H.R.2696 - Vessel Hull Design Protection Act 105th Congress (1997-1998)

[Congressional Bills 105th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2696 Referred in Senate (RFS)]

  2d Session
                                H. R. 2696


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                             March 19, 1998

  Received; read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 AN ACT


 
  To amend title 17, United States Code, to provide for protection of 
                       certain original designs.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be referred to as the ``Vessel Hull Design Protection 
Act''.

SEC. 2. PROTECTION OF CERTAIN ORIGINAL DESIGNS.

    Title 17, United States Code, is amended by adding at the end the 
following new chapter:

              ``CHAPTER 12--PROTECTION OF ORIGINAL DESIGNS

``Sec.
``1201. Designs protected.
``1202. Designs not subject to protection.
``1203. Revisions, adaptations, and rearrangements.
``1204. Commencement of protection.
``1205. Term of protection.
``1206. Design notice.
``1207. Effect of omission of notice.
``1208. Exclusive rights.
``1209. Infringement.
``1210. Application for registration.
``1211. Benefit of earlier filing date in foreign country.
``1212. Oaths and acknowledgments.
``1213. Examination of application and issue or refusal of 
                            registration.
``1214. Certification of registration.
``1215. Publication of announcements and indexes.
``1216. Fees.
``1217. Regulations.
``1218. Copies of records.
``1219. Correction of errors in certificates.
``1220. Ownership and transfer.
``1221. Remedy for infringement.
``1222. Injunctions.
``1223. Recovery for infringement.
``1224. Power of court over registration.
``1225. Liability for action on registration fraudulently obtained.
``1226. Penalty for false marking.
``1227. Penalty for false representation.
``1228. Enforcement by Treasury and Postal Service .
``1229. Relation to design patent law.
``1230. Common law and other rights unaffected.
``1231. Administrator; Office of the Administrator.
``1232. No retroactive effect.
``Sec. 1201. Designs protected
    ``(a) Designs Protected.--
            ``(1) In general.--The designer or other owner of an 
        original design of a useful article which makes the article 
        attractive or distinctive in appearance to the purchasing or 
        using public may secure the protection provided by this chapter 
        upon complying with and subject to this chapter.
            ``(2) Vessel hulls.--The design of a vessel hull, including 
        a plug or mold, is subject to protection under this chapter, 
        notwithstanding section 1202(4).
    ``(b) Definitions.--For the purpose of this chapter, the following 
terms have the following meanings:
            ``(1) A design is `original' if it is the result of the 
        designer's creative endeavor that provides a distinguishable 
        variation over prior work pertaining to similar articles which 
        is more than merely trivial and has not been copied from 
        another source.
            ``(2) A `useful article' is a vessel hull, including a plug 
        or mold, which in normal use has an intrinsic utilitarian 
        function that is not merely to portray the appearance of the 
        article or to convey information. An article which normally is 
        part of a useful article shall be deemed to be a useful 
        article.
            ``(3) A `vessel' is a craft, especially one larger than a 
        rowboat, designed to navigate on water, but does not include 
        any such craft that exceeds 200 feet in length.
            ``(4) A `hull' is the frame or body of a vessel, including 
        the deck of a vessel, exclusive of masts, sails, yards, and 
        rigging.
            ``(5) A `plug' means a device or model used to make a mold 
        for the purpose of exact duplication, regardless of whether the 
        device or model has an intrinsic utilitarian function that is 
        not only to portray the appearance of the product or to convey 
        information.
            ``(6) A `mold' means a matrix or form in which a substance 
        for material is used, regardless of whether the matrix or form 
        has an intrinsic utilitarian function that is not only to 
        portray the appearance of the product or to convey information.
``Sec. 1202. Designs not subject to protection
    ``Protection under this chapter shall not be available for a design 
that is--
            ``(1) not original;
            ``(2) staple or commonplace, such as a standard geometric 
        figure, a familiar symbol, an emblem, or a motif, or another 
        shape, pattern, or configuration which has become standard, 
        common, prevalent, or ordinary;
            ``(3) different from a design excluded by paragraph (2) 
        only in insignificant details or in elements which are variants 
        commonly used in the relevant trades;
            ``(4) dictated solely by a utilitarian function of the 
        article that embodies it; or
            ``(5) embodied in a useful article that was made public by 
        the designer or owner in the United States or a foreign country 
        more than 1 year before the date of the application for 
        registration under this chapter.
``Sec. 1203. Revisions, adaptations, and rearrangements
    ``Protection for a design under this chapter shall be available 
notwithstanding the employment in the design of subject matter excluded 
from protection under section 1202 if the design is a substantial 
revision, adaptation, or rearrangement of such subject matter. Such 
protection shall be independent of any subsisting protection in subject 
matter employed in the design, and shall not be construed as securing 
any right to subject matter excluded from protection under this chapter 
or as extending any subsisting protection under this chapter.
``Sec. 1204. Commencement of protection
    ``The protection provided for a design under this chapter shall 
