Category Archives: Copyright

Blips in Google’s Book Project Settlement

by Christina Frangiosa

It appears that the settlement reached over the Google Book Project may not be as much of a “done deal” as previously thought. Indeed, it is being challenged by several competitors in the digital book industry who wish to see certain revisions put into place before the Court approves the terms. See Jessica E. Vascellaro & Geoffrey A. Fowler, “Tech’s Heavyweights Put Google’s Books Deal In Crosshairs,” Wall Street Journal, Aug. 21, 2009, at B1.

It is also being investigated by the Department of Justice as a potential antitrust violation. See Jessica E. Vascellaro, “Facing Scrutiny, Google Steps Up Lobbying,” WSJ Digits Blog, July 22, 2009; see also “The Google Books Project: An Antitrust Case in the Making?,” WSJ Law Blog, July 24, 2009.

The European Commission has scheduled a hearing on September 7, 2009 to consider “the effect of the Google Book US Settlement Agreement on the European publishing sector, European authors, European consumers and society at large.” See also Reuters, EU sets hearing over Google books deal, July 20, 2009; Jessica E. Vascellaro, “EU Calls Google Books Hearing, House Ponders One,” WSJ’s Digits Blog, July 20, 2009.

There are definitely upsides to a digitizing project of this nature – public access to out-of-print works (whether still protected by copyright or not) could be a great thing. These books might not be available at your local library, and indeed you might not find out about them through your normal channels of research. If they are out of print, you might have a hard time finding them through used-book sellers or online retailers – assuming you knew to try to find them. Making these books available to the public again, along with the ability to have these books appear in search results relevant to the content of these books, would provide a great social benefit. See also William Echikson, Opinion Europe: “Reviving Lost Books,” Wall Street Journal, July 21, 2009; Philippe Colombet, “Sharing Public Domain Books,” Inside Google Books Blog, Aug. 18, 2009.

The downsides are significant, however, and should not be ignored. Principally among them is the possibility that copyright holders’ rights would be completely disregarded, eliminating their ability to control the creation of derivative works (such as a digital copy of a book previously available only in print) and the further distribution of their works. The settlement attempts to address these copyright concerns, but has yet to be approved by the Court. The Authors’ Guild Complaint makes the case for the “downsides” rather clearly. See Authors’ Guild v. Google, No. 05 CV 8136 (SDNY).

The Court apparently has rescheduled the hearing to review the settlement for October 7, 2009. See Google Book Settlement FAQs (noting that the hearing was originally scheduled for June 11, 2009). It will be very interesting to see whether the Court approves the settlement and/or whether the fair market system and pure competition will intervene to provide alternate means to access this information without having to rely solely on Google.

Background

Google originally proposed to undertake the Google Print Project (including the section now called the Google Book Project) without seeking permission from individual copyright holders, or arranging for any payment of royalties, citing the public’s keen interest in having rare and typically unavailable books digitized and accessible. In public statements – including ones made during a panel discussion before the ABA’s Intellectual Property Law Section in April 2006 – Google defended its decision to structure the plan as an “Opt Out” plan (requiring the publishers and authors to make the affirmative step to withdraw from the program, instead of seeking their permission/participation in advance) based on the significant cost involved in trying to locate in the individual rights holders and obtain their agreements to participate. For a competing viewpoint, however, see “Googling Copyrights,” Wall Street Journal, Oct. 3, 2005, at A16 (“Getting permission from all the rights-holders for such an ambitious undertaking would undoubtedly be time-consuming and bothersome, but no one said that storing and making money off someone else’s copyrighted material was or should be easy.”).

The Authors’ Guild Lawsuit

On September 20, 2005, The Authors’ Guild filed a lawsuit against Google, attempting to block Google’s efforts to launch its Library Project. Authors’ Guild v. Google, No. 05 CV 8136 (SDNY)(“Compl.”). According to the Complaint, a subset of this Project was the Print Project. Compl. ¶ 19. (This is the component now known as the Google Book Project.)

