I

104TH CONGRESS

2D SESSION H. R. 4159

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

unauthorized duplication, and for other purposes.

IN THE HOUSE OF REPRESENTATIVES

SEPTEMBER 24, 1996

Mr. SAXTON (for himself, Mr. BONIOR, Mr. SHAW, Mr. ZIMMER, Mr. SMITH

of New Jersey, Mr. JONES, Mr. PETRI, Mr. BREWSTER, Mr. NEUMANN,

Mr. OBERSTAR, Mr. CLEMENT, Mr. BILIRAKIS, Mr. DEUTSCH, Mr.

TORRICELLI, Mr. PALLONE, Mr. BALLENGER, Mr. LOBIONDO, and Mr.

FRANKS of New Jersey) introduced the following bill; which was 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 thereof the following new chapter:
2

•HR 4159 IH

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. Plug or mold notice.

‘‘1209. Enforcement of exclusive rights.

‘‘1210. Remedies for infringement.

‘‘1211. Relation to other laws.

3 ‘‘§ 1201. Definitions

4 ‘‘As used in this chapter—

5 ‘‘(1) ‘vessel hull’ has the meaning given that

6 term in regulations which the Register of Copyrights

7 shall issue;

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;
3

•HR 4159 IH

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 a person 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—

16 ‘‘(A) the person who created the plug or

17 mold;

18 ‘‘(B) the legal representative of that per19 son if that person is deceased or under a legal

20 incapacity;

21 ‘‘(C) the employer of that person if that

22 person created the plug or mold within the

23 scope of that person’s employment; or

24 ‘‘(D) a party to whom the rights of the

25 person, representative, or employer described in
4

•HR 4159 IH

1 subparagraph (A), (B), or (C) are transferred

2 in accordance with this chapter;

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

4 purchases a vessel hull or a product in which a ves5 sel hull is contained in good faith and without hav6 ing notice of protection under this chapter with re7 spect to that vessel hull or product;

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

9 actual knowledge that, or reasonable grounds to be10 lieve that, a plug or mold fixed in a vessel hull is

11 protected under this chapter; and

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

13 which is made, imported, or distributed in violation

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

15 mold under this chapter.

16 ‘‘§ 1202. Subject matter of protection

17 ‘‘(a) NATIONALITY REQUIREMENTS.—

18 ‘‘(1) IN GENERAL.—An original plug or mold

19 fixed in a vessel hull is eligible for protection under

20 this chapter if—

21 ‘‘(A) on the date on which the plug or

22 mold is first commercially exploited, the owner

23 of the plug or mold is a national or domiciliary

24 of the United States, or is a national, domi25 ciliary, or sovereign authority of a foreign na-
5

•HR 4159 IH

1 tion that is party to a treaty affording protec2 tion to plugs or molds to which the United

3 States is also a party, or is a stateless person,

4 wherever that person may be domiciled;

5 ‘‘(B) the plug or mold is first commercially

6 exploited in the United States; or

7 ‘‘(C) the plug or mold comes within the

8 scope of a Presidential proclamation issued

9 under paragraph (2).

10 ‘‘(2) PRESIDENTIAL PROCLAMATIONS.—When11 ever the President finds that a foreign nation ex12 tends, to plugs or molds of owners who are nationals

13 or domiciliaries of the United States or to plugs or

14 molds on the date on which the plugs or molds are

15 first commercially exploited, protection—

16 ‘‘(A) on substantially the same basis as

17 that on which the foreign nation extends protec18 tion to plugs or molds of its own nationals and

19 domiciliaries and plugs or molds first commer20 cially exploited in that nation, or

21 ‘‘(B) on substantially the same basis as

22 provided in this chapter, the President may by

23 proclamation extend protection under this chap24 ter to plugs or molds—
6

•HR 4159 IH

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

2 which the plugs or molds are first commer3 cially exploited, nationals, domiciliaries, or

4 sovereign authorities of that nation, or

5 ‘‘(ii) which are first commercially ex6 ploited in that nation.

