During the last day of hearings, both former Register of Copyrights Barbara Ringer and Professor Paul Goldstein testified that the requirements of Berne may not require the explicit treatment of architectural works in the manner contemplated in H.R. 1623.120 The witness from the American Institute of Architects (AIA) supported the provisions of H.R. 1623, but subsequently the AIA indicated that it would be preferable to make the construction of a building from copyrighted plans an act of copyright infringement. 121

As a result of the uncertainty that surrounded the architectural works language of H.R. 1623, the Subcommittee decided to scale back the extent of the amendments made to title 17. Thus, the bill reported by the Subcommittee only ratified the decision already made by the Congress in the 1976 Copyright Act that architectural plans are protected under the copyright laws. Although it is not an infringement merely to construct a building based on copyrighted architectural plans, it is an infringement to reproduce the plans themselves without permission of the copyright owner.

Under current law, the structural or functional aspects of buildings are not subject to copyright protection. 17 U.S.C. 101 (definition of "pictorial, graphic, and sculptural work" and "useful article") and 113.

The Committee concluded that existing United States law is compatible with the requirements of Berne. In addition to a degree of protection under copyright against copying of plans and separable artistic works, additional causes of action for misappropriation may be available under state contract and unfair competition theories. The bill leaves, untouched, two fundamental principles of copyright law: (1) that the design of a useful article is copyrightable 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 useful article; and, (2) that copyright in a pictorial, graphic, or sculptural work, portraying a useful article as such does not extend to the reproduction of the useful article itself.

Specifically, this means that even though the shape of a useful article, such as a building, may be aesthetically satisfying and valuable, the copyright law does not protect the shape. This test of separability and independence from the utilitarian aspects of the useful article does not depend upon the nature of the design-that is, even if the appearance of the useful article is determined by aesthetic, as opposed to functional considerations, only those pictorial, sculptural or graphic elements, if any, that can be identified separately from the shape of the useful article are copyrightable. Even if the three-dimensional design contains a separate and independent artistic feature (for example, a floral relief design on flatware

120 Statements of Barbara Ringer and Paul Goldstein, House Hearings, supra note 9, February 10, 1988. 121 Letter from B. Cheryl Terio, Director, Government Affairs, American Institute of Architects to Hon. Robert W. Kastenmeier, Chairman, Subcommittee on Courts, Civil Liberties and the Administration of Justice, March 7, 1988; Letter from Professor David Shipley, University of South Carolina, to B. Cheryl Terio, AIA, March 17, 1988; Letter from B. Cheryl Terio, AIA, to Lewis I. Flacks, Policy Planning Advisor, United States Copyright Office, March 28, 1988.

or a gargoyle on a building), copyright protection would not cover the over-all configuration of the useful article as such.

In the case of architectural works, in addition to protection for separable artistic sculpture or decorative ornamentation, purely non-functional or monumental structures may be subject to copyright.

The Committee has not amended section 113 of the Copyright Act and intends no change in the settled principle that copyright in a pictorial, graphic, or sculptural work, portraying a useful article as such, does not extend to the reproduction or manufacture of the useful article itself.

F. RETROACTIVITY AND THE PUBLIC DOMAIN

The Committee examined with particular attention whether Article 18 of the Berne Convention requires retroactive protection of works originating in Berne Union countries which may have fallen into the public domain in the United States due to failure to comply with prior statutory formalities. 121a Protection anew of Berne origin works whose term of protection in the United States had expired is clearly not required.

Further, there is considerable debate over whether any recognition of the "principle" of Article 18(1) of the Convention is absolutely required in light of the sweeping discretion accorded states by Article 18(3).

The overall approach of the Committee to limit implementing amendments only to areas clearly in conflict with the text of the Convention has led the Committee to avoid precipitous lawmaking in this delicate and important aspect of national copyright policy. The importance of maintaining intact the United States public domain of literary and artistic materials-from the points of view of commercial predictability and fundamental fairness-argues strongly for legislative caution. The question of whether and, if so, how Congress might provide retroactive protection to works now in our public domain raises difficult questions, possibly with constitutional dimensions. These questions do not have to be addressed now and can be raised if and when presented in the context of specific facts.

The Committee is conscious that an overly broad grant of protection may stifle the creation of new works by unnecessarily restricting the domain of freely available material. It is in the context of this balancing of interests-providing significant control to authors in the creation of new works while keeping freely available other material which authors and the public should be able to use without restriction-that the concept of the public domain plays an important role.

During the Roundtable Discussions a number of foreign experts expressed the view that some degree of retroactive protection for works in the public domain for reasons other than expiration of term was desirable at least as a matter of the "spirit" of Article 18. They further pointed out-quite correctly-that U.S. negotiators have asked Pacific Basin countries for retroactive protection and

121a See Ad Hoc Working Group Final Report, supra note 5, at 635.

that U.S. copyright proprietors would certainly benefit from retroactive protection of our works in Berne states such as Turkey and Egypt. 122

The Committee takes these points seriously; however, we remain persuaded that any solution to the question of retroactivity can be addressed after adherence to Berne when a more thorough examination of Constitutional, commercial and consumer considerations is possible. This Act continues in effect, the balance that Congress carefully crafted in the 1976 Copyright Revision. The public domain is neither expanded nor reduced.

G. EFFECTIVE DATE OF THE ACT

As has already been made clear in connection with the non-selfexecution of the Berne Convention, implementation of the obligations of the Convention is to be based solely upon domestic law; the Convention is not to be a source of private rights.

Under Article 29 of the Convention, one of two possibilities for coming into force of the Convention for the United States exist: either the Convention enters automatically into force thirty days following notification by the Director General of the W.I.P.O to the Berne Union of receipt of the United States instrument of accession; or, the instrument of accession deposited by the United States may specify a subsequent date in which case that date would be controlling. This Act elects the former option and in section 13 it is provided that the Act will come into force one day after the entry into force of the Convention for the United States.