The Authors’ Guild alleged that Google was engaged in willful, “massive” copyright infringement [Compl. ¶¶ 3, 5] and sought damages, injunctive relief and declaratory relief with respect to the infringement that Google had performed prior to the filing of the suit, and declaratory and injunctive relief for “planned unauthorized commercial use of the Works” going forward after the suit was initiated. Id. ¶ 6. The commercial use at issue here was Google’s offering of advertising space on search result pages for a fee to commercial entities, while providing the search engine itself for free to Internet users. Id. ¶ 16. Thus, Google would benefit from the use of the copyrighted text through advertising revenue, but did not plan to pay copyright owners for its use of the copyrighted text. (98% of Google’s earnings at the time apparently were made up by advertising revenue. Id. ¶ 17.)

Note that the “use” at issue in the Complaint was not only providing certain amounts of text in search results to users of Google’s search tools, but also to the scanning, OCR’ing, and maintaining the full text in its database to be searched using Google’s search engine. See id. ¶ 31; see also Opinion, “Googling Copyrights,” Wall Street Journal, Oct. 3, 2005, at A16 (“But the mere activity of digitizing and storing millions of books – many thousands of them under copyright – without buying any of them raises a serious legal question, regardless of how much of that content Google later makes available at any one time or to any one user.”). The first use of the text would be visible to the public – the second would not be, but nonetheless provides value to Google. Indeed, if Google did not have the full text copied into its database, it would not be able to identify this text as being relevant in response to a search request made by a user of the search engine. As a result, the copyrighted book would not have appeared in the search results if Google had not copied the entire text into its database.

By the time the Complaint was filed, Google had entered into contracts with University of Michigan (subject of the suit) [Compl. ¶ 23a] and Harvard, Oxford, Stanford and N.Y. Public Library (scanning had not started at the time of the filing of the Complaint, but these libraries were the subjects of the requested injunction) to digitize all books in their collections – both works in the public domain and those still protected by U.S. copyright law. Id. ¶ 32. By now, however, Google’s list of library partners has greatly expanded: Google’s site presently lists several foreign libraries as well as a few additional American ones: specifically, Columbia University, Cornell University Library, Princeton, University of California, University of Texas at Austin, University of Virginia, and University of Wisconsin – Madison.

The Settlement

On October 28, 2008, the Author’s Guild reached a settlement with Google over Google’s plans to digitize entire library collections – regardless of whether the books were still protected by copyright or had fallen into the public domain. (The Publishers also reached a settlement of their case, The McGraw-Hill Companies, Inc. v. Google Inc., 05 Civ. 8881 (JES), filed on October 19, 2005 and alleging similar allegations; their settlement agreement appears as Attachment M to the Author’s Guild Settlement Agreement.)

In connection with the settlement, the parties issued a Notice announcing the settlement. The Authors’ Guild also summarized the terms of the settlement and provided a summary of the “benefits” of the settlement relating to out-of-print books. The Settlement Administration Web Site describes the impact of the settlement on various rights holders and provides copies of the relevant filings and instructions to copyright holders of “books and in writings included in books and other works published on or before January 5, 2009” about how to participate in the settlement. Rights holders can file their claims through the site as well.

Google published its own summary of the terms of the settlement, calling it a “groundbreaking agreement with authors and publishers.”

Missing from the Settlement – Addressing Privacy Concerns

On July 27, 2009, the Center for Democracy and Technology (a public interest group focused on the Internet) released its recommendations for incorporating privacy protections into the Book Registry and the search engine that it recommends Google implement when it puts the settlement into practice. See CDT’s Report on Google Book Service.

