INTELLECTUAL PROPERTY:
LAW & THE INFORMATION SOCIETY

Selected Statutes & Treaties
2019 Edition

James Boyle
William Neal Reynolds Professor of Law
Duke Law School
Jennifer Jenkins
Clinical Professor of Law and Director,
Center for the Study of the Public Domain
Duke Law School

Copyright ©2019 James Boyle and Jennifer Jenkins
No claim is made to copyright on the public domain Federal Statutes or
International Treaties.
This work is made available under the terms of a Creative Commons AttributionNoncommercial-Sharealike 3.0 Unported license.
https://creativecommons.org/licenses/by-nc-sa/3.0/
You are free to:
Share—copy and redistribute the material in any medium or format.
Adapt—remix, transform, and build upon the material for any purpose, even
commercially.
Attribution—You must give appropriate credit, provide a link to the license, and
indicate if changes were made.
Required Attribution:
“James Boyle and Jennifer Jenkins, Intellectual Property Law Statutory Supplement
(2019). [Changes were/were not made to the original material.]”
We require this attribution so that users do not rely on the accuracy or timeliness of
material we did not prepare and check ourselves. This work is the original, revised
volume. It is up to date as of August 2019.
No additional restrictions—You may not apply legal terms or technological measures
that legally restrict others from doing anything the license permits.
Note:
You do not have to comply with the license for elements of the material in the
public domain—that includes all the statutes and treaties—or where your use
is permitted by an applicable exception or limitation.

CONTENTS

Introduction ...............................................................................................................

iii

IP Comparison Chart .................................................................................................

v

Trademark Act of 1946 (Lanham Act) (as amended) ................................................

1

Uniform Domain Name Dispute Resolution Policy ................................................... 46
Copyright Act of 1976 (as amended) ......................................................................... 50
Patent Act of 1952 (as amended, with annotations) ................................................... 265
Defend Trade Secrets Act of 2016 ............................................................................. 389
Economic Espionage Act of 1996 .............................................................................. 397
Restatement (First) of Torts, § 757 ............................................................................ 405
California’s Uniform Trade Secrets Act .................................................................... 406
Berne Convention for the Protection of Literary and Artistic Works ........................ 409
WIPO Copyright Treaty ............................................................................................. 440
Paris Convention for the Protection of Industrial Property ........................................ 447
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) ........ 469

i

Introduction

This book is a collection of the primary sources of intellectual property law, the set of
private legal rights that allows individuals and corporations to control intangible creations
and marks—from drugs, to books, to logos—and the exceptions and limitations that define
those rights. It contains the full text of the Lanham Act, which lays out the rules of Federal
trademark law, the Copyright Act and the Patent Act. This edition of the book amends the
Lanham Act to reflect two recent decisions from the United States Supreme Court (Matal
v. Tam (2017) and Iancu v. Brunetti (2019)) that invalidated some of the restrictions in
section 2(a). The Copyright Act is updated with new provisions from the 2018 Orrin G.
Hatch–Bob Goodlatte Music Modernization Act (more information on the Music Modernization Act can be found at the Copyright Office’s website, https://www.copyright.gov/music-modernization/) and the 2018 Marrakesh Treaty Implementation Act. In
2011, the Patent Act was significantly modified by the America Invents Act, part of which
did not come into effect until March 16, 2013. This left two bodies of patent law, one
applying to patents granted under the old system and another under the new. We include a
version of the Patent Act, prepared by the U.S. Patent and Trademark Office (“PTO”),
which shows both versions and indicates which would be applicable. This supplement also
includes the Defend Trade Secrets Act of 2016 (“DTSA”), which created a new Federal
civil trade secrecy cause of action. The DTSA was passed as a series of amendments to
the Economic Espionage Act (“EEA”). Therefore, this book contains both the DTSA and
the amended EEA. Since the DTSA does not preempt state trade secrecy protections, it
also contains additional sources of trade secret law: key provisions from the Restatement
(First) of Torts and California’s adoption of the Uniform Trade Secrets Act. In addition,
the book includes several international treaties: the Berne Convention for the Protection of
Literary and Artistic Works, the World Intellectual Property Organization Copyright
Treaty, the Paris Convention for the Protection of Industrial Property and the “TRIPs
Agreement” or Trade-Related Aspects of Intellectual Property Rights Agreement brokered
as part of the World Trade Organization process. For these international treaties, the useful
editorial table of contents and notes provided by the WIPO editors have been retained and
are gratefully acknowledged. We have also included, on the page following this introduction, a simple chart taken from our casebook that compares the trademark, copyright and
patent regimes—the constitutional basis and subject matter of the rights, the length of the
term, the exceptions and limitations and so on. We hope you find it of use.
This volume is current as of August 2019. It is designed to be used with our casebook
Intellectual Property: Law and the Information Society, 4th edition, but it can also be used
as a free-standing and inexpensive source book. It is made available under a Creative Commons Attribution license. What that means is that you are free to copy, reprint or reproduce
this book in whole or part, so long as you attribute it correctly (directions are given on the
copyright page). N.B. The individual statutes and treaties are all in the public domain
and can be freely copied by anyone without complying with that license.
Why do we do this? Partly, we do it because we think the price of legal casebooks and
materials is obscene. Law students, who are already facing large debt burdens, are required to buy casebooks that cost $150–$200, and “statutory supplements” some of
which consist of unedited, public domain, Federal statutes, for $40 or $50. The total bill
for a year can be over $1500. We know well that putting together a casebook is a lot of
iii

work and can represent considerable scholarship and pedagogic innovation. We just put
one together and we are proud of it. We think highly of our colleagues who write and
edit these casebooks. Our point is simply that the current textbook market equilibrium is
both unjust and inefficient. The cost is disproportionate, the product inflexible and the
benefit flows disproportionately to conventional legal publishers. Students are not the
only ones being treated unfairly.
Some of those costs may have been more justifiable when we did not have mechanisms
for worldwide and almost costless distribution. Others were justifiable before fast, accurate print on demand services. Now we have both. Legal education is already expensive;
we want to play a small part in diminishing the costs of the materials involved. We also
hope that the inexorable multiplication of projects such as these will be an aid to those
still publishing with conventional textbook publishers. To those casebook authors
trapped in contracts with existing publishing houses: remember when you said you
needed an argument to help convince them to price your casebook and your supplement
more reasonably? Or to give you more options in making digital versions available to
your students in addition to their print copies, but without taking away their first sale
rights? Here is one such argument. There are many more either already out there or in
the pipeline. Traditional textbook publishers can compete with free. But they have to try
harder. We will all benefit when they do.
We will make this statutory supplement available in two ways. First, like the casebook,
it will be available for digital download for free. No digital rights management. No codes.
No expiring permissions. Second, a paperback version will be available at a price that
covers the cost of the materials and distribution. Our goal will be to keep the price of this
book under $12.50—which given the possibility of resale, might make it an environmentally attractive alternative to printing out chapters and then throwing them away. We also
hope both of these options are useful for those who might want to use the book outside
the law school setting. Those who do not want, or cannot afford, to pay that price can
use the free digital version.
Our most important acknowledgement comes here: We would like to thank Mr. Balfour Smith, the coordinator of the Center for the Study of the Public Domain at Duke
Law School, for his tireless research and editorial efforts, for navigating the publishing
process, for his nifty cover designs, for helping us to put this book together from the
ground up. He was the one who made this supplement possible. We would like to dedicate it to him.

iv

IP Comparison Chart

Constitutional
and Statutory
Basis
Subject Matter

Requirements
for Eligibility

Rights

Duration

How Rights
are Procured

Examples of
Limitations
and Exceptions

TRADEMARK
Commerce clause,
Lanham Act. (There are
also state trademarks.)
Word, phrase, symbol,
logo, design etc. used in
commerce to identify
the source of goods
and services

COPYRIGHT
IP Clause, Copyright
Act

PATENT
IP clause, Patent Act

Creative works – for
example, books, songs,
music, photos, movies,
computer programs

Not generic (or merely
descriptive without secondary meaning), identifies source of product
or service,
used in commerce
Basic trademark right
only vis a vis a particular good or service.
Bass for beer, not ownership of word “Bass.”
Prevent others from using confusingly similar
trademarks; for famous
marks, prevent others
from “diluting” the
mark. Also prohibitions
against false or misleading advertising.
If renewed and continually used in commerce,
can be perpetual.
USPTO trademark
registration process
for ® status, though
the Lanham Act also
provides rights for
unregistered marks
Genericity, nominative
fair use, parodic use

Original expression,
fixed in material form

Inventions – new
and useful processes,
machines, manufactured articles, compositions of matter. Not
abstract ideas or products/laws of nature
Useful, novel and nonobvious to a person
having ordinary skill in
the art (PHOSITA)

Exclusive rights to
copy, distribute, make
“derivative works”,
publicly perform and
publicly display. Possibly new right to stop
circumvention of digital
‘fence’ protected ©
works.

Exclude others from
making, using, selling
or importing invention

Life plus 70 years; 95
years after publication
for corporate works
Creation and fixation
in a tangible medium;
registration is not required to get copyright
(but is required for suit
to enforce)
Idea and fact/expression
distinction, scenes a
faire, fair use, first sale

20 years for utility patents
USPTO patent application process

Abstract knowledge
in patent application
disclosed freely. Subsequent inventors can
“build on” patented invention and patent result without permission.
Both inventors must
consent to market
resulting compound
invention.

v

TRADEMARK ACT OF 1946
(“LANHAM ACT”)
(As Amended)
15 U.S. Code Chapter 22
Subchapter I—The Principal Register
§ 1051. (§ 1) Application for registration; verification
§ 1052. (§ 2) Trademarks registrable on principal register; concurrent registration
§ 1053. (§ 3) Service marks registrable
§ 1054. (§ 4) Collective marks and certification marks registrable
§ 1055. (§ 5) Use by related companies affecting validity and registration
§ 1056. (§ 6) Disclaimer of unregistrable matter
§ 1057. (§ 7) Certificates of registration
§ 1058. (§ 8) Duration, affidavits and fees
§ 1059. (§ 9) Renewal of registration
§ 1060. (§ 10) Assignment
§ 1061. (§ 11) Execution of acknowledgments and verifications
§ 1062. (§ 12) Publication
§ 1063. (§ 13) Opposition to registration
§ 1064. (§ 14) Cancellation of registration
§ 1065. (§ 15) Incontestability of right to use mark under certain conditions
§ 1066. (§ 16) Interference; declaration by Director
§ 1067. (§ 17) Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice; Trademark Trial and Appeal Board
§ 1068. (§ 18) Action of Director in interference, opposition, and proceedings for
concurrent use registration or for cancellation
§ 1069. (§ 19) Application of equitable principles in inter partes proceedings
§ 1070. (§ 20) Appeals to Trademark Trial and Appeal Board from decisions of
examiners
§ 1071. (§ 21) Appeal to courts
§ 1072. (§ 22) Registration as constructive notice of claim of ownership
Subchapter II—The Supplemental Register
§ 1091. (§ 23) Supplemental register
§ 1092. (§ 24) Publication; not subject to opposition; cancellation
§ 1093. (§ 25) Registration certificates for marks on principal and supplemental
registers to be different
§ 1094. (§ 26) Provisions of chapter applicable to registrations on supplemental
register
§ 1095. (§ 27) Registration on principal register not precluded
§ 1096. (§ 28) Registration on supplemental register not used to stop importations
Subchapter III—General Provisions
§ 1111. (§ 29) Notice of registration; display with mark; recovery of profits and
damages in infringement suit
§ 1112. (§ 30) Classification of goods and services; registration in plurality of classes
§ 1113. (§ 31) Fees
§ 1114. (§ 32) Remedies; infringement; innocent infringement by printers and
publishers
§ 1115. (§ 33) Registration on principal register as evidence of exclusive right to use
mark; defenses
 Section number in parentheses indicates Lanham Act section.
1

§ 1051

Trademark Act of 1946

§ 1116.
§ 1117.
§ 1118.
§ 1119.
§ 1120.
§ 1121.

(§ 34)
(§ 35)
(§ 36)
(§ 37)
(§ 38)
(§ 39)

§ 1122.

(§ 40)

§ 1123.

(§ 41)

§ 1124.
§ 1125.
§ 1126.
§ 1127.

(§ 42)
(§ 43)
(§ 44)
(§ 45)

Injunctive relief
Recovery for violation of rights
Destruction of infringing articles
Power of court over registration
Civil liability for false or fraudulent registration
Jurisdiction of Federal courts; State and local requirements that
registered trademarks be altered or displayed differently; prohibition
Liability of United States and States, and instrumentalities and officials
thereof
Rules and regulations for conduct of proceedings in Patent and
Trademark Office
Importation of goods bearing infringing marks or names forbidden
False designations of origin, false descriptions, and dilution forbidden
International conventions
Construction and definitions; intent of chapter

Subchapter IV—The Madrid Protocol
§ 1141. (§ 60) Definitions
§ 1141a. (§ 61) International applications based on United States applications or
registrations
§ 1141b. (§ 62) Certification of the international application
§ 1141c. (§ 63) Restriction, abandonment, cancellation, or expiration of a basic
application or basic registration
§ 1141d. (§ 64) Request for extension of protection subsequent to international
registration
§ 1141e. (§ 65) Extension of protection of an international registration to the United
States under the Madrid Protocol
§ 1141f. (§ 66) Effect of filing a request for extension of protection of an international
registration to the United States
§ 1141g. (§ 67) Right of priority for request for extension of protection to the United
States
§ 1141h. (§ 68) Examination of and opposition to request for extension of protection;
notification of refusal
§ 1141i. (§ 69) Effect of extension of protection
§ 1141j. (§ 70) Dependence of extension of protection to the United States on the
underlying international registration
§ 1141k. (§ 71) Duration, affidavits and fees
§ 1141l. (§ 72) Assignment of an extension of protection
§ 1141m. (§ 73) Incontestability
§ 1141n. (§ 74) Rights of extension of protection

Subchapter I—The Principal Register
§ 1051 (§ 1)—Application for registration; verification
(a) Application for use of trademark
(1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such
form as may be prescribed by the Director, and such number of specimens or facsimiles
of the mark as used as may be required by the Director.
(2) The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first
2

Trademark Act of 1946

§ 1051

use of the mark in commerce, the goods in connection with which the mark is used,
and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify that—
(A) the person making the verification believes that he or she, or the juristic person
in whose behalf he or she makes the verification, to be the owner of the mark sought
to be registered;
(B) to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate;
(C) the mark is in use in commerce; and
(D) to the best of the verifier’s knowledge and belief, no other person has the right
to use such mark in commerce either in the identical form thereof or in such near
resemblance thereto as to be likely, when used on or in connection with the goods of
such other person, to cause confusion, or to cause mistake, or to deceive, except that,
in the case of every application claiming concurrent use, the applicant shall—
(i) state exceptions to the claim of exclusive use; and
(ii) shall specify, to the extent of the verifier’s knowledge—
(I) any concurrent use by others;
(II) the goods on or in connection with which and the areas in which each
concurrent use exists;
(III) the periods of each use; and
(IV) the goods and area for which the applicant desires registration.
(4) The applicant shall comply with such rules or regulations as may be prescribed
by the Director. The Director shall promulgate rules prescribing the requirements for
the application and for obtaining a filing date herein.
(b) Application for bona fide intention to use trademark
(1) A person who has a bona fide intention, under circumstances showing the good
faith of such person, to use a trademark in commerce may request registration of its
trademark on the principal register hereby established by paying the prescribed fee and
filing in the Patent and Trademark Office an application and a verified statement, in
such form as may be prescribed by the Director.
(2) The application shall include specification of the applicant’s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to
use the mark, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify—
(A) that the person making the verification believes that he or she, or the juristic
person in whose behalf he or she makes the verification, to be entitled to use the
mark in commerce;
(B) the applicant’s bona fide intention to use the mark in commerce;
(C) that, to the best of the verifier’s knowledge and belief, the facts recited in the
application are accurate; and
(D) that, to the best of the verifier’s knowledge and belief, no other person has the
right to use such mark in commerce either in the identical form thereof or in such near
resemblance thereto as to be likely, when used on or in connection with the goods of
such other person, to cause confusion, or to cause mistake, or to deceive.
Except for applications filed pursuant to section 1126 of this title, no mark shall be
registered until the applicant has met the requirements of subsections (c) and (d) of this
section.
(4) The applicant shall comply with such rules or regulations as may be prescribed
by the Director. The Director shall promulgate rules prescribing the requirements for
3

