Carl J. Spagnuolo

January 2002

McHale Slavin Newsetter

TWO PERSPECTIVES ON THE
VESSEL HULL DESIGN
PROTECTION ACT

Little Known, Seldom Used Protection in the Boating Industry

by Carl J. Spagnuolo
Entertainment, Trademark & Copyright Attorney



What was once considered merely functional, and therefore not subject to federal copyright protection, is now protectable under Title 17, United States Code. The Vessel Hull Design Protection Act,(Title 17, Chapter 13), provides copyright protection for "Vessel Hulls." Chapter 13 oddly creates an apparatus, which loosely resembles a cross between copyright, patent and trademark. The Act positions copyright protection in opposition to patent protection, as copyright design protection is not available for hulls, which have been patented.

The Vessel Hull Act differs in many aspects from traditional notions of copyright registration and protection. Deposit material is limited to drawings or photographs of the boat hull, but the design must exist in an actual vessel hull that is publicly exhibited, distributed or sold to the public after October 18, 1998. No protection is available under the Act for drawings of hull designs, which have yet to be built.

If a songwriter desires to register a song she wrote 20-years ago, there is no time bar to copyright registration but the same is not true with boat hull registration. Chapter 13 Registration creates a two (2) year window of opportunity within which to register a hull design. If a design is not registered within two (2) years of the hull's creation, the opportunity to register for design protection is lost.

The typical duration of copyright for a work is that of the life of the author plus 70-years. However, the same is not so for boat hull designs. The Act provides only 10-years of protection for boat hull designs.

Another difference between traditional copyright and boat hull design copyright is the level of review given to the subject design. A song, book, article or painting, will typically not be highly scrutinized for copyright eligibility. The trade-off in those examples is that the U.S. Copyright Office makes no claims of originality for the works, or even that the work is not an infringement of another work. With the boat hull design application, however, an administrator will determine whether or not the application relates to a design, which on the face appears to be subject to protection. If the design does not, the registration will be refused. The application process takes on the flavor of a trademark or patent application at that point wherein the applicant may respond to a refusal, upon which response, the administrator may accept the amended application or issue a final refusal.

Publication marks another distinct difference between the typical copyright registration procedure and boat hull copyright. Boat hull design protection, like trademark, is announced by publication.

Unlike conventional copyright provisions, Chapter 13 contains language, which tracks, in large part, the Trademark Act's cancellation provisions. Section 1313(c) provides that any person who believes he or she is or will be damaged by a registration may apply to the Administrator to cancel the registration on the ground that the design is not subject to protection, stating the reasons for the request. The cancellation process then takes on a Trademark Cancellation flavor except that, under the Boat Hull Act, the cost of the cancellation shall be borne by the non-prevailing party; a sanction which is not mandatory with trademark.

On The Patent Side

by C. Fred Rosenbaum
Registered Patent Attorney

In view of the Vessel Hull Design Act, this firm will elicit the necessary information regarding a vessel hull copyright filing as part of our initial patent interview when the subject matter of the patent application concerns boats and hulls. Also, the firm will suggest that the inventor build a hull as soon as possible.

The significant distinction between a patent application and the copyright application is that a patent application does not require a hull to be in existence, as does the copyright registration. Patent law, 35 USC 101, does require that the patent be for a new and useful device. However, the, "usefulness," may be theoretical, if supported by calculations and/or drawings.

If the patent application is submitted to the U.S. Patent & Trademark Office (PTO) before a hull incorporating the invention is built, there would be no filing for copyright protection. But, upon building a hull incorporating the invention, our law firm would recommend filing for copyright protection in the Copyright Office, Library of Congress. In this vein, it is not clear that the hull has to be the full size contemplated by the originator. Could the actual hull be a model?

A major benefit of this strategy would come into play if the inventor would build a hull and then file for a patent. In this situation, a copyright registration could be filed simultaneously with the patent application. The PTO has a backlog of at least nine (9) months to a year before the patent application receives an initial review. The total patenting process may take at least 18-months. In the meantime, the inventor may enjoy the legal protection of copyright registration. In the long run, the 20-year patent protection would extend beyond the 10-years protection of the copyright registration.



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