7 ‘‘(b) EXCLUSION FOR PRODUCTS NOT ORIGINAL.—

8 Protection under this chapter shall not be available for

9 a plug or mold that—

10 ‘‘(1) is not original; or

11 ‘‘(2) consists of designs that are staple, com12 monplace, or familiar in the vessel manufacturing in13 dustry, or variations of such designs, combined in a

14 way that is not original.

15 ‘‘(c) OTHER EXCLUSIONS.—In no case does protec16 tion under this chapter for a plug or mold extend to any

17 idea, procedure, process, system, method of operation,

18 concept, principle, or discovery, regardless of the form of

19 which it is described, explained, illustrated, or embodied

20 in the plug or mold.

21 ‘‘§ 1203. Ownership and transfer

22 ‘‘(a) VESTING OF RIGHTS IN OWNER.—The exclusive

23 rights in a plug or mold under the chapter shall vest in

24 the owner of the plug or mold.
7

•HR 4159 IH

1 ‘‘(b) TRANSFER OF RIGHTS.—The exclusive rights in

2 a plug or mold under this chapter may be transferred in

3 whole or in part by any means of conveyance or by oper4 ation of law, and may be bequeathed by will or pass as

5 personal property by the applicable laws of intestate suc6 cession.

7 ‘‘(c) CONFLICTING TRANSFERS.—In any case in

8 which conflicting transfers of the exclusive rights in a plug

9 or mold are made, the transfer first executed shall be void

10 as against a subsequent transfer which is made for a valu11 able consideration and without notice of the first transfer,

12 unless the first transfer is recorded in the Copyright Office

13 within 3 months after the date on which it is executed,

14 but in no case later than the day before the date of such

15 subsequent transfer.

16 ‘‘(d) PROTECTION EXCLUDED FOR UNITED STATES

17 GOVERNMENT.—Plugs or molds prepared by an officer or

18 employee of the United States Government as part of that

19 person’s official duties are not protected under this chap20 ter, but the United States Government is not precluded

21 from receiving and holding exclusive rights in plugs or

22 molds transferred to the Government under subsection

23 (b).
8

•HR 4159 IH

1 ‘‘§ 1204. Duration of protection

2 ‘‘(a) COMMENCEMENT OF PROTECTION.—The pro3 tection provided for a plug or mold under this chapter

4 shall commence on the date on which the plug or mold

5 is first commercially exploited.

6 ‘‘(b) TERM OF PROTECTION.—Subject to the provi7 sions of this chapter, the protection provided under this

8 chapter to a plug or mold shall continue for a term of

9 10 years beginning on the date on which such protection

10 commences under subsection (a).

11 ‘‘§ 1205. Exclusive rights in plugs or molds

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

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

14 and to authorize any of the following:

15 ‘‘(1) Reproduce the plug or mold by optical,

16 electronic, or any other means.

17 ‘‘(2) Import or distribute a vessel hull in which

18 the plug or mold is embodied.

19 ‘‘(3) Induce or knowingly cause another person

20 to do any of the acts described in paragraphs (1)

21 and (2).

22 ‘‘§ 1206. Limitation on exclusive rights: reverse engi23 neering; first sale

24 ‘‘(a) REVERSE ENGINEERING.—Notwithstanding the

25 provisions of section 1205(1), it is not an infringement

26 of the exclusive rights of the owner of a plug or mold to
9

•HR 4159 IH

1 reproduce the plug or mold solely for the purpose of teach2 ing, analyzing, or evaluating the concepts or techniques

3 embodied in the plug or mold or the design or organization

4 of components used in the plug or mold.

5 ‘‘(b) FIRST SALE.—Notwithstanding the provisions

6 of section 1205(2), the owner of a particular vessel hull

7 lawfully made under this chapter, or any person author8 ized by such owner, is entitled, without the authority of

9 the owner of the plug or mold, to sell or otherwise dispose

10 of that vessel hull.

