an extensive search by an examiner for novelty is necessary. Very often the examiner searches analogous arts for citations against an applicant in order to conform to the spirit of law. It stands to reason that with the great variety of industries applying for design protection, the burden upon the examiner is tremendous. The loss of valuable time for this search through the prior art in effect nullifies any value that the patent law has for any injury where a short style season exists. Before a manufacturer can obtain a patent, 5 or 6 weeks go by, since some time is consumed in preparing the drawings and the application. The first office action takes about 3 weeks after filing. If a patent is cited against the applicant, a copy must be obtained and an amendment filed to endeavor to overcome such objections, so that by the time the patent issues, the style may be passé and of no value. The cost and filing fees for design protection under the patent law is prohibitive. The average cost of an application, including the drawings and filing fee, is $50. Thus, if a manufacturer has 150 styles to protect for a fall-winter season, his cost will be $7,500 in fees alone. To comply with the present patent law, the examiner looks for novelty and originality from every standpoint, so that a large percentage of design applications are rejected. Style is placed in the same category and must meet all the requirements of mechanical invention. This is a fallacious premise for style recognition. The elements of a style are dissected as a chemist would make a qualitative and quantitive analysis of a chemical compound. The examiner will aggregate various features from a variety of styles to endeavor to show lack of novelty. Thus, if a definite trend or silhouette is in vogue, an original, artistic, and novel arrangement of elements is not recognized as a design creation. Even though a creator overcomes the objections of the examiner of the Patent Office and a patent issues, it is only prima facie proof in an infringement action, and the difficulty and cost of injunction and accounting proceedings are not only prohibitive in cost, but also entail a loss of time from business which a manufacturer can ill afford, especially during a season. The present copyright law has been held by the courts to exclude designs for industrial purposes and is impossible of application in many industries. The law of unfair competition upon common-law grounds affords no protection, and there is no governmental agency with power to stop design piracy. RECOMMENDATIONS FOR STYLE PROTECTION 1. The patent law should be changed to recognize original adaptations in style industries. There should be a preliminary search and allowance or rejection within 1 week. The filing fees should be materially reduced and the filing of uniform photographs or sketches should be sufficient. Patent notice should be provided in some manner on every product patented and actual notice of infringement given a retailer before liability attaches. The manufacturer should be liable without actual notice; and if actual notice is given and the manufacturer refuses to discontinue, damages should be trebled because of willful infringement. It is believed that a manufacturer has but to be stopped once during the course of production to learn that it is wiser to make his own adaptations. 2. A style protection bureau for the registration of styles can be set up in each industry that employs style. Each bureau must be sanctioned by the Government and regulated by a commission appointed by the Patent Office. Such a bureau can be establishel for 5 years to prove its feasibility. The filing fees, the salaries, and the searches required before registration can be solved in each industry. 3. The Vandenberg amendment to the Duffy bill should be modified to include a search-and-notice provision to conform to the above suggestions. CONCLUSION Design-protection legislation has been proposed for a great many years, and failure of the passage of some bill against style piracy would be a blow to many industries and an indirect aid and sanction to wholesale theft of styles. Design pirates will assume that it will be years again before such proposed legislation receives the prominence and publicity it has attained at present, and it will lead to greater evil in the industries involved. It is believed that the Vandenberg amendment to the Duffy bill (S. 3047) should be adopted with modifications to include notice and a search provision as the most feasible method of style protection. Respectfully submitted. SAMUEL KAPLAN, Executive Director of National Association of Style Creators, Inc., and Hon. WILLIAM I. SIROVICH, AIRPORT PUBLISHERS, INC., House of Representatives, Washington, D. C. HONORABLE SIR: I understand that bill no. S. 3047 is now before the Committee on Patents of the House of Representatives and I would like to urge that it be reported and acted upon during the current congressional session. As you doubtless realize, copyrights are extremely vital to the publication business, an industry which employs a large number of people, which should flourish in practically every locality, and which has been particularly hard hit during the last 