The report recognizes that the Settlement addressed only issues of copyright and appropriate compensation/attribution to the rights holders and does not address any concerns of privacy of those people who may be using the search engine to find relevant books. However, now that the Settlement may be on the verge of finalization, thereby implementing procedures by which information about the public’s use of the database could be captured, it is critical to ensure that only the minimal necessary information is collected about users. While the technology exists to permit Google to collect substantial personal information about users (and the other sites they visit, the books they have searched and/or read online, the books they have purchased through other sites, etc.), restrictions should be put into place to protect individuals’ privacy rights.

The report is particularly illuminating and well-written. It provides an alternate view (very carefully researched and written) to the basic concept that having these works accessible in digital form to anyone around the world, without regard to whether the local library owns a printed copy, is priceless. Access is not the only consideration; privacy for those seeking to use this new medium should be protected as well.

Additional Links of Interest

Jonathan Band, “The Google Print Library Project: A Copyright Analysis,” E-Commerce Law & Policy (August 2005) at 2

“Authors Sue Google, Challenging Use of Works in Google Library,” BNA’s Patent Trademark & Copyright Journal, Sept, 23, 2005

The Authors’ Guild Google Book Settlement Resources

Google’s Legal Perspectives’ Site

Google’s Tips on Improving Search Results – how to maximize the search results using Google’s tools

The Official Settlement Site

Wikipedia’s Chronology regarding Google Book Project

New Copyright Suit Filed against Publishers of Music Lyrics

by Christina Frangiosa

On August 24, 2009, members of the National Music Publishers Association filed suit in the US District Court for the Central District of California against LiveUniverse, Inc. and its owner Brad Greenspan, alleging copyright infringement associated with LiveUniverse’s publication of music lyrics. The Complaint is not yet available through the court’s web site.

The publishers filed a similar suit against Motive Force, LLC and others in the Western District of Pennsylvania in connection with its site, LyricWiki. Peermusic, III, Ltd. et al. v. Motive Force LLC et al., Civil Action No. 2:09-cv-01137-RCM (filed Aug. 24, 2009).

More information about the disputes can be found here:

* Jay Miller, “Music Publishers Group Files Copyright Suit,” Wall Street Journal, Aug. 24, 2009.

* National Music Publishers Association Press Release, “Music publishers pursue illegal lyric sites; Legal marketplace harmed when unlicensed sites go unchecked,” Aug. 24, 2009.

Why You Should Read a Web Site’s Terms of Service Before Posting

by Christina Frangiosa

All Internet users should be aware that many of the sites that they visit on a regular basis provide some guidelines about the use that may be made of the site. These guidelines generally cover copyright notices, whether you can copy or share the site’s original content with others, and what rights you retain when you post comments or contributions to their community resources, such as blogs, chats or photo/video share functions. If the site provides content such as podcasts, video clips or streaming content, the Terms of Use will generally outline the limitations to your use and further dissemination of such materials.

For instance, if you visit an online newspaper, such as The New York Times or The Wall Street Journal, the Terms of Service/Use will remind you that the newspaper retains copyright rights in the materials and that by using the site, you agree not to “modify, publish, transmit, participate in the transfer or sale of, reproduce . . ., create new works from, distribute, perform, display or in any way exploit” the newspaper’s original content. NY Times Terms of Service ¶¶ 2.2; see also WSJ’s Subscriber Agreement ¶ 6(b) (users “may not sell, publish, distribute, retransmit or otherwise provide access to the Content received through the Services to anyone, including, if applicable, your fellow students or employees”).

Most of these policies also expressly prohibit using their information for commercial purposes, stressing that their services may be used for “personal use only.” See The Wall Street Journal ¶ 6(b)(iii) (“you may not use such an archive to develop or operate an automated trading system or for data or text mining”).

In addition, if you visit a medical site, the Terms of Use may disclaim any liability for any injuries that you receive by not getting medical treatment for your issues and for your decision to rely on the educational information provided by the site in lieu of seeking treatment. See WebMD. These sites also will disclaim that they provide any medical advice, and will advise you to always follow your doctor’s instructions and obtain proper medical treatment when you need to.

