II

104TH CONGRESS

2D SESSION S. 2103

To amend title 17, United States Code, to protect vessel hull designs against

unauthorized duplication, and for other purposes.

IN THE SENATE OF THE UNITED STATES

SEPTEMBER 20, 1996

Mr. BREAUX (for himself, Mr. FAIRCLOTH, Mr. HEFLIN, Mr. INHOFE, Mr.

HELMS, and Mr. MACK) introduced the following bill; which was read

twice and referred to the Committee on the Judiciary

A BILL

To amend title 17, United States Code, to protect vessel

hull designs against unauthorized duplication, and for

other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE.

4 This Act may be cited as the ‘‘Boat Protection Act

5 of 1996’’.

6 SEC. 2. PROTECTION OF VESSEL HULL DESIGNS.

7 Title 17, United States Code, is amended by adding

8 at the end the following new chapter:
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1 ‘‘CHAPTER 12—PROTECTION OF VESSEL

2 HULL DESIGNS

‘‘Sec.

‘‘1201. Definitions.

‘‘1202. Subject matter of protection.

‘‘1203. Ownership and transfer.

‘‘1204. Duration of protection.

‘‘1205. Exclusive rights in plugs or molds.

‘‘1206. Limitation on exclusive rights: reverse engineering; first sale.

‘‘1207. Limitation on exclusive rights: innocent infringement.

‘‘1208. Registration of claims of protection.

‘‘1209. Plug or mold notice.

‘‘1210. Enforcement of exclusive rights.

‘‘1211. Remedies for infringement.

‘‘1212. Relation to other laws.

3 ‘‘§ 1201. Definitions

4 ‘‘As used in this chapter—

5 ‘‘(1) a ‘vessel hull’ shall have the meaning as

6 such term is defined under regulations prescribed by

7 the Register of Copyrights;

8 ‘‘(2) a ‘plug’ means a device or model used to

9 make a mold for the purpose of exact duplication,

10 regardless of whether the device or model has an in11 trinsic utilitarian function that is not only to portray

12 the appearance of the product or to convey informa13 tion;

14 ‘‘(3) a ‘mold’ means a matrix or form in which

15 a substance for material is used, regardless of

16 whether the matrix or form has an intrinsic utilitar17 ian function that is not only to portray the appear18 ance of the product or to convey information;
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1 ‘‘(4) a plug or mold is ‘fixed’ in a vessel hull

2 when its embodiment in the vessel hull, by or under

3 the authority of the owner of the plug or mold, is

4 sufficiently permanent or stable to permit the vessel

5 hull to be perceived, reproduced, or otherwise com6 municated for a period of more than transitory du7 ration;

8 ‘‘(5) a plug or mold is ‘original’ if it is the inde9 pendent creation of an author who did not copy it

10 from another source;

11 ‘‘(6) to ‘commercially exploit’ a plug or mold is

12 to sell, offer for sale after the plug or mold is fixed

13 in a vessel hull, or otherwise distribute to the public

14 for profit vessel hulls embodying the plug or mold;

15 ‘‘(7) the ‘owner’ of a plug or mold is the author

16 of the plug or mold, the legal representatives of a

17 deceased author or of an author under a legal inca18 pacity, the employer of an author who created the

19 plug or mold for the employer in the case of a work

20 made within the scope of the author’s employment,

21 or a person to whom the rights of the author or of

22 such employer are transferred in accordance with

23 this chapter;

24 ‘‘(8) an ‘innocent purchaser’ is a person who

25 purchases a vessel hull or a product in which a ves-
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1 sel hull is contained in good faith and without hav2 ing notice of protection with respect to that vessel

3 hull or product;

4 ‘‘(9) having ‘notice of protection’ means having

5 actual knowledge that, or reasonable grounds to be6 lieve that, a plug or mold fixed in a vessel hull is

7 protected under this chapter; and

8 ‘‘(10) an ‘infringing vessel hull’ is a vessel hull

9 which is made, imported, or distributed in violation

10 of the exclusive rights of the owner of a plug or

11 mold under this chapter.

