years The statutory notice requirement of Title I is also suited to protecting original typeface designs. A statutory form of copyright notice is still required. However, judicial sanction is given to permitting an abbreviation or generally known alternative designation in lieu of the name of the copyright owner (Section 401(b) (3)). More significantly, Section 405 (a) makes clear that the notice requirements of Section 401 are not absolute, and, unlike the present law, the outright omission of the copyright notice does not automatically forfeit protection and throw the work into the public domain. Under the proposed law, a work published without any copyright notice would still be subject to statutory copyright protection for a least five years, whether the omission was partial or total, unintentional or deliberate (Section 405(a) (2)). Of special interest is Section 405 (a) (3) which militates against loss of copyright where the notice is omitted in violation of an express requirement in writing by the copyright owner. Presumably, the sale of a grid bearing a copyrighted typeface could be made with the written condition that the purchaser always use the statutory notice of copyright in making copies of characters from the copyrighted typeface. The failure of the purchaser-i.e., the type setter-to follow this requirement would not result in a loss of copyright in the typeface, as a whole, by the claimant, who would still be protected from having the entire typeface copied by a competitor. On the other hand, if the type setter omitted the claimant's notice, Secion 405 (b) expressly provides that an innocent infringer incurs no liability for actual or statutory damages for any infringing acts committed before receiving actual notice that registration for the work had been made under Section 408, if he proves that he was misled by omission of the notice. At the November 6, 1974 hearings before the Copyright Office, concern was expressed over the right of reprint houses to reproduce certain copyrighted works. If the work sought to be reproduced bears no notice of copyright covering the typeface in which the work is set, the reprinter would appear to have immunity from infringement under Section 405 as an innocent infringer. Moreover, it is significant that Section 108 gives an absolute right of reprinting in limited numbers for limited purposes-specifically, for archival reproduction or replacement of a damaged copy by a library or archive (Section 108(b) (c)). In view of the limitation in Section 108(h), a reprinter would not have the right to reprint out-of-print works which are set in a typeface for which there is a subsisting copyright unless the reprinter could establish “fair use” under Section 107 or "innocent infringement" under Section 405. Section 113 relates to the scope of the exclusive rights in pictorial, graphic and sculptural works. Sub-section (a) provides that the exclusive right to reproduce a copyrighted graphic work includes the right to reproduce it in or on any kind of article, whether useful or otherwise. Sub-section (a) (1) further provides that the copyright owner's rights in a graphic work that portrays a useful article is neither greater nor lesser than the rights which the owner held as of December 31, 1974 under Title 17, U.S. Code, the common law, or the statutes of a state. But this limitation in sub-section (a) (1) does not appear to apply to typeface designs. It applies only when the copyrighted work portrays a useful article as such, for example, a drawing of an automobile vis-a-vis the exclusive right to make automobiles of the same design, see Senate Subcommittee on Judiciary report, No. 93-983, page 138. In the case of typeface, what is being portrayed is the typeface which, of itself, is the work of art, rather than a picture of something else. Sub-sections (b) and (c) of Section 113 give the owner of copyright in a graphic work which is utilized in an original ornamental design of a useful article an option to seek protection under the provisions of Title III of the Copyright Law revision, in which event copyright terminates with respect to its utilization in useful articles. However, if the copyright owner does not obtain registration under Title III, his copyright in the graphic work continues in all respects under the general copyright law. Turning to Title III, the design protection section intended for the protection of ornamental designs of useful articles, its preparation and purposes have been the subject of numerous hearings. It is comprised of Sections 301–335. As stated by the Majority Report of the Committee on the Judiciary, at page 211: "The purpose of the proposed legislation, as amended, is to encourage the creation of original, ornamental designs of useful articles by protecting the authors of such designs for a limited time against unauthorized copying. The title... is intended to avoid the defects of the existing copyright and design patent statutes by providing, simple, easily secured and effective design protection for the period of five years, or, if renewed, a period of ten years, under appropriate safeguards and conditions." In reviewing the hearings on the design protection bills, it is interesting that the arguments of the proponents of the bills closely parallel those in favor of the registration of the claim of copyright in typeface. The arguments of the opponents of the design protection bill are markedly similar to those objecting to copyright in original typeface designs. One fact is clear from the prior design protection bills and the hearings thereon-none of them considered typeface, as such. If applicable to original typeface designs, the design protection bill could provide an excellent avenue for