§ 1051

Trademark Act of 1946

the application and for obtaining a filing date herein.
(c) Amendment of application under subsection (b) to conform to requirements
of subsection (a)
At any time during examination of an application filed under subsection (b) of this
section, an applicant who has made use of the mark in commerce may claim the benefits
of such use for purposes of this chapter, by amending his or her application to bring it
into conformity with the requirements of subsection (a) of this section.
(d) Verified statement that trademark is used in commerce
(1) Within six months after the date on which the notice of allowance with respect to
a mark is issued under section 1063(b)(2) of this title to an applicant under subsection
(b) of this section, the applicant shall file in the Patent and Trademark Office, together
with such number of specimens or facsimiles of the mark as used in commerce as may
be required by the Director and payment of the prescribed fee, a verified statement that
the mark is in use in commerce and specifying the date of the applicant’s first use of the
mark in commerce and those goods or services specified in the notice of allowance on
or in connection with which the mark is used in commerce. Subject to examination and
acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of
registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify
the goods or services for which the mark is registered.
(2) The Director shall extend, for one additional 6-month period, the time for filing the
statement of use under paragraph (1), upon written request of the applicant before the
expiration of the 6-month period provided in paragraph (1). In addition to an extension
under the preceding sentence, the Director may, upon a showing of good cause by the
applicant, further extend the time for filing the statement of use under paragraph (1) for
periods aggregating not more than 24 months, pursuant to written request of the applicant
made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement
that the applicant has a continued bona fide intention to use the mark in commerce and
specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in
commerce. Any request for an extension under this paragraph shall be accompanied by
payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
(3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the
refusal. An applicant may amend the statement of use.
(4) The failure to timely file a verified statement of use under paragraph (1) or an
extension request under paragraph (2) shall result in abandonment of the application,
unless it can be shown to the satisfaction of the Director that the delay in responding was
unintentional, in which case the time for filing may be extended, but for a period not to
exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
(e) Designation of resident for service of process and notices
If the applicant is not domiciled in the United States the applicant may designate, by a
document filed in the United States Patent and Trademark Office, the name and address
of a person resident in the United States on whom may be served notices or process in
4

Trademark Act of 1946

§ 1052

proceedings affecting the mark. Such notices or process may be served upon the person
so designated by leaving with that person or mailing to that person a copy thereof at the
address specified in the last designation so filed. If the person so designated cannot be
found at the address given in the last designation, or if the registrant does not designate
by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process
in proceedings affecting the mark, such notices or process may be served on the Director.
§ 1052 (§ 2)—Trademarks registrable on principal register; concurrent registration
No trademark by which the goods of the applicant may be distinguished from the goods
of others shall be refused registration on the principal register on account of its nature
unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which
may disparage or falsely suggest a connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical
indication which, when used on or in connection with wines or spirits, identifies a place
other than the origin of the goods and is first used on or in connection with wines or spirits
by the applicant on or after one year after the date on which the WTO Agreement (as
defined in section 3501(9) of title 19) enters into force with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of the United States,
or of any State or municipality, or of any foreign nation, or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying a particular living
individual except by his written consent, or the name, signature, or portrait of a deceased
President of the United States during the life of his widow, if any, except by the written
consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States by
another and not abandoned, as to be likely, when used on or in connection with the goods
of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if
the Director determines that confusion, mistake, or deception is not likely to result from
the continued use by more than one person of the same or similar marks under conditions
and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such
persons when they have become entitled to use such marks as a result of their concurrent
lawful use in commerce prior to
(1) the earliest of the filing dates of the applications pending or of any registration
issued under this chapter;
(2) July 5, 1947, in the case of registrations previously issued under the Act of March
3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or
(3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905,
and registered after July 5, 1947. Use prior to the filing date of any pending application
or a registration shall not be required when the owner of such application or registration
consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks
in commerce. In issuing concurrent registrations, the Director shall prescribe conditions


[JJ/JB note: the crossed-out text indicates provisions that are no longer valid after the decisions
by the United States Supreme Court in Matal v. Tam (2017) and Iancu v. Brunetti (2019).]
5

§ 1053

Trademark Act of 1946

and limitations as to the mode or place of use of the mark or the goods on or in connection
with which such mark is registered to the respective persons.
(e) Consists of a mark which
(1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,
(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title,
(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,
(4) is primarily merely a surname, or
(5) comprises any matter that, as a whole, is functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this
section, nothing in this chapter shall prevent the registration of a mark used by the applicant
which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and
continuous use thereof as a mark by the applicant in commerce for the five years before the
date on which the claim of distinctiveness is made. Nothing in this section shall prevent the
registration of a mark which, when used on or in connection with the goods of the applicant,
is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment
under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would
be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c)
of this title, may be canceled pursuant to a proceeding brought under either section 1064
of this title or section 1092 of this title.
§ 1053 (§ 3)—Service marks registrable
Subject to the provisions relating to the registration of trademarks, so far as they are
applicable, service marks shall be registrable, in the same manner and with the same effect
as are trademarks, and when registered they shall be entitled to the protection provided in
this chapter in the case of trademarks. Applications and procedure under this section shall
conform as nearly as practicable to those prescribed for the registration of trademarks.
§ 1054 (§ 4)—Collective marks and certification registrable
Subject to the provisions relating to the registration of trademarks, so far as they are
applicable, collective and certification marks, including indications of regional origin,
shall be registrable under this chapter, in the same manner and with the same effect as
are trademarks, by persons, and nations, States, municipalities, and the like, exercising
legitimate control over the use of the marks sought to be registered, even though not
possessing an industrial or commercial establishment, and when registered they shall be
entitled to the protection provided in this chapter in the case of trademarks, except in the
case of certification marks when used so as to represent falsely that the owner or a user
thereof makes or sells the goods or performs the services on or in connection with which
such mark is used. Applications and procedure under this section shall conform as nearly
as practicable to those prescribed for the registration of trademarks.
6

Trademark Act of 1946

§ 1057

§ 1055 (§ 5)—Use by related companies affecting validity and registration
Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its
registration, provided such mark is not used in such manner as to deceive the public. If
first use of a mark by a person is controlled by the registrant or applicant for registration
of the mark with respect to the nature and quality of the goods or services, such first use
shall inure to the benefit of the registrant or applicant, as the case may be.
§ 1056 (§ 6)—Disclaimer of unregistrable matter
(a) Compulsory and voluntary disclaimers
The Director may require the applicant to disclaim an unregistrable component of a
mark otherwise registrable. An applicant may voluntarily disclaim a component of a
mark sought to be registered.
(b) Prejudice of rights
No disclaimer, including those made under subsection (e) of section 1057 of this title,
shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter
arising in the disclaimed matter, or his right of registration on another application if the
disclaimed matter be or shall have become distinctive of his goods or services.
§ 1057 (§ 7)—Certificates of registration
(a) Issuance and form
Certificates of registration of marks registered upon the principal register shall be issued
in the name of the United States of America, under the seal of the United States Patent and
Trademark Office, and shall be signed by the Director or have his signature placed thereon,
and a record thereof shall be kept in the United States Patent and Trademark Office. The
registration shall reproduce the mark, and state that the mark is registered on the principal
register under this chapter, the date of the first use of the mark, the date of the first use of
the mark in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the application for
registration was received in the United States Patent and Trademark Office, and any conditions and limitations that may be imposed in the registration.
(b) Certificate as prima facie evidence
A certificate of registration of a mark upon the principal register provided by this chapter
shall be prima facie evidence of the validity of the registered mark and of the registration of
the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use
the registered mark in commerce on or in connection with the goods or services specified
in the certificate, subject to any conditions or limitations stated in the certificate.
(c) Application to register mark considered constructive use
Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of
the mark, conferring a right of priority, nationwide in effect, on or in connection with the
goods or services specified in the registration against any other person except for a person
whose mark has not been abandoned and who, prior to such filing—
(1) has used the mark;
(2) has filed an application to register the mark which is pending or has resulted in
registration of the mark; or
(3) has filed a foreign application to register the mark on the basis of which he or she
7

§ 1058

Trademark Act of 1946

has acquired a right of priority, and timely files an application under section 1126(d) of
this title to register the mark which is pending or has resulted in registration of the mark.
(d) Issuance to assignee
A certificate of registration of a mark may be issued to the assignee of the applicant,
but the assignment must first be recorded in the United States Patent and Trademark
Office. In case of change of ownership the Director shall, at the request of the owner and
upon a proper showing and the payment of the prescribed fee, issue to such assignee a
new certificate of registration of the said mark in the name of such assignee, and for the
unexpired part of the original period.
(e) Surrender, cancellation, or amendment by owner
Upon application of the owner the Director may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the records of the United States Patent and Trademark Office. Upon application of the owner
and payment of the prescribed fee, the Director for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be
made in the records of the United States Patent and Trademark Office and upon the certificate of registration.
(f) Copies of United States Patent and Trademark Office records as evidence
Copies of any records, books, papers, or drawings belonging to the United States Patent
and Trademark Office relating to marks, and copies of registrations, when authenticated
by the seal of the United States Patent and Trademark Office and certified by the Director,
or in his name by an employee of the Office duly designated by the Director, shall be
evidence in all cases wherein the originals would be evidence; and any person making
application therefor and paying the prescribed fee shall have such copies.
(g) Correction of United States Patent and Trademark Office mistake
Whenever a material mistake in a registration, incurred through the fault of the United
States Patent and Trademark Office, is clearly disclosed by the records of the Office a
certificate stating the fact and nature of such mistake shall be issued without charge and
recorded and a printed copy thereof shall be attached to each printed copy of the registration and such corrected registration shall thereafter have the same effect as if the same had
been originally issued in such corrected form, or in the discretion of the Director a new
certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the rules of the United States Patent and Trademark Office
and the registrations to which they are attached shall have the same force and effect as if
such certificates and their issue had been specifically authorized by statute.
(h) Correction of applicant’s mistake
Whenever a mistake has been made in a registration and a showing has been made that
such mistake occurred in good faith through the fault of the applicant, the Director is
authorized to issue a certificate of correction or, in his discretion, a new certificate upon
the payment of the prescribed fee: Provided, That the correction does not involve such
changes in the registration as to require republication of the mark.
§ 1058 (§ 8)—Duration, affidavits and fees
(a) Time periods for required affidavits
Each registration shall remain in force for 10 years, except that the registration of any
mark shall be canceled by the Director unless the owner of the registration files in the
United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:
8

Trademark Act of 1946

§ 1058

(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under section 1062(c) of this title.
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date
of registration.
(3) The owner may file the affidavit required under this section within the 6-month
grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional
grace period surcharge prescribed by the Director.
(b) Requirements for affidavit
The affidavit referred to in subsection (a) shall—
(1)(A) state that the mark is in use in commerce;
(B) set forth the goods and services recited in the registration on or in connection
with which the mark is in use in commerce;
(C) be accompanied by such number of specimens or facsimiles showing current
use of the mark in commerce as may be required by the Director; and
(D) be accompanied by the fee prescribed by the Director; or
(2)(A) set forth the goods and services recited in the registration on or in connection
with which the mark is not in use in commerce;
(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
(C) be accompanied by the fee prescribed by the Director.
(c) Deficient affidavit
If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the owner of the registration, the deficiency may be corrected after the statutory time period, within the time prescribed after
notification of the deficiency. Such submission shall be accompanied by the additional
deficiency surcharge prescribed by the Director.
(d) Notice of requirement
Special notice of the requirement for such affidavit shall be attached to each certificate
of registration and notice of publication under section 1062(c) of this title.
(e) Notification of acceptance or refusal
The Director shall notify any owner who files any affidavit required by this section of
the Director’s acceptance or refusal thereof and, in the case of a refusal, the reasons
therefor.
(f) Designation of resident for service of process and notices
If the owner is not domiciled in the United States, the owner may designate, by a document filed in the United States Patent and Trademark Office, the name and address of
a person resident in the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be served upon the person
so designated by leaving with that person or mailing to that person a copy thereof at the
address specified in the last designation so filed. If the person so designated cannot be
found at the last designated address, or if the owner does not designate by a document
filed in the United States Patent and Trademark Office the name and address of a person
resident in the United States on whom may be served notices or process in proceedings
affecting the mark, such notices or process may be served on the Director.

9

§ 1059

Trademark Act of 1946

§ 1059 (§ 9)—Renewal of registration
(a) Period of renewal; time for renewal
Subject to the provisions of section 1058 of this title, each registration may be renewed
for periods of 10 years at the end of each successive 10-year period following the date
of registration upon payment of the prescribed fee and the filing of a written application,
in such form as may be prescribed by the Director. Such application may be made at any
time within 1 year before the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a grace period of 6 months after
the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor. If any application filed under this section is deficient, the deficiency
may be corrected within the time prescribed after notification of the deficiency, upon
payment of a surcharge prescribed therefor.
(b) Notification of refusal of renewal
If the Director refuses to renew the registration, the Director shall notify the registrant
of the Commissioner’s refusal and the reasons therefor.
(c) Designation of resident for service of process and notices
If the registrant is not domiciled in the United States the registrant may designate, by a
document filed in the United States Patent and Trademark Office, the name and address
of a person resident in the United States on whom may be served notices or process in
proceedings affecting the mark. Such notices or process may be served upon the person
so designated by leaving with that person or mailing to that person a copy thereof at the
address specified in the last designation so filed. If the person so designated cannot be
found at the address given in the last designation, or if the registrant does not designate
by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process
in proceedings affecting the mark, such notices or process may be served on the Director.
§ 1060 (§ 10)—Assignment
(a)(1) A registered mark or a mark for which an application to register has been filed
shall be assignable with the good will of the business in which the mark is used, or with
that part of the good will of the business connected with the use of and symbolized by the
mark. Notwithstanding the preceding sentence, no application to register a mark under
section 1051(b) of this title shall be assignable prior to the filing of an amendment under
section 1051(c) of this title to bring the application into conformity with section 1051(a)
of this title or the filing of the verified statement of use under section 1051(d) of this title,
except for an assignment to a successor to the business of the applicant, or portion thereof,
to which the mark pertains, if that business is ongoing and existing.
(2) In any assignment authorized by this section, it shall not be necessary to include
the good will of the business connected with the use of and symbolized by any other
mark used in the business or by the name or style under which the business is conducted.
(3) Assignments shall be by instruments in writing duly executed. Acknowledgment
shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent
and Trademark Office, the record shall be prima facie evidence of execution.
(4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment
is recorded in the United States Patent and Trademark Office within 3 months after the
date of the assignment or prior to the subsequent purchase.
10

