STATEMENT OF KARL FENNING, ESQ., PATENT LAWYER, Mr. FENNING. Mr. Chairman and gentlemen of the committee, I am Karl Fenning, a patent lawyer, of Washington. May it please the committee, I have filed a short statement. I think I will not read it, but I may advert somewhat to it. Mr. LEWIS. Let me suggest, Mr. Fenning, that we have a number of witnesses here and the time of the committee, of course, is limited by the time Congress convenes. Mr. FENNING. Yes, sir. Mr. LEWIS. So, Mr. Fenning, we have your statement. If you care to comment on it and not to read it, we shall read it ourselves. Mr. FENNING. I was going to suggest that myself. If you will print it, I will be glad to say just a few words. Mr. LEWIS. Yes, sir. Mr. FENNING. It has been pointed out that there is necessity for design protection. The purpose, of course, of all of this design protection is to take care of the requirements of the Constitution and is based on the granting to the author or the inventor of an exclusive right for a limited period of his writings or invention. Now heretofore Congress has said they should be taken care of with respect to design under the patent statutes. That is, you have said that the design must be an invention in order to be protected. This bill says, and I think rightly, that the design is not an invention but is a writing. The Patent Office regularly has held, in most instances, and the courts in many instances have held, that it is almost impossible to find the same sort of invention in a design that is in a radio device or a typesetting machine. It seems almost obvious. In fact it seems almost impossible to realize we have gone along for over a century and a half trying to fit into the square hole of invention the round design. It may be that I can refer to one or two decisions to clarify that. Let me say first that those who are interested in design protection have taken all the steps which we feel are possible to get protection under the present statutes. They have been unable to secure protection under the patent laws, under the copyright statutes, under common-law copyright, under unfair competition principles, and under the Federal Trade Commission. We do not know any other procedure to attempt. One of the leading cases is Cheney Brothers v. Doris Silk Corp. (35 F. (2) 279), where the defendant copied one of the plaintiff's textile designs and suit was brought for unfair competition. The bill was dismissed in 1929, and I will read you just a few words of what Judge Learned Hand said: * * SO * It is impossible to copyright [these designs] under the Copyright Act or at least so the authorities of the Copyright Office hold plaintiff finds itself without protection of any sort. ** * They suggested a common-law patent or copyright should be granted by reason of justice, but the court turned it down, saying when it is published as a design, as soon as it is put into use, then the common-law copyright is lost. The court then proceeds to say that if any protection is going to be given it must be by a new statute of Congress. I cite several cases. Mr. KEATING. In the law relating to unfair competition, is it necessary to show that the defendant is palming his goods off as those of the plaintiff to show recovery? Mr. FENNING. Yes. Mr. KEATING. Unless you can show that, you cannot succeed? Mr. FENNING. Unless you can show that, you cannot succeed; and, of course, we cannot do that because the dealer in the pirated design will not admit it and does not advertise pirating the design. He says, "It is my design." Mr. BRYSON. Mr. Fenning, as you probably know, the jurisdiction over patents and copyrights has recently been acquired by this committee? Mr. FENNING. Yes, sir. Mr. BRYSON. And unfortunately not any of us served on the Patent Committee heretofore. I am a bit astounded to learn that textile designs are not protected either under the copyright or under the patent laws. Mr. FENNING. Yes, sir. Mr. BRYSON. Especially since I represent the largest textile industry in the world. I would like to know if the effort you have made has ever been made before. Has a bill similar to this ever been presented to the Congress? Mr. FENNING. This activity has been going on for 30 or 40 years. I have here before me hearings held before the House Committee on Patents in May of 1932, on design protection. There was no bill before the committee at that time. There were hearings. Mr. BRYSON. Yes? Mr. FENNING. On the 10th and 11th of May there were general hearings. There was a recess and then on the 17th of May the hearings reopened and you will find on page 115 of the hearings a statement made by me that we had reached the conclusion that substantially the only way to get the proper protection for textile designs was to get out from under copyright and patent law and into this hybrid sort of protection which this particular bill creates, which is part copyright and part patent, but is design-registration protection. Now that bill was introduced not at that time but a little later because it took some time to draw it and get it introduced. It was introduced in 1933, as I remember, and a successor of it was brought into Congress year after year for a number of years. One year it passed the House but not the