their protection, with the singular exception that the term of protection is too short! The difficulty is that it is unclear whether original typeface designs come within the definition of matter covered by the design protection bill. Section 301 provides: (a) the author or other proprietor of an original ornamental design of a useful article may secure the protection provided by this title upon complying with and subject to the provisions hereof. (b) for the purpose of this title — (1) a "useful article" is an article 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 a part of a useful article shall be deemed to be a useful article. (2) the "design of a useful article," hereinafter referred to as a "design," consists of those aspects or elements of the article, including its two dimensional or three dimensional features of shape and surface, which make up the appearance of the article. (3) a design is "ornamental" if it is intended to make the article attractive or distinct in appearance. (4) a design is "original" if it is the independent creation of an author who did not copy it from another source. The hearings on the design protection bill indicate that its purpose is to cover such things as wallpaper, drawings converted into three dimensional articles or drawings used decorativly on three dimnsional articles, furniture, toasters, coffee pots, carpets, and the like. It is not intended to cover something which is at all times a work of art as the term is now interpreted by the Copyright Office; see Hearings of August 15-17, 1961 before the Senate Committee on the Judiciary, 87th Congress, 1st Session, page 168. It is Mergenthaler's position that an original typeface design is a work of art, and stays at all times a work of art, no matter what use is made of it. Unlike the cartoon which may be reproduced on an article of furniture, or the works of art which may be incorporated on wallpaper, the typeface designs are not converted to some other utilitarian article. They always remain exactly what they are. On the negative side of Title III, it is arguable that typeface cannot meet the statutory definition of an "useful article" on the grounds that its intrinsic, utilitarian function is to portray the appearance of an article-i.e., the letter form or to convey information [Section 301 (b) (1)]. Either of these aspects would appear to defeat the right to secure protection for original typeface designs under the design protection bill. The hearings on the bill have offered little guidance in this area. Assuming, arguendo, that an original typeface design is a "useful article" as defined in Section 301 (b) (1), then the definitions of "design" and "ornamental" in Section 301 (b) (2) and (3), accurately describe the protectible subject matter of an original typeface design. Section 302 provides that protection shall not be available for a design that is: "(a) not original; (b) staple or commonplace, such as a standard geometric figure, familiar symbol, emblem or motif, or other shape, pattern, or configuration that has become common, prevalent, or ordinary; (c) different from a design excluded by sub-paragraph (b) above, only in insignificant details or in elements which are variants commonly used in the relevant trades; or (d) dictated solely by a utilitarian function of the article that embodies it; (e) composed of three dimensional features of shape and surface with respect to mens', womens', and chil drens' apparel, including undergarments and underwear." Presumably, the definition of “original” in Section 302 (a) is the same as the term has been defined by the courts under the present Copyright Law. If this assumption is correct, this sub-section should not pose any impediment to the protection of original typeface design. The same cannot be said of Section 302 (b). The very essence of typeface is that it be a familiar motif, shape, pattern, or configuration, irrespective of the design elements which are added to it. Equally detrimental to protection for original typeface designs under Title III is Section 302(c) since many of the elements with which a particular typeface is designed are variants of others which may have been commonly used. The distinction is that an original typeface design is a new combination of old elements which gives an entirely new appearance to the typeface, or it may be an assemblage of entirely new elements. To the extent that the design elements incorporated in a particular typeface design are old, the mere fact that they are combined in a new form appears immaterial under Section 302 (c), which would deny protection for the design. Thus, even assuming that typeface is a "useful article" within the definition of Section 301 (b) (1), protection would apparently be denied under Section 302(b) or (c). In this circumstance, the design protection bill offers little comfort to the designer of original typeface. Another shortcoming of the design protection bill as it applies to original typeface designs is the term of protection. Under Section 305, the term is five years, renewable for an additional five year period. As indicated earlier in this statement, typeface has an enduring life. The most appropriate term of protection is believed to be seventy-five years. As a practical matter, the market for typeface is just being established by its tenth anniversary date. There would be a reasonable expectation of at least some return if the protection for typeface were extended to fifteen years. At a very minimum, the protection for original typeface designs must be fifteen years! In this regard, it is significant that Article IX of the Vienna Treaty provides: Article IX-Term of Protection (1) the term of protection may not be less than fifteen years. |