12 ‘‘§ 1202. Subject matter of protection

13 ‘‘(a)(1) An original plug or mold fixed in a vessel hull

14 is eligible for protection under this chapter if—

15 ‘‘(A) on the date on which the plug or mold is

16 registered under section 1208, or the date on which

17 the plug or mold is first commercially exploited,

18 whichever occurs first, the owner of the plug or mold

19 is—

20 ‘‘(i) a national or domiciliary of the United

21 States;

22 ‘‘(ii) a national, domiciliary, or sovereign

23 authority of a foreign nation that is party to a

24 treaty affording protection to plugs or molds to

25 which the United States is also a party; or
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1 ‘‘(iii) a stateless person, wherever that per2 son may be domiciled;

3 ‘‘(B) the plug or mold is first commercially ex4 ploited in the United States; or

5 ‘‘(C) the plug or mold comes within the scope

6 of a Presidential proclamation issued under para7 graph (2).

8 ‘‘(2) Whenever the President finds that a foreign na9 tion extends, to plugs or molds of owners who are nation10 als or domiciliaries of the United States or to plugs or

11 molds on the date on which the plugs or molds are reg12 istered under section 1208, or the date on which the plugs

13 or molds are first commercially exploited, whichever occurs

14 first, protection—

15 ‘‘(A) on substantially the same basis as that on

16 which the foreign nation extends protection to plugs

17 or molds of its own nationals and domiciliaries and

18 plugs or molds first commercially exploited in that

19 nation;

20 ‘‘(B) on substantially the same basis as pro21 vided in this chapter,

22 the President may by proclamation extend protection

23 under this chapter to plugs or molds—

24 ‘‘(i) of owners who are, on the date on

25 which the plugs or molds are registered under
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1 section 1208, or the date on which the plugs

2 or molds are first commercially exploited,

3 whichever occurs first, nationals, domiciliaries,

4 or sovereign authorities of that nation; or

5 ‘‘(ii) which are first commercially exploited

6 in that nation.

7 ‘‘(b) Protection under this chapter shall not be avail8 able for a plug or mold that—

9 ‘‘(1) is not original; or

10 ‘‘(2) consists of designs that are staple, com11 monplace, or familiar in the vessel manufacturing in12 dustry, or variations of such designs, combined in a

13 way that is not original.

14 ‘‘(c) In no case does protection under this chapter

15 for a plug or mold extend to any idea, procedure, process,

16 system, method of operation, concept, principle, or discov17 ery, regardless of the form of which it is described, ex18 plained, illustrated, or embodied in the plug or mold.

19 ‘‘§ 1203. Ownership and transfer

20 ‘‘(a) The exclusive rights in a plug or mold subject

21 to protection under the chapter shall vest in the owner

22 of the plug or mold.

23 ‘‘(b) The exclusive rights in a plug or mold registered

24 under section 1208, or a plug or mold for which an appli-
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1 cation for registration has been or is eligible to be filed

2 under section 1208, may be—

3 ‘‘(1) transferred in whole or in part by any

4 means of conveyance or by operation of law; and

5 ‘‘(2) bequeathed by will or pass as personal

6 property by the applicable laws of intestate succes7 sion.

8 ‘‘(c) In any case in which conflicting transfer of the

9 exclusive rights in a plug or mold are made, the transfer

10 first executed shall be void as against a subsequent trans11 fer which is made for a valuable consideration and without

12 notice of the first transfer, unless the first transfer is re13 corded in the Copyright Office within 3 months after the

14 date on which it is executed, but in no case later than

15 the day before the date of such subsequent transfer.

16 ‘‘(d) Plugs or molds prepared by an officer or em17 ployee of the United States Government as part of that

18 person’s official duties are not protected under this chap19 ter, but the United States Government is not precluded

20 from receiving and holding exclusive rights in plugs or

21 molds transferred to the Government under subsection

22 (b).

23 ‘‘§ 1204. Duration of protection

24 ‘‘(a) The protection provided for a plug or mold under

25 this chapter shall commence on the date on which the plug
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1 or mold is registered under section 1208, or the date on

2 which the plug or mold is first commercially exploited,

3 whichever occurs first.

4 ‘‘(b) Subject to the provisions of this chapter, the pro5 tection provided under this chapter to a plug or mold shall

6 continue for a term of 10 years beginning on the date on

7 which such protection commences under subsection (a).