commence upon the earlier of the date of publication of the 
registration under section 1213(a) or the date the design is first made 
public as defined by section 1210(b).
``Sec. 1205. Term of protection
    ``(a) In General.--Subject to subsection (b), the protection 
provided under this chapter for a design shall continue for a term of 
10 years beginning on the date of the commencement of protection under 
section 1204.
    ``(b) Expiration.--All terms of protection provided in this section 
shall run to the end of the calendar year in which they would otherwise 
expire.
    ``(c) Termination of Rights.--Upon expiration or termination of 
protection in a particular design under this chapter, all rights under 
this chapter in the design shall terminate, regardless of the number of 
different articles in which the design may have been used during the 
term of its protection.
``Sec. 1206. Design notice
    ``(a) Contents of Design Notice.--(1) Whenever any design for which 
protection is sought under this chapter is made public under section 
1210(b), the owner of the design shall, subject to the provisions of 
section 1207, mark it or have it marked legibly with a design notice 
consisting of--
            ``(A) the words `Protected Design', the abbreviation 
        `Prot'd Des.', or the letter `D' with a circle, or the symbol 
        *D*;
            ``(B) the year of the date on which protection for the 
        design commenced; and
            ``(C) the 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 purposes of 
subparagraph (C) if it has been recorded by the Administrator before 
the design marked with such identification is registered.
    ``(2) After registration, the registration number may be used 
instead of the elements specified in subparagraphs (B) and (C) of 
paragraph (1).
    ``(b) Location of Notice.--The design notice shall be so located 
and applied as to give reasonable notice of design protection while the 
useful article embodying the design is passing through its normal 
channels of commerce.
    ``(c) Subsequent Removal of Notice.--When the owner of a design has 
complied with the provisions of this section, protection under this 
chapter shall not be affected by the removal, destruction, or 
obliteration by others of the design notice on an article.
``Sec. 1207. Effect of omission of notice
    ``(a) Actions With Notice.--Except as provided in subsection (b), 
the omission of the notice prescribed in section 1206 shall not cause 
loss of the protection under this chapter or prevent recovery for 
infringement under this chapter against any person who, after receiving 
written notice of the design protection, begins an undertaking leading 
to infringement under this chapter.
    ``(b) Actions Without Notice.--The omission of the notice 
prescribed in section 1206 shall prevent any recovery under section 
1223 against a person who began an undertaking leading to infringement 
under this chapter before receiving written notice of the design 
protection. No injunction shall be issued under this chapter with 
respect to such undertaking unless the owner of the design reimburses 
that person for any reasonable expenditure or contractual obligation in 
connection with such undertaking that was incurred before receiving 
written notice of the design protection, as the court in its discretion 
directs. The burden of providing written notice of design protection 
shall be on the owner of the design.
``Sec. 1208. Exclusive rights
    ``The owner of a design protected under this chapter has the 
exclusive right to--
            ``(1) make, have made, or import, for sale or for use in 
        trade, any useful article embodying that design; and
            ``(2) sell or distribute for sale or for use in trade any 
        useful article embodying that design.
``Sec. 1209. Infringement
    ``(a) Acts of Infringement.--Except as provided in subjection (b), 
it shall be infringement of the exclusive rights in a design protected 
under this chapter for any person, without the consent of the owner of 
the design, within the United States and during the term of such 
protection, to--
            ``(1) make, have made, or import, for sale or for use in 
        trade, any infringing article as defined in subsection (e); or
            ``(2) sell or distribute for sale or for use in trade any 
        such infringing article.
    ``(b) Acts of Sellers and Distributors.--A seller or distributor of 
an infringing article who did not make or import the article shall be 
deemed to have infringed on a design protected under this chapter only 
if that person--
            ``(1) induced or acted in collusion with a manufacturer to 
        make, or an importer to import such article, except that merely 
        purchasing or giving an order to purchase such article in the 
        ordinary course of business shall not of itself constitute such 
        inducement or collusion; or
            ``(2) refused or failed, upon the request of the owner of 
        the design, to make a prompt and full disclosure of that 
        person's source of such article, and that person orders or 
        reorders such article after receiving notice by registered or 
        certified mail of the protection subsisting in the design.
    ``(c) Acts Without Knowledge.--It shall not be infringement under 
this section to make, have made, import, sell, or distribute, any 
article embodying a design which was created without knowledge that a 
design was protected under this chapter and was copied from such 
protected design.
    ``(d) Acts in Ordinary Course of Business.--A person who 
incorporates into that person's product of manufacture an infringing 
article acquired from others in the ordinary course of business, or 
who, without knowledge of the protected design embodied in an 
infringing article, makes or processes the infringing article for the 
account of another person in the ordinary course of business, shall not 
be deemed to have infringed the rights in that design under this 