Trademark Act of 1946

§ 1062

(5) The United States Patent and Trademark Office shall maintain a record of information on assignments, in such form as may be prescribed by the Director.
(b) An assignee not domiciled in the United States may designate by a document filed
in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated
by leaving with that person or mailing to that person a copy thereof at the address specified
in the last designation so filed. If the person so designated cannot be found at the address
given in the last designation, or if the assignee does not designate by a document filed in
the United States Patent and Trademark Office the name and address of a person resident
in the United States on whom may be served notices or process in proceedings affecting
the mark, such notices or process may be served upon the Director.
§ 1061 (§ 11)—Execution of acknowledgments and verifications
Acknowledgments and verifications required under this chapter may be made before
any person within the United States authorized by law to administer oaths, or, when made
in a foreign country, before any diplomatic or consular officer of the United States or
before any official authorized to administer oaths in the foreign country concerned whose
authority is proved by a certificate of a diplomatic or consular officer of the United States,
or apostille of an official designated by a foreign country which, by treaty or convention,
accords like effect to apostilles of designated officials in the United States, and shall be
valid if they comply with the laws of the state or country where made.
§ 1062 (§ 12)—Publication
(a) Examination and publication
Upon the filing of an application for registration and payment of the prescribed fee,
the Director shall refer the application to the examiner in charge of the registration of
marks, who shall cause an examination to be made and, if on such examination it shall
appear that the applicant is entitled to registration, or would be entitled to registration
upon the acceptance of the statement of use required by section 1051(d) of this title, the
Director shall cause the mark to be published in the Official Gazette of the Patent and
Trademark Office: Provided, That in the case of an applicant claiming concurrent use,
or in the case of an application to be placed in an interference as provided for in section
1066 of this title the mark, if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings.
(b) Refusal of registration; amendment of application; abandonment
If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reasons therefor. The applicant shall have a period of six
months in which to reply or amend his application, which shall then be reexamined. This
procedure may be repeated until
(1) the examiner finally refuses registration of the mark or
(2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown
to the satisfaction of the Director that the delay in responding was unintentional,
whereupon such time may be extended.
(c) Republication of marks registered under prior acts
A registrant of a mark registered under the provisions of the Act of March 3, 1881, or
the Act of February 20, 1905, may, at any time prior to the expiration of the registration
11

§ 1063

Trademark Act of 1946

thereof, upon the payment of the prescribed fee file with the Director an affidavit setting
forth those goods stated in the registration on which said mark is in use in commerce and
that the registrant claims the benefits of this chapter for said mark. The Director shall
publish notice thereof with a reproduction of said mark in the Official Gazette, and notify
the registrant of such publication and of the requirement for the affidavit of use or nonuse
as provided for in subsection (b) of section 1058 of this title. Marks published under this
subsection shall not be subject to the provisions of section 1063 of this title.
§ 1063 (§ 13)—Opposition to registration
(a) Any person who believes that he would be damaged by the registration of a mark
upon the principal register, including the registration of any mark which would be likely
to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title,
may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark
Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written
request prior to the expiration of the thirty-day period, the time for filing opposition shall
be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time
for filing opposition. An opposition may be amended under such conditions as may be
prescribed by the Director.
(b) Unless registration is successfully opposed—
(1) a mark entitled to registration on the principal register based on an application
filed under section 1051(a) of this title or pursuant to section 1126 of this title shall be
registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the
Patent and Trademark Office; or
(2) a notice of allowance shall be issued to the applicant if the applicant applied for
registration under section 1051(b) of this title.
§ 1064 (§ 14)—Cancellation of registration
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon
payment of the prescribed fee, be filed as follows by any person who believes that he is
or will be damaged, including as a result of a likelihood of dilution by blurring or dilution
by tarnishment under section 1125(c) of this title, by the registration of a mark on the
principal register established by this chapter, or under the Act of March 3, 1881, or the
Act of February 20, 1905:
(1) Within five years from the date of the registration of the mark under this chapter.
(2) Within five years from the date of publication under section 1062(c) of this title
of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section
1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration
under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a
registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in
connection with which the mark is used. If the registered mark becomes the generic name
12

Trademark Act of 1946

§ 1065

for less than all of the goods or services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed. A registered mark shall not be
deemed to be the generic name of goods or services solely because such mark is also used
as a name of or to identify a unique product or service. The primary significance of the
registered mark to the relevant public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic name of goods or services
on or in connection with which it has been used.
(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act
of February 20, 1905, and has not been published under the provisions of subsection
(c) of section 1062 of this title.
(5) At any time in the case of a certification mark on the ground that the registrant
(A) does not control, or is not able legitimately to exercise control over, the use of
such mark, or
(B) engages in the production or marketing of any goods or services to which the
certification mark is applied, or
(C) permits the use of the certification mark for purposes other than to certify, or
(D) discriminately refuses to certify or to continue to certify the goods or services
of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds
specified in paragraphs (3) and (5) of this section any mark registered on the principal
register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of
the goods or services meeting the certification standards of the registrant. Such uses
of the certification mark shall not be grounds for cancellation under paragraph (5), so
long as the registrant does not itself produce, manufacture, or sell any of the certified
goods or services to which its identical certification mark is applied.
§ 1065 (§ 15)—Incontestability of right to use mark under certain conditions
Except on a ground for which application to cancel may be filed at any time under
paragraphs (3) and (5) of section 1064 of this title, and except to the extent, if any, to
which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing
from a date prior to the date of registration under this chapter of such registered mark,
the right of the owner to use such registered mark in commerce for the goods or services
on or in connection with which such registered mark has been in continuous use for five
consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable: Provided, That—
(1) there has been no final decision adverse to the owner’s claim of ownership of
such mark for such goods or services, or to the owner’s right to register the same or to
keep the same on the register; and
(2) there is no proceeding involving said rights pending in the United States Patent
and Trademark Office or in a court and not finally disposed of; and
(3) an affidavit is filed with the Director within one year after the expiration of any
such five-year period setting forth those goods or services stated in the registration on
or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and other matters specified in paragraphs
(1) and (2) of this section; and
(4) no incontestable right shall be acquired in a mark which is the generic name for
13

§ 1066

Trademark Act of 1946

the goods or services or a portion thereof, for which it is registered.
Subject to the conditions above specified in this section, the incontestable right with
reference to a mark registered under this chapter shall apply to a mark registered under
the Act of March 3, 1881, or the Act of February 20, 1905, upon the filing of the required
affidavit with the Director within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection
(c) of section 1062 of this title.
The Director shall notify any registrant who files the above-prescribed affidavit of the
filing thereof.
§ 1066 (§ 16)—Interference; declaration by Director
Upon petition showing extraordinary circumstances, the Director may declare that an
interference exists when application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another
has previously made application, as to be likely when used on or in connection with the
goods or services of the applicant to cause confusion or mistake or to deceive. No interference shall be declared between an application and the registration of a mark the right
to the use of which has become incontestable.
§ 1067 (§ 17)—Interference, opposition, and proceedings for concurrent use
registration or for cancellation; notice; Trademark Trial and Appeal Board
(a) In every case of interference, opposition to registration, application to register as a
lawful concurrent user, or application to cancel the registration of a mark, the Director
shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to
determine and decide the respective rights of registration.
(b) The Trademark Trial and Appeal Board shall include the Director, Deputy Director
of the United States Patent and Trademark Office, the Commissioner for Patents, the
Commissioner for Trademarks, and administrative trademark judges who are appointed
by the Secretary of Commerce, in consultation with the Director.
(c) Authority of the Secretary.—The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative trademark judge who, before August 12,
2008, held office pursuant to an appointment by the Director to take effect on the date
on which the Director initially appointed the administrative trademark judge.
(d) Defense to challenge of appointment.—It shall be a defense to a challenge to the
appointment of an administrative trademark judge on the basis of the judge’s having been
originally appointed by the Director that the administrative trademark judge so appointed
was acting as a de facto officer.
§ 1068 (§ 18)—Action of Director in interference, opposition, and proceedings for
concurrent use registration or for cancellation
In such proceedings the Director may refuse to register the opposed mark, may cancel
the registration, in whole or in part, may modify the application or registration by limiting
the goods or services specified therein, may otherwise restrict or rectify with respect to
the register the registration of a registered mark, may refuse to register any or all of several
interfering marks, or may register the mark or marks for the person or persons entitled
thereto, as the rights of the parties under this chapter may be established in the proceedings: Provided, That in the case of the registration of any mark based on concurrent use,
14

Trademark Act of 1946

§ 1071

the Director shall determine and fix the conditions and limitations provided for in subsection (d) of section 1052 of this title. However, no final judgment shall be entered in favor
of an applicant under section 1051(b) of this title before the mark is registered, if such
applicant cannot prevail without establishing constructive use pursuant to section 1057(c)
of this title.
§ 1069 (§ 19)—Application for equitable principles in inter partes proceedings
In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied.
§ 1070 (§ 20)—Appeals to Trademark Trial and Appeal Board from decisions of
examiners
An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the
prescribed fee.
§ 1071 (§ 21)—Appeal to courts
(a) Persons entitled to appeal; United States Court of Appeals for the Federal Circuit; waiver of civil action; election of civil action by adverse party; procedure
(1) An applicant for registration of a mark, party to an interference proceeding, party
to an opposition proceeding, party to an application to register as a lawful concurrent
user, party to a cancellation proceeding, a registrant who has filed an affidavit as provided in section 1058 of this title or section 1141k of this title, or an applicant for
renewal, who is dissatisfied with the decision of the Director or Trademark Trial and
Appeal Board, may appeal to the United States Court of Appeals for the Federal Circuit
thereby waiving his right to proceed under subsection (b) of this section: Provided,
That such appeal shall be dismissed if any adverse party to the proceeding, other than
the Director, shall, within twenty days after the appellant has filed notice of appeal
according to paragraph (2) of this subsection, files notice with the Director that he
elects to have all further proceedings conducted as provided in subsection (b) of this
section. Thereupon the appellant shall have thirty days thereafter within which to file
a civil action under subsection (b) of this section, in default of which the decision appealed from shall govern the further proceedings in the case.
(2) When an appeal is taken to the United States Court of Appeals for the Federal
Circuit, the appellant shall file in the United States Patent and Trademark Office a
written notice of appeal directed to the Director, within such time after the date of the
decision from which the appeal is taken as the Director prescribes, but in no case less
than 60 days after that date.
(3) The Director shall transmit to the United States Court of Appeals for the Federal
Circuit a certified list of the documents comprising the record in the United States
Patent and Trademark Office. The court may request that the Director forward the
original or certified copies of such documents during pendency of the appeal. In an ex
parte case, the Director shall submit to that court a brief explaining the grounds for the
decision of the United States Patent and Trademark Office, addressing all the issues
involved in the appeal. The court shall, before hearing an appeal, give notice of the
time and place of the hearing to the Director and the parties in the appeal.
(4) The United States Court of Appeals for the Federal Circuit shall review the decision from which the appeal is taken on the record before the United States Patent and
15

§ 1072

Trademark Act of 1946

Trademark Office. Upon its determination the court shall issue its mandate and opinion
to the Director, which shall be entered of record in the United States Patent and Trademark Office and shall govern the further proceedings in the case. However, no final
judgment shall be entered in favor of an applicant under section 1051(b) of this title
before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title.
(b) Civil action; persons entitled to; jurisdiction of court; status of Director;
procedure
(1) Whenever a person authorized by subsection (a) of this section to appeal to the
United States Court of Appeals for the Federal Circuit is dissatisfied with the decision
of the Director or Trademark Trial and Appeal Board, said person may, unless appeal
has been taken to said United States Court of Appeals for the Federal Circuit, have
remedy by a civil action if commenced within such time after such decision, not less
than sixty days, as the Director appoints or as provided in subsection (a) of this section.
The court may adjudge that an applicant is entitled to a registration upon the application
involved, that a registration involved should be canceled, or such other matter as the
issues in the proceeding require, as the facts in the case may appear. Such adjudication
shall authorize the Director to take any necessary action, upon compliance with the requirements of law. However, no final judgment shall be entered in favor of an applicant
under section 1051(b) of this title before the mark is registered, if such applicant cannot
prevail without establishing constructive use pursuant to section 1057(c) of this title.
(2) The Director shall not be made a party to an inter partes proceeding under this
subsection, but he shall be notified of the filing of the complaint by the clerk of the
court in which it is filed and shall have the right to intervene in the action.
(3) In any case where there is no adverse party, a copy of the complaint shall be
served on the Director, and, unless the court finds the expenses to be unreasonable, all
the expenses of the proceeding shall be paid by the party bringing the case, whether
the final decision is in favor of such party or not. In suits brought hereunder, the record
in the United States Patent and Trademark Office shall be admitted on motion of any
party, upon such terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of any
party to take further testimony. The testimony and exhibits of the record in the United
States Patent and Trademark Office, when admitted, shall have the same effect as if
originally taken and produced in the suit.
(4) Where there is an adverse party, such suit may be instituted against the party in
interest as shown by the records of the United States Patent and Trademark Office at
the time of the decision complained of, but any party in interest may become a party
to the action. If there are adverse parties residing in a plurality of districts not embraced
within the same State, or an adverse party residing in a foreign country, the United
States District Court for the Eastern District of Virginia shall have jurisdiction and may
issue summons against the adverse parties directed to the marshal of any district in
which any adverse party resides. Summons against adverse parties residing in foreign
countries may be served by publication or otherwise as the court directs.
§ 1072 (§ 22)—Registration as constructive notice of claim of ownership
Registration of a mark on the principal register provided by this chapter or under the
Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of
the registrant’s claim of ownership thereof.
16

Trademark Act of 1946

§ 1092

Subchapter II—The Supplemental Register
§ 1091 (§ 23)—Supplemental register
(a) Marks registerable
In addition to the principal register, the Director shall keep a continuation of the register
provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled “An Act to
give effect to certain provisions of the convention for the protection of trademarks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic,
August 20, 1910, and for other purposes”, to be called the supplemental register. All marks
capable of distinguishing applicant’s goods or services and not registrable on the principal
register provided in this chapter, except those declared to be unregistrable under subsections
(a), (b), (c), (d), and (e)(3) of section 1052 of this title, which are in lawful use in commerce
by the owner thereof, on or in connection with any goods or services may be registered on
the supplemental register upon the payment of the prescribed fee and compliance with the
provisions of subsections (a) and (e) of section 1051 of this title so far as they are applicable.
Nothing in this section shall prevent the registration on the supplemental register of a mark,
capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under section 1052(e)(3)
of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in
connection with any goods or services, since before December 8, 1993.
(b) Application and proceedings for registration
Upon the filing of an application for registration on the supplemental register and payment of the prescribed fee the Director shall refer the application to the examiner in
charge of the registration of marks, who shall cause an examination to be made and if on
such examination it shall appear that the applicant is entitled to registration, the registration shall be granted. If the applicant is found not entitled to registration the provisions
of subsection (b) of section 1062 of this title shall apply.
(c) Nature of mark
For the purposes of registration on the supplemental register, a mark may consist of
any trademark, symbol, label, package, configuration of goods, name, word, slogan,
phrase, surname, geographical name, numeral, device, any matter that as a whole is not
functional, or any combination of any of the foregoing, but such mark must be capable
of distinguishing the applicant’s goods or services.
§ 1092 (§ 24)—Publication; not subject to opposition; cancellation
Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that such person is or will be damaged by
the registration of a mark on the supplemental register—
(1) for which the effective filing date is after the date on which such person’s mark
became famous and which would be likely to cause dilution by blurring or dilution by
tarnishment under section 1125(c) of this title; or
(2) on grounds other than dilution by blurring or dilution by tarnishment,
such person may at any time, upon payment of the prescribed fee and the filing of a
petition stating the ground therefor, apply to the Director to cancel such registration. The
Director shall refer such application to the Trademark Trial and Appeal Board which
shall give notice thereof to the registrant. If it is found after a hearing before the Board
that the registrant is not entitled to registration, or that the mark has been abandoned, the
17