8 ‘‘§ 1205. Exclusive rights in plugs or molds

9 ‘‘Subject to the other provisions of this chapter, the

10 owner of a plug or mold has the exclusive rights to do

11 and to authorize any of the following:

12 ‘‘(1) To reproduce the plug or mold by optical,

13 electronic, or any other means.

14 ‘‘(2) To import or distribute a vessel hull in

15 which the plug or mold is embodied.

16 ‘‘(3) To induce or knowingly to cause another

17 person to do any of the acts described in paragraphs

18 (1) and (2).

19 ‘‘§ 1206. Limitation on exclusive rights: reverse engi20 neering; first sale

21 ‘‘(a) Notwithstanding the provisions of section

22 1205(1), it is not an infringement of the exclusive rights

23 of the owner of a plug or mold to reproduce the work solely

24 for the purpose of teaching, analyzing, or evaluating the

25 concepts or techniques embodied in the plug or mold or
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1 the design or organization of components used in the plug

2 or mold.

3 ‘‘(b) Notwithstanding the provisions of section

4 1205(2), the owner of a particular vessel hull lawfully

5 made under this chapter, or any person authorized by such

6 owner, is entitled, without the authority of the owner of

7 the plug or mold, to sell or otherwise dispose of that vessel

8 hull.

9 ‘‘§ 1207. Limitation on exclusive rights: innocent in10 fringement

11 ‘‘(a) Notwithstanding any other provision of this

12 chapter, an innocent purchaser of an infringing vessel

13 hull—

14 ‘‘(1) shall incur no liability under this chapter

15 with respect to the distribution of units of the in16 fringing vessel hull that occurred before that inno17 cent purchaser had notice of protection with respect

18 to that vessel hull; and

19 ‘‘(2) shall be liable only for a reasonable royalty

20 on each unit of the infringing vessel hull that the in21 nocent purchaser distributed after having notice of

22 protection with respect to that vessel hull.

23 ‘‘(b) The amount of the royalty referred to in sub24 section (a)(2) shall be determined—
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1 ‘‘(1) by voluntary negotiation between the par2 ties, mediation, or binding arbitration; or

3 ‘‘(2) by the court in a civil action for infringe4 ment, if the parties do not resolve the issue.

5 ‘‘(c) The immunity from liability and limitation on

6 liability referred to in subsection (a) shall apply to any

7 person who directly or indirectly purchases an infringing

8 vessel hull from an innocent purchaser.

9 ‘‘(d) The provisions of subsections (a) and (b) apply

10 only with respect to units of an infringing vessel hull that

11 an innocent purchaser purchased before having notice of

12 protection with respect to that vessel hull.

13 ‘‘§ 1208. Registration of claims of protection

14 ‘‘(a) Protection of a plug or mold under this chapter

15 shall terminate if application for registration of a claim

16 of protection in the plug or mold is not made as provided

17 by this chapter within 2 years after the date on which

18 the plug or mold is first commercially exploited.

19 ‘‘(b) The Register of Copyrights shall be responsible

20 for all administrative functions and duties under this

21 chapter. Except for section 708, the provisions of chapter

22 7 of this title relating to the general responsibilities, orga23 nization, regulatory authority, actions, records, and publi24 cations of the Copyright Office shall apply to this chapter,

25 except that the Register of Copyrights may make such
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1 changes as may be necessary in applying those provisions

2 to this chapter.

3 ‘‘(c) The application for registration of a plug or mold

4 shall be made on a form prescribed by the Register of

5 Copyrights and shall include any information regarded by

6 the Register of Copyrights as bearing upon the prepara7 tion or identification of the plug or mold, the existence

8 or duration of protection, or ownership of the plug or

9 mold.

10 ‘‘(d) The Register of Copyrights shall by regulation

11 set reasonable fees for the filing of applications to register

12 claims of protection in plugs or molds under this chapter,

13 and for other services relating to the administration of this

14 chapter or the rights under this chapter, taking into con15 sideration the cost of providing those services, the benefits

16 of a public record, and statutory fee schedules under this

17 title. The Register shall also specify the identifying mate18 rial to be deposited in connection with the claim for reg19 istration.