chapter except under a condition contained in paragraph (1) or (2) of 
subsection (b). Accepting an order or reorder from the source of the 
infringing article shall be deemed ordering or reordering within the 
meaning of subsection (b)(2).
    ``(e) Infringing Article Defined.--As used in this section, an 
`infringing article' is any article the design of which has been copied 
from a design protected under this chapter, without the consent of the 
owner of the protected design. An infringing article is not an 
illustration or picture of a protected design in an advertisement, 
book, periodical, newspaper, photograph, broadcast, motion picture, or 
similar medium. A design shall not be deemed to have been copied from a 
protected design if it is original and not substantially similar in 
appearance to a protected design.
    ``(f) Establishing Originality.--The party to any action or 
proceeding under this chapter who alleges rights under this chapter in 
a design shall have the burden of establishing the design's originality 
whenever the opposing party introduces an earlier work which is 
identical to such design, or so similar as to make prima facie showing 
that such design was copied from such work.
    ``(g) Reproduction for Teaching or Analysis.--It is not an 
infringement of the exclusive rights of a design owner for a person to 
reproduce the design in a useful article or in any other form solely 
for the purpose of teaching, analyzing, or evaluating the appearance, 
concepts, or techniques embodied in the design, or the function of the 
useful article embodying the design.
``Sec. 1210. Application for registration
    ``(a) Time Limit for Application for Registration.--Protection 
under this chapter shall be lost if application for registration of the 
design is not made within two years after the date on which the design 
is first made public.
    ``(b) When Design Is Made Public.--A design is made public when an 
existing useful article embodying the design is anywhere publicly 
exhibited, publicly distributed, or offered for sale or sold to the 
public by the owner of the design or with the owner's consent.
    ``(c) Application by Owner of Design.--Application for registration 
may be made by the owner of the design.
    ``(d) Contents of Application.--The application for registration 
shall be made to the Administrator and shall state--
            ``(1) the name and address of the designer or designers of 
        the design;
            ``(2) the name and address of the owner if different from 
        the designer;
            ``(3) the specific name of the useful article embodying the 
        design;
            ``(4) the date, if any, that 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 setting 
forth the salient features of the design, but the absence of such a 
description shall not prevent registration under this chapter.
    ``(e) Sworn Statement.--The application for registration shall be 
accompanied by a statement under oath by the applicant or the 
applicant's duly authorized agent or representative, setting forth, to 
the best of the applicant's knowledge and belief--
            ``(1) that the design is original and was created by the 
        designer or designers named in the application;
            ``(2) that the design has not previously been registered on 
        behalf of the applicant or the applicant's predecessor in 
        title; and
            ``(3) that the applicant is the person entitled to 
        protection and to registration under this chapter.
If the design has been made public with the design notice prescribed in 
section 1206, the statement shall also describe the exact form and 
position of the design notice.
    ``(f) Effect of Errors.--(1) Error in any statement or assertion as 
to the utility of the useful article named in the application under 
this section, the design of which is sought to be registered, shall not 
affect the protection secured under this chapter.
    ``(2) Errors in omitting a joint designer or in naming an alleged 
joint designer shall not affect the validity of the registration, or 
the actual ownership or the protection of the design, unless it is 
shown that the error occurred with deceptive intent.
    ``(g) Design Made in Scope of Employment.--In a case in which the 
design was made within the regular scope of the designer's employment 
and individual authorship of the design is difficult or impossible to 
ascribe and the application so states, the name and address of the 
employer for whom the design was made may be stated instead of that of 
the individual designer.
    ``(h) Pictorial Representation of Design.--The application for 
registration shall be accompanied by two copies of a drawing or other 
pictorial representation of the useful article embodying the design, 
having one or more views, adequate to show the design, in a form and 
style suitable for reproduction, which shall be deemed a part of the 
application.
    ``(i) Design in More Than One Useful Article.--If the 
distinguishing elements of a design are in substantially the same form 
in different useful articles, the design shall be protected as to all 
such useful articles when protected as to one of them, but not more 
than one registration shall be required for the design.
    ``(j) Application for More Than One Design.--More than one design 
may be included in the same application under such conditions as may be 
prescribed by the Administrator. For each design included in an 
application the fee prescribed for a single design shall be paid.
``Sec. 1211. Benefit of earlier filing date in foreign country
    ``An application for registration of a design filed in the United 
States by any person who has, or whose legal representative or 
predecessor or successor in title has, previously filed an application 
for registration of the same design in a foreign country which extends 
to designs of owners who are citizens of the United States, or to 
applications filed under this chapter, similar protection to that 
