II 

112TH CONGRESS 

2D SESSION S. 3523 

To amend title 17, United States Code, to extend protection to fashion 

design, and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

SEPTEMBER 10, 2012 

Mr. SCHUMER (for himself, Mr. HATCH, Mrs. GILLIBRAND, Mr. WHITEHOUSE, Mr. GRAHAM, Mr. BLUMENTHAL, Mr. KOHL, Mr. CARDIN, Ms. 

SNOWE, and Mrs. BOXER) 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 extend protection 

to fashion design, 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 ‘‘Innovative Design Pro5 tection Act of 2012’’. 

6 SEC. 2. AMENDMENTS TO TITLE 17, UNITED STATES CODE. 

7 (a) DESIGNS PROTECTED.—Section 1301 of title 17, 

8 United States Code, is amended— 


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1 (1) in subsection (a), by adding at the end the 

2 following: 

3 ‘‘(4) FASHION DESIGN.—A fashion design is 

4 subject to protection under this chapter.’’; 

5 (2) in subsection (b)— 

6 (A) in paragraph (2), by inserting ‘‘, or an 

7 article of apparel,’’ after ‘‘plug or mold’’; and 

8 (B) by adding at the end the following: 

9 ‘‘(8) A ‘fashion design’— 

10 ‘‘(A) is the appearance as a whole of an 

11 article of apparel, including its ornamentation; 

12 and 

13 ‘‘(B) includes original elements of the arti14 cle of apparel or the original arrangement or 

15 placement of original or non-original elements 

16 as incorporated in the overall appearance of the 

17 article of apparel that— 

18 ‘‘(i) are the result of a designer’s own 

19 creative endeavor; and 

20 ‘‘(ii) provide a unique, distinguishable, 

21 non-trivial and non-utilitarian variation 

22 over prior designs for similar types of arti23 cles. 


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1 ‘‘(9) The term ‘design’ includes fashion design, 

2 except to the extent expressly limited to the design 

3 of a vessel. 

4 ‘‘(10) The term ‘apparel’ means— 

5 ‘‘(A) an article of men’s, women’s, or chil6 dren’s clothing, including undergarments, outer7 wear, gloves, footwear, and headgear; 

8 ‘‘(B) handbags, purses, wallets, tote bags, 

9 and belts; and 

10 ‘‘(C) eyeglass frames. 

11 ‘‘(11) In the case of a fashion design, the term 

12 ‘substantially identical’ means an article of apparel 

13 which is so similar in appearance as to be likely to 

14 be mistaken for the protected design, and contains 

15 only those differences in construction or design 

16 which are merely trivial.’’; and 

17 (3) by adding at the end the following: 

18 ‘‘(c) RULE OF CONSTRUCTION.—In the case of a 

19 fashion design under this chapter, those differences or 

20 variations which are considered non-trivial for the pur21 poses of establishing that a design is subject to protection 

22 under subsection (b)(8) shall be considered non-trivial for 

23 the purposes of establishing that a defendant’s design is 

24 not substantially identical under subsection (b)(11) and 

25 section 1309(e).’’. 


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1 (b) DESIGNS NOT SUBJECT TO PROTECTION.—Sec2 tion 1302(5) of title 17, United States Code, is amend3 ed— 

4 (1) by striking ‘‘(5)’’ and inserting ‘‘(5)(A) in 

5 the case of a design of a vessel hull,’’; 

6 (2) by striking the period and inserting ‘‘; or’’; 

7 and 

8 (3) by adding at the end the following: 

9 ‘‘(B) in the case of a fashion design, em10 bodied in a useful article that was made public 

11 by the designer or owner in the United States 

12 or a foreign country before the date of enact13 ment of this chapter or more than 3 years be14 fore the date upon which protection of the de15 sign is asserted under this chapter.’’. 

16 (c) REVISIONS, ADAPTATIONS, AND REARRANGE17 MENTS.—Section 1303 of title 17, United States Code, is 

18 amended by adding at the end the following: ‘‘The pres19 ence or absence of a particular color or colors or of a pic20 torial or graphic work imprinted on fabric shall not be con21 sidered in determining the protection of a fashion design 

22 under section 1301 or 1302 or in determining infringe23 ment under section 1309.’’. 

24 (d) TERM OF PROTECTION.—Section 1305(a) of title 

25 17, United States Code, is amended to read as follows: 


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1 ‘‘(a) IN GENERAL.—Subject to subsection (b), the 

2 protection provided under this chapter— 

3 ‘‘(1) for a design of a vessel hull, shall continue 

4 for a term of 10 years beginning on the date of the 

5 commencement of protection under section 1304; 

6 and 

7 ‘‘(2) for a fashion design, shall continue for a 

8 term of 3 years beginning on the date of the com9 mencement of protection under section 1304.’’. 