11 ‘‘§ 1207. Limitation on exclusive rights: innocent in12 fringement

13 ‘‘(a) IN GENERAL.—Notwithstanding any other pro14 vision of this chapter, an innocent purchaser of an infring15 ing vessel hull—

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

17 with respect to the importation or distribution of

18 units of the infringing vessel hull that occurred be19 fore that innocent purchaser had notice of protection

20 with respect to that vessel hull; and

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

22 on each unit of the infringing vessel hull that the in23 nocent purchaser imports or distributes after having

24 notice of protection with respect to that vessel hull.

25 The amount of the royalty referred to in paragraph
10

•HR 4159 IH

1 (2) shall be based on wholesale cost and shall be

2 determined by voluntary negotiation between the

3 parties, mediation, or binding arbitration, or, if the

4 parties do not resolve the issue, by the court in a

5 civil action for infringement.

6 ‘‘(b) SUBSEQUENT PURCHASES.—The immunity

7 from liability and limitation on liability referred to in sub8 section (a) shall apply to any person who directly or indi9 rectly purchases an infringing vessel hull from an innocent

10 purchaser.

11 ‘‘(c) APPLICABILITY ONLY TO PRODUCTS PUR12 CHASED BEFORE NOTICE OF PROTECTION.—The provi13 sions of subsections (a) and (b) apply only with respect

14 to units of an infringing vessel hull that an innocent pur15 chaser purchased before having notice of protection with

16 respect to that vessel hull.

17 ‘‘§ 1208. Plug or mold notice

18 ‘‘(a) AFFIXATION NOTICE.—The owner of a plug or

19 mold provided protection under this chapter may affix no20 tice to the plug or mold or to the vessel hull embodying

21 the plug or mold in such manner and location as to give

22 reasonable notice of such protection. The Register of

23 Copyrights shall prescribe by regulation, as examples, spe24 cific methods of affixation and positions of notice for pur25 poses of this section, but these specifications shall not be
11

•HR 4159 IH

1 considered exhaustive. The affixation of such notice is not

2 a condition of protection under this chapter but shall con3 stitute prima facie evidence of notice of protection.

4 ‘‘(b) CONTENTS OF NOTICE.—The notice referred to

5 in subsection (a) shall consist of—

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

7 in a circle;

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

9 first fixed in a vessel hull; and

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

11 plug or mold or an abbreviation by which the name

12 is recognized or is generally known.

13 ‘‘§ 1209. Enforcement of exclusive rights

14 ‘‘(a) INFRINGERS.—Except as otherwise provided by

15 this chapter, any person who violates any of the exclusive

16 rights of the owner of a plug or mold under this chapter

17 shall be liable as an infringer of such rights.

18 ‘‘(b) CIVIL ACTION FOR INFRINGEMENT.—The owner

19 of a plug or mold protected under this chapter shall be

20 entitled to institute a civil action for any infringement of

21 the exclusive rights in that plug or mold under the chap22 ter.

23 ‘‘(c) ENFORCEMENT OF RIGHT TO IMPORT.—

24 ‘‘(1) REGULATIONS.—The Secretary of the

25 Treasury and the United States Postal Service shall
12

•HR 4159 IH

1 separately or jointly issue regulations for the en2 forcement of the right to import set forth in section

3 1205. These regulations may require, as a condition

4 for the exclusion of articles from the United States,

5 that the person seeking exclusion—

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

7 order of the International Trade Commission

8 under section 337 of the Tariff Act of 1930 ex9 cluding, importation of the articles; or

10 ‘‘(B) furnish proof that the plug or mold

11 involved is protected under this chapter and

12 that the importation of the articles would in13 fringe the rights in the plug or mold under this

14 chapter, and also post a surety bond for any in15 jury that may result if the detention or exclu16 sion of the articles proves to be unjustified.

17 ‘‘(2) SEIZURE AND FORFEITURE OF INFRING18 ING ARTICLES.—Articles imported in violation of the

19 right to import set forth in section 1205 are subject

20 to seizure and forfeiture in the same manner as

21 property imported in violation of the customs laws.

22 Any such forfeited article shall be destroyed as di23 rected by the Secretary of the Treasury or the court,

24 as the case may be, except that the articles may be

25 returned to the country of export whenever it is
13

•HR 4159 IH

1 shown to the satisfaction of the Secretary of the

2 Treasury that the importer had no reasonable

3 grounds for believing that his or her acts constituted

4 a violation of the law.