provided under this chapter shall have that same effect as if filed in 
the United States on the date on which the application was first filed 
in such foreign country, if the application in the United States is 
filed within 6 months after the earliest date on which any such foreign 
application was filed.
``Sec. 1212. Oaths and acknowledgments
    ``(a) In General.--Oaths and acknowledgments required by this 
chapter--
            ``(1) may be made--
                    ``(A) before any person in the United States 
                authorized by law to administer oaths; or
                    ``(B) when made in a foreign country, before any 
                diplomatic or consular officer of the United States 
                authorized to administer oaths, or before any official 
                authorized to administer oaths in the foreign country 
                concerned, whose authority shall be proved by a 
                certificate of a diplomatic or consular officer of the 
                United States; and
            ``(2) shall be valid if they comply with the laws of the 
        State or country where made.
    ``(b) Written Declaration in Lieu of Oath.--(1) The Administrator 
may by rule prescribe that any document which is to be filed under this 
chapter in the Office of the Administrator and which is required by any 
law, rule, or other regulation to be under oath, may be subscribed to 
by a written declaration in such form as the Administrator may 
prescribe, and such declaration shall be in lieu of the oath otherwise 
required.
    ``(2) Whenever a written declaration under paragraph (1) is used, 
the document containing the declaration shall state that 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.
``Sec. 1213. Examination of application and issue or refusal of 
              registration
    ``(a) Determination of Registrability of Design; Registration.--
Upon the filing of an application for registration in proper form under 
section 1210, and upon payment of the fee prescribed under section 
1216, the Administrator shall determine whether or not the application 
relates to a design which on its face appears to be subject to 
protection under this chapter, and, if so, the Register shall register 
the design. Registration under this subsection shall be announced by 
publication. The date of registration shall be the date of publication.
    ``(b) Refusal To Register; Reconsideration.--If, in the judgment of 
the Administrator, the application for registration relates to a design 
which on its face is not subject to protection under this chapter, the 
Administrator shall send to the applicant a notice of refusal to 
register and the grounds for the refusal. Within 3 months after the 
date on which the notice of refusal is sent, the applicant may, by 
written request, seek reconsideration of the application. After 
consideration of such a request, the Administrator shall either 
register the design or send to the applicant a notice of final refusal 
to register.
    ``(c) Application To Cancel Registration.--Any person who believes 
he or she is or will be damaged by a registration under this chapter 
may, upon payment of the prescribed fee, apply to the Administrator at 
any time to cancel the registration on the ground that the design is 
not subject to protection under this chapter, stating the reasons for 
the request. Upon receipt of an application for cancellation, the 
Administrator shall send to the owner of the design, as shown in the 
records of the Office of the Administrator, a notice of the 
application, and the owner shall have a period of 3 months after the 
date on which such notice is mailed in which to present arguments to 
the Administrator for support of the validity of the registration. The 
Administrator shall also have the authority to establish, by 
regulation, conditions under which the opposing parties may appear and 
be heard in support of their arguments. If, after the periods provided 
for the presentation of arguments have expired, the Administrator 
determines that the applicant for cancellation has established that the 
design is not subject to protection under this chapter, the 
Administrator shall order the registration stricken from the record. 
Cancellation under this subsection shall be announced by publication, 
and notice of the Administrator's final determination with respect to 
any application for cancellation shall be sent to the applicant and to 
the owner of record.
``Sec. 1214. Certification of registration
    ``Certificates of registration shall be issued in the name of the 
United States under the seal of the Office of the Administrator and 
shall be recorded in the official records of the Office. The 
certificate shall state the name of the useful article, the date of 
filing of the application, the date of registration, and the date the 
design was made public, if earlier than the date of filing of the 
application, and shall contain a reproduction of the drawing or other 
pictorial representation of the design. If a description of the salient 
features of the design appears in the application, the description 
shall also appear in the certificate. A certificate of registration 
shall be admitted in any court as prima facie evidence of the facts 
stated in the certificate.
``Sec. 1215. Publication of announcements and indexes
    ``(a) Publications of the Administrator.--The Administrator shall 
publish lists and indexes of registered designs and cancellations of 
designs and may also publish the drawings or other pictorial 
representations of registered designs for sale or other distribution.
    ``(b) File of Representatives of Registered Designs.--The 
Administrator shall establish and maintain a file of the drawings or 
other pictorial representations of registered designs. The file shall 
be available for use by the public under such conditions as the 
Administrator may prescribe.
``Sec. 1216. Fees
    ``The Administrator shall by regulation set reasonable fees for the 
filing of applications to register designs under this chapter and for 
