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Outrigger Hull Design Protection

April 14, 1999 (updated July 3, 1999)
MEMORANDUM
Outrigger Hull Design Protection
1999 Kawika Sands

INTRODUCTION
As the sport of Hawaiian outrigger canoe (outrigger) racing becomes more popular in both domestic and foreign markets, paddlers are keen to seek the ideal outrigger hull design for "that edge." Since competition for paddler dollars is equally keen, these designs represent a considerable investment in time and money and its' value is key to the success of the design owner (usually the outrigger maker). Design owners are therefore increasingly aware of the importance of protecting their hull designs from pirates who copy their designs by means of "plug-molding" (making a mold directly from an original hull), avoiding enormous costs in time and money spent developing those designs.

BACKGROUND
Although some protection in previous legislation like the broad Industrial Design Bill (H.R. 1790, introduced in the 102nd Congress in 1991), considered by Congress several times without enactment, has been offered and exists in current copyright, patent and trademark law for certain aspects of useful articles, they do not provide adequate coverage for outrigger hull designs for the following reasons:

Copyright law protects the design of a useful article if, and only to the extent that, it incorporates pictorial, graphic, or sculptural features identifiable separately from, and are capable of existing independently of, the utilitarian aspects (17 USCA 101). The test for separability can be met by showing physical or conceptual separability (H.R. Rep. No. 1476, 94th Cong., 2d Sess. 55, 1976). The purpose of the test is to clearly separate copyrightable works of applied art and uncopyrighted works of industrial design (Id.). In keeping with this congressional intent, courts have applied the separability test in a way that excludes most industrial designs from copyright protection (Brandir International, Inc. v. Cascade Pacific Lumber Co. (2d Cir. 1987) 834 F.2d 1142; Norris Industries v. International Telephone and Telegraph Corp. (11th Cir. 1983) 696 F.2d 918). The Copyright Office has been similarly restrictive in its registration practices (Compendium II of Copyright Office Practices (1984) 505.03).

Design patents are difficult and expensive to obtain. An applicant must meet applicable standards of invention (35 USCA 171) e.g. novelty and non-obviousness (35 USCA 102, 103). Many original designs that provide a distinguishable and appealing variation over prior designs for similar articles will fail to meet these standards. Even under the reduced fee schedule for small entities, fees over the life of the patent are $3,545. This does not include attorneys' fees for prosecuting the application and the application process can take several years.

Trademark law does not provide general protection for industrial designs per se, rather, it protects certain product configurations that serve to identify the source of the product (Trademarks and Unfair Competition, J. Thomas McCarthy (1973) 229-35). Even to the extent that a product configuration qualifies for protection under trademark law, protection is only against uses of the design that create a substantial likelihood of confusion (Id. at 233-35).

State protection is not available. In order to curb plug-molding, at least ten states enacted anti-plug molding statutes. These fell in 1989 when the Supreme Court held Florida's anti plug-molding statute was in competition with federal patent law and was therefore invalid under the doctrine of federal preemption (Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (1989) 109 S.Ct. 971; 489 U.S. 141; 103 L.Ed.2d 118). The Court determined Congress' decision to leave the subject matter in the public domain preempted the states from providing such protection and that it was for Congress to determine whether a new federal law was needed to protect industrial designs (Id. 109 S.Ct. 998; 489 U.S. 168; 103 L.Ed.2d 145).

DISCUSSION
1. Is there adequate law to protect outrigger hull designs?
Yes. The Vessel Hull Design Protection Act (VHDPA. Formerly H.R. 2696), introduced October 22, 1997, and incorporated into the Digital Millennium Copyright Act (DMCA. Pub.L. No. 105-304, formerly H.R. 2281, 112 Stat. 2860, Oct. 28, 1998, Title V. Adding chapter 13 to Title 17 of the U.S. Code.). Based on the General Design Bill (H.R. 1790), it is a legislative response to the void caused by the Supreme Court's Bonito ruling (Bonito supra.). It addresses the inadequacies of the current law by providing a new system of design protection for vessels no longer than 200 feet (17 USCA 1301.b.3.).

CAVEATS: Protection will not apply to hull designs that are unoriginal, staple or commonplace; different from a design excluded from protection in insignificant details; is dictated solely by utilitarian functions (17 USCA 1302.1-4.). Or if application for registration is not made within two years after a design is first made public (17 USCA 1310.a.; On April 13, 1999, H.R. 1189 passed the House resolving a discrepancy between 1302.5 and 1310.a.); and the Act is not retroactive (17 USCA 1332).