Many of these sites will typically provide guidelines for what material (text, photos, video) can be posted and what may be deemed “offensive” to the applicable community. If you violate the terms of the particular site with respect to “offensive” or “restricted content,” your ability to access the sites or continue a membership with them may be blocked or discontinued.

These Terms of Service – coupled with the site’s posted Privacy Policies (see the prior post, Recommended Reading: Privacy Policies for Web Sites You Visit) – should inform your choices about the behavior that you should use on each site, as well as giving you advanced warning if the site will re-use your information later, perhaps without your express consent.

What Happens to Information You Post – Can the Site Re-Use It?

This really raises questions about who owns the copyright to content that you write. Under U.S. copyright law, an author automatically obtains copyright rights in his or her “original works of authorship” (books, paintings, drawings, photos, sculptures, songs, portions of web sites, etc.) once they are “fixed in any tangible medium of expression.” 17 U.S.C. § 102(a).

You should read the terms of service for any web site on which you plan to post original content, such as comments to news articles, status updates on social networking sites, tweets on Twitter, photos uploaded to a photo sharing web site, or even videos shared on YouTube. Each of these sites has different policies in place regarding what they do with your original content, and in some respects, may limit what you can do with that content later. Here are some examples:

Facebook, Statement of Rights and Responsbilities, ¶ 2: “You own all of the content and information you post on Facebook, and you can control how we share your content through your privacy and application settings. In order for us to use certain types of content and provide you with Facebook, you agree to the following: . . . 1. For content that is covered by intellectual property rights, like photos and videos (“IP content”), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (“IP License”). This IP License ends when you delete your IP content or your account (except to the extent your content has been shared with others, and they have not deleted it).”
— This version of Facebook’s terms (dated May 1, 2009) suggests that once you delete your original content – or cancel your account – their limited rights to use it will expire. They also note, however, that if you have shared information with others and if they have not deleted it, Facebook’s ability to access to this material will not
disappear.

Shutterfly, Terms & Conditions ¶ 3: With respect to content you upload, “you will retain ownership of such Submissions, and you hereby grant us and our designees a worldwide, non-exclusive, sublicenseable (through multiple tiers), assignable, royalty-free, fully paid-up, perpetual, irrevocable right to use, reproduce, distribute (through multiple tiers), create derivative works of, and publicly display and perform (publicly or otherwise) such Submissions, solely in connection with the Service (including without limitation for purposes of promoting the Service).”
Note that you also consent to allow Shutterfly to use your likeness for purposes of (among others) promoting or marketing Shutterfly to others: “(iii) you hereby consent to the use of your likeness, and you have obtained the written consent, release, and/or permission of every identifiable individual who appears in a Submission to use such individual’s likeness, for purposes of using and otherwise exploiting the Submission in the manner contemplated by these Terms (including for purposes of promoting the Service), or, if any such identifiable individual is under the age of eighteen (18), you have obtained such written consent, release and/or permission from such individual’s parent or guardian (and you agree to provide to Shutterfly a copy of any such consents, releases and/or permissions upon Shutterfly’s request).”
— Shutterfly reserves the right to re-use your photos or videos to create derivative works for purposes of promoting or marketing their service – and provides that your use of the service constitutes your consent to use your likeness in their marketing efforts.

Snapfish, Terms & Conditions ¶ VII(A): “In order for Snapfish to make your photos available to you and your invitees, as well as to use images to offer you a special variety of online services, Snapfish needs the rights to make use of all Content on the Service, in accordance with and subject to these Terms. Accordingly, as a condition to your Membership, you hereby grant Snapfish a perpetual, universal, non-exclusive, royalty-free right to copy, display, modify, transmit, make derivative works of, and distribute your Content, solely for providing or improving the Service.”
— Snapfish claims to limit its use of your material to anything required to “provide or improve” their service to you.