other services relating to the administration of this chapter, taking 
into consideration the cost of providing these services and the benefit 
of a public record.
``Sec. 1217. Regulations
    ``The Administrator may establish regulations for the 
administration of this chapter.
``Sec. 1218. Copies of records
    ``Upon payment of the prescribed fee, any person may obtain a 
certified copy of any official record of the Office of the 
Administrator that relates to this chapter. That copy shall be 
admissible in evidence with the same effect as the original.
``Sec. 1219. Correction of errors in certificates
    ``The Administrator may, by a certificate of correction under seal, 
correct any error in a registration incurred through the fault of the 
Office, or, upon payment of the required fee, any error of a clerical 
or typographical nature occurring in good faith but not through the 
fault of the Office. Such registration, together with the certificate, 
shall thereafter have the same effect as if it had been originally 
issued in such corrected form.
``Sec. 1220. Ownership and transfer
    ``(a) Property Right in Design.--The property right in a design 
subject to protection under this chapter shall vest in the designer, 
the legal representatives of a deceased designer or of one under legal 
incapacity, the employer for whom the designer created the design in 
the case of a design made within the regular scope of the designer's 
employment, or a person to whom the rights of the designer or of such 
employer have been transferred. The person in whom the property right 
is vested shall be considered the owner of the design.
    ``(b) Transfer of Property Right.--The property right in a 
registered design, or a design for which an application for 
registration has been or may be filed, may be assigned, granted, 
conveyed, or mortgaged by an instrument in writing, signed by the 
owner, or may be bequeathed by will.
    ``(c) Oath or Acknowledgement of Transfer.--An oath or 
acknowledgment under section 1212 shall be prima facie evidence of the 
execution of an assignment, grant, conveyance, or mortgage under 
subsection (b).
    ``(d) Recordation of Transfer.--An assignment, grant, conveyance, 
or mortgage under subsection (b) shall be void as against any 
subsequent purchaser or mortgagee for a valuable consideration, unless 
it is recorded in the Office of the Administrator within 3 months after 
its date of execution or before the date of such subsequent purchase or 
mortgage.
``Sec. 1221. Remedy for infringement
    ``(a) In General.--The owner of a design is entitled, after 
issuance of a certificate of registration of the design under this 
chapter, to institute an action for any infringement of the design.
    ``(b) Review of Refusal To Register.--(1) Subject to paragraph (2), 
the owner of a design may seek judicial review of a final refusal of 
the Administrator to register the design under this chapter by bringing 
a civil action, and may in the same action, if the court adjudges the 
design subject to protection under this chapter, enforce the rights in 
that design under this chapter.
    ``(2) The owner of a design may seek judicial review under this 
section if--
            ``(A) the owner has previously duly filed and prosecuted to 
        final refusal an application in proper form for registration of 
        the design;
            ``(B) the owner causes a copy of the complaint in the 
        action to be delivered to the Administrator within 10 days 
        after the commencement of the action; and
            ``(C) the defendant has committed acts in respect to the 
        design which would constitute infringement with respect to a 
        design protected under this chapter.
    ``(c) Administrator as Party to Action.--The Administrator may, at 
the Administrator's option, become a party to the action with respect 
to the issue of registrability of the design claim by entering an 
appearance within 60 days after being served with the complaint, but 
the failure of the Administrator to become a party shall not deprive 
the court of jurisdiction to determine that issue.
    ``(d) Use of Arbitration To Resolve Dispute.--The parties to an 
infringement dispute under this chapter, within such time as may be 
specified by the Administrator by regulation, may determine the 
dispute, or any aspect of the dispute, by arbitration. Arbitration 
shall be governed by title 9. The parties shall give notice of any 
arbitration award to the Administrator, and such award shall, as 
between the parties to the arbitration, be dispositive of the issues to 
which it relates. The arbitration award shall be unenforceable until 
such notice is given. Nothing in this subsection shall preclude the 
Administrator from determining whether a design is subject to 
registration in a cancellation proceeding under section 1213(c).
Sec. 1222. Injunctions
    ``(a) In General.--A court having jurisdiction over actions under 
this chapter may grant injunctions in accordance with the principles of 
equity to prevent infringement of a design under this chapter, 
including, in its discretion, prompt relief by temporary restraining 
orders and preliminary injunctions.
    ``(b) Damages for Injunctive Relief Wrongfully Obtained.--A seller 
or distributor who suffers damage by reason of injunctive relief 
wrongfully obtained under this section has a cause of action against 
the applicant for such injunctive relief and may recover such relief as 
may be appropriate, including damages for lost profits, cost of 
materials, loss of good will, and punitive damages in instances where 
the injunctive relief was sought in bad faith, and, unless the court 
finds extenuating circumstances, reasonable attorney's fees.
``Sec. 1223. Recovery for infringement
    ``(a) Damages.--Upon a finding for the claimant in an action for 
infringement under this chapter, the court shall award the claimant 
damages adequate to compensate for the infringement. In addition, the 