5 ‘‘§ 1210. Remedies for infringement

6 ‘‘(a) INJUNCTIVE RELIEF.—Any court having juris7 diction of a civil action arising under this chapter may

8 grant temporary and permanent injunctions on such terms

9 as the court may deem reasonable to prevent or restrain

10 infringement of the exclusive rights in a plug or mold

11 under this chapter.

12 ‘‘(b) ACTUAL DAMAGES AND PROFITS.—Upon find13 ing for the owner of the plug or mold, the court shall

14 award the owner actual damages suffered by the owner

15 as a result of the infringement. The court shall also award

16 the owner the infringer’s profits that are attributable to

17 the infringement and are not taken into account in com18 puting the award of actual damages. In establishing the

19 infringer’s profits, the owner of the plug or mold is re20 quired to present proof only of the infringer’s gross reve21 nue, and the infringer is required to prove his or her de22 ductible expenses and the elements of profit attributable

23 to factors other than the plug or mold.

24 ‘‘(c) STATUTORY DAMAGES.—At any time before

25 final judgment is rendered, the owner of the plug or mold
14

•HR 4159 IH

1 may elect, instead of actual damages and profits as pro2 vided in subsection (b), an award of statutory damages

3 for all infringements involved in the action with respect

4 to any one plug or mold for which any one infringer is

5 liable individually, or for which any two or more infringers

6 are liable jointly and severally, in an amount not more

7 than $250,000 as the court considers just.

8 ‘‘(d) RECOVERY OF COSTS BY PREVAILING PARTY.—

9 In any action for infringement under this chapter, the

10 court in its discretion may allow the recovery of full costs,

11 including reasonable attorneys’ fees, to the prevailing

12 party.

13 ‘‘(e) TIME LIMITATION ON BRINGING ACTIONS.—An

14 action for infringement under this chapter shall not be

15 maintained unless the action is commenced within 3 years

16 after the claim accrues.

17 ‘‘(f) DESTRUCTION OR OTHER DISPOSITION OF IN18 FRINGING ARTICLES.—As part of the final judgment or

19 decree, the court may order the destruction or other dis20 position of any infringing vessel hulls, and any plugs,

21 molds, or other articles by means of which such vessel

22 hulls may be reproduced.

23 ‘‘§ 1211. Relation to other laws

24 ‘‘(a) OTHER RIGHTS NOT AFFECTED.—Nothing in

25 this chapter shall affect any right or remedy held by any
15

•HR 4159 IH

1 person under chapters 1 through 11 of this title, or under

2 title 35.

3 ‘‘(b) REFERENCES IN CHAPTERS 1 THROUGH 11.—

4 References to ‘this title’ or ‘title 17’ in chapters 1 through

5 11 of this title shall be deemed not to apply to this chap6 ter.

7 ‘‘(c) PREEMPTION.—The provisions of this chapter

8 shall preempt the laws of any State to the extent those

9 laws provide any rights or remedies with respect to a plug

10 or mold which are equivalent to those provided by this

11 chapter, except that such preemption shall be effective

12 only with respect to actions filed on or after January 1,

13 1998.

14 ‘‘(d) APPLICABILITY OF TITLE 28 PROVISIONS.—The

15 provisions of sections 1338, 1400(a), and 1498(b) and (c)

16 of title 28 shall apply with respect to exclusive rights in

17 plugs or molds under this chapter to the same extent as

18 those provisions apply to mask works.’’.

19 SEC. 3. TECHNICAL AMENDMENT.

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

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

22 item:

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

23 SEC. 4. EFFECTIVE DATE.

24 The amendments made by this Act shall take effect

25 on January 1, 1997.
16

•HR 4159 IH

1 SEC. 5. AUTHORIZATION OF APPROPRIATIONS.

2 There are authorized to be appropriated such sums

3 as may be necessary to carry out this Act and the amend4 ments made by this Act.

Æ