March 24, 1995 (Volume 60, Number 57)]
[Page 15605-15606]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]



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.


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-

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any formalities, such as registration of an eligible unpublished work 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.


    1. The authority citation for part 202 continues to read as 

    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]