Protection for Fashion Design - U.S. Copyright Office

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 105th 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)
an article of men's, women's,
or children's clothing, including undergarments, outerwear, gloves,
footwear, and headgear;
handbags, purses, and tote bags;
belts; and
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
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
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:
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.
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).
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”).
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).
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.
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.