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SEC. 505. EFFECTIVE DATE.
(a) IN GENERAL.—This title and the amendments
made by this title shall take effect on the date of the en-
actment of this Act, and shall apply to acts committed
on or after that date.
(b) PRIOR ACTS NOT AFFECTED.—No person shall
be liable under chapter 13 of title 17, United States Code,
as added by section 502 of this Act, for the use of informa-
tion lawfully extracted from a collection of information
prior to the effective date of this Act, by that person or
by that person’s predecessor in interest.
TITLE VI—PROTECTION OF
CERTAIN ORIGINAL DESIGNS
SEC. 601. SHORT TITLE.
This Act may be referred to as the ‘‘Vessel Hull De-
sign Protection Act’’.
SEC. 602. PROTECTION OF CERTAIN ORIGINAL DESIGNS.
Title 17, United States Code, is amended by adding
at the end the following new chapter:
‘‘CHAPTER 14—PROTECTION OF ORIGINAL DESIGNS
‘‘Sec.
‘‘1401. Designs protected.
‘‘1402. Designs not subject to protection.
‘‘1403. Revisions, adaptations, and rearrangements.
‘‘1404. Commencement of protection.
‘‘1405. Term of protection.
‘‘1406. Design notice.
‘‘1407. Effect of omission of notice.
‘‘1408. Exclusive rights.
‘‘1409. Infringement.
‘‘1410. Application for registration.
‘‘1411. Benefit of earlier filing date in foreign country.
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‘‘1412. Oaths and acknowledgments.
‘‘1413. Examination of application and issue or refusal of registration.
‘‘1414. Certification of registration.
‘‘1415. Publication of announcements and indexes.
‘‘1416. Fees.
‘‘1417. Regulations.
‘‘1418. Copies of records.
‘‘1419. Correction of errors in certificates.
‘‘1420. Ownership and transfer.
‘‘1421. Remedy for infringement.
‘‘1422. Injunctions.
‘‘1423. Recovery for infringement.
‘‘1424. Power of court over registration.
‘‘1425. Liability for action on registration fraudulently obtained.
‘‘1426. Penalty for false marking.
‘‘1427. Penalty for false representation.
‘‘1428. Enforcement by Treasury and Postal Service .
‘‘1429. Relation to design patent law.
‘‘1430. Common law and other rights unaffected.
‘‘1431. Administrator; Office of the Administrator.
‘‘1432. No retroactive effect.
‘‘§ 1401. Designs protected
‘‘(a) DESIGNS PROTECTED.—
‘‘(1) IN
GENERAL.—The designer or other
owner of an original design of a useful article which
makes the article attractive or distinctive in appear-
ance to the purchasing or using public may secure
the protection provided by this chapter upon comply-
ing with and subject to this chapter.
‘‘(2) VESSEL HULLS.—The design of a vessel
hull, including a plug or mold, is subject to protec-
tion under this chapter, notwithstanding section
1402(4).
‘‘(b) DEFINITIONS.—For the purpose of this chapter,
the following terms have the following meanings:
127
‘‘(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 a vessel hull, including
a plug or mold, which in normal 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 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, but
does not include any such craft that exceeds 200
feet in length.
‘‘(4) A ‘hull’ is the frame or body of a vessel,
including the deck 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.
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‘‘(6) A ‘mold’ means a matrix or form in which
a substance for material is used, regardless of
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.
‘‘§ 1402. 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, a familiar symbol, an emblem, or
a motif, or another 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;
‘‘(4) dictated solely by a utilitarian function of
the article that embodies it; or
‘‘(5) 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.
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‘‘§ 1403. 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
1402 if the design is a substantial revision, adaptation,
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.
‘‘§ 1404. 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 1413(a) or
the date the design is first made public as defined by sec-
tion 1410(b).
‘‘§ 1405. 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 beginning on the date of
the commencement of protection under section 1404.
‘‘(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.
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‘‘(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
in which the design may have been used during the term
of its protection.
