RESPONSE TO COPYRIGHT OFFICE AND PATENT AND TRADEMARK OFFICE REQUEST FOR COMMENTS ON THE VESSEL HULL DESIGN PROTECTION ACT

SUBMITTED BY PROFESSOR WILLIAM T. FRYER, III (See APPENDIX G for CV)
UNIVERSITY OF BALTIMORE SCHOOL OF LAW
Mail Address: 7507 Clarendon Road
Bethesda, Maryland, 20814, U. S. A.
Telephone: 301-656-9479
E-mail address: fryer@fryer.com

MARCH 18, 2003

SPECIAL NOTE [not part of the written testimony]:
A copy of this written testimony, with the appendicies,  is available for public viewing at the U. S.. Copyright Office, Office of the General Counsel.   In due course, the transcript of the March 27, 2003, public hearing held on the Vessel Hull Design Protection Acte should be available for public viewing at that office.  Other public comments submitted to Copyright Office as a part of the Vessel Hull Design Protection Act review should be available also at that office.
 

TABLE OF CONTENTS

1. Comments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  . . . . . . . . . . . . . . . . . . . . .      1-5

(Appendicies omitted from web site document)

2. Appendix A: Federal Regulation publication of request for comments. . . . . . . . . . . .   7

3. Appendix B: Vessel Hull Design Protection Act, 17 U. S. C. §§ 1301-1332 . . . . . . .    9

4. Appendix C:  Copyright Office web site Introduction to the registration of the
 Vessel Hull Design Protection Act. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

5. Appendix D:   Professor Fryer's testimony before The House Judiciary,
 Subcommittee on Courts and Intellectual Property, on the Vessel Hull Design
 Protection Act, October 23, 1997  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

6. Appendix E:  EU Trademark and Design Office information pages on the
 Community Design, including the Regulation  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  52

7. Appendix F:  William T. Fryer, III, The Evolution of Market Entry Industrial Design Protection: an International Comparative Analysis, 21 European Intellectual Property Review 618 (1999)  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .79

8.  Appendix G: Curriculum Vitae William T. Fryer, III . . . . . . . . . . . . . . . . . . . . . . . . 87
 

INTRODUCTION

The Copyright Office and the Patent and Trademark Office requested comments on the Vessel Hull Design Protection (VHDP Act), after about three years from the time that law was enacted (Appendix A has the Federal Register publication of the request).
 VHDP Act, 17 U.S.C. §§ 1301-1332, provides protection for vessel hulls, which can include the design appearance of a boat's overall shape, with some significant limitations (Appendix B has the VHDP Act statute).  This protection resulted from considerable pressure from boat manufactures who were having their new designs copied by competitors, for example, simply by  buying another company's new boat and making fibre glass molds to produced the boat quickly.
 The protection begins when a build boat is public [§§ 1302(5), 1304, 1310(b)], and the right to sue copiers [§ 1309(e)] exists for two  years [§ 1302(5)], and does not require that a registration be in force at the time.  There must be a registration in order to bring an infringement suit [§ 1321(a)].  The application must state that the design has been incorporated in a boat [§ 1320(d)(5)].
 The Copyright Office administers the VHDP Act, approving the registrations.  The Copyright web site introduces the procedure for using the VHDP Act (Appendix C has the web site introduction).
 Testimony was given by this author before Congress as a part of a hearing on the legislation that became law (Appendix C has a copy of that testimony).  It included an extensive review of the VHDP Act history, and a preliminary analysis of the legislation.  One thesis of this testimony was that an industry must make a strong case for market entry design protection.  The boat industry successfully made their case.  Another point was to urge consideration of additional products for market entry protection using the VHDP Act structure.  This testimony is still relevant to an evaluation of the VHDP Act performance and expectations.  It introduced the foundation for protection of a product at the time it is ready for the market, a VHDP Act fundamental concept that has been adopted in many countries (see Topic 5 below and Appendices E and F).  The copyright law has the same principle.
 

