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.