copy shall be admissible in evidence with the same effect
as the original.
‘‘§ 1219. Correction of errors in certificates
‘‘The Administrator may, by a certificate of correc-
tion under seal, correct any error in a registration in-
curred through the fault of the Office, or, upon payment
of the required fee, any error of a clerical or typographical
nature occurring in good faith but not through the fault
of the Office. Such registration, together with the certifi-
cate, 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-
ployer for whom the designer created the design in the
case of a design made within the regular scope of the de-
signer’s employment, or a person to whom the rights of
the designer or of such employer have been transferred.
The person in whom the property right is vested shall be
considered the owner of the design.
‘‘(b) TRANSFER OF PROPERTY RIGHT.—The prop-
erty right in a registered design, or a design for which
an application for registration has been or may be filed,
may be assigned, granted, conveyed, or mortgaged by an
instrument in writing, signed by the owner, or may be be-
queathed by will.
‘‘(c) OATH
OR ACKNOWLEDGEMENT
OF TRANS-
FER.—An oath or acknowledgment under section 1212
shall be prima facie evidence of the execution of an assign-
ment, grant, conveyance, or mortgage under subsection
(b).
‘‘(d) RECORDATION OF TRANSFER.—An assignment,
grant, conveyance, or mortgage under subsection (b) shall
be void as against any subsequent purchaser or mortgagee
for a valuable consideration, unless it is recorded in the
Office of the Administrator within 3 months after its date
of execution or before the date of such subsequent pur-
chase or mortgage.
‘‘§ 1221. Remedy for infringement
‘‘(a) IN GENERAL.—The owner of a design is enti-
tled, after issuance of a certificate of registration of the
design under this chapter, to institute an action for any
infringement of the design.
‘‘(b) REVIEW OF REFUSAL TO REGISTER.—(1) Sub-
ject to paragraph (2), the owner of a design may seek judi-
cial review of a final refusal of the Administrator to reg-
ister the design under this chapter by bringing a civil ac-
tion, and may in the same action, if the court adjudges
the design subject to protection under this chapter, en-
force the rights in that design under this chapter.
‘‘(2) The owner of a design may seek judicial review
under this section if—
‘‘(A) the owner has previously duly filed and
prosecuted to final refusal an application in proper
form for registration of the design;
‘‘(B) the owner causes a copy of the complaint
in the action to be delivered to the Administrator
within 10 days after the commencement of the ac-
tion; and
‘‘(C) the defendant has committed acts in re-
spect to the design which would constitute infringe-
ment with respect to a design protected under this
chapter.
‘‘(c) ADMINISTRATOR AS PARTY TO ACTION.—The
Administrator may, at the Administrator’s option, become
a party to the action with respect to the issue of
registrability of the design claim by entering an appear-
ance within 60 days after being served with the complaint,
but the failure of the Administrator to become a party
shall not deprive the court of jurisdiction to determine that
issue.
‘‘(d) USE OF ARBITRATION TO RESOLVE DISPUTE.—
The parties to an infringement dispute under this chapter,
within such time as may be specified by the Administrator
by regulation, may determine the dispute, or any aspect
of the dispute, by arbitration. Arbitration shall be gov-
erned by title 9. The parties shall give notice of any arbi-
tration award to the Administrator, and such award shall,
as between the parties to the arbitration, be dispositive
of the issues to which it relates. The arbitration award
shall be unenforceable until such notice is given. Nothing
in this subsection shall preclude the Administrator from
determining whether a design is subject to registration in
a cancellation proceeding under section 1213(c).
§ 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 of a design under this chapter, including, in its dis-
cretion, prompt relief by temporary restraining orders and
preliminary injunctions.
‘‘(b) DAMAGES FOR INJUNCTIVE RELIEF WRONG-
FULLY 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 appli-
cant for such injunctive relief and may recover such relief
as may be appropriate, including damages for lost profits,
cost of materials, loss of good will, and punitive damages
in instances where the injunctive relief was sought in bad
faith, and, unless the court finds extenuating cir-
cumstances, reasonable attorney’s fees.
‘‘§ 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 com-
pensation 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 in-
fringer 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
committed more than 3 years before the date on which
the complaint 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
specifically 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
cancellation of such a registration. Any such order shall
be certified by the court to the Administrator, who shall
make an appropriate 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
determine. That amount shall be to compensate the de-
fendant 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 de-
ceiving the public, marks upon, applies to, or uses in ad-
vertising in connection with an article made, used, distrib-
uted, 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 pro-
tected 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 per-
son suing and the remainder shall be awarded to the
United States.
‘‘§ 1227. Penalty for false representation
‘‘Whoever knowingly makes a false representation
materially affecting the rights obtainable under this chap-
ter 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 privi-
leges 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. Such
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 sec-
tion 337 of the Tariff Act of 1930 excluding, impor-
tation of the articles.
‘‘(2) Furnish proof that the design involved is
protected under this chapter and that the importa-
tion 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 arti-
cles proves to be unjustified.
‘‘(b) SEIZURE AND FORFEITURE.—Articles imported
in violation of the rights set forth in section 1208 are sub-
ject to seizure and forfeiture in the same manner as prop-
erty imported in violation of the customs laws. Any such
forfeited articles shall be destroyed as directed by the Sec-
retary 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 rea-
sonable grounds for believing that his or her acts con-
stituted a violation of the law.
‘‘§ 1229. Relation to design patent law
‘‘The issuance of a design patent under title 35 for
an original design for an article of manufacture shall ter-
minate any protection of the original 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 re-
spect 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; Office of the Administrator
‘‘In this chapter, the ‘Administrator’ is the Register
of Copyrights, and the ‘Office of the Administrator’ and
the ‘Office’ refer to the Copyright Office of the Library
of Congress.
‘‘§ 1232. No retroactive effect
‘‘Protection under this chapter shall not be available
for any design that has been made public under section
1210(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 DE-
SIGN 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 ‘‘de-
signs,’’ 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 FOR BRINGING DESIGN ACTIONS.—Sec-
tion 1400(a) of title 28, United States Code, is amended
by inserting ‘‘or designs’’ after ‘‘mask works’’.
(d) ACTIONS AGAINST THE UNITED STATES.—Sec-
tion 1498(e) 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’’.
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.
Passed the House of Representatives March 18,
1998.
Attest:
Robin H. Carle,
Clerk.