I.  OBSERVATIONS AND RECOMMENDATIONS ON THE VESSEL HULL DESIGN PROTECTION ACT  PERFORMANCE AND EXPECTATIONS

1.  Extent of use related to number of registrations Law is self activating and does not require registrations in many situations

A look at the VHDP Act registrations for February 13, 2003 revealed that there were five registrations, and the next earlier group of registrations was in December 2002.  There has not been a steady flow of registrations.  One should ask several  questions based on the fact that only 119 registrations have been made in the approximately 3 years the law has been enacted.
 One observation is that the law is self activating, and only if there are copiers that interfere with the business interests is their a need to register.  Protection exists immediately from the built boat becoming public.  A more level playing field has been created for the innovative boat designer.  It may be that the word has gotten out that a boat design should not be copied identically for features that make the design distinctive and not excluded from protection.  The market place is behaving as it should.  Also the same rule applies to substantially identical copies, with a strict view of what is substantially identical.  The common features cannot be protected due to common, primarily functional designs that are needed for the boat to operate effectively.  Overall, the law provides a narrow infringement window that keeps competition effective and unfair copying illegal.
 The fact that there are not many registrations may be an indication that the law is working well and that most designers and manufacturers find that the two years of unregistered right, fair dealing provided by the law is working.  This fact suggests that a longer period before registration is required may be workable.  If a copier is discovered at any time during the two years, a registration can be established to enforce the rights obtained prior to registration under the law.  The right terminates if no application for registration is filed within two years of the boat being made public.   This sui generis system has the simplicity of copyright law, with a requirement to document the protected right within two years to obtain the full, ten year protection
 The VHDP Act does not allow overlapping protection under the Act and a design patent [§ 1329].  VHDP Act protection terminates when a design patent is obtained on the same subject matter.  This interface with design patents makes the VHDP Act a market entry protection system, stage 1, which may be followed by a stage 2 design patent protection, a longer and stricter requirement stage.  The combination of these systems would creates a comprehensive form of design protection, paralleling to a substantial extent the new EU Community Design, discussed in Topic 5 below.

2.  Extent to which the VHDP Act is well known and the procedures for registration are understood and do not discourage registration.
 Another observation about the low number of registrations is whether the law is well known, or the procedures are not easy to understand and use.

Recommendations: In this respect, it is clear that more direct communications from the Copyright Office would help, through attendance at boat shows,  boat organization meetings, and encouraging articles about the VHDP Act in boat publications.  The same recommendation would be appropriate with respect to the legal community.

 A wide range of boat designers and manufacturers are filing registrations.  Since the applications for registration are easily obtained on the Copyright Office web site, a lot of information can be learned about the boat and the applicant.  There is a clear need to give more examples of how to file the application and what is required in terms of detail, so that unneeded details are not disclosed.  It is reported that some boat designers and manufacturers consider the VHDP Act invasive, requiring too much information about their trade techniques and boat construction details, and they will not use it.  The on-line registration documents show that several applications contain detailed boat drawings.   In fact, all that is needed is to file photos that suitably present the design details that will be protected.
 

Recommendation:  The application form could be revised to make it clearer that the private aspects of the boat do not have to be presented in the application.  It is another example where more education with the user would be useful.

3.  Scope of design protection desired Critical information needed on how to fill out the registration application

 A primary need for any person filing an application without the aid of an attorney is to realize that what is shown in the drawings is what is protected.  If the whole boat is shown, the individual details may not be protected.  The Interim Regulations provide for protection of a feature on the boat that is less than the entire boat appearance.  It is a procedure similar to what is used for design patents and trademarks, to select what is protected.  Broken lines are used to identify boat structure that is not protected separately.

Recommendation:  It is important to emphasize in the application instructions that protection depends on what is shown, a features may need separate applications.  The advice to use an attorney skilled in the VHDP Act should be given, if the design owner does feel comfortable in sorting out these considerations.