§ 1093

Trademark Act of 1946

registration shall be canceled by the Director. However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to
section 1057(c) of this title.
§ 1093 (§ 25)—Registration certificates for marks on principal and supplemental
registers to be different
The certificates of registration for marks registered on the supplemental register shall
be conspicuously different from certificates issued for marks registered on the principal
register.
§ 1094 (§ 26)—Provisions of chapter applicable to registrations on supplemental
register
The provisions of this chapter shall govern so far as applicable applications for registration and registrations on the supplemental register as well as those on the principal
register, but applications for and registrations on the supplemental register shall not be
subject to or receive the advantages of sections 1051(b), 1052(e), 1052(f), 1057(b),
1057(c), 1062(a), 1063 to 1068, inclusive, 1072, 1115 and 1124 of this title.
§ 1095 (§ 27)—Registration on principal register not precluded
Registration of a mark on the supplemental register, or under the Act of March 19,
1920, shall not preclude registration by the registrant on the principal register established
by this chapter. Registration of a mark on the supplemental register shall not constitute
an admission that the mark has not acquired distinctiveness.
§ 1096 (§ 28)—Registration on supplemental register not used to stop importations
Registration on the supplemental register or under the Act of March 19, 1920, shall not
be filed in the Department of the Treasury or be used to stop importations.
Subchapter III—General Provisions
§ 1111 (§ 29)—Notice of registration; display with mark; recovery of profits and
damages in infringement suit
Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered
by displaying with the mark the words “Registered in U.S. Patent and Trademark Office”
or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus ; and in
any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of
this chapter unless the defendant had actual notice of the registration.
*Note: The amendment of the wording of this term by Public Law 93-596 became
effective on January 2, 1975. However, the amendment provides that any registrant may
continue to give notice of his registration in accordance with § 29 of the Trademark Act
of 1946, as amended Oct.9, 1962, as an alternative to notice in accordance with § 29 of
the Trademark Act as amended by Public Law 93-596, regardless of whether his mark
was registered before or after January 2, 1975.
18

Trademark Act of 1946

§ 1114

§ 1112 (§ 30)—Classification of goods and services; registration in plurality of
classes
The Director may establish a classification of goods and services, for convenience of
Patent and Trademark Office administration, but not to limit or extend the applicant’s or
registrant’s rights. The applicant may apply to register a mark for any or all of the goods
or services on or in connection with which he or she is using or has a bona fide intention
to use the mark in commerce: Provided, That if the Director by regulation permits the
filing of an application for the registration of a mark for goods or services which fall
within a plurality of classes, a fee equaling the sum of the fees for filing an application
in each class shall be paid, and the Director may issue a single certificate of registration
for such mark.
§ 1113 (§ 31)—Fees
(a) Applications; services; materials
The Director shall establish fees for the filing and processing of an application for the
registration of a trademark or other mark and for all other services performed by and
materials furnished by the Patent and Trademark Office related to trademarks and other
marks. Fees established under this subsection may be adjusted by the Director once each
year to reflect, in the aggregate, any fluctuations during the preceding 12 months in the
Consumer Price Index, as determined by the Secretary of Labor. Changes of less than 1
percent may be ignored. No fee established under this section shall take effect until at
least 30 days after notice of the fee has been published in the Federal Register and in the
Official Gazette of the Patent and Trademark Office.
(b) Waiver; Indian products
The Director may waive the payment of any fee for any service or material related to
trademarks or other marks in connection with an occasional request made by a department or agency of the Government, or any officer thereof. The Indian Arts and Crafts
Board will not be charged any fee to register Government trademarks of genuineness and
quality for Indian products or for products of particular Indian tribes and groups.
§ 1114 (§ 32)—Remedies; infringement; innocent infringement by printers and
publishers
(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply
such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in commerce
upon or in connection with the sale, offering for sale, distribution, or advertising of
goods or services on or in connection with which such use is likely to cause confusion,
or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under
subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be
used to cause confusion, or to cause mistake, or to deceive. As used in this paragraph, the
term “any person” includes the United States, all agencies and instrumentalities thereof,
19

§ 1114

Trademark Act of 1946

and all individuals, firms, corporations, or other persons acting for the United States and
with the authorization and consent of the United States, and any State, any instrumentality
of a State, and any officer or employee of a State or instrumentality of a State acting in his
or her official capacity. The United States, all agencies and instrumentalities thereof, and
all individuals, firms, corporations, other persons acting for the United States and with the
authorization and consent of the United States, and any State, and any such instrumentality,
officer, or employee, shall be subject to the provisions of this chapter in the same manner
and to the same extent as any nongovernmental entity.
(2) Notwithstanding any other provision of this chapter, the remedies given to the
owner of a right infringed under this chapter or to a person bringing an action under
section 1125(a) or (d) of this title shall be limited as follows:
(A) Where an infringer or violator is engaged solely in the business of printing the
mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the
action under section 1125(a) of this title shall be entitled as against such infringer or
violator only to an injunction against future printing.
(B) Where the infringement or violation complained of is contained in or is part of
paid advertising matter in a newspaper, magazine, or other similar periodical or in an
electronic communication as defined in section 2510(12) of title 18, the remedies of
the owner of the right infringed or person bringing the action under section 1125(a) of
this title as against the publisher or distributor of such newspaper, magazine, or other
similar periodical or electronic communication shall be limited to an injunction against
the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent
infringers and innocent violators.
(C) Injunctive relief shall not be available to the owner of the right infringed or person
bringing the action under section 1125(a) of this title with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing
infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic
communication would delay the delivery of such issue or transmission of such electronic
communication after the regular time for such delivery or transmission, and such delay
would be due to the method by which publication and distribution of such periodical or
transmission of such electronic communication is customarily conducted in accordance
with sound business practice, and not due to any method or device adopted to evade this
section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.
(D)(i)(I) A domain name registrar, a domain name registry, or other domain name
registration authority that takes any action described under clause (ii) affecting a domain name shall not be liable for monetary relief or, except as provided in subclause
(II), for injunctive relief, to any person for such action, regardless of whether the domain name is finally determined to infringe or dilute the mark.
(II) A domain name registrar, domain name registry, or other domain name registration authority described in subclause (I) may be subject to injunctive relief
only if such registrar, registry, or other registration authority has—
(aa) not expeditiously deposited with a court, in which an action has been filed
regarding the disposition of the domain name, documents sufficient for the court
20

Trademark Act of 1946

§ 1114

to establish the court’s control and authority regarding the disposition of the registration and use of the domain name;
(bb) transferred, suspended, or otherwise modified the domain name during
the pendency of the action, except upon order of the court; or
(cc) willfully failed to comply with any such court order.
(ii) An action referred to under clause (i)(I) is any action of refusing to register,
removing from registration, transferring, temporarily disabling, or permanently canceling a domain name—
(I) in compliance with a court order under section 1125(d) of this title; or
(II) in the implementation of a reasonable policy by such registrar, registry, or
authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another’s mark.
(iii) A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith
intent to profit from such registration or maintenance of the domain name.
(iv) If a registrar, registry, or other registration authority takes an action described
under clause (ii) based on a knowing and material misrepresentation by any other
person that a domain name is identical to, confusingly similar to, or dilutive of a
mark, the person making the knowing and material misrepresentation shall be liable
for any damages, including costs and attorney’s fees, incurred by the domain name
registrant as a result of such action. The court may also grant injunctive relief to the
domain name registrant, including the reactivation of the domain name or the transfer
of the domain name to the domain name registrant.
(v) A domain name registrant whose domain name has been suspended, disabled,
or transferred under a policy described under clause (ii)(II) may, upon notice to the
mark owner, file a civil action to establish that the registration or use of the domain
name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.
(E) As used in this paragraph—
(i) the term “violator” means a person who violates section 1125(a) of this title; and
(ii) the term “violating matter” means matter that is the subject of a violation under
section 1125(a) of this title.
(3)(A) Any person who engages in the conduct described in paragraph (11) of section
110 of title 17 and who complies with the requirements set forth in that paragraph is not
liable on account of such conduct for a violation of any right under this chapter. This
subparagraph does not preclude liability, nor shall it be construed to restrict the defenses
or limitations on rights granted under this chapter, of a person for conduct not described
in paragraph (11) of section 110 of title 17, even if that person also engages in conduct
described in paragraph (11) of section 110 of such title.
(B) A manufacturer, licensee, or licensor of technology that enables the making of limited portions of audio or video content of a motion picture imperceptible as described in
subparagraph (A) is not liable on account of such manufacture or license for a violation
of any right under this chapter, if such manufacturer, licensee, or licensor ensures that the
technology provides a clear and conspicuous notice at the beginning of each performance
that the performance of the motion picture is altered from the performance intended by
the director or copyright holder of the motion picture. The limitations on liability in sub21

§ 1115

Trademark Act of 1946

paragraph (A) and this subparagraph shall not apply to a manufacturer, licensee, or licensor of technology that fails to comply with this paragraph.
(C) The requirement under subparagraph (B) to provide notice shall apply only with
respect to technology manufactured after the end of the 180-day period beginning on
April 27, 2005.
(D) Any failure by a manufacturer, licensee, or licensor of technology to qualify for
the exemption under subparagraphs (A) and (B) shall not be construed to create an inference that any such party that engages in conduct described in paragraph (11) of section 110 of title 17 is liable for trademark infringement by reason of such conduct.
§ 1115 (§ 33)—Registration on principal register as evidence of exclusive right to
use mark; defenses
(a) Evidentiary value; defenses
Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905,
or of a mark registered on the principal register provided by this chapter and owned by a
party to an action shall be admissible in evidence and shall be prima facie evidence of the
validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to
any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of
this section, which might have been asserted if such mark had not been registered.
(b) Incontestability; defenses
To the extent that the right to use the registered mark has become incontestable under
section 1065 of this title, the registration shall be conclusive evidence of the validity of
the registered mark and of the registration of the mark, of the registrant’s ownership of
the mark, and of the registrant’s exclusive right to use the registered mark in commerce.
Such conclusive evidence shall relate to the exclusive right to use the mark on or in
connection with the goods or services specified in the affidavit filed under the provisions
of section 1065 of this title, or in the renewal application filed under the provisions of
section 1059 of this title if the goods or services specified in the renewal are fewer in
number, subject to any conditions or limitations in the registration or in such affidavit or
renewal application. Such conclusive evidence of the right to use the registered mark
shall be subject to proof of infringement as defined in section 1114 of this title, and shall
be subject to the following defenses or defects:
(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or
(2) That the mark has been abandoned by the registrant; or
(3) That the registered mark is being used by or with the permission of the registrant
or a person in privity with the registrant, so as to misrepresent the source of the goods
or services on or in connection with which the mark is used; or
(4) That the use of the name, term, or device charged to be an infringement is a use,
otherwise than as a mark, of the party’s individual name in his own business, or of the
individual name of anyone in privity with such party, or of a term or device which is
descriptive of and used fairly and in good faith only to describe the goods or services
of such party, or their geographic origin; or
(5) That the mark whose use by a party is charged as an infringement was adopted
without knowledge of the registrant’s prior use and has been continuously used by such
party or those in privity with him from a date prior to
22

Trademark Act of 1946

§ 1116

(A) the date of constructive use of the mark established pursuant to section 1057(c)
of this title,
(B) the registration of the mark under this chapter if the application for registration
is filed before the effective date of the Trademark Law Revision Act of 1988, or
(C) publication of the registered mark under subsection (c) of section 1062 of this
title: Provided, however, That this defense or defect shall apply only for the area in
which such continuous prior use is proved; or
(6) That the mark whose use is charged as an infringement was registered and used
prior to the registration under this chapter or publication under subsection (c) of section
1062 of this title of the registered mark of the registrant, and not abandoned: Provided,
however, That this defense or defect shall apply only for the area in which the mark was
used prior to such registration or such publication of the registrant’s mark; or
(7) That the mark has been or is being used to violate the antitrust laws of the United
States; or
(8) That the mark is functional; or
(9) That equitable principles, including laches, estoppel, and acquiescence, are
applicable.
§ 1116 (§ 34)—Injunctive relief
(a) Jurisdiction; service
The several courts vested with jurisdiction of civil actions arising under this chapter
shall have power to grant injunctions, according to the principles of equity and upon such
terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation
under subsection (a), (c), or (d) of section 1125 of this title. Any such injunction may
include a provision directing the defendant to file with the court and serve on the plaintiff
within thirty days after the service on the defendant of such injunction, or such extended
period as the court may direct, a report in writing under oath setting forth in detail the
manner and form in which the defendant has complied with the injunction. Any such
injunction granted upon hearing, after notice to the defendant, by any district court of the
United States, may be served on the parties against whom such injunction is granted
anywhere in the United States where they may be found, and shall be operative and may
be enforced by proceedings to punish for contempt, or otherwise, by the court by which
such injunction was granted, or by any other United States district court in whose jurisdiction the defendant may be found.
(b) Transfer of certified copies of court papers
The said courts shall have jurisdiction to enforce said injunction, as provided in this
chapter, as fully as if the injunction had been granted by the district court in which it is
sought to be enforced. The clerk of the court or judge granting the injunction shall, when
required to do so by the court before which application to enforce said injunction is made,
transfer without delay to said court a certified copy of all papers on file in his office upon
which said injunction was granted.
(c) Notice to Director
It shall be the duty of the clerks of such courts within one month after the filing of any
action, suit, or proceeding involving a mark registered under the provisions of this chapter to give notice thereof in writing to the Director setting forth in order so far as known
the names and addresses of the litigants and the designating number or numbers of the
registration or registrations upon which the action, suit, or proceeding has been brought,
and in the event any other registration be subsequently included in the action, suit, or
23

§ 1116

Trademark Act of 1946

proceeding by amendment, answer, or other pleading, the clerk shall give like notice
thereof to the Director, and within one month after the judgment is entered or an appeal
is taken the clerk of the court shall give notice thereof to the Director, and it shall be the
duty of the Director on receipt of such notice forthwith to endorse the same upon the file
wrapper of the said registration or registrations and to incorporate the same as a part of
the contents of said file wrapper.
(d) Civil actions arising out of use of counterfeit marks
(1)(A) In the case of a civil action arising under section 1114(1)(a) of this title or section 220506 of title 36 with respect to a violation that consists of using a counterfeit mark
in connection with the sale, offering for sale, or distribution of goods or services, the
court may, upon ex parte application, grant an order under subsection (a) of this section
pursuant to this subsection providing for the seizure of goods and counterfeit marks involved in such violation and the means of making such marks, and records documenting
the manufacture, sale, or receipt of things involved in such violation.
(B) As used in this subsection the term “counterfeit mark” means—
(i) a counterfeit of a mark that is registered on the principal register in the United
States Patent and Trademark Office for such goods or services sold, offered for
sale, or distributed and that is in use, whether or not the person against whom relief
is sought knew such mark was so registered; or
(ii) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of this chapter are made available
by reason of section 220506 of title 36;
but such term does not include any mark or designation used on or in connection
with goods or services of which the manufacture or producer was, at the time of the
manufacture or production in question authorized to use the mark or designation for
the type of goods or services so manufactured or produced, by the holder of the right
to use such mark or designation.
(2) The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reasonable under the circumstances
to the United States attorney for the judicial district in which such order is sought. Such
attorney may participate in the proceedings arising under such application if such proceedings may affect evidence of an offense against the United States. The court may
deny such application if the court determines that the public interest in a potential prosecution so requires.
(3) The application for an order under this subsection shall—
(A) be based on an affidavit or the verified complaint establishing facts sufficient
to support the findings of fact and conclusions of law required for such order; and
(B) contain the additional information required by paragraph (5) of this subsection
to be set forth in such order.
(4) The court shall not grant such an application unless—
(A) the person obtaining an order under this subsection provides the security determined adequate by the court for the payment of such damages as any person may
be entitled to recover as a result of a wrongful seizure or wrongful attempted seizure
under this subsection; and
(B) the court finds that it clearly appears from specific facts that—
(i) an order other than an ex parte seizure order is not adequate to achieve the
purposes of section 1114 of this title;
(ii) the applicant has not publicized the requested seizure;
(iii) the applicant is likely to succeed in showing that the person against whom
24