3 or 4 years; so I hope that you will do what you can to further action on this bill. Yours truly, COMMITTEE ON PATENTS, JAMES F. FOSTER, Vice President. DIKE, CALVER & GRAY, Boston, Mass., April 7, 1936. House of Representatives, Washington, D. C. SIRS: At the suggestion of Everett N. Curtis, chairman of the copyright committee of the American Bar Association of which I am a member, I send you herewith two copies of a criticism and comment regarding the Duffy copyright bill, S. 3047, prepared by me and my partner, Cedric W. Porter. Respectfully, GEORGE P. DIKE. CRITICISM, COMMENT, AND QUESTIONS REGARDING THE PROVISIONS OF THE PENDING DUFFY COPYRIGHT BILL, S. 3047 For simplicity, the provisions of this bill are considered in the order in which they occur in the bill. AMENDMENT TO SECTION 3 The last of section 3 has been amended to read: "The copyright upon composite works or periodicals shall give to the author or other owner of each part or contribution therein all the rights which he would have if such part or contribution were individually copyrighted in his name." I thoroughly approve this amendment, if its language is regarded as broad enough to give the author the right to sue for infringement in his own name alone. If anyone has any doubt that this language does not include such right, I think the sentence should be amended to make it clear that such right is granted by adding the words "including the right to protect and enforce his rights by suit in his own name alone." AMENDMENT TO SECTION 5, SUBSECTION G Section 5, subsection g, has been amended to read: "(g) Works of art; models or designs for works of art, and artistic models or designs intended to be applied to or embodied in manufactured products." I thoroughly approve of this amendment. The present act of 1909, as interpreted by the Register of Copyrights did not, of course, provide copyright protection for productions of the industrial arts utilitarian in purpose and character, even if artistically made or ornamented. Their protection was left to the design patent law. Design patents are not, however, a satisfactory way of protecting artistic designs. The courts are continually looking for "invention" in a patent design, which is not the proper test. Failing to find "invention" over the prior art, the design patent would be held invalid. Obviously in creating an artistic design one does not make an "invention" in the usual sense. The result has been that design patents are virtually worthless for the protection of designs. Copyright is the obvious means for their protection. I think this language of subsection (g) is broad enough to include artistic designs in textiles, draperies, wallpaper, and the like. But if anyone has any doubt about it, the section should be amended to make it clear that such protection is granted. Such designs are artistic creations like any other artistic property and copyright protection should be extended to them. See further discussion on this point under section 25, subsection 5, paragraph 3. AMENDMENT TO SECTION 15, AMERICAN MANUFACTURE I agree thoroughly with what Judge Curtis has to say as to the requirement of American manufacture of books, pamphlets, maps, and the like and have nothing to add to his statements. I think section 15 should be stricken out of the Copyright Act. Obviously the tariff is the proper way of taking care of the interests of the American printers, but if for political reasons this is not practical, the requirement of American manufacture certainly should be limited to American authors. AMENDMENTS TO SECTION 25, DAMAGES I agree in the main with these amendments. Twenty thousand dollars is not too high for a maximum of statutory damages, but I think that a minimum of at least $100 should be added. The amendments to section 25 now place these statutory damages upon their proper basis, making it clear that they are awarded, not as an approximation of actual damage suffered by the copyright owner, but as an amount sufficient to prevent their operation as a license to infringe. Under the old act, many judges could not get away from the idea that they were awarding damages as such, and when a plaintiff could not prove actual damages (which was the usual case), they felt that only the minimum damages of $250 should be awarded. The result was that for $250 the defendant secured a license to infringe which he could not have obtained from the plaintiff voluntarily for many times that sum. Now, if the courts will administer the act according to its intent, no defendant will find it more profitable to infringe than to buy a license. In the words of subsection (a), paragraph 3 (p. 17, line 24; p. 18, lines 1 and 2) "but in case of a newspaper reproduction or a copyright photograph such damages shall not exceed the sum of $200", "or" is apparently a misprint and should read "of." The present act of March 4, 1909 (sec. 24, subsection (b)) reads "of", and it is believed that no change is intended. If the bill as enacted by the Senate read "or", the error should be corrected to avoid confusion. AMENDMENT TO SECTION 25, SUBSECTION (D) The amendment to subsection (d) reads: "(d) In any action against publishers, distributors, or sellers of