20 ‘‘(e) If the Register of Copyrights, after examining

21 an application for registration, determines, in accordance

22 with the provisions of this chapter, that the application

23 relates to a plug or mold which warrants protection under

24 this chapter, then the Register shall register the claim and

25 issue to the applicant a certificate of registration of the
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1 claim under the seal of the Copyright Office. The effective

2 date of registration of a claim of protection shall be the

3 date on which an application, deposit, and fee, which are

4 determined by the Register of Copyrights or by a court

5 of competent jurisdiction to be acceptable for registration,

6 have all been received in the Copyright Office.

7 ‘‘(f) In any action for infringement under this chap8 ter, the certificate of registration of a plug or mold shall

9 constitute prima facie evidence—

10 ‘‘(1) of the facts stated in the certificate; and

11 ‘‘(2) that the applicant issued the certificate

12 has met the requirements of this chapter, and the

13 regulations issued under this chapter, with respect

14 to the registration of claims.

15 ‘‘(g) Any applicant for registration under this section

16 who is dissatisfied with the refusal of the Register of

17 Copyrights to issue a certificate of registration under this

18 section may seek judicial review of that refusal by bringing

19 an action for such review in an appropriate United States

20 district court, in accordance with chapter 7 of title 5, not

21 later than 60 days after the refusal. The failure of the

22 Register of Copyrights to issue a certificate of registration

23 within 3 months after an application for registration is

24 filed shall be deemed to be a refusal to issue a certificate
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1 of registration for purposes of this subsection and section

2 1210(c).

3 ‘‘§ 1209. Plug or mold notice

4 ‘‘(a) The owner of a plug or mold provided protection

5 under this chapter may affix notice to the plug or mold

6 or to the vessel hull embodying the plug or mold in such

7 manner and location as to give reasonable notice of such

8 protection. The Register of Copyrights shall prescribe by

9 regulation, as examples, specific methods of affixation and

10 positions of notice for purposes of this section, but these

11 specifications shall not be considered exhaustive. The af12 fixation of such notice is not a condition of protection

13 under this chapter but shall constitute prima facie evi14 dence of notice of protection.

15 ‘‘(b) The notice referred to in subsection (a) shall

16 consist of—

17 ‘‘(1) the words ‘plug or mold’, or the letters PM

18 in a circle;

19 ‘‘(2) the year in which the plug or mold was

20 first fixed in a vessel hull; and

21 ‘‘(3) the name of the owner or owners of the

22 plug or mold or an abbreviation by which the name

23 is recognized or is generally known.
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1 ‘‘§ 1210. Enforcement of exclusive rights

2 ‘‘(a) Except as otherwise provided by this chapter,

3 any person who violates any of the exclusive rights of the

4 owner of a plug or mold under this chapter shall be liable

5 as an infringer of such rights.

6 ‘‘(b) The owner of a plug or mold protected under

7 this chapter shall be entitled to institute a civil action for

8 infringement after a certificate of registration of a claim

9 in that plug or mold is issued under section 1208.

10 ‘‘(c) In any case in which an application for registra11 tion and the required deposit and fee have been received

12 in the Copyright Office in proper form and registration

13 of the plug or mold has been refused, the applicant is enti14 tled to institute a civil action for infringement under this

15 chapter if notice of the action, together with a copy of

16 the complaint, is served on the Register of Copyrights, in

17 accordance with the Federal Rules of Civil Procedure. The

18 Register may, at his or her option, become a party to the

19 action with respect to the issue of whether the claim is

20 eligible for registration by entering an appearance within

21 60 days after such service, but the failure of the Register

22 to become a party to the action shall not deprive the court

23 of jurisdiction to determine that issue.

24 ‘‘(d)(1) The Secretary of the Treasury and the Unit25 ed States Postal Service shall separately or jointly issue

26 regulations for the enforcement of the right to import set
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1 forth in section 1205. These regulations may require, as

2 a condition for the exclusion of articles from the United

3 States, that the person seeking exclusion—

4 ‘‘(A) obtain a court order enjoining, or an order

5 of the International Trade Commission under sec6 tion 337 of the Tariff Act of 1930 excluding, impor7 tation of the articles; or

8 ‘‘(B)(i) furnish proof that—

9 ‘‘(I) the plug or mold involved is protected

10 under this chapter; and

11 ‘‘(II) the importation of the articles would

12 infringe the rights in the plug or mold under

13 this chapter; and

14 ‘‘(ii) post a surety bond for any injury that may

15 result if the detention or exclusion of the articles

16 proves to be unjustified.

