I am testifying in an individual capacity on this subject, although as graciously adverted to by the chairman, I have served as the counsel to the National Committee for Effective Design Legislation, a group I will mention in a moment, and I am also counsel to two organizations which are also appearing here on a slightly different subject this morning. That is, the International Typographic Composition Association and the Advertising Typographers Association.

One thing is indisputable about title II and that is its venerability. It is even older than title I, which sometimes seems like a hard task to achieve. It first saw the light of day in 1957 when Chairman Willis of this subcommittee introduced the bill at the request of the coordinating committee of the National Council of Patent Law Associations. The Chairman of the coordinating committee was Giles Rich, who is presently a judge of the U.S. Court of Customs and Patent Appeals. Judge Rich presided over an eminent drafting committee consisting of acknowledged leaders of the patent bar and was enormously assisted by some well-known and talented advisers from the Patent Office such as Pat Federico, and from the Copyright Office such as George Cary and the present Registrar, Barbara Ringer.

The Willis bill of 1957 as drafted by this group then went through a rather extensive period of refinement. The refinement process was done through a group called the National Committee for Effective Design Legislation. This group was operating from 1958 for about a decade and its job was to receive the recommendations of industry and the bar and try to answer problems and suggestions that came up through those years, and as I indicated, I served as counsel for this national committee through its years of operation.

In the Halls of Congress the developments were extensive. The Senate Judiciary Subcommittee on Patents, Trademarks, and Copyrights held three separate sets of hearings through the 1960's and indeed the Senate passed the bill on three occasions. The bill was consistently supported by the Patent Office and the Copyright Office, both of whom I gather have issued statements of support already to the subcommittee. I believe the Copyright Office letter that I saw of yesterday makes reference to the need for this and the statement of Assistant Commissioner Tegtmeyer indicated support. The Justice Department always consistently opposed the bill in almost precise language of a statement that I have seen submitted to this subcommittee. The Senate nevertheless passed the bill on three occasions.

The House consideration was focused in the 88th Congress when this subcommittee held a 1-day, I believe, hearing in 1963. The subcommittee reported the bill without amendments in August of 1964, but that Congress adjourned without any action taken by the full committee or by the House itself.

In 1969, a historic docking took place, although not nearly as significant as what we are anticipating within the coming hours. The Hart design bill in the Senate was reported out by the Judiciary Committee of the Senate as title III of the then-pending copyright bill. Since then, the two bills have been joined together and, as the subcommittee knows, were both passed as part of S. 1361 by the Senate last year.

I will not attempt at all, certainly at this time, to summarize the testimony at these hearings, but I will represent to the committee that they did cover the kinds of industry, commercial, economic, and cul

tural questions on the need for design protection that have become familiar to this subcommittee in other areas. The closest parallel that I have seen through the years is the kind of testimony on the recordpiracy question. Some of the same points were made, some of the same arguments were made. It was noteworthy that in this history, signifificantly in each industry, it was the small businessman who sought design protection, to protect the only weapon he had which was creativity.

My purpose today, however, is to explain the provisions of the bill against the background of present law.

The bill provides for a specialized sui generis type of protection in between copyrights and patents. I think everyone would agree, though, that it is much closer to copyright in its concept, but much more limited than copyright in its duration, in the scope of protection, in the kind of designs which are protected-no, I am sorry. The kind of designs that are protected might be broader than copyright, but the amount of protection, the kind of people who are infringers, the term, are much more limited than copyright.

Now, I think I can pass over quickly perhaps the inadequacies of present law because I noted that they were mentioned in Assistant Commissioner Tegtmeyer's presentation. Suffice it to say that the design patent which, as the subcommittee knows, is a variety of patents which protect appearance and not function, has been considered inadequate in a number of industries for, I would say, principally three

reasons.

First, the standards are extremely high. The designer must introduce something that the world has never seen before. It must be a new step. It also must be a large step. In other words, it must not be merely the obvious next step because if it is, it is not considered an invention. It is considered obvious.

Now, this is a standard which many successful, attractive, and creative designs would not meet. The procedure requires searching in the Patent Office which takes as long as 2 years sometimes, during which time there is no protection. It is expensive in terms of fees, patent lawyer fees, and also the number of designs for which protection would have to be sought.