periodicals, magazines, or newspapers for infringement of copyright, the plaintiff shall not be entitled to enjoin the alleged infringement as to any matter claimed to infringe such copyright when any part of such material has, prior to the time when action was commenced, been included in any issue of such periodicals, magazines, or newspapers upon which the work of manufacture has actually begun, or to sequester, impound, or destroy any issue containing such alleged infringing matter, or the means for publishing such issue except upon proof to the satisfaction of the court that the manufacture of the issue containing such alleged infringing matter or the first installment thereof was commenced with actual knowledge that copyright subsisted in the work alleged to have been infringed." Does the failure of such proof resulting in the denial of an injunction and the sequestration or destruction of infringing material deprive the district court of its equity jurisdiction, and leave a plaintiff to his remedy at law before a jury? If so, subsection (d) should be amended to make it clear that in such case the district court sitting as a court of equity is not deprived of its equity jurisdiction to award damages and other relief as provided in section 25, and that the plaintiff is not thereby left for his remedy to an action at law for damages alone as determined by a jury. Some defendant's lawyer will unquestionable raise this point as this subsection is at present worded. I suggest that subsection (d) be amended by attaching a proviso reading: "Provided, That the plaintiff's failure to adduce such proof shall not deprive the court of its equity jurisdiction or its power to award damages and other relief as provided in this section." AMENDMENT TO SECTION 25, SUBSECTION (G), PARAGRAPH 3 Section 25, subsection (g), paragraph 3, reads: "(g) There shall be no liability, civil or criminal, under this act, on the part of any person for the following: "(3) The reproduction, manufacture, distribution, and sale of designs or patterns for wearing apparel or pictorial or other representations or illustrations of such designs, patterns, and wearing apparel”— It is not clear to me what this paragraph is intended to cover. If section 5, subsection (g), grants copyright protection for original styles in gowns, dresses, and other wearing apparel, as its language purports, does this paragraph in section 25 make an exception to section 5, subsection (g), and deny protection for such original styles? Or does it mean merely that designs and patterns for wearing apparel, like paper Butterick patterns, and illustrations in Vogue. are excepted? Incidentally, should not "and" in paragraph 3 (p. 23, line 9) read "for"? It then corresponds with line 7-"patterns for wearing apparel." This looks like a misprint. The effects of this section are so complicated and far reaching that I do not feel competent to express an opinion on it. Certainly the language of this paragraph should be clarified, if it is to remain in the Copyright Act. AMENDMENT TO SECTION 39, STATUTE OF LIMITATIONS I think a 3-year statute of limitations on civil suits is much too short. This may be all right for criminal actions, but for civil actions a 6-year statute of limitations is certainly desirable for the protection of authors and their property. I see no reason in copyright suits for cutting in half the usual period of time allowed for bringing a civil action. AMENDMENT TO SECTION 41, SUBSECTION (B), "RIGHT TO OBJECT" This paragraph reads: (b) Independently of the copyright in any work secured under this act, as amended, and even after assignment thereof, the author retains the right to claim the authorship of the work as well as the right to object to every deformation, mutilation, or other modification of the said work which may be prejudicial to his honor or to his reputation: Provided, however, That nothing in this paragraph shall limit or otherwise affect the right or full freedom of contract between the author of a work and an assignee or licensee thereof, or invalidate any express waiver or release by the author of any such rights or of any remedies or relief to which he might be entitled in consequence of a violation thereof, and the assignee or licensee of the author's moral right may, with the author's permission, make any change in the work which the author himself would have had a right to make prior to such assignment. "In the absence of special contract, or notice by the author at the time he consented to the use of his work, the necessary editing, arranging, or adaptation of such work for publication in book form or for use in a newspaper, magazine, or periodical, in broadcasting, in motion pictures, or in mechanical or electrical reproduction, in accordance with customary standards and reasonable requirements, shall not be deemed to contravene the right of authors reserved in this section: Provided, That nothing in this section shall be deemed to alter or in any manner impair any right or remedy of an author at common law or in equity." I object to this paragraph as being very poorly drawn. It is indefinite, illusory, and contradictory. It purports to give an author protection against butchering and