H. R. 2281—54
‘‘§ 1318. 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 Adminis-
trator that relates to this chapter. That copy shall be admissible
in evidence with the same effect as the original.
‘‘§ 1319. Correction of errors in certificates
‘‘The Administrator 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 nature 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.
‘‘§ 1320. 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 employer for whom the designer
created the design in the case of a design made within the regular
scope of the designer’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 property right in
a registered design, or a design for which an application for registra-
tion 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 bequeathed by will.
‘‘(c) OATH OR ACKNOWLEDGEMENT OF TRANSFER.—An oath or
acknowledgment under section 1312 shall be prima facie evidence
of the execution of an assignment, 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 purchase or mortgage.
‘‘§ 1321. Remedy for infringement
‘‘(a) IN GENERAL.—The owner of a design is entitled, 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) Subject to para-
graph (2), the owner of a design may seek judicial review of a
final refusal of the Administrator to register the design under
this chapter by bringing a civil action, and may in the same action,
if the court adjudges the design subject to protection under this
chapter, enforce 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;
H. R. 2281—55
‘‘(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 action; and
‘‘(C) the defendant has committed acts in respect to the
design which would constitute infringement 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 appearance 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 deter-
mine the dispute, or any aspect of the dispute, by arbitration.
Arbitration shall be governed by title 9. The parties shall give
notice of any arbitration 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
1313(c).
§ 1322. Injunctions
‘‘(a) IN GENERAL.—A court having jurisdiction over actions
under this chapter may grant injunctions in accordance with the
principles of equity to prevent infringement of a design under
this chapter, including, in its discretion, prompt relief by temporary
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 appropriate, including dam-
ages 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 circumstances,
reasonable attorney’s fees.
‘‘§ 1323. 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 con-
stitute 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
H. R. 2281—56
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 committed more than
3 years before the date on which the complaint is filed.
‘‘(d) ATTORNEY’S FEES.—In an action for infringement under
this chapter, the court may award reasonable attorney’s fees to
the prevailing party.
‘‘(e) DISPOSITION OF INFRINGING AND OTHER ARTICLES.—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.
‘‘§ 1324. 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 registra-
tion. Any such order shall be certified by the court to the Adminis-
trator, who shall make an appropriate entry upon the record.
‘‘§ 1325. Liability for action on registration fraudulently
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 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.
‘‘§ 1326. Penalty for false marking
‘‘(a) IN GENERAL.—Whoever, for the purpose of deceiving the
public, marks upon, applies to, or uses in advertising 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 1306, 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.
‘‘§ 1327. Penalty for false representation
‘‘Whoever knowingly makes a false representation materially
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.
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‘‘§ 1328. Enforcement by Treasury and Postal Service
‘‘(a) REGULATIONS.—The Secretary of the Treasury and the
United States Postal Service shall separately or jointly issue regula-
tions for the enforcement of the rights set forth in section 1308
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 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 unjusti-
fied.
‘‘(b) SEIZURE AND FORFEITURE.—Articles imported in violation
of the rights set forth in section 1308 are subject to seizure and
forfeiture in the same manner as property imported in violation
of the customs laws. Any such forfeited 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 violation
of the law.
‘‘§ 1329. Relation to design patent law
‘‘The issuance of a design patent under title 35, United States
Code, for an original design for an article of manufacture shall
terminate any protection of the original design under this chapter.
‘‘§ 1330. Common law and other rights unaffected
‘‘Nothing in this chapter shall annul or limit—
‘‘(1) common law or other rights or remedies, if any, avail-
able 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.
‘‘§ 1331. Administrator; Office of the Administrator
‘‘In this chapter, the ‘Administrator’ is the Register of Copy-
rights, and the ‘Office of the Administrator’ and the ‘Office’ refer
to the Copyright Office of the Library of Congress.
‘‘§ 1332. No retroactive effect
‘‘Protection under this chapter shall not be available for any
design that has been made public under section 1310(b) before
the effective date of this chapter.’’.
SEC. 503. 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:
‘‘13. Protection of Original Designs ................................................................ 1301’’.
H. R. 2281—58
(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
13 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 FOR BRINGING DESIGN ACTIONS.—(1) Section 1400(a)
of title 28, United States Code, is amended by inserting ‘‘or designs’’
after ‘‘mask works’’.
(2) The section heading for section 1400 of title 28, United
States Code, is amended to read as follows:
‘‘Patents and copyrights, mask works, and designs’’.
(3) The item relating to section 1400 in the table of sections
at the beginning of chapter 87 of title 28, United States Code,
is amended to read as follows:
‘‘1400.
Patents and copyrights, mask works, and designs.’’.
(d) ACTIONS AGAINST THE UNITED STATES.—Section 1498(e) of
title 28, United States Code, is amended by inserting ‘‘, and to
exclusive rights in designs under chapter 13 of title 17,’’ after
‘‘title 17’’.
SEC. 504. JOINT STUDY OF THE EFFECT OF THIS TITLE.
(a) IN GENERAL.—Not later than 1 year after the date of the
enactment of this Act, and not later than 2 years after such date
of enactment, the Register of Copyrights and the Commissioner
of Patents and Trademarks shall submit to the Committees on
the Judiciary of the Senate and the House of Representatives a
joint report evaluating the effect of the amendments made by this
title.
(b) ELEMENTS FOR CONSIDERATION.—In carrying out subsection
(a), the Register of Copyrights and the Commissioner of Patents
and Trademarks shall consider—
(1) the extent to which the amendments made by this
title has been effective in suppressing infringement of the
design of vessel hulls;
(2) the extent to which the registration provided for in
chapter 13 of title 17, United States Code, as added by this
title, has been utilized;
(3) the extent to which the creation of new designs of
vessel hulls have been encouraged by the amendments made
by this title;
(4) the effect, if any, of the amendments made by this
title on the price of vessels with hulls protected under such
amendments; and
(5) such other considerations as the Register and the
Commissioner may deem relevant to accomplish the purposes
of the evaluation conducted under subsection (a).