I
105TH CONGRESS
1ST SESSION
H. R. 2696
To amend title 17, United States Code, to provide for protection of certain
original designs.
IN THE HOUSE OF REPRESENTATIVES
OCTOBER 22, 1997
Mr. COBLE (for himself and Mr. SHAW) introduced the following bill; which
was referred to the Committee on the Judiciary
A BILL
To amend title 17, United States Code, to provide for
protection of certain original designs.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be referred to as the ‘‘Vessel Hull De-
sign 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:
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‘‘CHAPTER 12—PROTECTION OF CERTAIN
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 and copyright law.
‘‘1230. Common law and other rights unaffected.
‘‘1231. Administrator.
‘‘1232. No retroactive effect.
‘‘§ 1201. Designs protected
‘‘(a) DESIGNS PROTECTED: VESSEL HULLS OR COM-
PONENT PARTS THEREOF.—The designer or other owner
of an original design of a vessel hull or a component part
thereof, including a plug or mold, which makes the vessel
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.
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‘‘(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 dis-
tinguishable 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 an article which in nor-
mal 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 a 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.
‘‘(4) A ‘hull’ is the frame or body 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 in-
trinsic utilitarian function that is not only to portray
the appearance of the product or to convey informa-
tion.
‘‘(6) A ‘mold’ means a matrix or form in which
a substance for material is used, regardless of
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whether the matrix or form has an intrinsic utilitar-
ian function that is not only to portray the appear-
ance of the product or to convey information.
‘‘§ 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, familiar symbol, emblem, or motif,
or other shape, pattern, or configuration which has
become standard, common, prevalent, or ordinary;
‘‘(3) different from a design excluded by para-
graph (2) only in insignificant details or in elements
which are variants commonly used in the relevant
trades; or
‘‘(4) 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.
‘‘§ 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,
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or rearrangement of such subject matter. Such protection
shall be independent of any subsisting protection in sub-
ject matter employed in the design, and shall not be con-
strued as securing any right to subject matter excluded
from protection under this chapter or as extending any
subsisting protection under this chapter.
‘‘§ 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 sec-
tion 1210(b).
‘‘§ 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 from the date of the com-
mencement 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
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in which the design may have been used during the term
of its protection.
‘‘§ 1206. Design notice
‘‘(a) CONTENTS OF DESIGN NOTICE.—(1) Whenever
any design for which protection is sought under this chap-
ter 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 con-
sisting of—
‘‘(A) the words ‘Protected Design’, the abbre-
viation ‘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 ac-
cepted alternative designation of the owner.
Any distinctive identification of the owner may be used
for purposes of subparagraph (C) if it has been approved
and 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).
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‘‘(b) LOCATION OF NOTICE.—The design notice shall
be so located and applied as to give reasonable notice of
design protection while the vessel hull embodying the de-
sign 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.
‘‘§ 1207. Effect of omission of notice
‘‘(a) ACTIONS WITH NOTICE.—Except as provided in
subsection (b), the omission of the notice prescribed in sec-
tion 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 1406 shall prevent any re-
covery 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 reim-
burses that person for any reasonable expenditure or con-
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tractual 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 protec-
tion shall be on the owner of the design.
‘‘§ 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 vessel hull embodying that de-
sign; and
‘‘(2) sell or distribute for sale or for use in
trade any vessel hull embodying that design.
‘‘§ 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 pro-
tection, 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.
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‘‘(b) ACTS OF SELLERS AND DISTRIBUTORS.—A sell-
er or distributor of an infringing article who did not make
or import the vessel hull shall be deemed to have infringed
on a design protected under this chapter only if that per-
son—
‘‘(1) induced or acted in collusion with a manu-
facturer to make, or an importer to import such ar-
ticle, except that merely purchasing or giving an
order to purchase a vessel hull 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 dis-
closure of that person’s source of such vessel hull,
and that person orders or reorders such article after
having 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, im-
port, sell, or distribute, any vessel hull 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
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manufacture an infringing article acquired from others in
the ordinary course of business, or who, without knowl-
edge of the protected design embodied in an infringing ar-
ticle, makes or processes the infringing article for the ac-
count 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 con-
tained in paragraph (1) or (2) of subsection (b). Accepting
an order or reorder from the source of the infringing arti-
cle 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 pro-
tected design. An infringing article is not an illustration
or picture of a protected design in an advertisement, book,
periodical, newspaper, photograph, broadcast, motion pic-
ture, or similar medium or an article that embodies, in
common with the protected design, only elements de-
scribed in section 1202. 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.