The purpose in selecting as the effective date of these amendments a date subsequent to the date of coming into force of the Berne Convention for the United States is to assure that no possibility exists for invalidating the provisions of the Copyright Act on the basis of arguably contrary stipulation in the Berne Convention.

VI. OVERSIGHT FINDINGS

The Committee makes no oversight findings with respect to this legislation.

In regard to clause 2(1)(3)(D) of rule XI of the Rules of the House of Representatives, no oversight findings have been submitted to the Committee by the Committee on Government Operations.

VII. STATEMENT OF THE COMMITTEE ON GOVERNMENT OPERATIONS No statement has been received on the legislation from the House Committee on Government Operations.

VIII. NEW BUDGET AUTHORITY

In regard to clause 2(1)(3)(B) of rule XI of the Rules of the House of Representatives, the bill creates no new budget authority on increased tax expenditures for the Federal judiciary.

122 See Statement of Werner Rumphorst, Legal Director, European Broadcasting Union, Roundtable Discussions, supra note 10, November 26, 1987.

IX. INFLATIONARY IMPACT STATEMENT

Pursuant to clause 2(1)(4) of rule XI of the Rules of the House of Representatives, the committee feels that the bill will have no foreseeable inflationary impact on prices or costs in the operation of the national economy.

X. COST ESTIMATE

In regard to clause 7 of rule XIII of the Rules of the House of Representatives, the committee agrees with the cost estimate of the Congressional Budget Office.

XI. STATEMENT OF THE CONGRESSIONAL BUDGET OFFICE

Pursuant to clause 2(1)(3)(C) of rule XI of the Rules of the House of Represenatives, and section 403 of the Congressional Budget Act of 1974, the following is the cost estimate on H.R. 4262, prepared by the Congressional Budget Office.

Hon. PETER W. RODINO, JR.,

U.S. CONGRESS, CONGRESSIONAL BUDGET OFFICE, Washington, DC, May 5, 1988.

Chairman, Committee on the Judiciary, U.S. House of Representatives, Washington, DC.

DEAR MR. CHAIRMAN: The Congressional Budget Office has reviewed H.R. 4262, the Berne Convention Implementation Act of 1988, as ordered reported by the House Committee on the Judiciary, April 28, 1988. We expect that enactment of the bill would result in additional cost to the federal government of about $400,000 in fiscal year 1989 and $150,000 each year thereafter.

The Berne Convention, which has been signed by 76 countries, sets minimum copyright standards aimed at giving copyrighted works international protection. H.R. 4262 would make certain changes to existing U.S. copyright law to conform to codes established under the convention. These changes would be required because several Berne provisions conflict with current U.S. copyright law. Specifically, the bill makes several changes that would (1) give guidance to the courts about how to construe U.S. adherence to the convention, (2) define the subject matter and scope of copyrights under Berne, and (3) define the type of notice, filing, or registration that is required for a work to be protected against unauthorized

use.

The change in scope of U.S. copyright law would require an initiative on the part of the Copyright Office, a branch of the Library of Congress, to educate both present and potential copyright owners of the changes to existing law. The Copyright Office has indicated that in order to disseminate this new public information they would meet with affected parties, prepare (and subsequently mail) informational pamphlets, and hire several additional information officers. Based on information from the Copyright Office, CBO estimates that the cost of this public information initiative, along with some additional printing costs, would cost the federal government

ut $400,000 in fiscal year 1989, decreasing to about $150,000 n year thereafter.

o costs would be incurred by state or local governments as a lt of enactment of this bill.

you wish further details on this estimate, we will be pleased to vide them.

ith best wishes, Sincerely,

JAMES L. BLUM,

Acting Director.

XII. COMMITTEE VOTE

n April 28, 1988, the Committee-with a quorum of Members g present-favorably reported H.R. 4262 by voice vote, no obons being heard.

II. CHANGES IN EXISTING LAW MADE BY THE BILL, AS REPORTED à compliance with clause 3 of rule XIII of the Rules of the se of Representatives, changes in existing law made by the bill, eported, are shown as follows (existing law proposed to be omitis enclosed in black brackets, new matter is printed in italic, ting law in which no change is proposed is shown in roman):

TITLE 17, UNITED STATES CODE

*

CHAPTER 1-SUBJECT MATTER AND SCOPE OF
COPYRIGHT

Definitions.

Subject matter of copyright: In general.

Subject matter of copyright: Compilations and derivative works.

Subject matter of copyright: National origin.

Subject matter of copyright: United States Government works.

Exclusive rights in copyrighted works.

Limitations on exclusive rights: Fair use.

Limitations on exclusive rights: Reproduction by libraries and archives.

Limitations on exclusive rights: Effect of transfer of particular copy or phonorecord.

Limitations on exclusive rights: Exemption of certain performances and dis

plays.

Limitations on exclusive rights: Secondary transmissions.

Limitations on exclusive rights: Ephemeral recordings.

Scope of exclusive rights in pictorial, graphic, and sculptural works.

Scope of exclusive rights in sound recordings.

Scope of exclusive rights in nondramatic musical works: Compulsory license for making and distributing phonorecords.

5. Scope of exclusive rights in nondramatic musical works: Public performances by means of coin-operated phonorecord players.]

Scope of exclusive rights in nondramatic musical works: Compulsory licenses for public performances by means of coin-operated phonorecord players.

. Negotiated licenses for public performances by means of coin-operated phonorecord players.

Scope of exclusive rights: Use in conjunction with computers and similar information systems.1

Scope of exclusive rights: Use of certain works in connection with noncommercial broadcasting.