17 ‘‘(2) Articles imported in violation of the right to im18 port set forth in section 1205 are subject to seizure and

19 forfeiture in the same manner as property imported in vio20 lation of the customs laws. Any such forfeited article shall

21 be destroyed as directed by the Secretary of the Treasury

22 or the court, as the case may be, except that the articles

23 may be returned to the country of export whenever it is

24 shown to the satisfaction of the Secretary of the Treasury
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1 that the importer had no reasonable grounds for believing

2 that his or her acts constituted a violation of the law.

3 ‘‘§ 1211. Remedies for infringement

4 ‘‘(a) Any court having jurisdiction of a civil action

5 arising under this chapter may grant temporary and per6 manent injunctions on such terms as the court may deter7 mine reasonable to prevent or restrain infringement of the

8 exclusive rights in a plug or mold under this chapter.

9 ‘‘(b) Upon finding for the owner of the plug or mold,

10 the court shall award the owner actual damages suffered

11 by the owner as a result of the infringement. The court

12 shall also award the owner of the infringer’s profits that

13 are attributable to the infringement and are not taken into

14 account in computing the award of actual damages. In es15 tablishing the infringer’s profits, the owner of the plug or

16 mold is required to present proof only of the infringer’s

17 gross revenue, and the infringer is required to prove his

18 or her deductible expenses and the elements of profit at19 tributable to factors other than the plug or mold.

20 ‘‘(c) At any time before final judgment is rendered,

21 the owner of the plug or mold may elect, instead of actual

22 damages and profits as provided by subsection (b), an

23 award of statutory damages for all infringements involved

24 in the action, with respect to any 1 plug or mold for which

25 any 1 infringer is liable individually, or for which any 2
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1 or more infringers are liable jointly and severally, in an

2 amount not more than $250,000 as the court considers

3 just.

4 ‘‘(d) In any action for infringement under this chap5 ter, the court in its discretion may allow the recovery of

6 full costs, including reasonable attorneys’ fees, to the pre7 vailing party.

8 ‘‘(e) An action for infringement under this chapter

9 shall not be maintained unless the action is commenced

10 within 3 years after the claim accrues.

11 ‘‘(f) As part of the final judgment or decree, the court

12 may order the destruction or other disposition of any in13 fringing vessel hulls, and any plugs, molds, or other arti14 cles by means of which such vessel hulls may be repro15 duced.

16 ‘‘§ 1212. Relation to other laws

17 ‘‘(a) Nothing in this chapter shall affect any right

18 or remedy held by any person under chapters 1 through

19 11 of this title, or under title 35.

20 ‘‘(b) Except as provided in section 1208(b) of this

21 title, references to ‘this title’ or ‘title 17’ in chapters 1

22 through 11 of this title shall be deemed not to apply to

23 this chapter.

24 ‘‘(c) The provisions of this chapter shall preempt the

25 laws of any State to the extent those laws provide any
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1 rights or remedies with respect to a plug or mold which

2 are equivalent to those provided by this chapter, except

3 that such preemption shall be effective only with respect

4 to actions filed on or after January 1, 1998.

5 ‘‘(d) The provision of sections 1338, 1400(a), and

6 1498 (b) and (c) of title 28 shall apply with respect to

7 exclusive rights in plugs or molds under this chapter.’’.

8 SEC. 3. TECHNICAL AMENDMENT.

9 The table of chapters of title 17, United States Code,

10 is amended by adding at the end thereof the following new

11 item:

‘‘12. Protection of Vessel Hulls ..................................................... 1201.’’.

12 SEC. 4. EFFECTIVE DATE.

13 (a) The amendments made by this Act shall take ef14 fect on January 1, 1997.

15 (b) Subject to paragraph (2) of this subsection, pro16 tection shall be available under chapter 12 of title 17,

17 United States Code, as added by section 2 of this Act,

18 to any plug or mold fixed in a vessel hull that was first

19 commercially exploited on or after January 1, 1996, and

20 before January 1, 1997, if a claim of protection in the

21 plug or mold is registered in the Copyright Office before

22 January 1, 1998, under section 1208 of title 17, United

23 States Code, as added by section 2 of this Act.

Æ