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‘‘(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 ANALY-
SIS.—It is not an infringement of the exclusive rights of
a design owner for a person to reproduce the design in
a vessel hull or in any other form solely for the purpose
of teaching, analyzing, or evaluating the appearance, con-
cepts, or techniques embodied in the design, or the func-
tion of the vessel hull embodying the design.
‘‘§ 1210. Application for registration
‘‘(a) TIME LIMIT FOR APPLICATION FOR REGISTRA-
TION.—Protection under this chapter shall be lost if appli-
cation for registration of the design is not made within
one year 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 vessel hull 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.
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‘‘(c) APPLICATION BY OWNER OF DESIGN.—Applica-
tion for registration may be made by the owner of the de-
sign.
‘‘(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 dif-
ferent from the designer;
‘‘(3) the specific name of the vessel hull em-
bodying 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 reg-
istration shall be accompanied by a statement under oath
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by the applicant or the applicant’s duly authorized agent
or representative, setting forth, to the best of the appli-
cant’s knowledge and belief—
‘‘(1) that the design is original and was created
by the designer or designers named in the applica-
tion;
‘‘(2) that the design has not previously been
registered on behalf of the applicant or the appli-
cant’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 1406, the statement shall also de-
scribed the exact form and position of the design notice.
‘‘(f) EFFECT OF ERRORS.—(1) Error in any state-
ment or assertion as to the utility of the vessel hull named
in the application, the design of which is sought to be reg-
istered, 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.
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‘‘(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 author-
ship of the design is difficult or impossible to ascribe and
the application so states, the name and address of the em-
ployer for whom the design was made may be stated in-
stead 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 vessel hull having one or more views, adequate to
show the design, in a form and style suitable for reproduc-
tion, which shall be deemed a part of the application.
‘‘(i) DESIGN IN MORE THAN ONE USEFUL ARTI-
CLE.—If the distinguishing elements of a design are in
substantially the same form in different vessel hulls, the
design shall be protected as to all such vessel hulls when
protected as to one of them, but not more than one reg-
istration shall be required for the design.
‘‘(j) APPLICATION FOR MORE THAN ONE DESIGN.—
More than one design may be included in the same appli-
cation 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.
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‘‘§ 1211. Benefit of earlier filing date in foreign coun-
try
‘‘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, pre-
viously 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 appli-
cations 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
applications as first field in any 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.
‘‘§ 1212. Oaths and acknowledgments
‘‘(a) IN GENERAL.—Oaths and acknowledgments re-
quired 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, be-
fore any diplomatic or consular officer of the
United States authorized to administer oaths,
or before any official authorized to administer
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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 doc-
ument 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 sub-
scribed 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.
‘‘§ 1213. Examination of application and issue or re-
fusal of registration
‘‘(a) DETERMINATION OF REGISTRABILITY OF DE-
SIGN; REGISTRATION.—Upon the filing of an application
for registration in proper form under section 1210, and
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upon payment of the fee prescribed under section 1216,
the Administrator shall determine whether or not the ap-
plication 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 Adminis-
trator 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
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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 reg-
istration. It shall also be within the authority of the Ad-
ministrator 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 Ad-
ministrator determines that the applicant for cancellation
has established that the design is not subject to protection
under this chapter, the Administrator shall order the reg-
istration 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 appli-
cant and to the owner of record.
‘‘§ 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 Register and shall be recorded in the official records
of that office. The certificate shall state the name of the
useful article, the date of filing of the application, the date
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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 pic-
torial representation of the design. If a description of the
salient features of the design appears in the application,
this description shall also appear in the certificate. A cer-
tificate of registration shall be admitted in any court as
prima facie evidence of the facts stated in the certificate.
‘‘§ 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 reg-
istered designs for sale or other distribution.
‘‘(b) FILE OF REPRESENTATIVES OF REGISTERED
DESIGNS.—The Administrator shall establish and main-
tain a file of the drawings or other pictorial representa-
tions of registered designs. The file shall be available for
use by the public under such conditions as the Adminis-
trator may prescribe.
‘‘§ 1216. Fees
‘‘The Administrator shall by regulation set reason-
able 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
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the cost of providing these services and the benefit of a
public record.
‘‘§ 1217. Regulations
‘‘The Administrator may establish regulations for the
administration of this chapter.
‘‘§ 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.
‘‘§ 1219. Correction of errors in certificates
‘‘The Register 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 na-
ture 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.
‘‘§ 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 em-