The Act prevents recovery for an infringement committed more than 3 years before the date on which the complaint is filed (17 USCA 1323.c.). The Administrator may become a party to the action as to registerability but the failure of the Administrator to become a party will not deprive the court of jurisdiction to determine that issue (17 USCA 1321.c.). Notice is required as a prerequisite to a suit (17 USCA 1307.b., 1321.a.) in a District Court (28 USCA 1338.c.). However, omission of notice will not cause loss of protection against anyone who begins an undertaking leading to infringement before receiving written notice of design protection (17 USCA 1307.a.). The Act broadly excludes infringing acts taken without knowledge (17 USCA 1309.c.), but does not state whether constructive knowledge will defeat this exception, and if so, whether registration of the design acts as constructive notice.

Protection is lost if a design patent is issued (17 USCA 1329.), forcing an election between design protection and copyright registration. Since the only way to be sure a design is protected is to obtain judicial determination, a forced election between design protection and copyright registration may cause designers to abandon design protection when they may not be sure they have copyright protection.

In addition, under section 411 of the Copyright Act, U.S. authors, and authors from foreign countries that are not Berne Union or World Trade Organization (WTO) members, cannot bring suit for copyright infringement without first registering their works (17 USCA 411.a.). Authors from Berne or WTO countries, however, are not required to register their works prior to suit, and are therefor free to enforce their copyrights without foregoing protection under the VHDPA (Berne Article 5; WCT Article 3 and Agreed Statement).

Finally, the Act is subject to legislative sunset October 28, 2000 (VHDPA 505.). Until then, the U.S. Copyright Office and the Patent and Trademark Office will conduct joint studies by October 28, 1999 and October 28, 2000 to evaluate the impact of the VHDPA (VHDPA 504.a.). Design owners should provide feedback to the Administrator regarding: (1) The extent to which the amendments made by the VHDPA have been in suppressing infringement; (2) The extent to which registration provided for by the VHDPA has been utilized; (3) The extent to which the creation of new hull designs have been encouraged by the VHDPA; and (4) The effect, if any, the VHDPA had on the price of outriggers (VHDPA 504.b.1-4).

2. What protection is currently afforded hull designs?
The VHDPA protects: The hull (and it's component parts) and mold (or plug/splash); The making, importing for sale or use in trade of the hulls; And the selling or distribution of the hulls (17 USCA 1308.1-2.). The design is protected as soon as it's made public or registration for the design is published (17 USCA 1304.). Once registered with the Administrator/Register of Copyrights (17 USCA 1331.), protection continues for ten years (17 USCA 1305.a.).

The Act provides for: Arbitration (1321.d.); Injunctive relief to prevent infringement including temporary restraining orders and preliminary injunctions (17 USCA 1322.a.); And damages to compensate for the infringement, not exceeding $50,000 per copy, as the court determines to be just. However damages awarded will constitute compensation, not a penalty (17 USCA 1323.a.). As an alternative, the court may award claimant the infringer's profits from the sale of the copies (17 USCA 1323.b.). Reasonable attorney's fees are recoverable (17 USCA 1323.d.), and the court may order all infringing articles (plates, molds, patterns, models, or other means specifically adapted for making the articles) be delivered up for destruction or other disposition (17 USCA 1323.e.). For further information on filing a complaint, contact Mr. Bill Roberts, Esq., in the General Counsel's Office of the U.S. Copyright Office at (202) 707-8391.

3. What protection is there against a foreign infringer?
There are several controlling treaties and U.S. Acts: The Paris Convention for the Protection of Industrial Property (Paris), the Berne Convention for the Protection of Literary and Artistic Works (Berne), both incorporated into the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), from the Uruguay Round of the General Agreement on Tariffs and Trade by reference (TRIPS Articles 2.1 and 9.1 respectively); the World Intellectual Property Organization (WIPO) Copyright Treaty (WCT) and Agreed Statements; the WIPO Copyright Treaties Implementation Act (Pub.L. 105-304, formerly H.R. 2281, 105th Cong., 1st Sess., 1997); and the Uruguay Round Agreements Act (Pub. L. No. 103-465, formerly H.R. 5110 108 Stat. 4809; House Document 103-316, 103rd Congress, 2nd Session, September 27, 1994).

Title I of the DMCA implements two WIPO treaties, one of which is the WCT, and makes technical amendments to U.S. law providing appropriate references and links to the treaties (DMCA 102.). The WCT requires parties to protect works from member countries that have not fallen into the public domain in the country of origin through the expiry of term protection (Berne Article 18; Paris Article 2; TRIPS Articles 9.1, 14.6, 70-2; WCT Article 13). And requires member countries to provide protection from other member countries, and nationals of member countries, that is no less favorable than that accorded domestic works (Berne Articles 3, 5, 6; Paris Articles 2, 3; TRIPS Articles 1.3, 25.1; WCT Article 3 and Agreed Statement).

