718

MINNESOTA LAW REVIEW

II. THE COPYRIGHT ACT OF 1976

A. THE REVISION EFFORT

[Vol. 67:707

The decision to undertake a major revision of United States copyright law provided proponents of protection for industrial design a unique opportunity. Influenced perhaps by the position of the Copyright Office, however, their energies focused not on copyright per se, but rather on a series of companion bills offering sui generis protèction for ornamental designs of useful articles.

In a 1961 report, the Copyright Office reaffirmed its opposition to the extension of copyright in useful articles beyond that available under its existing regulations.52 Noting the anticompetitive consequences of broad protection for commercial design, the report concluded that the duration of copyright and the potential liability of innocent distributors, together with other specifics of the copyright system, made copyright protection unsuitable for industrial design.53 Instead, the report urged consideration of separate industrial design legislation. The suggestion was hardly novel. Bills for the protection of industrial design had been introduced regularly since the turn of the century,54 and the issue had generated a plethora of conflicting analysis. The Copyright Office itself had developed an extensive bibliography on the subject.55

During the 1960's, separate design protection bills passed the Senate on three occasions.56 In 1969, the Senate formally joined the design proposals with copyright revision.57 Carried by the momentum of the revision effort, design protection legislation appeared as Title II of the general copyright revision bill when the Senate ultimately forwarded the legislation to the House in 1976.58 Title II provided protection for the "original ornamental design of a useful article."59 "Staple or commonplace" designs were excluded, together with those "dictated solely by a utilization function of the article."60 Protection ex

52. See id.

53. See id. See generally Ringer, The Case for Design Protection and the O'Mahoney Bill, 7 BULL COPYRIGHT SOC'Y 25 (1960).

54. See supra note 6.

55. See COPYRIGHT OFFICE, BIBLIOGRAPHY ON DESIGN PROTECTION (1955 & Supp. 1959). The Bibliography was further updated in 1976. See supra note 7. 56. H.R. REP. No. 1476, supra note 3, at 50.

57. Id.

58. Id. at 49-50.

59. S. 22, tit. II, supra note 6, § 201(a).

60. Id. § 202. In an effort to win congressional approval, the three-dimen

1983)

COPYRIGHT

719

tended for a maximum of ten years,61 and prohibited the manufacture, importation, or sale of articles "the design of which has been copied from the protected design, without the consent of the proprietor."62 The bill established administrative machinery for the registration of protectible designs, but left to the President the designation of the appropriate governmental office to oversee the scheme.63 Title I provided that copyright in works utilized in connection with useful articles was unaffected by the protection available under Title II, unless the proprietor actually obtained a Title II registration.64

Title II, designated the Design Protection Act of 1975,65 did not survive consideration in the House. The Judiciary Committee "chose to delete Title II in part because the new form of design protection provided by Title II could not truly be considered copyright protection and therefore appropriately within the scope of copyright revision."66 The House Report made passing reference to the bill's failure to designate a specific agency to administer the system, although the Copyright Office had by this time volunteered its services,67 and to the unresolved issue of protection for typeface designs.68 The principal objection, however, was more fundamental:

Finally, the Committee will have to examine further the assertion of the Department of Justice, which testified in opposition to the Title, that Title I would create a new monopoly which has not been justified by a showing that its benefits will outweigh the disadvantage of removing such designs from free public use.69

Proponents of specialized design protection were left only with

sional shape of wearing apparel was also excluded. Id. § 202 (3). See SECOND SUPPLEMENTARY REPORT, Supra note 30, at 204.

61. S. 22, tit. II, supra note 6, § 205.

62. Id. § 208. "Innocent" retailers were afforded a broad measure of protection. Id. § 208(a)(2).

63. Id. § 230.

64. S. 22, tit. I, 94th Cong., 1st Sess. § 113(c), 122 CONG. REC. 3841, 3845 (1975), reprinted in S. REP. No. 473, 94th Cong., 1st Sess. 12 (1975). Passage of Title II would thus not have eliminated the need to confront the issue of copyright in useful articles.

65. S. 22, tit. II, supra note 6, § 235.

66. H.R. REP. No. 1476, supra note 3, at 50.

67. S. REP. No. 473, 94th Cong., 1st Sess. 166 (1975); SECOND SUPPLEMEN TARY REPORT, supra note 30, at 205-06.

68. H.R. REP. No. 1476, supra note 3, at 50. The question of copyright or other protection for typeface designs had stirred considerable controversy dur ing the latter stages of the revision effort. Of particular concern was the possi bility of "creating exclusive rights for a few big manufacturers, who would use them to enforce tying arrangements between their machines and fonts," and the specter of "suits to enjoin publication of printed matter" composed from infringing type. SECOND SUPPLEMENTARY REPORT, supra note 30, at 201.

69. H.R. REP. No. 1476, supra note 3, at 50. The Conference Committee ac

720

MINNESOTA LAW REVIEW

an invitation to try again.70

[Vol. 67:707

The legislative energy necessary to grapple with the issue of design protection was apparently exhausted in the formulation of Title II. In the copyright revision bill itself, there was old wine in old bottles. The cornerstone of the revision bill's approach to copyright in useful articles was a narrow codification of Mazer, 71 which Congress read as holding "that works of art which are incorporated into the design of useful articles, but which are capable of standing by themselves as art works separate from the useful article, are copyrightable."72 The "works of art" classification of the 1909 Act was abandoned and replaced by a reference to "pictorial, graphic, and sculptural works."73 This new category endeavored to supply "as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design."74 The line, however, was neither clear nor new. After declaring that "pictorial, graphic, and sculptural works" included works of "applied art," the definition stated:

[T]he design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.75

ceded to the House position. See H.R. REP. No. 1733, 94th Cong., 2d Sess. 82 (1976).