Copyright is potentially broader; it covers works of art, which is a rather elusive term, or has been through the years.

The first question is: Does "works of art" cover designs of useful articles? For many years, there were doubts. The Supreme Court resolved the doubts in the Mazer case, a decision which said that a work of art does not cease to be a work of art simply because it is embodied in a useful article.

As a result of this decision, the Copyright Office expanded its registration coverage, but still denied protection to works which-to designs which were not considered works of art, but you know, there is another thing wrong with copyright and that is for those relatively few designs which are covered the protection is actually too great. The term which is really geared to music, books, and other historic forms of copyright can, as the subcommittee knows, be as long as 56 years. Proposals in title I are to make it even longer. The remedies are rather broad in terms of catching within the net of liability innocent parties, retailers, and the like. So that the design bill, which I am finally going

to get to in terms of its provisions, seeks to grant protection in areas where protection does not exist today, but to grant it in a much more limited way than the copyright law would.

Turning to the bill itself, the standard of protection is that a design can be protected if it is the original creation of its author. Now, original in this sense means that it has not been copied from somebody else. The protected design need not meet the kinds of tests of novelty or unobviousness that I mentioned before with respect to a patent, and yet as the officials of the Copyright Office will concede, there are many designs, many works that are submitted which clearly are so common and staple as to merit no protection and this bill has a specific exclusion on such design, designs that are staple and commonplace, or even designs that are close to being staple and commonplace, and that is what I meant when I said it is in between copyright and patent. It is not as liberal as copyright, but it is far more liberal than patent.

The scope of protection: The original designer is protected basically only against the actual unauthorized copying of the design. If there is independent creation of the design, there is no infringement. Duration is a relatively short period-5 years with an optional renewal of 5 years.

Protection begins upon the making public of an actual article which embodies the design. I may say that in earlier days one could get registration simply by having a sketch or a picture and there was a suggestion in industry that that is too loose à concept. You have actually got to be on the market with an article.

Registration is more rigorous than it is under the copyright law. First of all, you must register within 6 months or you lose protection. The administration of the bill is one point I would like to mention. As to where registration takes place, the bill simply indicates that there is to be an Administrator and the President is to designate that Administrator. In approving S. 1361, the Senate Judiciary Committee expressed the view that the Office of Administrator should be located in the Patent Office. I would say, however, that this is an administrative question, certainly beyond my purview today. But the Copyright Office is, of course, another possible agency or we don't want to create new agencies, presumably-but presumably there could be some third.

There is no requirement for search as there is in the Patent Office, but the public is given an opportunity to petition administratively for cancellation. This is another attempt to allow industry to come in, hopefully, before anyone is sued.

The notice or marking provisions are much more liberal than copyright. They really, I guess, anticipated perhaps the liberality of title I. That is, there are incentives to put the notice on. Your remedies are sharply limited if you don't use the notice, but if you omit the notice, you don't forfeit protection of copyright as can happen today. As I mentioned, infringement is generally only against the actual maker of the copy, the copier or the importer of a copy. An innocent party generally, or retailers, processors, assemblers, are liable only under the most limited circumstances. Basically they are not liable for the infringement.

The remedies are similar on copyright. They provide for injunction, damages with a statutory provision, statutory damage provision, with a ceiling of $5,000, and so forth.

Finally, the relationship between existing design patent and copyright. The new title II would not affect the availability of design patents, but protection under title II would end if somebody went out and got a design patent. That is so much broader that if he got the patent, he would not need the protection under the bill.

Basically the bill does not either expand or contract the scope of copyright coverage. Copyright works which are embodied in useful articles are eligible for protection, but it is optional with the proprietor in that situation. Some proprietors might prefer to have it, to avoid the elusive work-of-art concept, get the 5 or 10 years' protection under this bill, and let it go at that, but if they do not do it, then copyright would remain. As I mentioned above, the purpose of the bill was to achieve the balance that the draftsmen thought was needed in this area. They sought to afford a moderate protection to original designs which may not be considered either inventions or works of art.

The protection is available relatively quickly. It is available without undue expense. The scope is no broader than actually needed. It extends only to copying and not to independent creation. The term is short but was felt to be generally sufficient.

