INFRINGEMENTS OF COPYRIGHTS THURSDAY, JUNE 2, 1960 U.S. SENATE, SUBCOMMITTEE ON PATENTS, TRADEMARKS, AND COPYRIGHTS OF THE COMMITTEE ON THE JUDICIARY, The subcommittee met, pursuant to call, at 10:35 a.m., in room 2300, New Senate Office Building, Senator Philip A. Hart presiding. Present: Senator Hart. Also present: George S. Green, professional staff member; Robert L. Wright, chief counsel, Patents, Trademarks, and Copyrights Subcommittee; Clarence Dinkins, assistant counsel, and Richard M. Gibbons, of the staff of Senator Wiley. Senator HART. The committee will be in order. This hearing is to consider H.R. 4059. The chairman of the subcommittee, Senator O'Mahoney, has expressed the hope that he might be able to attend, and surely all of us hope this may be possible. However, in his absence at this hour, I suggest that we proceed. Mr. Gibbons is representing Senator Wiley. The record should show what all of us know, that the Committee on Foreign Relations today is engaged in a very serious set of hearings, and quite properly Senator Wiley is in attendance at that committee. In the absence of George Green, we are fortunate that Mr. Wright is present, and I am sure is thoroughly familiar with H.R. 4059. My silence implies that I read it first this morning. (H.R. 4059 follows:) [H.R. 4059, 86th Cong., 1st sess.] AN ACT To amend title 28 of the United States Code relating to actions for infringements of copyrights by the United States Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That section 1498 of title 28 of the United States Code is hereby amended by inserting the letter "(a)" at the beginning of the section and adding at the end thereof new subsections "(b)” and “(c)" reading as follows: "(b) Hereafter, whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive remedy of the owner of such copyright shall be by action against the United States in the Court of Claims for the recovery of his reasonable and entire compensation as damages for such infringement, including the minimum statutory damages as set forth in section 101(b) of title 17, United States Code: Provided, That a Government employee shall have a right of action against the Government under this subsection except where he was in a position to order, influence, or induce use of the copyrighted work by the Government: Provided, however, That this subsection shall not confer a right of action on any copyright owner or any assignee of such owner with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used: And provided further, That before such action against the United States has been instituted the appropriate corporation owned or controlled by the United States or the head of the appropriate department or agency of the Government, as the case may be, is authorized to enter into an agreement with the copyright owner in full settlement and compromise for the damages accruing to him by reason of such infringement and to settle the claim administratively out of available appropriations. "Except as otherwise provided by law, no recovery shall be had for any infringement of a copyright covered by this subsection committed more than three years prior to the filing of the complaint or counterclaim for infringement in the action, except that the period betwen the date of receipt of a written claim for compensation by the Department or agency of the Government or corporation owned or controlled by the United States, as the case may be, having authority to settle such claim and the date of mailing by the Government of a notice to the claimant that his claim has been denied shall not be counted as a part of the three years, unless suit is brought before the lastmentioned date. "(c) The provisions of this section shall not apply to any claim arising in a foreign country." SEC. 2. Title 10, United States Code, section 2386(4), is amended by adding after "patents" the words "or copyrights". SEC. 3. The catchline of section 1498 of title 28, United States Code, is amended to read "§ 1498. Patent and copyright cases". The item identified as "1498. Patent cases." in the chapter analysis of chapter 91 of title 28, United States Code, is amended to read "1498. Patent and copyright cases." Passed the House of Representatives July 20, 1959. RALPH R. ROBERTS, Clerk. Senator HART. I would ask Mr. Wright to proceed with the list of witnesses. As acting chairman, I have no statement to make. If any member of the subcommittee has given a statement, we would be glad to insert it at this point in the record. Mr. Wright. Mr. WRIGHT. Thank you, Senator. Mr. Dodds. STATEMENT OF ROBERT J. DODDS, JR., GENERAL COUNSEL, DEPARTMENT OF COMMERCE; ACCOMPANIED BY KENNETH MCCLURE, ASSISTANT GENERAL COUNSEL, DEPARTMENT OF COMMERCE Mr. WRIGHT. You are the General Counsel of the Commerce Department? Mr. DODDS. Yes, Mr. Wright. My