Twitter, Terms of Service, General Conditions: “The Twitter service makes it possible to post images and text hosted on Twitter to outside websites. This use is accepted (and even encouraged!). However, pages on other websites which display data hosted on Twitter.com must provide a link back to Twitter. . . . We claim no intellectual property rights over the material you provide to the Twitter service. Your profile and materials uploaded remain yours.”
— Twitter appears to claim no rights in any of your original content.

The Wall Street Journal, Subscriber Agreement ¶ 7(b)(iii): “You agree that upon uploading, posting or submitting information on the Services, you grant Dow Jones, and our respective affiliates and successors a non-exclusive, transferable, worldwide, fully paid-up, royalty-free, perpetual, irrevocable right and license to use, distribute, publicly perform, display, reproduce, and create derivative works from your User Content in any and all media, in any manner, in whole or part, without any duty to compensate you.”
— This means that they can re-use what you post, (sometimes) authorize others to re-use it and they are not required to pay you anything for it, or obtain your prior permission.

WebMD, Terms & Conditions, User Submissions: “If you submit any business information, idea, concept or invention to WebMD by email, you agree such submission is non-confidential for all purposes. . . . If you make any submission to a Public Area or if you submit any business information, idea, concept or invention to WebMD by email, you automatically grant-or warrant that the owner of such content or intellectual property has expressly granted-WebMD a royalty-free, perpetual, irrevocable, world-wide nonexclusive license to use, reproduce, create derivative works from, modify, publish, edit, translate, distribute, perform, and display the communication or content in any media or medium, or any form, format, or forum now known or hereafter developed. WebMD may sublicense its rights through multiple tiers of sublicenses. If you wish to keep any business information, ideas, concepts or inventions private or proprietary, do not submit them to the Public Areas or to WebMD by email.” (Emphasis in original).
— Essentially, WebMD acknowledges that they plan to commercialize any good idea that you provide to them without your permission if you ignore this warning.

YouTube, Terms of Service ¶ 6(C): “For clarity, you retain all of your ownership rights in your User Submissions. However, by submitting User Submissions to YouTube, you hereby grant YouTube a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the User Submissions in connection with the YouTube Website and YouTube’s (and its successors’ and affiliates’) business, including without limitation for promoting and redistributing part or all of the YouTube Website (and derivative works thereof) in any media formats and through any media channels.”
— YouTube acknowledges that it might use your content to promote their services.

When Can You Forward the Web Site’s Original Content to Your Friends?

In addition to being concerned about a site’s proposed use of your original writings (whether through comments, posts, blogs, updates on social networking sites, etc.), you should be aware that the Terms of Use policies will govern your ability to forward their original content to others.

As explained above, you should assume that as an initial matter, the web site on which you find an interesting article is probably the owner of the copyright in that material. Under copyright law, copyright owners have the exclusive right to create derivative works (which your comment forwarding their content might be) and to publish or distribute their works as they see fit. 17 U.S.C. § 106. Anyone who engages in this conduct without their consent or approval could engaging in copyright infringement, which carries statutory damages (per instance) of between $750 and $30,000. Id. § 504 (c). In addition, if a court determines that your actions were “willful” justifying an enhanced damages award, this amount per instance can increase up to $150,000. Id. As a result, you should always review the site’s terms of service to see what the limits are to your use of their original content.

Many sites will provide guidelines for downloading from their service or sharing their original content. They may provide limited licenses to permit downloading as long as you include all copyright notices, a reference to the original source of the material and/or use the material for personal use only. See NY Times Terms of Service ¶¶ 2.2, 2.3.

If they provide tools to share their materials on certain social networking sites (like Facebook, Yahoo Buzz, LinkedIn and others), the sites might give more leeway to the number of times that you can share their materials. See The Wall Street Journal ¶ 6(b)(iii) (“While you may download, store and create an archive of articles from the Service for your personal use, you may not otherwise provide access to such an archive to more than a few individuals on an occasional basis. The foregoing does not apply to any sharing functionality we provide through the Service that expressly allows you to share articles or links to articles with others.”)