International law allows for much the same remedies as U.S. law. This includes injunctive relief, damages including attorney fees, seizure, forfeiture and destruction of the infringing goods and materials, or instruments, used to produce them according to the laws of the particular country in which the infringement occurs (Berne Article 16; Paris Article 10ter; TRIPS Articles 44, 45, 61; WCT Article 12 and Agreed Statement).

4. What are the proper notice and registration procedures?
The design notice is comprised of the: (A) Words "Protected Design", the abbreviation "Prot'd Des.", or the letter "D" in a circle or the symbol "*D*"; (B) Year in which protection for the design commenced; and (C) Name of the owner, an abbreviation by which the name can be recognized, or a generally accepted alternative designation of the owner. Any distinctive identification of the owner may be used for (C) if recorded by the Administrator before the design is registered (17 USCA 1306.a.). After registration, the registration number may be used instead of the elements specified in (B) and (C) (17 USCA 1306.2.). The design notice should be applied to give reasonable notice while the design is passing through normal channels of commerce (17 USCA 1306.b.). Registration of a protected hull design can be accomplished on a Form V-HD. However, because the Act went into effect on the very day it was signed into law, this form is not yet available. Until then, Form VA will suffice (Downloadable from the U.S. Copyright Office forms page).

Application for registration is made from the owner of the design (17 USCA 1310.c.) to the Administrator (17 USCA 1310.d.) and must state the: (1) Name and address of the designer or designers; (2) Name and address of the owner if different from the designer; (3) Specific name of the useful article embodying the design; (4) Date the design was first made public, if such date was earlier than the date of the application; (5) Affirmation that the design has been fixed in a useful article; and (6) Such other information as may be required by the Administrator. The application for registration may include a description of salient features of the design, but the absence of that description will not prevent registration (17 USCA 1310.d.1-6).

A statement must be included in the application under oath by the applicant, or an authorized agent, stating to the best of the applicant's knowledge and belief that the: (1) Design is original and was created by the designer named in the application; (2) Design has not previously been registered for the applicant or the applicant's predecessor in title; and (3) Applicant is the person entitled to protection and registration. If the design was made public with the design notice, the statement must also describe the form and position of the design notice (17 USCA 1310.e.1-3) and be accompanied by two copies of a drawing or other pictorial representation of the design, having one or more views to show the design, suitable for reproduction, and will be deemed a part of the application (17 USCA 1310.h.). More than one design may be included in the application however a fee for each design must be paid (17 USCA 1310.j.). As of the date of this memo, the estimated cost of hull design registration is US$75.

Oaths and acknowledgments may be made: (A) Before a person in the U.S. authorized by law to administer oaths; or (B) When made in a foreign country, before any diplomatic or consular officer of the U.S. authorized to administer oaths, or before any official authorized to administer oaths in the foreign country, whose authority must be proved by a certificate of a diplomatic or consular officer of the United States. The Administrator may request that any document filed in the Office of the Administrator be subscribed to by a written declaration in such form as the Administrator may prescribe. Such declaration must be in lieu of the oath otherwise required. When a written declaration is used, the document containing the declaration must state "Willful false statements are punishable by fine or imprisonment, or both, pursuant to section 1001 of title 18, and may jeopardize the validity of the application or document or a registration resulting therefrom" (17 USCA 1312.a-b.). For further information on forms or registration, contact an Information Specialist in the U.S. Copyright Office at (202) 707-5959.

CONCLUSION
Ultimately, the purchaser of an outrigger will not only drive the market, but support or defeat design piracy with their purchasing dollars. As the outrigger community communicates through the Web and is very close-knit, consumer education and the importance of Aloha Spirit, a recognized concept in Hawai`i State law (Hawai`i Revised Statues 5-7.5), will help.


LINKS
Berne Convention
Paris Convention For The Protection Of Industrial Property
WIPO Copyright Treaty
Agreed Statements Concerning WIPO Copyright Treaty
Uruguay Round Agreements Act
Digital Millennium Copyright Act
U.S. Copyright Office forms

TRIPS Agreement
http://www.wto.org/wto/intellec/1-ipcon.htm
http://www.wto.org/eol/e/wto07/contents.htm
http://www.wto.org/wto/legal/finalact.htm#TRIPs

WIPO
http://www.wipo.int/

Interim VHDPA regulations: http://www.loc.gov/copyright/fedreg/rm99_4vh.html

Form D-VH for registration of vessel hull designs: http://www.loc.gov/copyright/forms/formdvh.pdf

Form D-VH/CON (continuation sheet and for multiple designs): http://www.loc.gov/copyright/forms/formdvhcon.pdf

For more discussion on this material
Please contact the writer: Kawika Sands

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Last Modified: 19990703.1459 HST Saturday
Copyright 1999 Kawika Sands
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