70. The issues raised by Title II have not been resolved by its deletion from the Copyright Revision Bill. Therefore, the Committee believes that it will be necessary to reconsider the question of design protection in new legislation during the 95th Congress. At that time more complete hearings on the subject may be held and, without the encumbrance of a general copyright revision bill, the issues raised in Title II of S. 22 may be resolved.

H.R. REP. NO. 1476, supra note 3, at 50. "The full range of design protection issues, however, stands as one of the most significant and pressing items of unfinished business now on the Congressional agenda." Ringer, The Unfinished Business of Copyright Revision, 24 U.C.L.A. L. REV. 951, 976 (1977). For the latest effort, see H.R. 20, 97th Cong., 1st Sess. (1981), reprinted in 2 COPYRIGHT L REP. (CCH) 20,097 (1981).

71. "Subject to the provisions of subsections (b) and (c) of this section, the exclusive right to reproduce a copyrighted pictorial, graphic, or sculptural work in copies under section 106 includes the right to reproduce the work in or on any kind of article, whether useful or otherwise." 17 U.S.C. § 113(a) (1976). See also 17 U.S.C. § 101 (1976) (definition of "pictorial, graphic, and sculptural works").

72. H.R. REP. No. 1476, supra note 3, at 50.

73. 17 U.S.C. § 102(a) (5) (1976).

74. H.R. REP. No. 1476, supra note 3, at 55. The Report refers to the effort to achieve clear lines and distinctions twice in the space of three paragraphs, apparently seeking credit at least for good intentions.

75. 17 U.S.C. § 101 (1976). In its entirety, the definition states:

30-425 0-84--17

1983]

COPYRIGHT

721

The administrative regulations of the 1950's were now formally codified in the Copyright Act of 1976.76

The legislative history sheds additional light on the familiar criteria of separate identity and independent existence. Two-dimensional graphic works and three-dimensional carvings or statues incorporated into utilitarian articles can exist independently as works of art and are thus eligible for copyright. Congress was unmistakably clear, however, that it intended to exclude industrial design from the subject matter of copyright:

On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee's intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies' dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill.78 The reference to "physically or conceptually "79 separable elements perhaps extended prior law, but little else was new. "Applied art" was in and "industrial design" was out. Yet at some point the two met, and "separability" had already proven a poor benchmark.

The failure to win protection for industrial design reflects more than the vagaries of the legislative process. Sixty years of unsuccessful lobbying suggests more substantive difficulties.

"Pictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams, and models. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

Id. A definition of "useful article" is also provided: "A useful article' is an arti cie having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a useful article.'" Id.

76. See Pub. L. No. 94-553, 90 Stat. 2541 (codified at 17 U.S.C. §§ 101-810 (1976)).

77. H.R. REP. No. 1476, supra note 3, at 55.

78. Id.

79. Id. (emphasis added). The Copyright Office had previously employed the phrase "conceptually separated" in an effort to describe the import of its existing regulation on separability. See SECOND SUPPLEMENTARY REPORT, supra note 30, at 194. But see Esquire, Inc. v. Ringer, 591 F.2d 796, 803-04 (D.C. Cir. 1978), cert. denied, 440 U.S. 908 (1979) (dismissing the House Report's "isolated reference" to conceptual separability).

722

MINNESOTA LAW REVIEW

[Vol. 67:707 One can appreciate the reluctance of Congress to subsume industrial design within the scope of copyright, or to authorize. a more specialized monopoly, by considering the basic arguments generally used to support the recognition of proprietary rights in intellectual property.

The Constitution, authorizing legislation "To promote the Progress of Science and useful Arts,"80 suggests an incentive rationale designed to encourage artistic and inventive activity through the prospect of exclusive rights in the tangible results of creative efforts.81 Such stimuli may be necessary, it is argued, when the ease of copying impedes the producer's ability to extract through the market the reward that consumers would otherwise willingly pay. Without protection against copying, there may be less investment of resources in creative activity than society would wish. Such proprietary rights must be limited, of course, or the public will be effectively denied the benefits sought by the constitutional mandate. At this level, the copyright and patent laws reflect a balance between incentive and dissemination through competition.

This economic perspective is sometimes supplemented by moral appeals. The idea of a natural right to the fruits of one's labors, and the aversion to permitting the enrichment of another at the producer's expense, are no less powerful here than in other areas of the law.82 In the realm of artistic works, there is the further notion that the intimate relationship between art and artist justifies special efforts to preserve the integrity of the work.83 From both economic and moral vantage points, however, the case for expansive design protection is weak.

The most obvious effect of extending copyright or more specialized protection to the design of commercial products would be the exclusion of such designs from the public domain, thus preventing their free use by competing manufacturers.84 The necessity of such an artificial incentive, however, is hardly

80. U.S. CONST. art. I, § 8, cl. 8.

81. "The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in 'Science and useful Arts." Mazer v. Stein, 347 U.S. 201, 219 (1954).

82. See Denicola, supra note 30, at 519-20.

83. See 2 M. NIMMER, NIMMER ON COPYRIGHT § 8.21 (1982).

84. At present, only those designs capable of meeting the stringent requirements of design patent law may remain outside the public domain. See supra note 30.