name is Robert J. Dodds. I am General Counsel, Department of Commerce, and I am accompanied this morning by Assistant General Counsel Kenneth McClure. And any help that we can be to this subcommittee in its deliberations respecting H.R. 4059, why we will be most glad to offer whatever is requested of us. We have no prepared statement. The bill passed the House, and as you recall, in July of last year. We are very interested in the Department of Commerce in having this bill enacted. We feel that it will serve a definite purpose. The law of copyright is not afforded the same protection that is found in the patent field of suit against the Government because, of course, the sovereignty of the Government of the United States exists until by statute it in effect consents to suit. We feel that with respect to infringement of copyrights, the Government properly should be subject to liability. Senator HART. May I ask why the change was made with respect to patents and yet not to copyrights? Are you familiar with that? Maybe it is so obvious that I should know, but I do not. Mr. DODDS. I would like to know the answer to that myself, Senator, but I do not. May I ask Mr. McClure? Mr. McCLURE. It was just that the other did not occur at the time. Mr. DODDS. I was afraid that was the case. Mr. McCLURE. I have asked that question myself before, and this is the only answer that I have ever heard, that patents occurred and people were provided the remedy, and copyrights did not at the time. Mr. DODDS. That seems rather surprising because one usually thinks of patent rights and copyrights in the same connotation. Mr. WRIGHT. It is true, isn't it, that the patent statute was really a product of defense requirement policy? That is, that the military, the Defense Department wanted the right to, in effect, seize patents that they needed in connection with defense procurement? Mr. DODDS. Yes. As Mr. McClure says, the need came up and it was met by legislation. But since I got into this, it has been surprising to me that copyrights were not handled the same way— reproduction of documents whether by Defense or by any other agency. To me it is a surprising omission. Mr. WRIGHT. In that connection, I was wondering why you had in this statute here the double proviso over the second page of the bill which in terms undertakes to define the situation in which Government employees shall and shall not have a right to copyright certain material. There is no comparable provision defining governmental and employee rights as to patents in section 1498, and I wondered why it was thought necessary or desirable to put those definitions in here in the form of those provisos? Mr. DODDS. I think it is more apt to come up in the case of copyrights. And if I may say so, speaking personally, I think it is an omission in the patent case, although I think it would not be as likely to arise. We feel that the Government employee, by virtue of being a Government employee, should not be deprived of his right of action if a copyright owned by him is infringed by his agency, or by anyone in the Government. On the other hand, if it is a copyright that he worked on and he helped prepare as an official of the Government, he did not have the rights of the owner of the copyright. He should not be able to bring suit. That is why the two provisos. Mr. WRIGHT. I wondered if in connection with those provisos any thought has been given to their possible effect upon the pending litigation in the U.S. Court of Appeals for the District of Columbia here between Admiral Rickover and the Public Affairs Press? Mr. DODDS. That in no way has entered into our thinking in the Department of Commerce. Mr. WRIGHT. And there I suppose that it is this definition of copyrighted work prepared by someone employed by the United States with the aid of Government time and facilities. The definition here suggests that if those facts are true, there can be no private copyright by the man who prepared the material, and is contrary to the position that the admiral is now asserting, and the position which Judge Holtzoff upheld and which, of course, the admiral is attempting to sustain in the court of appeals. Mr. DODDS. Well, by analogy, Mr. Wright, if the Secretary of Commerce were to direct me to prepare a paper for him, in the course of my duties, and in the course and scope of his duties as Secretary of Commerce, and I were to seek to register that copyright, I think that I should not be able to sustain an action again the Government of infringement because it essentially is the Government's property. If during the hours of 9 to 5 I am preparing it in the court of my employment, I think that I should not have property rights on it. Mr. WRIGHT. But, of course, that whole question is one that is controversial throughout the