mutilation of his work when he sells the motion-picture rights to a producer for instance, but fails to provide any remedy. By withholding an effective remedy, the provision is worthless. The joker nullifies it. If the author claims his right of authorship in the work and objects to its deformation, mutilation, or other modification by a producer, as provided in this paragraph, what happens? Can he secure an injunction to prevent the publication or performance of his copyrighted work in any form unless it meets with his approval? Can he compel the reassignment of the copyright or the rights granted under it, returning the consideration paid therefor, if the producer refuses to publish or perform the copyrighted work in a manner which is not "prejudicial" to the author's "honor or to his reputation"? Can he prevent the assignee of the motion-picture rights, for instance, from advertising or representing that the motion picture is the author's work, or that it is based upon, adapted or arranged from the author's work, and can he prevent the producer from using the author's name and title of his work in connection with the motion picture, when the author refuses to recognize it as his own work, because "prejudicial to his honor or to his reputation"? The statute does not say so. It merely says that he has the "right to object", and, as every lawyer knows, a right to object without a remedy is worthless. If this provision is to remain in the statute, it should at least provide some sort of remedy to prevent violation of the rights preserved to the author. I appreciate that such a provision requires a delicate balancing of interests, that both parties have interests which are entitled to consideration and protection. If the author, for instance, is given a right to an injunction to prevent the publication or performance of his copyrighted work in any form unless it meets with his approval, he can cause terrific loss to a motion-picture producer by withholding approval of a picture which may have cost a million dollars to produce, or by compelling the reassignment of the copyright on returning the consideration paid for it, after the picture has been completed. But I also know that frequently when the motion-picture people have bought the rights to a copyrighted work, it is thereafter butchered and mutilated beyond all possible recognition by its alleged author, or that its alleged author would be ashamed to acknowledge it as his own work. Nevertheless, in such a situation the author should have some remedy. The obvious one, which will protect the author and yet not damage the producer, is to permit the author to deny to the producer the right to use his name or the title of his copyrighted work in any way in connection with the motion picture, which the author refuses to recognize as his brain child. If this right to claim authorship in a work after it has been assigned is to be preserved to the author (which I do not think necessary), I think the present subsection (b) should be stricken out and a provision substituted, reading in substance as follows: "(b) In the absence of written agreement to the contrary, an author shall retain the right to claim the authorship of his work, and the right to object to every deformation, mutilation, or other modification of his said work, which he may regard as prejudicial to his honor or to his reputation, and these rights shall exist independently of the copyright secured in his work, and after assignment thereof. If, in the absence of such agreement to the contrary, the assignee or licensee of any rights under the author's copyright shall edit, arrange, or adapt his work for publication in book form or for use in a newspaper, magazine, periodical, in broadcasting, in motion pictures, or in mechanical or electrical reproduction, in a manner which the author shall regard as prejudicial to his honor or to his reputation, the author shall have the right to refuse the use of his name in connection with the alleged arrangement or adaptation of the author's work and to prevent by injunction any advertising or representation that the said objectionable arrangement or adaptation is derived from or based upon any copyrighted work of said author: Provided, That the provisions of this paragraph shall not affect or apply to assignments or licenses granted prior to the enactment of this provision." I think a provision such as the foregoing would protect the interests of both parties without endangering the rights of either. Of course, such a provision can be easily circumvented by written agreement to the contrary, but at least the unwary author does not have to agree to such a contract if he does not want to. I do, however, seriously question the wisdom or the necessity for a provision such as subsection (b) in any event in the Copyright Act. An author at present can secure the same rights, even to an injunction against the publication or performance of his copyrighted work in any form unless it meets with his approval, by a provision to that effect in his contract. Since the trouble sought to be remedied by subsection (b) can be prevented without it by agreement, and can be circumvented if enacted by agreement to the contrary, it |