Trademark Act of 1946

§ 1116

seizure would be ordered used a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services;
(iv) an immediate and irreparable injury will occur if such seizure is not ordered;
(v) the matter to be seized will be located at the place identified in the application;
(vi) the harm to the applicant of denying the application outweighs the harm to
the legitimate interests of the person against whom seizure would be ordered of
granting the application; and
(vii) the person against whom seizure would be ordered, or persons acting in concert with such person, would destroy, move, hide, or otherwise make such matter
inaccessible to the court, if the applicant were to proceed on notice to such person.
(5) An order under this subsection shall set forth—
(A) the findings of fact and conclusions of law required for the order;
(B) a particular description of the matter to be seized, and a description of each
place at which such matter is to be seized;
(C) the time period, which shall end not later than seven days after the date on
which such order is issued, during which the seizure is to be made;
(D) the amount of security required to be provided under this subsection; and
(E) a date for the hearing required under paragraph (10) of this subsection.
(6) The court shall take appropriate action to protect the person against whom an
order under this subsection is directed from publicity, by or at the behest of the plaintiff, about such order and any seizure under such order.
(7) Any materials seized under this subsection shall be taken into the custody of the
court. For seizures made under this section, the court shall enter an appropriate protective order with respect to discovery and use of any records or information that has been
seized. The protective order shall provide for appropriate procedures to ensure that
confidential, private, proprietary, or privileged information contained in such records
is not improperly disclosed or used.
(8) An order under this subsection, together with the supporting documents, shall be
sealed until the person against whom the order is directed has an opportunity to contest
such order, except that any person against whom such order is issued shall have access
to such order and supporting documents after the seizure has been carried out.
(9) The court shall order that service of a copy of the order under this subsection shall
be made by a Federal law enforcement officer (such as a United States marshal or an
officer or agent of the United States Customs Service, Secret Service, Federal Bureau of
Investigation, or Post Office) or may be made by a State or local law enforcement officer,
who, upon making service, shall carry out the seizure under the order. The court shall
issue orders, when appropriate, to protect the defendant from undue damage from the
disclosure of trade secrets or other confidential information during the course of the seizure, including, when appropriate, orders restricting the access of the applicant (or any
agent or employee of the applicant) to such secrets or information.
(10)(A) The court shall hold a hearing, unless waived by all the parties, on the date set
by the court in the order of seizure. That date shall be not sooner than ten days after the
order is issued and not later than fifteen days after the order is issued, unless the applicant
for the order shows good cause for another date or unless the party against whom such
order is directed consents to another date for such hearing. At such hearing the party
obtaining the order shall have the burden to prove that the facts supporting findings of
fact and conclusions of law necessary to support such order are still in effect. If that party
fails to meet that burden, the seizure order shall be dissolved or modified appropriately.
(B) In connection with a hearing under this paragraph, the court may make such
25

§ 1117

Trademark Act of 1946

orders modifying the time limits for discovery under the Rules of Civil Procedure as
may be necessary to prevent the frustration of the purposes of such hearing.
(11) A person who suffers damage by reason of a wrongful seizure under this subsection has a cause of action against the applicant for the order under which such seizure was
made, and shall be entitled to 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 seizure was sought in bad faith, and, unless the court finds extenuating circumstances, to recover a reasonable attorney’s fee. The court in its discretion may award prejudgment interest on relief recovered under this paragraph, at an annual interest rate
established under section 6621(a)(2) of title 26, commencing on the date of service of the
claimant’s pleading setting forth the claim under this paragraph and ending on the date
such recovery is granted, or for such shorter time as the court deems appropriate.
§ 1117 (§ 35)—Recovery for violation of rights
(a) Profits; damages and costs; attorney fees
When a violation of any right of the registrant of a mark registered in the Patent and
Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action
arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover
(1) defendant’s profits,
(2) any damages sustained by the plaintiff, and
(3) the costs of the action.
The court shall assess such profits and damages or cause the same to be assessed under
its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales
only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any
sum above the amount found as actual damages, not exceeding three times such amount.
If the court shall find that the amount of the recovery based on profits is either inadequate
or excessive the court may in its discretion enter judgment for such sum as the court shall
find to be just, according to the circumstances of the case. Such sum in either of the above
circumstances shall constitute compensation and not a penalty. The court in exceptional
cases may award reasonable attorney fees to the prevailing party.
(b) Treble damages for use of counterfeit mark
In assessing damages under subsection (a) for any violation of section 1114(1)(a) of this
title or section 220506 of title 36, in a case involving use of a counterfeit mark or designation
(as defined in section 1116(d) of this title), the court shall, unless the court finds extenuating
circumstances, enter judgment for three times such profits or damages, whichever amount
is greater, together with a reasonable attorney’s fee, if the violation consists of—
(1) intentionally using a mark or designation, knowing such mark or designation is
a counterfeit mark (as defined in section 1116(d) of this title), in connection with the
sale, offering for sale, or distribution of goods or services; or
(2) providing goods or services necessary to the commission of a violation specified
in paragraph (1), with the intent that the recipient of the goods or services would put
the goods or services to use in committing the violation.
In such a case, the court may award prejudgment interest on such amount at an annual
interest rate established under section 6621(a)(2) of title 26, beginning on the date of the
service of the claimant’s pleadings setting forth the claim for such entry of judgment and
ending on the date such entry is made, or for such shorter time as the court considers
26

Trademark Act of 1946

§ 1119

appropriate.
(c) Statutory damages for use of counterfeit marks
In a case involving the use of a counterfeit mark (as defined in section 1116(d) of this
title) in connection with the sale, offering for sale, or distribution of goods or services,
the plaintiff may elect, at any time before final judgment is rendered by the trial court, to
recover, instead of actual damages and profits under subsection (a) of this section, an
award of statutory damages for any such use in connection with the sale, offering for
sale, or distribution of goods or services in the amount of—
(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of
goods or services sold, offered for sale, or distributed, as the court considers just; or
(2) if the court finds that the use of the counterfeit mark was willful, not more than
$2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or
distributed, as the court considers just.
(d) Statutory damages for violation of section 1125(d)(1)
In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect,
at any time before final judgment is rendered by the trial court, to recover, instead of actual
damages and profits, an award of statutory damages in the amount of not less than $1,000
and not more than $100,000 per domain name, as the court considers just.
(e) Rebuttable presumption of willful violation
In the case of a violation referred to in this section, it shall be a rebuttable presumption
that the violation is willful for purposes of determining relief if the violator, or a person
acting in concert with the violator, knowingly provided or knowingly caused to be provided materially false contact information to a domain name registrar, domain name registry, or other domain name registration authority in registering, maintaining, or
renewing a domain name used in connection with the violation. Nothing in this subsection limits what may be considered a willful violation under this section.
§ 1118 (§ 36)—Destruction of infringing articles
In any action arising under this chapter, in which a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section
1125(a) of this title, or a willful violation under section 1125(c) of this title, shall have
been established, the court may order that all labels, signs, prints, packages, wrappers,
receptacles, and advertisements in the possession of the defendant, bearing the registered
mark or, in the case of a violation of section 1125(a) of this title or a willful violation
under section 1125(c) of this title, the word, term, name, symbol, device, combination
thereof, designation, description, or representation that is the subject of the violation, or
any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds,
matrices, and other means of making the same, shall be delivered up and destroyed. The
party seeking an order under this section for destruction of articles seized under section
1116(d) of this title shall give ten days’ notice to the United States attorney for the judicial district in which such order is sought (unless good cause is shown for lesser notice)
and such United States attorney may, if such destruction may affect evidence of an offense against the United States, seek a hearing on such destruction or participate in any
hearing otherwise to be held with respect to such destruction.
§ 1119 (§ 37)—Power of court over registration
In any action involving a registered mark the court may determine the right to regis-

27

§ 1120

Trademark Act of 1946

tration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party
to the action. Decrees and orders shall be certified by the court to the Director, who shall
make appropriate entry upon the records of the Patent and Trademark Office, and shall
be controlled thereby.
§ 1120 (§ 38)—Civil liability for false or fraudulent registration
Any person who shall procure registration in the Patent and Trademark Office of a
mark by a false or fraudulent declaration or representation, oral or in writing, or by any
false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof.
§ 1121 (§ 39)—Jurisdiction of Federal courts; State and local requirements that
registered trademarks be altered or displayed differently; prohibition
(a) The district and territorial courts of the United States shall have original jurisdiction
and the courts of appeal of the United States (other than the United States Court of Appeals for the Federal Circuit) shall have appellate jurisdiction, of all actions arising under
this chapter, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties.
(b) No State or other jurisdiction of the United States or any political subdivision or
any agency thereof may require alteration of a registered mark, or require that additional
trademarks, service marks, trade names, or corporate names that may be associated with
or incorporated into the registered mark be displayed in the mark in a manner differing
from the display of such additional trademarks, service marks, trade names, or corporate
names contemplated by the registered mark as exhibited in the certificate of registration
issued by the United States Patent and Trademark Office.
§ 1122 (§ 40)—Liability of United States and States, and instrumentalities and
officials thereof
(a) Waiver of sovereign immunity by the United States
The United States, all agencies and instrumentalities thereof, and all individuals, firms,
corporations, other persons acting for the United States and with the authorization and
consent of the United States, shall not be immune from suit in Federal or State court by
any person, including any governmental or nongovernmental entity, for any violation
under this chapter.
(b) Waiver of sovereign immunity by States
Any State, instrumentality of a State or any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the
eleventh amendment of the Constitution of the United States or under any other doctrine
of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity for any violation under this chapter.
(c) Remedies
In a suit described in subsection (a) or (b) of this section for a violation described therein,
remedies (including remedies both at law and in equity) are available for the violation to the
same extent as such remedies are available for such a violation in a suit against any person
other than the United States or any agency or instrumentality thereof, or any individual,
firm, corporation, or other person acting for the United States and with authorization and
consent of the United States, or a State, instrumentality of a State, or officer or employee of
28

Trademark Act of 1946

§ 1125

a State or instrumentality of a State acting in his or her official capacity. Such remedies
include injunctive relief under section 1116 of this title, actual damages, profits, costs and
attorney’s fees under section 1117 of this title, destruction of infringing articles under section 1118 of this title, the remedies provided for under sections 1114, 1119, 1120, 1124 and
1125 of this title, and for any other remedies provided under this chapter.
§ 1123 (§ 41)—Rules and regulations for conduct of proceedings in Patent and
Trademark Office
The Director shall make rules and regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office under this chapter.
§ 1124 (§ 42)—Importation of goods bearing infringing marks or names forbidden
Except as provided in subsection (d) of section 1526 of title 19, no article of imported
merchandise which shall copy or simulate the name of any domestic manufacture, or
manufacturer, or trader, or of any manufacturer or trader located in any foreign country
which, by treaty, convention, or law affords similar privileges to citizens of the United
States, or which shall copy or simulate a trademark registered in accordance with the
provisions of this chapter or shall bear a name or mark calculated to induce the public to
believe that the article is manufactured in the United States, or that it is manufactured in
any foreign country or locality other than the country or locality in which it is in fact
manufactured, shall be admitted to entry at any customhouse of the United States; and,
in order to aid the officers of the customs in enforcing this prohibition, any domestic
manufacturer or trader, and any foreign manufacturer or trader, who is entitled under the
provisions of a treaty, convention, declaration, or agreement between the United States
and any foreign country to the advantages afforded by law to citizens of the United States
in respect to trademarks and commercial names, may require his name and residence,
and the name of the locality in which his goods are manufactured, and a copy of the
certificate of registration of his trademark, issued in accordance with the provisions of
this chapter, to be recorded in books which shall be kept for this purpose in the Department of the Treasury, under such regulations as the Secretary of the Treasury shall prescribe, and may furnish to the Department facsimiles of his name, the name of the locality
in which his goods are manufactured, or of his registered trademark, and thereupon the
Secretary of the Treasury shall cause one or more copies of the same to be transmitted to
each collector or other proper officer of customs.
§ 1125 (§ 43)—False designations of origin, false descriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container
for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of
fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the
origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services,
or commercial activities,
29

§ 1125

Trademark Act of 1946

shall be liable in a civil action by any person who believes that he or she is or is likely
to be damaged by such act.
(2) As used in this subsection, the term “any person” includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her
official capacity. Any State, and any such instrumentality, officer, or employee, shall
be subject to the provisions of this chapter in the same manner and to the same extent
as any nongovernmental entity.
(3) In a civil action for trade dress infringement under this chapter for trade dress not
registered on the principal register, the person who asserts trade dress protection has
the burden of proving that the matter sought to be protected is not functional.
(b) Importation
Any goods marked or labeled in contravention of the provisions of this section shall
not be imported into the United States or admitted to entry at any customhouse of the
United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given
under the customs revenue laws or may have the remedy given by this chapter in cases
involving goods refused entry or seized.
(c) Dilution by blurring; dilution by tarnishment
(1) Injunctive relief
Subject to the principles of equity, the owner of a famous mark that is distinctive,
inherently or through acquired distinctiveness, shall be entitled to an injunction against
another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by
blurring or dilution by tarnishment of the famous mark, regardless of the presence or
absence of actual or likely confusion, of competition, or of actual economic injury.
(2) Definitions
(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by
the general consuming public of the United States as a designation of source of the
goods or services of the mark’s owner. In determining whether a mark possesses the
requisite degree of recognition, the court may consider all relevant factors, including
the following:
(i) The duration, extent, and geographic reach of advertising and publicity of the
mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services
offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act
of February 20, 1905, or on the principal register.
(B) For purposes of paragraph (1), “dilution by blurring” is association arising
from the similarity between a mark or trade name and a famous mark that impairs
the distinctiveness of the famous mark. In determining whether a mark or trade name
is likely to cause dilution by blurring, the court may consider all relevant factors,
including the following:
(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association
30