4.  Other products that may benefit from protection of the type given to the vessel hulls

There are other products, such as furniture, lamps, silverware, consumer appliances, and bikes that could benefit from protection at the time of market entry that is obtained under the VHDP Act. It would be a simple matter to amend the VHDP Act to broaden its subject matter scope keeping the basic structure of the law.  The VHDP Act offers extensive protection of innocent infringers. The need exists for this type of market entry protection in several industries.  It would be important to consider the expansion of the VHDP Act to other products, on an industry basis, after sufficient showing of a need for this protection.

Recommendation: The best way to evaluate whether additional products should be protected using the VHDP Act structure is to hold a hearing to solicit comments, as a first step.

5.  Importance of international developments in encouraging the U. S. to provide VHDP Act protection and to add products to the protected list.

The international interest in using the VHDP Act is clear.  The sampled February 13, 2003 filings included one by the famous French Zodiac inflatable boat company, and it was not the first registration by that company.
 Clearly the VHDP Act is a step in helping to mesh U. S. design protection with foreign design protection systems, like the new European Union (EU) Community Design Regulation.   The new EU Community Design system provides a period of three years protection against copying [article 19(2)] without registration from the time a wide range of products become public (articles 11 and 12), and a registration to continue protection at five year intervals up to 25 years (APPENDIX E has the text of the EU Community Design Registration).
 The parallel approaches between the VHDP Act and the EU Community Design are obvious.  It is market entry protection that is given so effectively in copyright law.  In order to obtain reciprocity under the EU Community Design Regulation, for protection of U. S. designs, it would be important to provide a three year period of protection against copying in the VHDP Act, as is required in the EU Community Design Regulation.  A decision to make this change should include an evaluation of the impact on U. S. public interest, including competition and international trade, to provide a proper balance.  This effort to achieve international harmonization could lead to protection of U. S. vessel designs in the EU, and other products added for protection.  A comprehensive set of documents and up-to-date information on the EU Community Design can be found on the EU Trademark and Design Office web site, under Community Design (http://www.oami.du.int), viewed March 18, 2003).
 

Recommendation: Consideration should be given to extending the VHDP Act unregistered protection period to three years, to achieve harmonization with the EU Community Design Regulation.

For more information on foreign market entry protection system and the VHDP Act, see the article, William T. Fryer, III, The Evolution of Market Entry Industrial Design Protection : An International Comparative Analysis, 21 European Intellectual Property Review 618 (1999) (APPENDIX F).  This article has an extensive review of the VHDP Act history and operation.  The article demonstrated the international acceptance of market entry protection against copying, within limits.
 The idea, discussed above, of adding other products to the basic, expandable VHDP Act structure should be another topic worth considering, following the lead of other countries.
 

II.  ANSWERS TO SELECTED QUESTIONS ASKED IN THE REQUEST FOR COMMENTS

1.  Question A.  The Copyright Office and PTO are interested in receiving information as to how the VHDP Act has stimulated the creation of new vessel hull designs.

 Response: The wide range of new Tracker boats at the Outdoor World store in Maryland (see web site, www.trackermarine.com, viewed on March 18, 2003), demonstrated there has been considerable creative activity in new boat hull design.  The author has visited a number of boats yards recently, as a boat owner, and to research the technology of boat manufacture..  There was considerable evidence of new boat design.  It would not seem that the VHDP Act has created an obstacle to the creation of new designs, and it has been an incentive..
 For example, the author was contacted by Christian Buehner, manufacturer of duck boats in Maine (E-mail: tdb@tdbco.com).   The author visited his shop in Maine to research the

 manufacture of his fibreglass boats.  The VHDP Act was discussed in detail with him.  It appeared he was interested in use of the law to protect future designs, as an incentive to create new designs.  It appeared that the law did not  create an obstacle to the manufacture new designs for his boats..

2.  Question B.  The effect, if any, that the VHDP Act has had on the price of protected vessels.

 Response: The author has no data on this question.  In general, a company will be able to retain a competitive  price for a product if it can be marketed without unrestricted copying.  In the past, it was well know that new fibreglass boats were copied by competitors and the impact of this piracy was a loss of profits, or a disincentive to manufacture of new designs.  The VHDP Act was enacted to limit this piracy.
 
 
 

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