10 (e) NOTICE.—Section 1306 of title 17, United States 

11 Code, is amended by adding at the end the following: 

12 ‘‘(d) FASHION DESIGN.— 

13 ‘‘(1) IN GENERAL.—In the case of a fashion de14 sign, the owner of the design shall provide written 

15 notice of the design protection to any person the de16 sign owner has reason to believe has violated or will 

17 violate this chapter. 

18 ‘‘(2) CONTENTS.—The written notice required 

19 under paragraph (1) shall contain, at a minimum— 

20 ‘‘(A) the date on which protection for the 

21 design commenced; 

22 ‘‘(B) a description of the protected design 

23 which specifies how the protected design falls 

24 within the meaning of section 1301(b)(8); 


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1 ‘‘(C) a description of the allegedly infring2 ing design which specifies how the allegedly in3 fringing design infringed upon the protected de4 sign as described under section 1309(e); and 

5 ‘‘(D) the date on which the protected de6 sign or an image thereof was available such 

7 that it could be reasonably inferred from the to8 tality of the surrounding facts and cir9 cumstances that the owner of the allegedly in10 fringing design saw or otherwise had knowledge 

11 of the protected design. 

12 ‘‘(3) COMMENCEMENT OF ACTION.—An action 

13 for infringement of a fashion design under this chap14 ter shall not commence until the date that is 21 

15 days after the date on which written notice required 

16 under this subsection was provided to the defendant. 

17 ‘‘(4) LIMITATION ON DAMAGES.—A person al18 leged to be undertaking action leading to infringe19 ment under this chapter shall be held liable only for 

20 damages and profits accrued after the date on which 

21 the action for infringement is commenced against 

22 such person under paragraph (3).’’. 

23 (f) INFRINGEMENT.—Section 1309 of title 17, United 

24 States Code, is amended— 

25 (1) in subsection (b)— 


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1 (A) by amending the matter preceding 

2 paragraph (1) to read as follows: 

3 ‘‘(b) ACTS OF SELLERS, IMPORTERS AND DISTRIBU4 TORS.—A retailer, seller, importer or distributor of an in5 fringing article who did not make the article shall be 

6 deemed to have infringed on a design protected under this 

7 chapter only if that person—’’; and 

8 (B) in paragraph (1), by striking ‘‘, or an 

9 importer to import’’; 

10 (2) in subsection (c)— 

11 (A) by inserting ‘‘offer for sale’’ after 

12 ‘‘sell,’’; and 

13 (B) by inserting ‘‘either actual or reason14 ably inferred from the totality of the cir15 cumstances,’’ after ‘‘created without knowl16 edge’’; 

17 (3) by redesignating subsections (e), (f), and 

18 (g) as subsections (f), (g), and (h), respectively; 

19 (4) by inserting after subsection (d) the fol20 lowing: 

21 ‘‘(e) ACTS OF THIRD PARTIES.—Acts that do not 

22 constitute acts of infringement under subsections (a) or 

23 (b) do not otherwise constitute acts of infringement under 

24 this chapter. It shall not be infringement under this sec25 tion to be engaged in— 


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1 ‘‘(1) the provision of a telecommunications serv2 ice, or of an Internet access service or Internet in3 formation location tool (as those terms are defined 

4 in section 231 the Communications Act of 1934 (47 

5 U.S.C. 231)); or 

6 ‘‘(2) the transmission, storage, retrieval, 

7 hosting, formatting, or translation (or any combina8 tion thereof) of a communication, without selection 

9 or alteration of the content of the communication, 

10 except that deletion of a particular communication 

11 or material made by another person in a manner 

12 consistent with section 230(c) of the Communica13 tions Act of 1934 (47 U.S.C. 230(c)).’’; 

14 (5) by amending subsection (f), as so redesig15 nated, to read as follows: 

16 ‘‘(f) INFRINGING ARTICLE DEFINED.— 

17 ‘‘(1) IN GENERAL.—As used in this section, an 

18 ‘infringing article’ is any article the design of which 

19 has been copied from a design protected under this 

20 chapter, or from an image thereof, without the con21 sent of the owner of the protected design. An in22 fringing article is not an illustration or picture of a 

23 protected design in an advertisement, book, peri24 odical, newspaper, photograph, broadcast, motion 

25 picture, or similar medium. 


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1 ‘‘(2) VESSEL HULL DESIGN.—In the case of a 

2 design of a vessel hull, a design shall not be deemed 

3 to have been copied from a protected design if it is 

4 original and not substantially similar in appearance 

5 to a protected design. 

6 ‘‘(3) FASHION DESIGN.—In the case of a fash7 ion design, a design shall not be deemed to have 

8 been copied from a protected design if that design— 

9 ‘‘(A) is not substantially identical in overall 

10 visual appearance to and as to the original ele11 ments of a protected design; or 

12 ‘‘(B) is the result of independent cre13 ation.’’; and 

14 (6) by adding at the end the following: 

15 ‘‘(i) HOME SEWING EXCEPTION.— 

16 ‘‘(1) IN GENERAL.—It is not an infringement of 

17 the exclusive rights of a design owner for a person 

18 to produce a single copy of a protected design for 

19 personal use or for the use of an immediate family 

20 member, if that copy is not offered for sale or use 

21 in trade during the period of protection. 

