Thank you for your invitation to comment on H. R. 1028 and related proposals to prohibit the unauthorized duplication of semiconductor chips and masks. I must begin by stating that I have nothing to contribute on what is of course the most fundamental question raised by these proposals--whether it is in fact wise to extend protection to such works. That decision must rest upon assessments of the extent to which economic incentive is threatened by unauthorized duplication, and of the burdens imposed by such protection in the form of increased costs and prices. I have no basis on which to assess the desirability of protection for semiconductor chips and masks, and thus confine my comments to the narrower issues raised by the attempt in H.R. 1028 to extend protection by incorporating these works within the scope of copyright. As an initial matter, I would like to offer a comment on the question of retroactivity. Although H. R. 1028 would not impose liability for acts occurring before its effective date, it does appear to extend protection to pre-existing mask works with respect to post-enactment infringements. It must be remembered that the constitutional clause authorizing federal legislation concerning copyrights and patents grants Congress the power "To promote the Progress of Science and useful Arts." In Graham v. John Deere Co., a case involving federal patent law, the Supreme Court noted that the clause is both a grant of power and a limitation, and that its exercise "may not overreach the restraints imposed by the stated constitutional purpose." The Court specifically indicated that Congress could not authorize patents that "restrict free access to materials already available." It is possible that retroactive protection for existing mask works may be beyond Congressional authority, since the incentive function of federal protection cannot justify the recognition of property rights in pre-existing works. When faced with similar issues in connection with the extension of copyright protection to sound recordings, the Congress chose to avoid this constitutional issue by expressly excluding recordings fixed before the effective date of the amendment. The limitations of the patent and copyright clause, however, might be overcome by resting protection for University of Nebraska-Lincoln University of Nebraska at Omaha University of Nebraska Medical Center The Honorable Robert W. Kastenmeier pre-existing mask works on the commerce clause. But there remains the danger that abandoning the long-standing tradition against retroactive protection for writings and discoveries would encourage others to also seek similar monopolies for past contributions that should rightly remain in the public domain. If protection of the scope afforded by H.R. 1028 to semiconductor chips and masks is indeed appropriate, I would urge the Committee to give serious consideration to the enactment of separate legislation specifically tailored to the unique requirements of such works. The restrictions embodied in H.R. 1028 go far beyond the traditional copyright monopoly. Both Congress and the courts have taken pains to insure that copyright protection has not interfered with free access to useful articles. Section 101 of the Copyright Act specifically limits protection to features of useful articles that can be separated from the utilitarian aspects of the work, and section 113(b) further insures that copyright will not inhibit the production of useful articles. The fact that manufacturers consider inadequate the limited protection currently available for masks as pictorial or graphic works under present copyright law itself illustrates that the restrictions they seek go beyond the traditional limits of copyright. Indeed, the protection extended by H.R. 1028 could not easily be accommodated within the structure of the design protection legislation that has long been before Congress, most recently as H. R. 2985. While overcoming some of the limitations with respect to copyright in useful articles, these bills have always been limited to the ornamental aspects of utilitarian objects. H.R. 1028 appears to provide the designer of a semiconductor chip a monopoly over its production, distribution and use. Only patent law has previously conferred such a right in utilitarian articles. The exclusive right to "use" a mask or chip embodying the mask work extends beyond any right traditionally considered within the scope of copyright. If protection of this magnitude is indeed necessary, separate semiconductor chip legislation would provide an opportunity to formulate the desired monopoly without the encumbrance of traditional copyright limitations, many of which are judicial doctrines not expressly contained in the Copyright Act. It would also prevent distortion of copyright concepts applicable to more traditional subject matter. I would like to offer two comments on specific provisions of H.R. 1028. In section 2, the definition of a "semiconductor chip product" requires that the product be a "writing" or "discovery" or that its use "affects commerce." This would require the courts in every application of the act involving such objects to make a constitutional determination as to the scope of the respective constitutional clauses. Particularly with respect to the copyright and patent clause, this approach has consistently been avoided in favor of an express or implicit Congressional finding that the category of work at issue lies within the scope of its authority. This permits a final judicial determination of the constitutionality of the 30-425 0-84--16 The Honorable Robert W Kastenmeier November 27, 1983 legislation, eliminating the necessity of reconsidering the constitutional issue on a case by case basis. In addition, since it is the mask work that is the subject of protection, it is to that work rather than the semiconductor chip that the constitutional standard must be applied. Finally, it is not entirely clear from the present language of the bill whether the exclusive right to "embody the mask work in a mask", or the other exclusive rights involving a "mask embodying the mask work", are meant to extend only to instances in which the protected work is copied, as is the rule under copyright law, or are instead intended to apply to all masks that embody a mask work substantially similar to the protected work, even if independently created, as in the rule under patent law. If protection is incorporated within the copyright system, the former interpretation will presumably be invoked, but in the event the bill is enacted as independent legislation, a clearer statement of intent may be desirable. Again, thank you for the opportunity to comment on these proposals. APPLIED ART AND INDUSTRIAL DESIGN: A SUGGESTED APPROACH TO COPYRIGHT IN USEFUL ARTICLES ROBERT C. DENICOLA Reprinted from 1983 by the Minnesota Law Review Foundation Applied Art and Industrial Design: A Robert C. Denicola* The word "copyright" evokes images of books, movies, or sound recordings. Further reflection might yield visions of paintings, photographs, or sculptural works. Few, however, associate copyright with belt buckles, table lamps, or pencil sharpeners-yet to some unsettled extent, even these items have their place in the copyright scheme. Copyright law has reluctantly embraced a variety of works embodied in utilitarian objects, while simultaneously purporting to exclude the general province of industrial design. The courts have concluded that a light bulb protruding from Michelangelo's David ought not render the statue unprotectible,1 while insisting that the overall design of modern street lights lies beyond the scope of copyright protection.2 The grudging inclusion of selected useful objects has led both Congress and the courts to seek a rationale that could stand fast against the deluge of mass-produced industrial goods. Although the search has not gone well, the decision to exclude the general appearance of commercial products from copyright protection remains unshaken.3 The result has been a patchwork of ad hoc decisions, united only by their common references to statutory formulations that do little more than restate the dilemma. The legal status of commercial design, however, is only partially fixed by copyright principles. Design patents long of Professor of Law, University of Nebraska. 1. See Mazer v. Stein, 347 U.S. 201 (1954). 2. See Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978), cert. denied, 440 U.S. 908 (1979). 3. See 17 U.S.C. § 101 (1976) (definition of "pictorial, graphic, and sculptural works"). "The Committee has added language to the definition of pictorial, graphic, and sculptural works' in an effort to make clearer the distinction between works of applied art protectable under the bill and industrial designs not subject to copyright protection." H.R. REP. NO. 1476, 94th Cong., 2d Sess. 54 (1976), reprinted in 1976, U.S. CODE CONG. & AD. NEWS 5659-5801 [hereinafter cited as H.R. REP. No. 1476). 4. See 35 U.S.C. § 171 (1976). 707 |