Forwarding original content without the consent of the owner can be copyright infringement if you don’t fit into a defense to the allegation, such as fair use or parody. The case law that defines when conduct is “fair use” or that the resulting communication is a “parody” is detailed and voluminous – too large to try to summarize here. Suffice it to say that it’s a very fact-intensive analysis and one cannot assume that just because someone believes their own conduct is “fair” does not mean that the law will recognize it as qualifying for the “fair use” defense.

** Note: By linking the terms of use provided by the web sites identified above, I am not endorsing them or making any representations about the value of the goods or services provided by them. They were chosen somewhat randomly and are intended to serve as examples to show various terms of service about which Internet users should be aware.

Court Enters Order Banning Publication of Unauthorized Sequel to Catcher in the Rye

by Christina Frangiosa

Updating a prior posting: When is a Fictional Character Copyrightable?

On July 1, 2009, District Court Judge Deborah Batts entered an Order in the Salinger v. Fredrik Coulting, et al., No. 09-CV-5095 (S.D.N.Y.) case holding that the new book focused on Holden Caufield as a 76-year-old man did not fit within the narrow “fair use” exception to copyright infringement. (Copy of the complaint can be found here.) The order also preliminarily enjoins the sequel’s author (publishing under the pseudonym J.D. California) and publisher from “manufacturing, publishing, distributing, shipping, advertising, promoting, selling or otherwise disseminating any copy of 60 Years [the book] or any portion thereof, in or to the United States.” Order at 37. The injunction may become permanent following a full trial on the merits.

Essentially, the court rejected defendants’ arguments that the “sequel” was a parody commenting on the original work and on the nature of Holden Caufield’s character. Importantly for the analysis of whether fictional characters are separately copyrightable, the Court held that “Plaintiff possesses a valid Copyright in the novel The Catcher in the Rye, that the character of Holden Caulfield . . . is sufficiently delineated so that a claim for infringement will lie.” Opinion, at 2 (citations omitted).

The opinion also addresses in detail the fair use factors and whether any other part of the sequel could be considered an acceptable parody, and thus not a work infringing the original copyright.

Additional coverage of the opinion can be found in the following sources, among other places:

* Ashby Jones, “Holden Caulfield Stays Young: Salinger Wins Copyright Suit,” The Wall Street Journal’s Law Blog, July 1, 2009.

* Sewell Chan, Ruling for Salinger, “Judge Bans ‘Rye’ Sequel,” New York Times, July 1, 2009.

* Larry Neumeister, “Judge blocks publication of Salinger spinoff book,” Associated Press, July 1, 2009 (as published on FindLaw.com)

Copyright Protection Proposed for Fashion Designs

by Christina Frangiosa

Under current law, fashion designs and patterns are not protected from infringement by the Copyright Act. Instead, they are considered “useful designs” that are beyond the scope of the current Act. Recent legislation proposed in the House, however, seeks to change this by amending Chapter 13 of the Copyright Act and extend copyright protection for limited purposes and a limited term. Design Piracy Prohibition Act, H.R. 2196, 111th Congr. (proposed April 30, 2009).

Provisions of H.R. 2196

H.R. 2196 was proposed by Rep. William D. Delahunt (D-MA), and co-sponsored by 23 other members of the House. It proposes to amend 17 U.S.C. § 1301 (and following), and to extend limited protection to all clothing, including “undergarments, outerwear, gloves, footwear and headgear” as well as various accessories and luggage (namely “handbags, purses, wallets, duffel bags, suitcases, tote bags and belts”) and frames for eyeglasses. H.R. 2196 § 2(a)(2)(B).