court may increase the damages to such amount, not exceeding $50,000 or 
$1 per copy, whichever is greater, as the court determines to be just. 
The damages awarded shall constitute compensation and not a penalty. 
The court may receive expert testimony as an aid to the determination 
of damages.
    ``(b) Infringer's Profits.--As an alternative to the remedies 
provided in subsection (a), the court may award the claimant the 
infringer's profits resulting from the sale of the copies if the court 
finds that the infringer's sales are reasonably related to the use of 
the claimant's design. In such a case, the claimant shall be required 
to prove only the amount of the infringer's sales and the infringer 
shall be required to prove its expenses against such sales.
    ``(c) Statute of Limitations.--No recovery under subsection (a) or 
(b) shall be had for any infringement committed more than 3 years 
before the date on which the complaint is filed.
    ``(d) Attorney's Fees.--In an action for infringement under this 
chapter, the court may award reasonable attorney's fees to the 
prevailing party.
    ``(e) Disposition of Infringing and Other Articles.--The court may 
order that all infringing articles, and any plates, molds, patterns, 
models, or other means specifically adapted for making the articles, be 
delivered up for destruction or other disposition as the court may 
direct.
``Sec. 1224. Power of court over registration
    ``In any action involving the protection of a design under this 
chapter, the court, when appropriate, may order registration of a 
design under this chapter or the cancellation of such a registration. 
Any such order shall be certified by the court to the Administrator, 
who shall make an appropriate entry upon the record.
``Sec. 1225. Liability for action on registration fraudulently obtained
    ``Any person who brings an action for infringement knowing that 
registration of the design was obtained by a false or fraudulent 
representation materially affecting the rights under this chapter, 
shall be liable in the sum of $10,000, or such part of that amount as 
the court may determine. That amount shall be to compensate the 
defendant and shall be charged against the plaintiff and paid to the 
defendant, in addition to such costs and attorney's fees of the 
defendant as may be assessed by the court.
``Sec. 1226. Penalty for false marking
    ``(a) In General.--Whoever, for the purpose of deceiving the 
public, marks upon, applies to, or uses in advertising in connection 
with an article made, used, distributed, or sold, a design which is not 
protected under this chapter, a design notice specified in section 
1206, or any other words or symbols importing that the design is 
protected under this chapter, knowing that the design is not so 
protected, shall pay a civil fine of not more than $500 for each such 
offense.
    ``(b) Suit by Private Persons.--Any person may sue for the penalty 
established by subsection (a), in which event one-half of the penalty 
shall be awarded to the person suing and the remainder shall be awarded 
to the United States.
``Sec. 1227. Penalty for false representation
    ``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 $500 and not more than $1,000, and any rights 
or privileges that individual may have in the design under this chapter 
shall be forfeited.
``Sec. 1228. Enforcement by Treasury and Postal Service
    ``(a) Regulations.--The Secretary of the Treasury and the United 
States Postal Service shall separately or jointly issue regulations for 
the enforcement of the rights set forth in section 1208 with respect to 
importation. Such regulations may require, as a condition for the 
exclusion of articles from the United States, that the person seeking 
exclusion take any one or more of the following actions:
            ``(1) Obtain a court order enjoining, or an order of the 
        International Trade Commission under section 337 of the Tariff 
        Act of 1930 excluding, importation of the articles.
            ``(2) Furnish proof that the design involved is protected 
        under this chapter and that the importation of the articles 
        would infringe the rights in the design under this chapter.
            ``(3) Post a surety bond for any injury that may result if 
        the detention or exclusion of the articles proves to be 
        unjustified.
    ``(b) Seizure and Forfeiture.--Articles imported in violation of 
the rights set forth in section 1208 are subject to seizure and 
forfeiture in the same manner as property imported in violation of the 
customs laws. Any such forfeited articles shall be destroyed as 
directed by the Secretary of the Treasury or the court, as the case may 
be, except that the articles may be returned to the country of export 
whenever it is shown to the satisfaction of the Secretary of the 
Treasury that the importer had no reasonable grounds for believing that 
his or her acts constituted a violation of the law.
``Sec. 1229. Relation to design patent law
    ``The issuance of a design patent under title 35 for an original 
design for an article of manufacture shall terminate any protection of 
the original design under this chapter.
``Sec. 1230. Common law and other rights unaffected
    ``Nothing in this chapter shall annul or limit--
            ``(1) common law or other rights or remedies, if any, 
        available to or held by any person with respect to a design 
        which has not been registered under this chapter; or
            ``(2) any right under the trademark laws or any right 
        protected against unfair competition.
``Sec. 1231. Administrator; Office of the Administrator
    ``In this chapter, the `Administrator' is the Register of 
Copyrights, and the `Office of the Administrator' and the `Office' 
refer to the Copyright Office of the Library of Congress.
``Sec. 1232. No retroactive effect
    ``Protection under this chapter shall not be available for any 
design that has been made public under section 1210(b) before the 
effective date of this chapter.''.

