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Short-Term Product Design Protection – Part III — Modifying the Vessel Hull protection law

Previously we have identified a European-Community style of Unregistered Design Right as a possible vehicle for short-term protection of original product designs. Another possibility, one which already exists in a very limited fashion, is right in front of us in the Copyright Code (Title 17, United States Code), Chapter 13, protection of designs of useful articles.
Section 1301 of the copyright act reads very broadly:
“Designs Protected
“(1) In general–

“The designer or other owner of an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public may secure the protection provided in this chapter . . .”

Unfortunately, for the time being the definition of “useful article” limits this protection to a “vessel hull or deck, including a plug or mold” (a “plug” is a form made directly from the boat that is to be copied). So at the time being, and until Congress amends Chapter 13, this useful article design protection does not extend to fashions, cookware, automobiles, industrial machines, or any other articles that are not vessel hulls or decks. Nevertheless, this particular statute may serve as a model for some sort of short term design protection for other items of manufacture of original design.

This current law does create a copyright-like protection on “useful articles”, to wit boats, but with the term of coverage limited to ten years, or until issuance of a design patent on the “article” of that same design. That would create the sort of short-term interim design protection that has been identified for lots of types of products.

In order to obtain a “vessel hull” registration, the article has to have an original design, distinctive in appearance, with differences in design that are more than merely trivial, and not copied from another source. The design cannot be staple or commonplace, a standard shape, familiar symbol, or a shape, pattern or configuration that has become ordinary, nor can the design be dictated solely by a utilitarian function. Also, the design owner has to apply to register it earlier than two years from when the design is commercially introduced.

There are some advantages to this copyright-like design protection. Damages for infringement are to be adequate to compensate for the infringement, PLUS the court may increase this up to $50,000 or $1 per copy, whichever is greater, or the court may award the infringer’s profits that resulted from the copied design. As in copyright cases, the court can also award attorney’s fees to the prevailing party, and unlike patent cases this does not require that the case be “exceptional” (“exceptional” usually means that bad faith or inequitable conduct is involved).

The boat manufacturing industry lobbied hard to get this law enacted. It is hard to judge how effective the law has been, as there are very few reported cases under Chapter 13. It may be that this law has actually discouraged copying of vessel hulls

Little if any modification would be needed to extend the law to useful articles beyond vessel hulls and decks — only an amendment to “useful article” in the definitions section. But this is not likely to happen unless Congress receives pressure from the industries where this sort of short term design protection is important.