§ 1222. Injunctions
‘‘(a) IN GENERAL.—A court having jurisdiction over
actions under this chapter may grant injunctions in ac-
cordance with the principles of equity to prevent infringe-
ment, including, in its discretion, prompt relief by tem-
porary 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 ap-
propriate, including damages for lost profits, cost of mate-
rials, loss of good will, and punitive damages in instances
where the injunctive relief was sought in bade faiths, and,
unless the court finds extenuating circumstances, to recover
a reasonable attorney’s fee.
‘‘§ 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 com-
mitted more than 3 years before the date on which the com-
plaint is filed.
‘‘(d) ATTORNEY’S FEES.—In an action for infringe-
ment under this chapter, the court may award reasonable
attorney’s fees to the prevailing party.
‘‘(e) DISPOSITION OF INFRINGING AND OTHER ARTI-
CLES.—The court may order that all infringing articles,
and any plates, molds, patterns, models, or other means spe-
cifically adapted for making the articles, be delivered up
for destruction or other disposition as the court may direct.
‘‘§ 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 cancella-
tion of such a registration. Any such order shall be certified
by the court to the Administrator, who shall make an ap-
propriate entry upon the record.
‘‘§ 1225. Liability for action on registration fraudu-
lently 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 de-
termine. 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.
‘‘§ 1226. Penalty for false marking
‘‘(a) IN GENERAL.—Whoever, for the purpose of deceiv-
ing the public, marks upon, applies to, or uses in advertis-
ing 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.
‘‘§ 1227. Penalty for false representation
‘‘Whoever knowingly makes a false representation ma-
terially 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.
‘‘§ 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. These
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 for-
feited 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 vio-
lation of the law.
‘‘§ 1229. Relation to design patent and copyright law
‘‘The issuance of a design patent under title 35 for an
original design for an article of manufacture, or the
issuance of a copyright registration under title 17 for an
original design, shall terminate any protection of the origi-
nal design under this chapter.
‘‘§ 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.
‘‘§ 1231. Administrator
‘‘The Administrator and Office of the Administrator
referred to in this chapter shall be the Register of Copy-
rights and the Copyrights Office of the Library of Congress,
respectively.
‘‘§ 1232. No retroactive effect
‘‘Protection under this chapter shall not be available
for any design that has been made public under section
1209(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 OF 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 in-
serting ‘‘, 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.