IB
Union Calendar No. 246
105TH CONGRESS
2D SESSION
H. R. 2696
[Report No. 105–436]
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
MARCH 11, 1998
Reported with an amendment, committed to the Committee of the Whole
House on the State of the Union, and ordered to be printed
[Strike out all after the enacting clause and insert the part printed in italic]
[For text of introduced bill, see copy of bill as introduced on October 22, 1997]
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 Design
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:
‘‘CHAPTER 12—PROTECTION OF 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.—
‘‘(1) IN GENERAL.—The designer or other owner
of an original design of a useful article which makes
the article attractive or distinctive in appearance to
the purchasing or using public may secure the protec-
tion provided by this chapter upon complying with
and subject to this chapter.
‘‘(2) VESSEL
HULLS
OR
COMPONENT
PARTS
THEREOF.—The design of a vessel hull or component
part of a vessel hull, including a plug or mold, is sub-
ject to protection under this chapter, notwithstanding
section 1202(4).
‘‘(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 a vessel hull or a compo-
nent part thereof, 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 use-
ful 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, ex-
clusive 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, re-
gardless of whether the device or model has an intrin-
sic utilitarian function that is not only to portray the
appearance of the product or to convey information.
‘‘(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 utilitarian func-
tion that is not only to portray the appearance 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;
‘‘(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.
‘‘§ 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, or rear-
rangement of such subject matter. Such protection shall be
independent of any subsisting protection in subject matter
employed in the design, and shall not be construed as secur-
ing 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 chap-
ter shall commence upon the earlier of the date of publica-
tion of the registration under section 1213(a) or the date
the design is first made public as defined by section 1210(b).
‘‘§ 1205. Term of protection
‘‘(a) IN GENERAL.—Subject to subsection (b), the pro-
tection provided under this chapter for a design shall con-
tinue for a term of 10 years from the date of the commence-
ment 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 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 chapter
is made public under section 1210(b), the owner of the de-
sign shall, subject to the provisions of section 1207, mark
it or have it marked legibly with a design notice consisting
of—
‘‘(A) the words ‘Protected Design’, the abbrevia-
tion ‘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).
‘‘(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 design
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 no-
ing receiving notice by registered or certified mail of
the protection subsisting in the design.
‘‘(c) ACTS WITHOUT KNOWLEDGE.—It shall not be in-
fringement under this section to make, have made, import,
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 de-
sign.
‘‘(d) ACTS IN ORDINARY COURSE OF BUSINESS.—A
person who incorporates into that person’s product of man-
ufacture an infringing article acquired from others in the
ordinary course of business, or who, without knowledge of
the protected design embodied in an infringing article,
makes or processes the infringing article for the account 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 contained in para-
graph (1) or (2) of subsection (b). Accepting an order or
reorder from the source of the infringing article shall be
deemed ordering or reordering within the meaning of sub-
section (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 protected
design. An infringing article is not an illustration or pic-
ture of a protected design in an advertisement, book, peri-
odical, newspaper, photograph, broadcast, motion picture,
or similar medium or an article that embodies, in common
with the protected design, only elements described 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.
‘‘(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 es-
tablishing 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 ANALYSIS.—
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, ana-
lyzing, or evaluating the appearance, concepts, or tech-
niques embodied in the design, or the function 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 de-
sign 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.
‘‘(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 de-
signers 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 embody-
ing 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 ab-
sence 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
by the applicant or the applicant’s duly authorized agent
or representative, setting forth, to the best of the applicant’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 reg-
istered on behalf of the applicant or the applicant’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 describe
the exact form and position of the design notice.
‘‘(f) EFFECT OF ERRORS.—(1) Error in any statement
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.
‘‘(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 instead
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 reproduction, which
shall be deemed a part of the application.
‘‘(i) DESIGN IN MORE THAN ONE USEFUL ARTICLE.—
If the distinguishing elements of a design are in substan-
tially 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 registration shall
be required for the design.
‘‘(j) APPLICATION FOR MORE THAN ONE DESIGN.—
More than one design may be included in the same applica-
tion under such conditions as may be prescribed by the Ad-
ministrator. For each design included in an application the
fee prescribed for a single design shall be paid.
‘‘§ 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 de-
sign in a foreign country which extends to designs of owners
who are citizens of the United States, or to applications
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 earli-
est 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—
and may jeopardize the validity of the application or docu-
ment or a registration resulting therefrom.
‘‘§ 1213. Examination of application and issue or re-
fusal of registration
‘‘(a) DETERMINATION OF REGISTRABILITY OF DESIGN;
REGISTRATION.—Upon the filing of an application for reg-
istration in proper form under section 1210, and upon pay-
ment of the fee prescribed under section 1216, the Adminis-
trator shall determine whether or not the application relates
to a design which on its face appears to be subject to protec-
tion under this chapter, and, if so, the Register shall register
the design. Registration under this subsection shall be an-
nounced 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 sub-
ject to protection under this chapter, the Administrator
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 applica-
tion. After consideration of such a request, the Adminis-
trator shall either register the design or send to the appli-
cant 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 cancella-
tion, the Administrator shall send to the owner of the de-
sign, as shown in the records of the Office of the Adminis-
trator, 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 Adminis-
trator for support of the validity of the registration. It shall
also be within the authority of the Administrator to estab-
lish, by regulation, conditions under which the opposing
parties may appear and be heard in support of their argu-
ments. If, after the periods provided for the presentation
of arguments have expired, the Administrator determines
that the applicant for cancellation has established that the
design is not subject to protection under this chapter, the
Administrator shall order the registration stricken from the
record. Cancellation under this subsection shall be an-
nounced by publication, and notice of the Administrator’s
final determination with respect to any application for can-
cellation shall be sent to the applicant 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 Reg-
ister and shall be recorded in the official records of that
office. The certificate shall state the name of the useful arti-
cle, the date of filing of the application, the date of registra-
tion, 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 representa-
tion 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 certificate of registra-
tion 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 registered
designs for sale or other distribution.
‘‘(b) FILE OF REPRESENTATIVES OF REGISTERED DE-
SIGNS.—The Administrator shall establish and maintain a
file of the drawings or other pictorial representations of reg-
istered designs. The file shall be available for use by the
public under such conditions as the Administrator may pre-
scribe.
‘‘§ 1216. Fees
‘‘The Administrator shall by regulation set reasonable
fees for the filing of applications to register designs under
this chapter and for other services relating to the adminis-
tration of this chapter, taking into consideration 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 nature occur-
ring in good faith but not through the fault of the Office.
Such registration, together with the certificate, shall there-
after 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 de-
ceased 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 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 appli-
cation 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 bequeathed by
will.
‘‘(c) OATH OR AFFIRMATION OF TRANSFER.—An ac-
knowledgment under section 1212 shall be prima facie evi-
dence 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.
‘‘§ 1221. 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 infringe-
ment of the design.
‘‘(b) REVIEW OF REFUSAL TO REGISTER.—(1) Subject
to paragraph (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;
‘‘(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 Ad-
ministrator 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 Reg-
ister’s failure 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 governed
by title 9. The parties shall give notice of any arbitration
award to the Administrator, and such award shall, as be-
tween 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 determin-
ing whether a design is subject to registration in a cancella-
tion proceeding under section 1213(c).