Trademark Act of 1946

§ 1125

with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising
from the similarity between a mark or trade name and a famous mark that harms the
reputation of the famous mark.
(3) Exclusions
The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or facilitation of
such fair use, of a famous mark by another person other than as a designation of
source for the person’s own goods or services, including use in connection with—
(i) advertising or promotion that permits consumers to compare goods or services; or
(ii) identifying and parodying, criticizing, or commenting upon the famous mark
owner or the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.
(4) Burden of proof
In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the
burden of proving that—
(A) the claimed trade dress, taken as a whole, is not functional and is famous; and
(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart
from any fame of such registered marks.
(5) Additional remedies
In an action brought under this subsection, the owner of the famous mark shall be
entitled to injunctive relief as set forth in section 1116 of this title. The owner of the
famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118
of this title, subject to the discretion of the court and the principles of equity if—
(A) the mark or trade name that is likely to cause dilution by blurring or dilution
by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and
(B) in a claim arising under this subsection—
(i) by reason of dilution by blurring, the person against whom the injunction is
sought willfully intended to trade on the recognition of the famous mark; or
(ii) by reason of dilution by tarnishment, the person against whom the injunction
is sought willfully intended to harm the reputation of the famous mark.
(6) Ownership of valid registration a complete bar to action
The ownership by a person of a valid registration under the Act of March 3, 1881,
or the Act of February 20, 1905, or on the principal register under this chapter shall be
a complete bar to an action against that person, with respect to that mark, that—
(A) is brought by another person under the common law or a statute of a State; and
(B)(i) seeks to prevent dilution by blurring or dilution by tarnishment; or
(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or
reputation of a mark, label, or form of advertisement.
(7) Savings clause
Nothing in this subsection shall be construed to impair, modify, or supersede the
applicability of the patent laws of the United States.
31

§ 1125

Trademark Act of 1946

(d) Cyberpiracy prevention
(1)(A) A person shall be liable in a civil action by the owner of a mark, including a
personal name which is protected as a mark under this section, if, without regard to the
goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name
which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the
domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the
domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section 706 of title
18 or section 220506 of title 36.
(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
(I) the trademark or other intellectual property rights of the person, if any, in
the domain name;
(II) the extent to which the domain name consists of the legal name of the
person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the
bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site
accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill
represented by the mark, either for commercial gain or with the intent to tarnish
or disparage the mark, by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name
to the mark owner or any third party for financial gain without having used, or
having an intent to use, the domain name in the bona fide offering of any goods
or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior
conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which
the person knows are identical or confusingly similar to marks of others that are
distinctive at the time of registration of such domain names, or dilutive of famous
marks of others that are famous at the time of registration of such domain names,
without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).
(ii) Bad faith intent described under subparagraph (A) shall not be found in any
case in which the court determines that the person believed and had reasonable
grounds to believe that the use of the domain name was a fair use or otherwise lawful.
(C) In any civil action involving the registration, trafficking, or use of a domain
name under this paragraph, a court may order the forfeiture or cancellation of the
domain name or the transfer of the domain name to the owner of the mark.
32

Trademark Act of 1946

§ 1125

(D) A person shall be liable for using a domain name under subparagraph (A) only
if that person is the domain name registrant or that registrant’s authorized licensee.
(E) As used in this paragraph, the term “traffics in” refers to transactions that include,
but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency,
and any other transfer for consideration or receipt in exchange for consideration.
(2)(A) The owner of a mark may file an in rem civil action against a domain name in
the judicial district in which the domain name registrar, domain name registry, or other
domain name authority that registered or assigned the domain name is located if—
(i) the domain name violates any right of the owner of a mark registered in the
Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and
(ii) the court finds that the owner—
(I) is not able to obtain in personam jurisdiction over a person who would have
been a defendant in a civil action under paragraph (1); or
(II) through due diligence was not able to find a person who would have been
a defendant in a civil action under paragraph (1) by—
(aa) sending a notice of the alleged violation and intent to proceed under this
paragraph to the registrant of the domain name at the postal and e-mail address
provided by the registrant to the registrar; and
(bb) publishing notice of the action as the court may direct promptly after
filing the action.
(B) The actions under subparagraph (A)(ii) shall constitute service of process.
(C) In an in rem action under this paragraph, a domain name shall be deemed to
have its situs in the judicial district in which—
(i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or
(ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.
(D)(i) The remedies in an in rem action under this paragraph shall be limited to a
court order for the forfeiture or cancellation of the domain name or the transfer of
the domain name to the owner of the mark. Upon receipt of written notification of a
filed, stamped copy of a complaint filed by the owner of a mark in a United States
district court under this paragraph, the domain name registrar, domain name registry,
or other domain name authority shall—
(I) expeditiously deposit with the court documents sufficient to establish the
court’s control and authority regarding the disposition of the registration and use
of the domain name to the court; and
(II) not transfer, suspend, or otherwise modify the domain name during the
pendency of the action, except upon order of the court.
(ii) The domain name registrar or registry or other domain name authority shall
not be liable for injunctive or monetary relief under this paragraph except in the
case of bad faith or reckless disregard, which includes a willful failure to comply
with any such court order.
(3) The civil action established under paragraph (1) and the in rem action established
under paragraph (2), and any remedy available under either such action, shall be in
addition to any other civil action or remedy otherwise applicable.
(4) The in rem jurisdiction established under paragraph (2) shall be in addition to
any other jurisdiction that otherwise exists, whether in rem or in personam.
33

§ 1126

Trademark Act of 1946

§ 1126 (§ 44)—International conventions
(a) Register of marks communicated by international bureaus
The Director shall keep a register of all marks communicated to him by the international
bureaus provided for by the conventions for the protection of industrial property, trademarks, trade and commercial names, and the repression of unfair competition to which the
United States is or may become a party, and upon the payment of the fees required by such
conventions and the fees required in this chapter may place the marks so communicated
upon such register. This register shall show a facsimile of the mark or trade or commercial
name; the name, citizenship, and address of the registrant; the number, date, and place of
the first registration of the mark, including the dates on which application for such registration was filed and granted and the term of such registration; a list of goods or services to
which the mark is applied as shown by the registration in the country of origin, and such
other data as may be useful concerning the mark. This register shall be a continuation of the
register provided in section 1(a) of the Act of March 19, 1920.
(b) Benefits of section to persons whose country of origin is party to convention
or treaty
Any person whose country of origin is a party to any convention or treaty relating to
trademarks, trade or commercial names, or the repression of unfair competition, to which
the United States is also a party, or extends reciprocal rights to nationals of the United
States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention,
treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter.
(c) Prior registration in country of origin; country of origin defined
No registration of a mark in the United States by a person described in subsection (b)
of this section shall be granted until such mark has been registered in the country of
origin of the applicant, unless the applicant alleges use in commerce.
For the purposes of this section, the country of origin of the applicant is the country in
which he has a bona fide and effective industrial or commercial establishment, or if he
has not such an establishment the country in which he is domiciled, or if he has not a
domicile in any of the countries described in subsection (b) of this section, the country
of which he is a national.
(d) Right of priority
An application for registration of a mark under section 1051, 1053, 1054, or 1091 of
this title or under subsection (e) of this section, filed by a person described in subsection
(b) of this section who has previously duly filed an application for registration of the
same mark in one of the countries described in subsection (b) of this section shall be
accorded the same force and effect as would be accorded to the same application if filed
in the United States on the same date on which the application was first filed in such
foreign country: Provided, That—
(1) the application in the United States is filed within six months from the date on
which the application was first filed in the foreign country;
(2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark
in commerce;
(3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on
an application filed under this subsection;
(4) nothing in this subsection shall entitle the owner of a registration granted under
34

Trademark Act of 1946

§ 1127

this section to sue for acts committed prior to the date on which his mark was registered
in this country unless the registration is based on use in commerce.
In like manner and subject to the same conditions and requirements, the right provided
in this section may be based upon a subsequent regularly filed application in the same
foreign country, instead of the first filed foreign application: Provided, That any foreign
application filed prior to such subsequent application has been withdrawn, abandoned,
or otherwise disposed of, without having been laid open to public inspection and without
leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis
for claiming a right of priority.
(e) Registration on principal or supplemental register; copy of foreign registration
A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register in this
chapter provided. Such applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or a certified copy of
the registration in the country of origin of the applicant. The application must state the
applicant’s bona fide intention to use the mark in commerce, but use in commerce shall
not be required prior to registration.
(f) Domestic registration independent of foreign registration
The registration of a mark under the provisions of subsections (c), (d), and (e) of this
section by a person described in subsection (b) of this section shall be independent of the
registration in the country of origin and the duration, validity, or transfer in the United
States of such registration shall be governed by the provisions of this chapter.
(g) Trade or commercial names of foreign nationals protected without registration
Trade names or commercial names of persons described in subsection (b) of this section shall be protected without the obligation of filing or registration whether or not they
form parts of marks.
(h) Protection of foreign nationals against unfair competition
Any person designated in subsection (b) of this section as entitled to the benefits and
subject to the provisions of this chapter shall be entitled to effective protection against unfair
competition, and the remedies provided in this chapter for infringement of marks shall be
available so far as they may be appropriate in repressing acts of unfair competition.
(i) Citizens or residents of United States entitled to benefits of section
Citizens or residents of the United States shall have the same benefits as are granted
by this section to persons described in subsection (b) of this section.
§ 1127 (§ 45)—Construction and definitions; intent of chapter
In the construction of this chapter, unless the contrary is plainly apparent from the
context—
The United States includes and embraces all territory which is under its jurisdiction
and control.
The word “commerce” means all commerce which may lawfully be regulated by
Congress.
The term “principal register” refers to the register provided for by sections 1051 to
1072 of this title, and the term “supplemental register” refers to the register provided for
by sections 1091 to 1096 of this title.
The term “person” and any other word or term used to designate the applicant or other
entitled to a benefit or privilege or rendered liable under the provisions of this chapter
includes a juristic person as well as a natural person. The term “juristic person” includes
a firm, corporation, union, association, or other organization capable of suing and being
35

§ 1127

Trademark Act of 1946

sued in a court of law.
The term “person” also includes the United States, any agency or instrumentality
thereof, or any individual, firm, or corporation acting for the United States and with the
authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and
with the authorization and consent of the United States, shall be subject to the provisions
of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term “person” also includes any State, any instrumentality of a State, and any
officer or employee of a State or instrumentality of a State acting in his or her official
capacity. Any State, and any such instrumentality, officer, or employee, shall be subject
to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms “applicant” and “registrant” embrace the legal representatives, predecessors,
successors and assigns of such applicant or registrant.
The term “Director” means the Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office.
The term “related company” means any person whose use of a mark is controlled by
the owner of the mark with respect to the nature and quality of the goods or services on
or in connection with which the mark is used.
The terms “trade name” and “commercial name” mean any name used by a person to
identify his or her business or vocation.
The term “trademark” includes any word, name, symbol, or device, or any combination
thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is
unknown.
The term “service mark” means any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from
the services of others and to indicate the source of the services, even if that source is
unknown. Titles, character names, and other distinctive features of radio or television
programs may be registered as service marks notwithstanding that they, or the programs,
may advertise the goods of the sponsor.
The term “certification mark” means any word, name, symbol, or device, or any combination thereof—
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner
to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or
other characteristics of such person’s goods or services or that the work or labor on the
goods or services was performed by members of a union or other organization.
The term “collective mark” means a trademark or service mark—
36

Trademark Act of 1946

§ 1127

(1) used by the members of a cooperative, an association, or other collective group
or organization, or
(2) which such cooperative, association, or other collective group or organization
has a bona fide intention to use in commerce and applies to register on the principal
register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term “mark” includes any trademark, service mark, collective mark, or certification mark.
The term “use in commerce” means the bona fide use of a mark in the ordinary course
of trade, and not made merely to reserve a right in a mark. For purposes of this chapter,
a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on documents associated with the
goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and
the services are rendered in commerce, or the services are rendered in more than one
State or in the United States and a foreign country and the person rendering the services
is engaged in commerce in connection with the services.
A mark shall be deemed to be “abandoned” if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to
resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima
facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark
made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as
commission, causes the mark to become the generic name for the goods or services on or
in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term “colorable imitation” includes any mark which so resembles a registered
mark as to be likely to cause confusion or mistake or to deceive.
The term “registered mark” means a mark registered in the United States Patent and
Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of
February 20, 1905, or the Act of March 19, 1920. The phrase “marks registered in the
Patent and Trademark Office” means registered marks.
The term “Act of March 3, 1881”, “Act of February 20, 1905”, or “Act of March 19,
1920”, means the respective Act as amended.
A “counterfeit” is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term “domain name” means any alphanumeric designation which is registered
with or assigned by any domain name registrar, domain name registry, or other domain
name registration authority as part of an electronic address on the Internet.
The term “Internet” has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by
making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial
legislation; to protect persons engaged in such commerce against unfair competition; to
37

§ 1141

Trademark Act of 1946

prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies
stipulated by treaties and conventions respecting trademarks, trade names, and unfair
competition entered into between the United States and foreign nations.
Subchapter IV—The Madrid Protocol
§ 1141 (§ 60)—Definitions
In this subchapter:
(1) Basic application
The term “basic application” means the application for the registration of a mark that
has been filed with an Office of a Contracting Party and that constitutes the basis for
an application for the international registration of that mark.
(2) Basic registration
The term “basic registration” means the registration of a mark that has been granted
by an Office of a Contracting Party and that constitutes the basis for an application for
the international registration of that mark.
(3) Contracting Party
The term “Contracting Party” means any country or inter-governmental organization
that is a party to the Madrid Protocol.
(4) Date of recordal
The term “date of recordal” means the date on which a request for extension of protection, filed after an international registration is granted, is recorded on the International Register.
(5) Declaration of bona fide intention to use the mark in commerce
The term “declaration of bona fide intention to use the mark in commerce” means a
declaration that is signed by the applicant for, or holder of, an international registration
who is seeking extension of protection of a mark to the United States and that contains
a statement that—
(A) the applicant or holder has a bona fide intention to use the mark in commerce;
(B) the person making the declaration believes himself or herself, or the firm, corporation, or association in whose behalf he or she makes the declaration, to be entitled to use the mark in commerce; and
(C) no other person, firm, corporation, or association, to the best of his or her
knowledge and belief, has the right to use such mark in commerce either in the identical form of the mark or in such near resemblance to the mark as to be likely, when
used on or in connection with the goods of such other person, firm, corporation, or
association, to cause confusion, mistake, or deception.
(6) Extension of protection
The term “extension of protection” means the protection resulting from an international registration that extends to the United States at the request of the holder of the
international registration, in accordance with the Madrid Protocol.
(7) Holder of an international registration
A “holder” of an international registration is the natural or juristic person in whose
name the international registration is recorded on the International Register.
(8) International application
The term “international application” means an application for international registration that is filed under the Madrid Protocol.
38

Trademark Act of 1946

§ 1141a

(9) International Bureau
The term “International Bureau” means the International Bureau of the World Intellectual Property Organization.
(10) International Register
The term “International Register” means the official collection of data concerning
international registrations maintained by the International Bureau that the Madrid Protocol or its implementing regulations require or permit to be recorded.
(11) International registration
The term “international registration” means the registration of a mark granted under
the Madrid Protocol.
(12) International registration date
The term “international registration date” means the date assigned to the international registration by the International Bureau.
(13) Madrid Protocol
The term “Madrid Protocol” means the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks, adopted at Madrid, Spain, on June
27, 1989.
(14) Notification of refusal
The term “notification of refusal” means the notice sent by the United States Patent
and Trademark Office to the International Bureau declaring that an extension of protection cannot be granted.
(15) Office of a Contracting Party
The term “Office of a Contracting Party” means—
(A) the office, or governmental entity, of a Contracting Party that is responsible
for the registration of marks; or
(B) the common office, or governmental entity, of more than 1 Contracting Party
that is responsible for the registration of marks and is so recognized by the International Bureau.
(16) Office of origin
The term “office of origin” means the Office of a Contracting Party with which a
basic application was filed or by which a basic registration was granted.
(17) Opposition period
The term “opposition period” means the time allowed for filing an opposition in the
United States Patent and Trademark Office, including any extension of time granted
under section 1063 of this title.
§ 1141a (§ 61)—International applications based on United States applications or
registrations
(a) In general
The owner of a basic application pending before the United States Patent and Trademark Office, or the owner of a basic registration granted by the United States Patent and
Trademark Office may file an international application by submitting to the United States
Patent and Trademark Office a written application in such form, together with such fees,
as may be prescribed by the Director.
(b) Qualified owners
A qualified owner, under subsection (a) of this section, shall—
(1) be a national of the United States;
(2) be domiciled in the United States; or
(3) have a real and effective industrial or commercial establishment in the United
39