SEC. 3. CONFORMING AMENDMENTS.

    (a) Table of Chapters.--The table of chapters for title 17, United 
States Code, is amended by adding at the end the following:

``12. Protection of Original Designs........................    1201''.
    (b) Jurisdiction of District Courts Over Design Actions.--(1) 
Section 1338(c) of title 28, United States Code, is amended by 
inserting ``, and to exclusive rights in designs under chapter 12 of 
title 17,'' after ``title 17''.
    (2)(A) The section heading for section 1338 of title 28, United 
States Code, is amended by inserting ``designs,'' after ``mask 
works,''.
    (B) The item relating to section 1338 in the table of sections at 
the beginning of chapter 85 of title 28, United States Code, is amended 
by inserting ``designs,'' after ``mask works,''.
    (c) Place for Bringing Design Actions.--Section 1400(a) of title 
28, United States Code, is amended by inserting ``or designs'' after 
``mask works''.
    (d) Actions Against the United States.--Section 1498(e) of title 
28, United States Code, is amended by inserting ``, and to exclusive 
rights in designs under chapter 12 of title 17,'' after ``title 17''.

SEC. 4. EFFECTIVE DATE.

    The amendments made by sections 2 and 3 shall take effect one year 
after the date of the enactment of this Act.

            Passed the House of Representatives March 18, 1998.

            Attest:

                                                Robin H. Carle,

                                                                 Clerk.