Government at the moment. I wondered why it was necessary to have those first two provisos in the bill at all. Wouldn't you have a perfectly workable bill without them? Mr. MCCLURE. Mr. Wright, isn't there something of a comparison with existing law with respect to patents in section 1498? For example, in that section there it says a Government employee shall have the right to bring suit against the Government under this section except where he was in a position to order, influence, or induce use of the invention by the Government. Now, it seems to me that that is something of a parallel to the proviso that is found on page 2, starting at line 7. Mr. WRIGHT. Yes; I agree. However, the parallel ceases when you go on with the second proviso to describe the instances when an employee should or should not have title to copyrighted work. Mr. McCLURE. The second proviso in the bill reads: That this subsection shall not confer a right of action on any copyright owner, or any assignee of such owner with respect to any copyright work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used. Then it seems to me that it is very similar Mr. WRIGHT. That is the part I do not think is paralleled in section 1498-is it? Mr. McCLURE. Well, what I was thinking about is this sentence of section 1498 that says this section shall not confer a right of action on any patentee or any assignee, and so forth, with respect to any invention discovered or invented by the person while in the employment or service of the United States, where the invention was related to the official functions of the employee in cases where such functions included research and development, or in the making of which Government time, materials, or facilities were used. It seems to me that that is a rather close parallel. Mr. WRIGHT. Well, you feel that this definition is substantially the same as the patent one? I had thought that there was a deliberate choice of somewhat different words there to define the copyrightsMr. McCLURE. I think the purpose was identical. Mr. WRIGHT. There was no intention to establish a somewhat different standard with respect to Mr. MCCLURE. No, sir. Mr. WRIGHT. To employee ownership of copyright material? Mr. McCLURE. This is my understanding, Mr. Wright. Mr. WRIGHT. Because you will note section 1498 does refer to the nature of the duties of producing that kind of material. Mr. McCLURE. As will be involved in research and development. Mr. WRIGHT. And I gather you did not feel, or whoever prepared the bill did not feel, there was any need to parallel that language with respect to copyrighted work. Mr. MCCLURE. That is my understanding, Mr. Wright. Senator HART. I would think it might be helpful to those who are reading the record, including the members of the Judiciary Committee, if at this point the language of this patent section was inserted in the record. Mr. WRIGHT. I am sure it would, Senator. What I had reference to was the two provisos which begin at lines 7 and 12 and read as follows: Provided, That a Government employee shall have a right of action against the Government under this subsection except where he was in a position to order, influence, or induce use of the copyrighted work by the Government: Provided, however, That this subsection shall not confer a right of action on any copyright owner or any assignee of such owner with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used. And specifically the contention of Admiral Rickover with reference to his claim that even though in his case there was the material, the speeches, that were prepared while he was an employee of the Government, and there was some time or material used in connection with the preparation, that he has a right to copyright that material and assign it to a publisher. Mr. DODDS. Excuse me, Mr. Wright. I believe there is no existing prohibition comparable to the patent one in section 1498 with respect to copyright. I believe there is no restriction at the present time preventing a Government official from proceeding to enforce a copyright he may have. There is one with respect to patents. We have just read it. Mr. WRIGHT. You are telling us that the enactment of the legislation would have no effect on the admiral's suit? Mr. DODDS. Well, it would have to be retroactive for it to have any effect. Mr. WRIGHT. Well, it would. I suppose the court might seize on it just as an expression of congressional intent that they might relate back. I see on its face, of course, it does not purport to apply, except to infringements occurring after enactment. But I wondered Mr. DODDS. That is right. I think it in no way affects Admiral Rickover's suit pro or con. Mr. WRIGHT. That is your position on that? Mr. DODDS. That is my opinion. Senator HART. Have you any other questions, Mr. Wright? 58159-60-2 |