§ 1141b

Trademark Act of 1946

States.
§ 1141b (§ 62)—Certification of international application
(a) Certification procedure
Upon the filing of an application for international registration and payment of the prescribed fees, the Director shall examine the international application for the purpose of
certifying that the information contained in the international application corresponds to
the information contained in the basic application or basic registration at the time of the
certification.
(b) Transmittal
Upon examination and certification of the international application, the Director shall
transmit the international application to the International Bureau.
§ 1141c (§ 63)—Restriction, abandonment, cancellation, or expiration of a basic
application or basic registration
With respect to an international application transmitted to the International Bureau under section 1141b of this title, the Director shall notify the International Bureau whenever
the basic application or basic registration which is the basis for the international application has been restricted, abandoned, or canceled, or has expired, with respect to some or
all of the goods and services listed in the international registration—
(1) within 5 years after the international registration date; or
(2) more than 5 years after the international registration date if the restriction, abandonment, or cancellation of the basic application or basic registration resulted from an
action that began before the end of that 5-year period.
§ 1141d (§ 64)—Request for extension of protection subsequent to international
registration
The holder of an international registration that is based upon a basic application filed
with the United States Patent and Trademark Office or a basic registration granted by the
Patent and Trademark Office may request an extension of protection of its international
registration by filing such a request—
(1) directly with the International Bureau; or
(2) with the United States Patent and Trademark Office for transmittal to the International Bureau, if the request is in such form, and contains such transmittal fee, as
may be prescribed by the Director.
§ 1141e (§ 65)—Extension of protection of an international registration to the
United States under the Madrid Protocol
(a) In general
Subject to the provisions of section 1141h of this title, the holder of an international
registration shall be entitled to the benefits of extension of protection of that international
registration to the United States to the extent necessary to give effect to any provision of
the Madrid Protocol.
(b) If the United States is office of origin
Where the United States Patent and Trademark Office is the office of origin for a trademark application or registration, any international registration based on such application
or registration cannot be used to obtain the benefits of the Madrid Protocol in the United
States.
40

Trademark Act of 1946

§ 1141h

§ 1141f (§ 66)—Effect of filing a request for extension of protection of an
international registration to the United States
(a) Requirement for request for extension of protection
A request for extension of protection of an international registration to the United
States that the International Bureau transmits to the United States Patent and Trademark
Office shall be deemed to be properly filed in the United States if such request, when
received by the International Bureau, has attached to it a declaration of bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the
international registration.
(b) Effect of proper filing
Unless extension of protection is refused under section 1141h of this title, the proper
filing of the request for extension of protection under subsection (a) of this section shall
constitute constructive use of the mark, conferring the same rights as those specified in
section 1057(c) of this title, as of the earliest of the following:
(1) The international registration date, if the request for extension of protection was
filed in the international application.
(2) The date of recordal of the request for extension of protection, if the request for
extension of protection was made after the international registration date.
(3) The date of priority claimed pursuant to section 1141g of this title.
§ 1141g (§ 67)—Right of priority for request for extension of protection to the
United States
The holder of an international registration with a request for an extension of protection
to the United States shall be entitled to claim a date of priority based on a right of priority
within the meaning of Article 4 of the Paris Convention for the Protection of Industrial
Property if—
(1) the request for extension of protection contains a claim of priority; and
(2) the date of international registration or the date of the recordal of the request for
extension of protection to the United States is not later than 6 months after the date of the
first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention
for the Protection of Industrial Property) or a subsequent application (within the meaning
of Article 4(C)(4) of the Paris Convention for the Protection of Industrial Property).
§ 1141h (§ 68)—Examination of and opposition to request for extension of
protection; notification of refusal
(a) Examination and opposition
(1) A request for extension of protection described in section 1141f (a) of this title
shall be examined as an application for registration on the Principal Register under this
chapter, and if on such examination it appears that the applicant is entitled to extension
of protection under this subchapter, the Director shall cause the mark to be published
in the Official Gazette of the United States Patent and Trademark Office.
(2) Subject to the provisions of subsection (c) of this section, a request for extension
of protection under this subchapter shall be subject to opposition under section 1063
of this title.
(3) Extension of protection shall not be refused on the ground that the mark has not
been used in commerce.
(4) Extension of protection shall be refused to any mark not registrable on the Principal Register.
41

§ 1141i

Trademark Act of 1946

(b) Notification of refusal
If, a request for extension of protection is refused under subsection (a) of this section,
the Director shall declare in a notification of refusal (as provided in subsection (c) of this
section) that the extension of protection cannot be granted, together with a statement of
all grounds on which the refusal was based.
(c) Notice to International Bureau
(1) Within 18 months after the date on which the International Bureau transmits to
the Patent and Trademark Office a notification of a request for extension of protection,
the Director shall transmit to the International Bureau any of the following that applies
to such request:
(A) A notification of refusal based on an examination of the request for extension
of protection.
(B) A notification of refusal based on the filing of an opposition to the request.
(C) A notification of the possibility that an opposition to the request may be filed
after the end of that 18-month period.
(2) If the Director has sent a notification of the possibility of opposition under paragraph (1)(C), the Director shall, if applicable, transmit to the International Bureau a
notification of refusal on the basis of the opposition, together with a statement of all
the grounds for the opposition, within 7 months after the beginning of the opposition
period or within 1 month after the end of the opposition period, whichever is earlier.
(3) If a notification of refusal of a request for extension of protection is transmitted
under paragraph (1) or (2), no grounds for refusal of such request other than those set forth
in such notification may be transmitted to the International Bureau by the Director after
the expiration of the time periods set forth in paragraph (1) or (2), as the case may be.
(4) If a notification specified in paragraph (1) or (2) is not sent to the International
Bureau within the time period set forth in such paragraph, with respect to a request for
extension of protection, the request for extension of protection shall not be refused and
the Director shall issue a certificate of extension of protection pursuant to the request.
(d) Designation of agent for service of process
In responding to a notification of refusal with respect to a mark, the holder of the international registration of the mark may designate, by a document filed in the United
States Patent and Trademark Office, the name and address of a person residing in the
United States on whom notices or process in proceedings affecting the mark may be
served. Such notices or process may be served upon the person designated by leaving
with that person, or mailing to that person, a copy thereof at the address specified in the
last designation filed. If the person designated cannot be found at the address given in
the last designation, or if the holder does not designate by a document filed in the United
States Patent and Trademark Office the name and address of a person residing in the
United States for service of notices or process in proceedings affecting the mark, the
notice or process may be served on the Director.
§ 1141i (§ 69)—Effect of extension of protection
(a) Issuance of extension of protection
Unless a request for extension of protection is refused under section 1141h of this title,
the Director shall issue a certificate of extension of protection pursuant to the request and
shall cause notice of such certificate of extension of protection to be published in the
Official Gazette of the United States Patent and Trademark Office.

42

Trademark Act of 1946

§ 1141k

(b) Effect of extension of protection
From the date on which a certificate of extension of protection is issued under subsection (a) of this section—
(1) such extension of protection shall have the same effect and validity as a registration on the Principal Register; and
(2) the holder of the international registration shall have the same rights and remedies
as the owner of a registration on the Principal Register.
§ 1141j (§ 70)—Dependence of extension of protection to the United States on the
underlying international registration
(a) Effect of cancellation of international registration
If the International Bureau notifies the United States Patent and Trademark Office of
the cancellation of an international registration with respect to some or all of the goods
and services listed in the international registration, the Director shall cancel any extension of protection to the United States with respect to such goods and services as of the
date on which the international registration was canceled.
(b) Effect of failure to renew international registration
If the International Bureau does not renew an international registration, the corresponding extension of protection to the United States shall cease to be valid as of the date of
the expiration of the international registration.
(c) Transformation of an extension of protection into a United States application
The holder of an international registration canceled in whole or in part by the International Bureau at the request of the office of origin, under article 6(4) of the Madrid Protocol, may file an application, under section 1051 or 1126 of this title, for the registration
of the same mark for any of the goods and services to which the cancellation applies that
were covered by an extension of protection to the United States based on that international registration. Such an application shall be treated as if it had been filed on the international registration date or the date of recordal of the request for extension of
protection with the International Bureau, whichever date applies, and, if the extension of
protection enjoyed priority under section 1141g of this title, shall enjoy the same priority.
Such an application shall be entitled to the benefits conferred by this subsection only if
the application is filed not later than 3 months after the date on which the international
registration was canceled, in whole or in part, and only if the application complies with
all the requirements of this chapter which apply to any application filed pursuant to section 1051 or 1126 of this title.
§ 1141k (§ 71)—Duration, affidavits and fees
(a) Time periods for required affidavits
Each extension of protection for which a certificate has been issued under section
1141i of this title shall remain in force for the term of the international registration upon
which it is based, except that the extension of protection of any mark shall be canceled
by the Director unless the holder of the international registration files in the United States
Patent and Trademark Office affidavits that meet the requirements of subsection (b),
within the following time periods:
(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of extension of protection.
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of issuance of the certificate of extension of protection, and each successive
43

§ 1141l

Trademark Act of 1946

10-year period following the date of issuance of the certificate of extension of protection.
(3) The holder may file the affidavit required under this section within a grace period
of 6 months after the end of the applicable time period established in paragraph (1) or
(2), together with the fee described in subsection (b) and the additional grace period
surcharge prescribed by the Director.
(b) Requirements for affidavit
The affidavit referred to in subsection (a) shall—
(1)(A) state that the mark is in use in commerce;
(B) set forth the goods and services recited in the extension of protection on or in
connection with which the mark is in use in commerce;
(C) be accompanied by such number of specimens or facsimiles showing current
use of the mark in commerce as may be required by the Director; and
(D) be accompanied by the fee prescribed by the Director; or
(2)(A) set forth the goods and services recited in the extension of protection on or in
connection with which the mark is not in use in commerce;
(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
(C) be accompanied by the fee prescribed by the Director.
(c) Deficient affidavit
If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the holder of the international registration, the deficiency may be corrected after the statutory time period, within the time
prescribed after notification of the deficiency. Such submission shall be accompanied by
the additional deficiency surcharge prescribed by the Director.
(d) Notice of requirement
Special notice of the requirement for such affidavit shall be attached to each certificate
of extension of protection.
(e) Notification of acceptance or refusal
The Director shall notify the holder of the international registration who files any affidavit required by this section of the Director’s acceptance or refusal thereof and, in the
case of a refusal, the reasons therefor.
(f) Designation of resident for service of process and notices
If the holder of the international registration of the mark is not domiciled in the United
States, the holder may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may
be served notices or process in proceedings affecting the mark. Such notices or process
may be served upon the person so designated by leaving with that person or mailing to that
person a copy thereof at the address specified in the last designation so filed. If the person
so designated cannot be found at the last designated address, or if the holder does not designate by a document filed in the United States Patent and Trademark Office the name and
address of a person resident in the United States on whom may be served notices or process
in proceedings affecting the mark, such notices or process may be served on the Director.
§ 1141l (§ 72)—Assignment of an extension of protection
An extension of protection may be assigned, together with the goodwill associated
with the mark, only to a person who is a national of, is domiciled in, or has a bona fide
and effective industrial or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that
is a Contracting Party.
44

Trademark Act of 1946

§ 1141n

§ 1141m (§ 73)—Incontestability
The period of continuous use prescribed under section 1065 of this title for a mark
covered by an extension of protection issued under this subchapter may begin no earlier
than the date on which the Director issues the certificate of the extension of protection
under section 1141i of this title, except as provided in section 1141n of this title.
§ 1141n (§ 74)—Rights of extension of protection
When a United States registration and a subsequently issued certificate of extension of
protection to the United States are owned by the same person, identify the same mark, and
list the same goods or services, the extension of protection shall have the same rights that
accrued to the registration prior to issuance of the certificate of extension of protection.

45

[JB/JJ Note: Adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) in 1999, the Uniform Domain Name Dispute Resolution Policy (UDRP) sets
out a mandatory administrative proceeding for resolving cybersquatting disputes.
Domain name registrants are required to agree to the UDRP as part of their contracts
with ICANN-accredited registrars.]

Uniform Domain Name Dispute Resolution Policy
(As Approved by ICANN on October 24, 1999)*
1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the “Policy”) has
been adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”),
is incorporated by reference into your Registration Agreement, and sets forth the terms
and conditions in connection with a dispute between you and any party other than us (the
registrar) over the registration and use of an Internet domain name registered by you.
Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules
for Uniform Domain Name Dispute Resolution Policy (the “Rules of Procedure”), which
are available at https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en, and
the selected administrative-dispute-resolution service provider’s supplemental rules.
2. Your Representations. By applying to register a domain name, or by asking us to
maintain or renew a domain name registration, you hereby represent and warrant to us
that (a) the statements that you made in your Registration Agreement are complete and
accurate; (b) to your knowledge, the registration of the domain name will not infringe
upon or otherwise violate the rights of any third party; (c) you are not registering the
domain name for an unlawful purpose; and (d) you will not knowingly use the domain
name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.
3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise
make changes to domain name registrations under the following circumstances:
a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronic instructions from you or your authorized agent to take such action;
b. our receipt of an order from a court or arbitral tribunal, in each case of competent
jurisdiction, requiring such action; and/or
c. our receipt of a decision of an Administrative Panel requiring such action in any
administrative proceeding to which you were a party and which was conducted under
this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and
(k) below.)
We may also cancel, transfer or otherwise make changes to a domain name registration
in accordance with the terms of your Registration Agreement or other legal requirements.
4. Mandatory Administrative Proceeding.
This Paragraph sets forth the type of disputes for which you are required to submit to
a mandatory administrative proceeding. These proceedings will be conducted before one

*

Note from ICANN: The policy is between the registrar (or other registration authority in the
case of a country-code top-level domain) and its customer (the domain-name holder or registrant). Thus, the policy uses “we” and “our” to refer to the registrar and it uses “you” and
“your” to refer to the domain-name holder.
46

Uniform Domain Name Dispute Resolution Policy

of the administrative-dispute-resolution service providers listed at https://www.icann.org
/en/dndr/udrp/approved-providers.htm (each, a “Provider”).
a. Applicable Disputes. You are required to submit to a mandatory administrative
proceeding in the event that a third party (a “complainant”) asserts to the applicable
Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service
mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three
elements are present.
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph
4(a)(iii), the following circumstances, in particular but without limitation, if found by
the Panel to be present, shall be evidence of the registration and use of a domain name
in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark or
service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,
provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by creating
a likelihood of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of your web site or location or of a product or service on
your web site or location.
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain
Name in Responding to a Complaint. When you receive a complaint, you should
refer to Paragraph 5 of the Rules of Procedure in determining how your response
should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for
purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or service mark
rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish
the trademark or service mark at issue.
d. Selection of Provider. The complainant shall select the Provider from among
those approved by ICANN by submitting the complaint to that Provider. The selected
47