I would, of course, be happy at this point, or at any subsequent point, to answer any questions that the subcommittee might have. Mr. KASTENMEIER. Thank you, Mr. Latman.

Is title II as written entirely acceptable to you? Do you see any amendment to it, any change that you would recommend?

Mr. LATMAN. Well, it is a difficult question, Mr. Chairman, only because I have to perhaps picture a-picture which hat I am wearing. As someone who tried to effect the various compromises, I am satisfied. However, there have been a couple of suggestions made quite recently which I would certainly have no objection to.

One was made by Assistant Commissioner Tegtmeyer who did indicate that the early protection here might jeopardize protection under foreign statutes, and I would say that that is a good point, and that I would certainly have no objection to giving the proprietor or applicant an option as to whether to follow the route that the Assistant Commissioner suggests, and that is not make the design public until it is registered, if he feels that he does not want to forfeit foreign protection.

Second, there has been a suggestion, indeed by my own clients in this other phase, concerned with the section 220(a), which parallels the provision in title I permitting somebody to go to court even though they don't have the certificate of registration. That applies in title I, and title II. If you apply, you pay your fee, you submit the papers and deposits that you are supposed to, but the Register of Copyrights under title I or the Administrator under title II says you are not entitled to protection, then, unlike the general thinking of what the current law is, you can go to court anyway and sue and join the Administrator— you don't join the Administrator. You notify the Administrator.

The suggestion has been made that this is in a new area and that was in the type-face area, but I would say that I would have no objection in general to modification of that provision.

Mr. KASTENMEIER. If indeed you may desire at any time to communicate to the committee in a particular sense, rather than in the general sense of discussing the bill in terms of modification as well, in;

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the sense that you may not have covered those this morning; you may do so.

Let me ask you a couple of general questions to put this into context. How do you respond to the charge or the comment that really title II shouldn't be in this bill, that it is riding piggyback on the revision bill which deals with many contentious matters and sort of as a center ring question that this is not the central question, not necessary to the bill, and therefore should be dealt with separately, particularly because you have described it as having a character of its own, not wholly copyright, not wholly patent law? How would you respond to that, Mr. Latman?

Mr. LATMAN. I would think, Mr. Chairman, that it would be entirely appropriate to have it joined in one bill. There are a number of reasons for this.

First, it is historic. Actually as I recall the very early days of the revision program in the Copyright Office itself starting in 1955, design and copyright generally were considered as part of the same overall problem. The reason that the design bill started out separately in 1957 was almost a question of timing, that the bill had crystallized in a form that the emerging copyright studies did not permit for copyright generally. So I would say that is one reason. I mean, in other words, it is not the fortuitous docking in 1969. It actually started out, I think, as part of the same problem.

No. 2, I think a lot of the considerations that this subcommittee has heard, and will hear, copyright issues, protection, users, and the like, do have enormous parallels in title II.

And third, I don't-in terms of the piggyback concept, I do think that this bill has shown, at least certainly in the Senate, that it could stand on its own feet in the terms of pros and cons and in terms of the historic action of this subcommittee in 1964.

I don't mean to suggest that those considerations are exhaustive or need bind this committee, but I think it shows that the bill can stand on its own feet and therefore should be appropriately combined.

Mr. KASTENMEIER. To the extent, Mr. Latman, that this creates new rights or new remedies, and I ask you this in-as a possibly difficult question, what economic effect will the bill in its present formulation have? Presumably, there will be some persons or entities that will have to come to account with those who register designs. Who will be affected and how will they be affected? Can you tell the committee? Mr. LATMAN. Yes, Mr. Chairman. To begin with, I think there has been some experience with this. A lot of the same people who clamored for design protection originally have actually gotten protection under copyright. I am referring to the textile people and the jewelry people, people of that type who were among the early supporters of the design bill. Because they also fought the battle on the judicial front and the administrative front, they were able to get protection. I think we have the experience in that.

I do not think experience has shown that one pays more for a copyrighted textile design or a dress made from it than one would from an uncopyrighted design. This parallels experience in the more traditional copyright areas. You don't pay, fortunately or unfortunately, more or less for a paperback of Dostoevsky than you do for other books.