Senate; one year it passed the Senate and not the House. There were a good many hearings. It was active until a little before the war, then it dropped out because of the war. Now it has started again. It has been active but it has never been successful. There has been a consistent demand for it. Mr. KEATING. But that bill was substantially different from H. R. 2860? Mr. FENNING. Not substantially different. Different in some respects but not substantially different in substance. At least I hope that is the situation. Then under the NRA codes there was a proviso that the copying of a design, the piracy of a design was against the law, and until that law was held invalid there was some protection. I think there was some case where there was an actual fine, but that did not last very long. That is only of interest from a historical standpoint. The cases go ahead right on down to the present time. In the case of Belding Hemingway Co. v. Future Fashions, Inc. (55 Fed. Supp. 39), a preliminary injunction was issued against a plain copying of a textile design patent. In that case the court cited many cases showing that invention is necessary to a valid design patent but seems to assume invention because the copying is so clear. The case was reversed by the Second Circuit Court of Appeals in 143 Fed. (2d) at 216, the court saying: Apparently what the makers of women's dresses really need is that copyright protection, which Congress has hitherto denied them. Then in the case of White v. Leanore Frocks, Inc. (120 Fed. (2d) at 113), the same court in a suit on a dress design patent said there is no effective remedy open. Then in the case of Nat Lewis Purses, Inc. v. Carole Bags, Inc. (88 Fed. (2d) at 475), the court said: Efforts have been made to induce Congress to change the law so as to give some protection, without success so far; and until it does, new designs are open to all, unless their production demands some salient ability. Now I have stated that it was necessary to show invention to get design protection under the present law. For many years we all thought of getting that protection through the Patent Office, and were able to get a patent granted on a design as invention, and occasionally some of those were supported by the court, but not generally. Recently Commissioner Ooms handed down a decision in which he said: The design must possess invention. Courts have recognized the failure of the design patent law to grant the protection which might be available under copyright law. This defect in available protection from which appellant suffers is one that cannot be cured by a legally unsound decision in the Patent Office but must be repaired if at all by Congress. That is Ex parte Norman (69 U. S. P. Q. 553), in 1946. The Court of Customs and Patent Appeals controls the Patent Office by appeals and it handed down a decision in 1946, in Faustmann (33 C. C. P. A. 1065), and in refusing a design patent, based it on four propositions. It said: * The authority for granting of a design patent is based upon four propositions: The design must be new, original, ornamental, and must be the product of invention. * It has been a uniform holding of this court, following the settled law announced by other courts, that the production of a design patent must involve the element of invention and it is well settled that no lesser degree of inventive skill is required than other kinds of patented articles. You can see that puts a very high standard which the design must meet and it is such a high standard that they cannot meet it. We have drawn this new bill in such a way as to require three of those standards but it is leaving out the "invention" requirement which we think is the proper thing to do. You will find this bill is limited to textile design, not to all designs, and that is done for two reasons: The textile industry has been more disturbed than most industries. Among other things textiles is a seasonal thing, it lasts but a short time and it must be given protection. The people must know what they are doing. A design registration bureau has been established in New York City and has run very satisfactorily for several years. It is a voluntary organization. The manufacturer goes to the Design Registration Bureau with his design and has it examined. If he finds it is new, he proceeds to manufacture it. If he finds it is not new, he does not proceed to manufacture it. It is a voluntary organization, and it is availed of by the reputable members of the industry. Unfortunately there are a good many members who are not reputable, and there is no law to enforce and carry out it findings either by the reputable or nonreputable, but the textile people are extremely anxious to get the matter going. Therefore, we want to confine the matter to textiles, to extile people, who generally are agreed that they are willing to try this scheme, which is something of an experiment after all. Again, we are putting this matter in the Library of Congress. This sort of industrial activity is something new in the Library of Congress, and if we try to put all industries in the Library of Congress tomorrow we would ruin the Library of Congress. They have a Register of Copyrights that can probably prepare himself to take care