‘‘§ 1406. 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 1410(b), the owner of
the design shall, subject to the provisions of section 1407,
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 recorded
by the Administrator before the design marked with such
identification is registered.
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‘‘(2) After registration, the registration number may
be used instead of the elements specified in subparagraphs
(B) and (C) of paragraph (1).
‘‘(b) LOCATION OF NOTICE.—The design notice shall
be so located and applied as to give reasonable notice of
design protection while the useful article embodying the
design is passing through its normal channels of com-
merce.
‘‘(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.
‘‘§ 1407. Effect of omission of notice
‘‘(a) ACTIONS WITH NOTICE.—Except as provided in
subsection (b), the omission of the notice prescribed in sec-
tion 1406 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 1423 against a person who began an
undertaking leading to infringement under this chapter
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‘‘(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.
‘‘(b) ACTS OF SELLERS AND DISTRIBUTORS.—A sell-
er or distributor of an infringing article who did not make
or import the article 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 such article in the ordinary course
of business shall not of itself constitute such induce-
ment 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 article, and
that person orders or reorders such article after re-
ceiving 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 article embodying a design
134
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
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. A design shall not be deemed to
have been copied from a protected design if it is original
135
and not substantially similar in appearance to a protected
design.
‘‘(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 useful article 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 useful article embodying the design.
‘‘§ 1410. 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
two years 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 useful article embodying the
design is anywhere publicly exhibited, publicly distributed,
136
or offered for sale or sold to the public by the owner of
the design or with the owner’s consent.
‘‘(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 useful article 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.
137
‘‘(e) SWORN STATEMENT.—The application for reg-
istration shall be accompanied by a statement under oath
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-
scribe 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 useful article
named in the application under this section, the design
of which is sought to be registered, 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
138
of the design, unless it is shown that the error occurred
with deceptive intent.
‘‘(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 useful article embodying the design, having one or
more views, adequate to show the design, in a form and
style suitable for reproduction, 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 useful articles, the
design shall be protected as to all such useful articles 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
139
Administrator. For each design included in an application
the fee prescribed for a single design shall be paid.
‘‘§ 1411. 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
application was first filed in such foreign country, if the
application in the United States is filed within 6 months
after the earliest date on which any such foreign applica-
tion was filed.
‘‘§ 1412. 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
140
United States authorized to administer oaths,
or before any official authorized to administer
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.
141
‘‘§ 1413. 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 1410, and
upon payment of the fee prescribed under section 1416,
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
142
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
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. The Administrator shall also have the authority
to establish, by regulation, conditions under which the op-
posing parties may appear and be heard in support of
their arguments. If, after the periods provided for the
presentation of arguments have expired, the Administrator
determines that the applicant for cancellation has estab-
lished that the design is not subject to protection under
this chapter, the Administrator shall order the registration
stricken from the record. Cancellation under this sub-
section 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.
143
‘‘§ 1414. Certification of registration
‘‘Certificates of registration shall be issued in the
name of the United States under the seal of the Office
of the Administrator and shall be recorded in the official
records of the Office. The certificate shall state the name
of the useful article, the date of filing of the application,
the date 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
pictorial representation of the design. If a description of
the salient features of the design appears in the applica-
tion, the description shall also appear in the certificate.
A certificate of registration shall be admitted in any court
as prima facie evidence of the facts stated in the certifi-
cate.
‘‘§ 1415. 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
144
use by the public under such conditions as the Adminis-
trator may prescribe.
‘‘§ 1416. 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
the cost of providing these services and the benefit of a
public record.
‘‘§ 1417. Regulations
‘‘The Administrator may establish regulations for the
administration of this chapter.
‘‘§ 1418. 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.
‘‘§ 1419. 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-
145
cate, shall thereafter have the same effect as if it had been
originally issued in such corrected form.
‘‘§ 1420. 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 1412
shall be prima facie evidence of the execution of an assign-
ment, grant, conveyance, or mortgage under subsection
(b).