In Senate hearings last year, the argument was often made that design protection would prevent the marketing of foreign manufactured spare parts, perhaps of inferior quality in workmanship and materials. The Copyright Office believes that quality of spare parts is a legitimate congressional concern. Clearly, parts purchased by the American consumer should perform the function for which they were purchased. The Copyright Office suggests, however, that product reliability concerns could be addressed in consumer products legislation rather than design legislation. Design protection gives a manufacturer a right to exclude all competing copies superior parts as well as inferior ones. Moreover, competing American firms are excluded from the field as well as foreign firms. And without the pressures of competition, the quality of the parts made by the original manufacturer could start to deteriorate. So design protection would be best evaluated on its own merits of advancing the public good by fostering the creation of new and valuable industrial designs rather than as a trade-inspired effort to protect a specific industry. This is especially important in light of the growing percentage of foreign-made automobiles in the United States. We could be freezing U.S. manufacturers out of the potentially profitable parts market for this huge fleet of automobiles. As the dollar falls in relation to foreign currencies, we

could once again be extremely competitive in this market.

on

Most design bills considered by past congresses focused aesthetically pleasing designs; the term "ornamental" was used in the bills until 1985.37/ Without some reference to ornamentality, the concept of "distinctness" could be stretched to cover mechanical components never seen

37. See, for example, the 1983 bill, H.R. 2985, 98th Cong., 1st Sess. (1983) (Mr. Moorhead).

by the consumer.

The exclusionary language of section 1002 regarding "staple or commonplace" design features could be explained in greater detail, in the statute or the legislative reports, to make it clear that the bill would exclude a significant number of mechanical designs. For reasons discussed below, the exclusion of designs "dictated solely by a utilitarian function" is inadequate.

tions:

The Copyright Office suggests one or all of the following solu

a) Restore the concept of ornamentality by adding that term

to section 1001(a) and at appropriate places elsewhere in

the text.

(Incidentally, vestigial references still

appear in sections 1027 and 1028.)

b) Return to the original subject matter statement of the

1957 Willis bill by substituting the following for section 1001(a):

"(a) The author of an original ornamental design of a useful article, or his legal representatives or assigns, may secure the protection provided by this Act upon complying with and subject to the provisions hereof.

An ornamental design of a useful article, hereinafter referred to as "design", is a design of the article that includes features of shape, pattern, configuration, or ornamentation intended to give the article an attractive, artistic, or distinctive appearance and not merely utilitarian or functional in purpose."

c) In any report of the bill, include congressional guidelines concerning the meaning of "attractive or distinct;" indicate that useful articles not designed to be aesthetically pleasing are excluded from the subject matter of the new design law, and that the administrative agency and courts are expected to develop objective standards of what is "attractive or distinct" by reference to design

aesthetics.

2. Dictated solely by function.

Section 1002(d) excludes from protection any design that is

"dictated solely by a utilitarian function of the article that embodies

The Copyright Office doubts that this language achieves the apparent purpose of excluding purely functional designs. In the experience of the Copyright Office when registering applied designs, virtually no designs are dictated solely by a utilitarian function. The design features may be overwhelmingly or solely responsive to function but are seldom absolutely dictated by function.

The Copyright Office suggests the following substitute language in Sec. 1002(d) for excluding undeserving functional designs: "developed solely to obtain a technical result."

3. Dual copyright and chapter 10 design protection.

H.R. 1179 allows copyright and design protection to subsist in the same features of designs meeting the standards of both laws. Unlike some of the past design bills, no election between copyright and registered design protection is required. The Copyright Office questions the justification for dual protection. The public gets the benefit of only one

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design, but the designer gets two cracks at protection in the courts. The Congress may want to require an election of protection like the 1981 bill:38/

once design registration is made, copyright protection ends with respect to embodiment of the design in useful articles.

4. Impact on copyright law.

To ensure a clear demarcation between copyright protection and chapter 10 design protection, the Copyright Office suggests that the legislative reports accompanying the bill confirm the intention not to affect in any way the application of the "separability" test in determining copyrightable subject matter. Such a commentary would be useful in connection with the sectional analysis of section 1027.

5. Meaning of "part of a useful article."

Testimony at the Senate hearing last year on S. 791 suggested that some proponents interpret the bill as extending protection to a "part of a useful article" where the overall article shape is protected, even though the component machine part (e.g., a sparkplug or an exhaust pipe) may not itself satisfy the originality and attractive-distinct appearance standards. The Copyright Office suggests that confusion has arisen regarding the basic purpose of design legislation. Past design bills and most foreign industrial design laws protect the external, visual appearance of a utilitarian article and not its internal, purely functional, component parts. For example, design laws would generally protect the external, partly aesthetic features of an automobile body, including fenders, bumpers, and door shapes, but would not protect shock absorbers, carburetors, and exhaust pipes.

Copyright Office suggests that the commentary in the legislative reports on the definition of "useful article" make clear that Congress has no intention to protect internal, purely functional component parts of a larger useful article, even if external design features are protected.

6. Costs of cancellation proceedings.

The design bill directs the Register of Copyrights to establish procedures for cancellation of challenged designs. Although the Copyright Office in rare instances will cancel a copyright registration, the procedure requires written notice and an opportunity for the claimant to be heard rather than a formal hearing. Design registration cancellation requires new procedures "under which the opposing parties may appear and be heard in support of their arguments."39/ Section 1012(c) of the bill. Such inter partes hearings entail substantial administrative expenses, yet the bill specifically allows the Copyright Office to charge only $15 for filing each application for cancellation of a registration. Paragraph (b) of section 1015 does give authority to establish charges "for materials or services furnished by the Office, not specified in this section which are

39. The Copyright Office is not aware that any doubts have been expressed about the constitutionality of giving the Office, which is located in the legislative branch, the authority to conduct design interference proceedings. In the event such concerns arise, the Office notes that this type of proceeding would be quasi-judicial rather than executive in nature. The Office would neither enforce the law nor issue administrative orders. The Copyright Office has long exercised the authority to refuse to register copyright claims. In Eltra Corp. v. Ringer, 579 F.2d 198 (4th Cir. 1978) the court upheld the refusal to register a typeface design and decided that the "Supreme Court has properly assumed over the decades since 1909 that the Copyright Office is an executive office, operating under the direction of an Officer of the United States and as such operating in conformity with the Appointments Clause."