22 ‘‘(2) RULE OF CONSTRUCTION.—Nothing in 

23 this subsection shall be construed to permit the pub24 lication or distribution of instructions or patterns for 

25 the copying of a protected design.’’. 


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1 (g) APPLICATION FOR REGISTRATION.—Section 

2 1310(a) of title 17, United States Code, is amended— 

3 (1) by striking ‘‘Protection under this chapter’’ 

4 and inserting ‘‘In the case of a design of a vessel 

5 hull, protection under this chapter’’; and 

6 (2) by adding ‘‘Registration shall not apply to 

7 fashion designs.’’ after ‘‘first made public.’’. 

8 (h) REMEDY FOR INFRINGEMENT.—Section 1321 of 

9 title 17, United States Code, is amended— 

10 (1) by striking subsection (a) and inserting the 

11 following: 

12 ‘‘(a) IN GENERAL.— 

13 ‘‘(1) VESSEL HULL.—In the case of a vessel 

14 hull, the owner of a design is entitled, after issuance 

15 of a certificate of registration of the design under 

16 this chapter, to institute an action for any infringe17 ment of the design. 

18 ‘‘(2) FASHION DESIGN.—In the case of a fash19 ion design, the owner of a design is entitled to insti20 tute an action for any infringement of the design 

21 after— 

22 ‘‘(A) the design is made public under the 

23 terms of section 1310(b) of this chapter; and 

24 ‘‘(B) the 21-day period described in section 

25 1306(d).’’; and 


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1 (2) by adding at the end the following: 

2 ‘‘(e) PLEADING REQUIREMENT FOR FASHION DE3 SIGNS.— 

4 ‘‘(1) IN GENERAL.—In the case of a fashion de5 sign, a claimant in an action for infringement shall 

6 plead with particularity facts establishing that— 

7 ‘‘(A) the design of the claimant is a fash8 ion design within the meaning of section 

9 1301(b)(8) of this title and thus entitled to pro10 tection under this chapter; 

11 ‘‘(B) the design of the defendant infringes 

12 upon the protected design as described under 

13 section 1309(e); and 

14 ‘‘(C) the protected design or an image 

15 thereof was available in such location or loca16 tions, in such a manner, and for such duration 

17 that it can be reasonably inferred from the to18 tality of the surrounding facts and cir19 cumstances that the defendant saw or otherwise 

20 had knowledge of the protected design. 

21 ‘‘(2) CONSIDERATIONS.—In considering wheth22 er a claim for infringement has been adequately 

23 pleaded, the court shall consider the totality of the 

24 circumstances.’’. 


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1 (i) PENALTY FOR FALSE REPRESENTATION.—Sec2 tion 1327 of title 17, United States Code, is amended— 

3 (1) by inserting ‘‘or for purposes of obtaining 

4 recovery based on a claim of infringement under this 

5 chapter’’ after ‘‘registration of a design under this 

6 chapter’’; 

7 (2) by striking ‘‘$500’’ and inserting ‘‘5,000’’; 

8 and 

9 (3) by striking ‘‘$1,000’’ and inserting 

10 ‘‘$10,000’’. 

11 (j) NONAPPLICABILITY OF ENFORCEMENT BY

12 TREASURY AND POSTAL SERVICE.—Section 1328 of title 

13 17, United States Code, is amended— 

14 (1) in subsection (a), in the first sentence, by 

15 striking ‘‘The Secretary’’ and inserting ‘‘In the case 

16 of designs of vessel hulls protected under this chap17 ter, the Secretary’’; 

18 (2) in subsection (b), in the first sentence, by 

19 striking ‘‘Articles’’ and inserting ‘‘In the case of de20 signs of vessel hulls protected under this chapter, ar21 ticles’’; and 

22 (3) by adding at the end the following: 

23 ‘‘(c) NONAPPLICABILITY.—This section shall not 

24 apply to fashion designs protected under this chapter.’’. 


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1 (k) COMMON LAW AND OTHER RIGHTS UNAF2 FECTED.—Section 1330 of title 17, United States Code, 

3 is amended— 

4 (1) in paragraph (1), by striking ‘‘or’’ after the 

5 semicolon; 

6 (2) in paragraph (2), by striking the period and 

7 inserting ‘‘; or’’; and 

8 (3) by adding at the end the following: 

9 ‘‘(3) any rights that may exist under provisions 

10 of this title other than this chapter.’’. 

11 SEC. 3. EFFECTIVE DATE. 

12 This Act and the amendments made by this Act shall 

13 take effect on the date of enactment of this Act. 

Æ 


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