Rather than providing blanket copyright protection as you might find for an original literary work (e.g., a book), this bill proposes that copyright protection would only last for three years beginning on the date of publication of the registration or the date on which the design is first made public, whichever is earlier. Id. § 2(d); 17 U.S.C. § 1304 (determining when protection begins). The bill defines an “infringing article” as one for which “the design . . . has been copied from a design protected under this chapter, or from an image thereof, without the consent of the owner of the protected design.” H.R. 2196 § 2(e). Importantly, however, the bill excludes the following from this definition: “an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture or similar medium.” Id. 2(e)(2). Presumably, these “copies” are permitted, at the least, for advertising or marketing purposes.

There is also a carve-out for designs that are independently created, reflect a “trend” or if they are “not closely and substantially similar in overall visual appearance to a protected design.” Id. A “trend” is further defined as “a newly popular concept, idea or principle expressed in, or as part of, a wide variety of designs of articles of appear that create an immediate amplified demand for articles of apparel embodying that concept, idea or principle.” Id. § 2(a)(2)(B).

Unlike other provisions in the Copyright Act, in order to obtain copyright protection for fashion designs, this bill requires an owner to apply for registration within six (6) months of making the design available to the public either in the U.S. or another country. Id. § 2(f)(1). Failure to apply for registration within that narrow window of time will eliminate the designer’s ability to sue under copyright law relating to copies of that specific design. Id.

The bill also anticipates that the Copyright Office would provide free public access to a database cataloging all of the fashion designs that have been registered under this provision. Id. § 2 (j); id. § 2(j)(a)(3). In order for this to be effective, owners must provide a “brief description of the design for purposes of matching the search criteria of the searchable database . . . [but this description] shall in no way limit the protection granted to the design or the subject matter of the registration.” Id. § (f)(3). The database will also contain a “substantially complete visual representation of all fashion designs submitted for registration under this chapter” as well as certain objective information. Id. § 2(j).

This bill also increase certain penalties for filing for protection inappropriately, so that the current statute would be revised to read: “Whoever knowingly makes a false representation materially affecting the rights obtainable under this chapter for the purpose of obtaining registration of a design under this chapter shall pay a penalty of not less than $5,000 [current amount is $500] and not more than $10,000 [current amount is $1,000], and any rights or privileges that individual may have in the design under this chapter shall be forfeited.” Id. § 2(h); see also 17 U.S.C. § 1327 (emphasis added).

If enacted, this bill would have immediate effect. Id. § 3.

Prior Proposals

In 2006, the Copyright Office presented a written statement to the House Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, explaining why the limitations proposed in the then-current bill (H.R. 5055, 109th Congr., 2d Sess., introduced March 30, 2006) might be acceptable. Statement, July 27, 2006. (“The Office believes that if Congress concludes that fashion design protection legislation should be enacted, H.R. 5055 provides a sound basis for balancing competing interests.”). For instance, the Copyright Office applauded the 3-year limitation to protection proposed by the bill:

“Because the peak demand for such [high-fashion] designs is relatively short-lived, a 3-year term is considered adequate to satisfy the designer’s reasonable expectation of exclusivity. . . . The Office applauds the proponents of fashion design legislation for seeking a modest term of protection that appears to be calibrated to address the period of time during which fashion designs are most at risk of being infringed and during which fashion designers are most likely be harmed by the sale of infringing goods. The Office would find it difficult to support fashion design legislation that offered such protection for the 10-year term enjoyed by vessel hull designs, but considers the 3-year term to be reasonable, assuming that the proponents of the legislation are able to make the case for protection.” Id.

The Statement outlines in detail prior proposals seeking protection for fashion and industrial designs, dating back to 1914. Id. Hearings were held about H.R. 5055 on July 27, 2006, but the bill was not enacted before the end of the session.

Current Status of H.R. 2196

Upon introduction on April 30, 2009, the bill was referred to the House Committee on the Judiciary.