of the textile industry. They can get the textile industry going in a fairly short time. After it works properly, later on the work can be spread into other industries. So we feel justified in asking you to pass what may be referred to as a limited experimental statute. Now even if we could in theory get a good design patent, first of all we would have the delay in the Patent Office. It has happened with a style design that an infringement may occur in 2 or 3 days or within a week. If we go in the Patent Office, having filed our application, it takes 3 or 4 or 6 months to get an examination made and a reply given to us. Then after that it takes 3 or 4 weeks for the Patent Office to print, and they must by statute print the design patented before it is issued. By that time-and there cannot be an infringement of a patent until after it is issued-by that time the infringement, of course, may have taken place. The design having been stolen, it is valueless and the patent might just as well be thrown down the sewer, as frequently they are where that is the condition. That is the situation in regard to design patents. Mr. KEATING. In filing a lot of these applications for registration of these designs, would not the Patent Office be in the same condition. regarding them as they are regarding design patents? Mr. FENNING. I did not quite get your question. Mr. KEATING. In regard to application for registration of these designs, would not the Patent Office be in the same condition regarding them as they are regarding design patents? Mr. FENNING. That is our thought, if they are to be filed in the Patent Office. Mr. KEATING. In the Copyright Office? Mr. FENNING. I think there is no question about the Copyright Office. The Design Registration Bureau in New York, which handles this matter, does it very efficiently; and we have Miss Blunt, the director of that bureau, here today. She has been very effective and efficient in establishing that bureau, and she will tell you this morning how it operates. In 24 or 48 hours she can turn out the results of a search because she knows how to make the search. So such a search with an efficient bureau can be done in 2 or 3 days when you have the proper machinery. So we are going to be able to get prompt action in that way, and even then, you see, we will not have to wait the 4 or 5 weeks 65881-47-ser. 12- 3 such as we face at the Patent Office, because there is no proviso for printing the design. Again, the design patents-and this, I think, is of extreme importance-a design patent gives a monopoly when it is issued to the designer for the period of the patent, and some of the design patents are granted for 14 years and after a man gets a patent on his design he has a monopoly on the design for 14 years. Now under our bill the limitation of the protection is for a short period, which is all that is needed. So it was put at 1 year with a proviso that if the design is actually applied to goods during that 1-year period and a request is made for an additional extension of the protection, for a fee in addition, it may go on for another 4 years, making the maximum protection 5 years. So that you get the shorter period and throw the matter into the public domain in a shorter time. Mr. CHADWICK. There is one thing I want to be sure I understand, and in order to illuminate myself I can best give you a specific instance. Suppose a person manufactures Palm Beach cloth. Mr. FENNING. Yes. Mr. CHADWICK. Suppose he has found a legislative situation such as you are facing in this act. Would that have been claimed as a patent or as a design? Does the trade design go more to the superficial appearance of the thing, or does textile design include the nature of the weave? Mr. FENNING. Unfortunately the English language is such that almost every word has 15 meanings. If you go to a dictionary and look up "design," you may find it has one, two, three, four, and other meanings. Design may mean anything, but here design means appearance. It means not shape but it means surface form. Now Palm Beach cloth, like this table or a piece of paper, has no design in it. The design means the lines which appear when you look at the fabric. Palm Beach cloth has no superficial marking on it. It might be the composition of Palm Beach cloth was new and then we would get not a design patent but a mechanical patent on the manufacture of Palm Beach cloth. Mr. CHADWICK. Then it is not the way the fabric is prepared but the way it reflects itself in its appearance? Mr. FENNING. Exactly right. Mr. CHADWICK. In other words, a herringbone material might be designed and patented? Mr. FENNING. If it were a new herringbone. Mr. CHADWICK. If it were a new application of the herringbone design it would come under this act? Mr. FENNING. Yes. Mr. CHADWICK. And it would not make any difference whether it was woven and incorporated in the fabric, it would be protected as a design of the fabric? Mr. FENNING. Right. Mr. KEATING. But does the Office of the Register of Copyrights have to find that this design has never before anywhere in the world been represented pictorially in order to issue a copyright? Mr. FENNING. Yes; he must be sure he has a good source of search, and he is certain he can get a good source. |