Uniform Domain Name Dispute Resolution Policy

Provider will administer the proceeding, except in cases of consolidation as described
in Paragraph 4(f).
e. Initiation of Proceeding and Process and Appointment of Administrative
Panel. The Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the “Administrative Panel”).
f. Consolidation. In the event of multiple disputes between you and a complainant,
either you or the complainant may petition to consolidate the disputes before a single
Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may
consolidate before it any or all such disputes in its sole discretion, provided that the
disputes being consolidated are governed by this Policy or a later version of this Policy
adopted by ICANN.
g. Fees. All fees charged by a Provider in connection with any dispute before an
Administrative Panel pursuant to this Policy shall be paid by the complainant, except
in cases where you elect to expand the Administrative Panel from one to three panelists
as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will
be split evenly by you and the complainant.
h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative
Panel. In addition, we will not be liable as a result of any decisions rendered by the
Administrative Panel.
i. Remedies. The remedies available to a complainant pursuant to any proceeding
before an Administrative Panel shall be limited to requiring the cancellation of your
domain name or the transfer of your domain name registration to the complainant.
j. Notification and Publication. The Provider shall notify us of any decision made
by an Administrative Panel with respect to a domain name you have registered with
us. All decisions under this Policy will be published in full over the Internet, except
when an Administrative Panel determines in an exceptional case to redact portions of
its decision.
k. Availability of Court Proceedings. The mandatory administrative proceeding
requirements set forth in Paragraph 4 shall not prevent either you or the complainant
from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such
proceeding is concluded. If an Administrative Panel decides that your domain name
registration should be canceled or transferred, we will wait ten (10) business days (as
observed in the location of our principal office) after we are informed by the applicable
Provider of the Administrative Panel’s decision before implementing that decision. We
will then implement the decision unless we have received from you during that ten
(10) business day period official documentation (such as a copy of a complaint, filestamped by the clerk of the court) that you have commenced a lawsuit against the
complainant in a jurisdiction to which the complainant has submitted under Paragraph
3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location
of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the
Administrative Panel’s decision, and we will take no further action, until we receive
(i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an
48

Uniform Domain Name Dispute Resolution Policy

order from such court dismissing your lawsuit or ordering that you do not have the
right to continue to use your domain name.
5. All Other Disputes and Litigation. All other disputes between you and any party
other than us regarding your domain name registration that are not brought pursuant to
the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved
between you and such other party through any court, arbitration or other proceeding that
may be available.
6. Our Involvement in Disputes. We will not participate in any way in any dispute
between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve
the right to raise any and all defenses deemed appropriate, and to take any other action
necessary to defend ourselves.
7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or
otherwise change the status of any domain name registration under this Policy except as
provided in Paragraph 3 above.
8. Transfers During a Dispute.
a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as
observed in the location of our principal place of business) after such proceeding is
concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being
transferred agrees, in writing, to be bound by the decision of the court or arbitrator.
We reserve the right to cancel any transfer of a domain name registration to another
holder that is made in violation of this subparagraph.
b. Changing Registrars. You may not transfer your domain name registration to
another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of
our principal place of business) after such proceeding is concluded. You may transfer
administration of your domain name registration to another registrar during a pending
court action or arbitration, provided that the domain name you have registered with us
shall continue to be subject to the proceedings commenced against you in accordance
with the terms of this Policy. In the event that you transfer a domain name registration
to us during the pendency of a court action or arbitration, such dispute shall remain
subject to the domain name dispute policy of the registrar from which the domain name
registration was transferred.
[. . .]

49

COPYRIGHT ACT OF 1976
(As Amended)
17 U.S. Code
Chapter 1—Subject Matter and Scope of Copyright
§ 101.
Definitions
§ 102.
Subject matter of copyright: In general
§ 103.
Subject matter of copyright: Compilations and derivative works
§ 104.
Subject matter of copyright: National origin
§ 104A. Copyright in restored works
§ 105.
Subject matter of copyright: United States Government works
§ 106.
Exclusive rights in copyrighted works
§ 106A. Rights of certain authors to attribution and integrity
§ 107.
Limitations on exclusive rights: Fair use
§ 108.
Limitations on exclusive rights: Reproduction by libraries and archives
§ 109.
Limitations on exclusive rights: Effect of transfer of particular copy or
phonorecord
§ 110.
Limitations on exclusive rights: Exemption of certain performances and displays
§ 111.
Limitations on exclusive rights: Secondary transmissions of broadcast programming by cable
§ 112.
Limitations on exclusive rights: Ephemeral recordings
§ 113.
Scope of exclusive rights in pictorial, graphic, and sculptural works
§ 114.
Scope of exclusive rights in sound recordings
§ 115.
Scope of exclusive rights in nondramatic musical works: Compulsory license for
making and distributing phonorecords
§ 116.
Negotiated licenses for public performances by means of coin-operated
phonorecord players
§ 117.
Limitations on exclusive rights: Computer programs
§ 118.
Scope of exclusive rights: Use of certain works in connection with noncommercial broadcasting
§ 119.
Limitations on exclusive rights: Secondary transmissions of distant television
programming by satellite
§ 120.
Scope of exclusive rights in architectural works
§ 121.
Limitations on exclusive rights: Reproduction for blind or other people with disabilities
§ 121A. Limitations on exclusive rights: Reproduction for blind or other people with disabilities in Marrakesh Treaty countries
§ 122.
Limitations on exclusive rights: Secondary transmissions of local television programming by satellite
Chapter 2—Copyright Ownership and Transfer
§ 201.
Ownership of copyright
§ 202.
Ownership of copyright as distinct from ownership of material object
§ 203.
Termination of transfers and licenses granted by the author
§ 204.
Execution of transfers of copyright ownership
§ 205.
Recordation of transfers and other documents
Chapter 3—Duration of Copyright
§ 301.
Preemption with respect to other laws
§ 302.
Duration of copyright: Works created on or after January 1, 1978
§ 303.
Duration of copyright: Works created but not published or copyrighted before
January 1, 1978
§ 304.
Duration of copyright: Subsisting copyrights
§ 305.
Duration of copyright: Terminal date
50

Copyright Act of 1976

Chapter 4—Copyright Notice, Deposit, and Registration
§ 401.
Notice of copyright: Visually perceptible copies
§ 402.
Notice of copyright: Phonorecords of sound recordings
§ 403.
Notice of copyright: Publications incorporating United States Government
works
§ 404.
Notice of copyright: Contributions to collective works
§ 405.
Notice of copyright: Omission of notice on certain copies and phonorecords
§ 406.
Notice of copyright: Error in name or date on certain copies and phonorecords
§ 407.
Deposit of copies or phonorecords for Library of Congress
§ 408.
Copyright registration in general
§ 409.
Application for copyright registration
§ 410.
Registration of claim and issuance of certificate
§ 411.
Registration and civil infringement actions
§ 412.
Registration as prerequisite to certain remedies for infringement
Chapter 5—Copyright Infringement and Remedies
§ 501.
Infringement of copyright
§ 502.
Remedies for infringement: Injunctions
§ 503.
Remedies for infringement: Impounding and disposition of infringing articles
§ 504.
Remedies for infringement: Damages and profits
§ 505.
Remedies for infringement: Costs and attorney’s fees
§ 506.
Criminal offenses
§ 507.
Limitations on actions
§ 508.
Notification of filing and determination of actions
§ 510.
Remedies for alteration of programming by cable systems
§ 511.
Liability of States, instrumentalities of States, and State officials for infringement of copyright
§ 512.
Limitations on liability relating to material online
§ 513.
Determination of reasonable license fees for individual proprietors
Chapter 6—Importation and Exportation
§ 602.
Infringing importation or exportation of copies or phonorecords
§ 603.
Importation prohibitions: Enforcement and disposition of excluded articles
Chapter 7—Copyright Office
§ 701.
The Copyright Office: General responsibilities and organization
§ 702.
Copyright Office regulations
§ 703.
Effective date of actions in Copyright Office
§ 704.
Retention and disposition of articles deposited in Copyright Office
§ 705.
Copyright Office records: Preparation, maintenance, public inspection, and
searching
§ 706.
Copies of Copyright Office records
§ 707.
Copyright Office forms and publications
§ 708.
Copyright Office fees
§ 709.
Delay in delivery caused by disruption of postal or other services
Chapter 8—Proceedings by Copyright Royalty Judges
§ 801.
Copyright Royalty Judges; appointment and functions
§ 802.
Copyright Royalty Judgeships; staff
§ 803.
Proceedings of Copyright Royalty Judges
§ 804.
Institution of proceedings
§ 805.
General rule for voluntarily negotiated agreements

51

Copyright Act of 1976

Chapter 9—Protection of Semiconductor Chip Products
§ 901.
Definitions
§ 902.
Subject matter of protection
§ 903.
Ownership, transfer, licensing, and recordation
§ 904.
Duration of protection
§ 905.
Exclusive rights in mask works
§ 906.
Limitation on exclusive rights: reverse engineering; first sale
§ 907.
Limitation on exclusive rights: innocent infringement
§ 908.
Registration of claims of protection
§ 909.
Mask work notice
§ 910.
Enforcement of exclusive rights
§ 911.
Civil actions
§ 912.
Relation to other laws
§ 913.
Transitional provisions
§ 914.
International transitional provisions
Chapter 10—Digital Audio Recording Devices and Media
Subchapter A—Definitions
§ 1001. Definitions
Subchapter B—Copying Controls
§ 1002. Incorporation of copying controls
Subchapter C—Royalty Payments
§ 1003. Obligation to make royalty payments
§ 1004. Royalty payments
§ 1005. Deposit of royalty payments and deduction of expenses
§ 1006. Entitlement to royalty payments
§ 1007. Procedures for distributing royalty payments
Subchapter D—Prohibition on Certain Infringement Actions, Remedies, and
Arbitration
§ 1008. Prohibition on certain infringement actions
§ 1009. Civil remedies
§ 1010. Determination of certain disputes
Chapter 11—Sound Recordings and Music Videos
§ 1101. Unauthorized fixation and trafficking in sound recordings and music videos
Chapter 12—Copyright Protection and Management Systems
§ 1201. Circumvention of copyright protection systems
§ 1202. Integrity of copyright management information
§ 1203. Civil remedies
§ 1204. Criminal offenses and penalties
§ 1205. Savings clause
Chapter 13—Protection of Original Designs
§ 1301. Designs protected
§ 1302. Designs not subject to protection
§ 1303. Revisions, adaptations, and rearrangements
§ 1304. Commencement of protection
§ 1305. Term of protection
§ 1306. Design notice
§ 1307. Effect of omission of notice
§ 1308. Exclusive rights
§ 1309. Infringement
52

Copyright Act of 1976

§ 1310.
§ 1311.
§ 1312.
§ 1313.
§ 1314.
§ 1315.
§ 1316.
§ 1317.
§ 1318.
§ 1319.
§ 1320.
§ 1321.
§ 1322.
§ 1323.
§ 1324.
§ 1325.
§ 1326.
§ 1327.
§ 1328.
§ 1329.
§ 1330.
§ 1331.
§ 1332.

§ 101.

Application for registration
Benefit of earlier filing date in foreign country
Oaths and acknowledgments
Examination of application and issue or refusal of registration
Certification of registration
Publication of announcements and indexes
Fees
Regulations
Copies of records
Correction of errors in certificates
Ownership and transfer
Remedy for infringement
Injunctions
Recovery for infringement
Power of court over registration
Liability for action on registration fraudulently obtained
Penalty for false marking
Penalty for false representation
Enforcement by Treasury and Postal Service
Relation to design patent law
Common law and other rights unaffected
Administrator; Office of the Administrator
No retroactive effect

Chapter 14—Unauthorized Use of Pre-1972 Sound Recordings
§ 1401. Unauthorized use of pre-1972 sound recordings

Appendix
Title 28—Judiciary and Judicial Procedure, U.S. Code
§ 137.

Division of business among district judges

Chapter 1—Subject Matter and Scope of Copyright
§ 101.—Definitions
Except as otherwise provided in this title, as used in this title, the following terms and
their variant forms mean the following:
An “anonymous work” is a work on the copies or phonorecords of which no natural
person is identified as author.
An “architectural work” is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and
elements in the design, but does not include individual standard features.
“Audiovisual works” are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines, or devices such as projectors, viewers,
or electronic equipment, together with accompanying sounds, if any, regardless of the nature
of the material objects, such as films or tapes, in which the works are embodied.
The “Berne Convention” is the Convention for the Protection of Literary and Artistic
Works, signed at Berne, Switzerland, on September 9, 1886, and all acts, protocols, and
revisions thereto.
The “best edition” of a work is the edition, published in the United States at any time
53

§ 101.

Copyright Act of 1976

before the date of deposit, that the Library of Congress determines to be most suitable
for its purposes.
A person’s “children” are that person’s immediate offspring, whether legitimate or not,
and any children legally adopted by that person.
A “collective work” is a work, such as a periodical issue, anthology, or encyclopedia,
in which a number of contributions, constituting separate and independent works in
themselves, are assembled into a collective whole.
A “compilation” is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term “compilation”
includes collective works.
A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
“Copies” are material objects, other than phonorecords, in which a work is fixed by
any method now known or later developed, and from which the work can be perceived,
reproduced, or otherwise communicated, either directly or with the aid of a machine or
device. The term “copies” includes the material object, other than a phonorecord, in
which the work is first fixed.
“Copyright owner”, with respect to any one of the exclusive rights comprised in a
copyright, refers to the owner of that particular right.
A “Copyright Royalty Judge” is a Copyright Royalty Judge appointed under section
802 of this title, and includes any individual serving as an interim Copyright Royalty
Judge under such section.
A work is “created” when it is fixed in a copy or phonorecord for the first time; where
a work is prepared over a period of time, the portion of it that has been fixed at any
particular time constitutes the work as of that time, and where the work has been prepared
in different versions, each version constitutes a separate work.
A “derivative work” is a work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture version,
sound recording, art reproduction, abridgment, condensation, or any other form in which
a work may be recast, transformed, or adapted. A work consisting of editorial revisions,
annotations, elaborations, or other modifications which, as a whole, represent an original
work of authorship, is a “derivative work”.
A “device”, “machine”, or “process” is one now known or later developed.
A “digital transmission” is a transmission in whole or in part in a digital or other nonanalog format.
To “display” a work means to show a copy of it, either directly or by means of a film,
slide, television image, or any other device or process or, in the case of a motion picture
or other audiovisual work, to show individual images nonsequentially.
An “establishment” is a store, shop, or any similar place of business open to the general
public for the primary purpose of selling goods or services in which the majority of the
gross square feet of space that is nonresidential is used for that purpose, and in which
nondramatic musical works are performed publicly.
The term “financial gain” includes receipt, or expectation of receipt, of anything of
value, including the receipt of other copyrighted works.
A work is “fixed” in a tangible medium of expression when its embodiment in a copy
or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of
more than transitory duration. A work consisting of sounds, images, or both, that are
54

Copyright Act of 1976

§ 101.

being transmitted, is “fixed” for purposes of this title if a fixation of the work is being
made simultaneously with its transmission.
A “food service or drinking establishment” is a restaurant, inn, bar, tavern, or any other
similar place of business in which the public or patrons assemble for the primary purpose
of being served food or drink, in which the majority of the gross square feet of space that
is nonresidential is used for that purpose, and in which nondramatic musical works are
performed publicly.
The “Geneva Phonograms Convention” is the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, concluded at Geneva, Switzerland, on October 29, 1971.
The “gross square feet of space” of an establishment means the entire interior space of
that establishment, and any adjoining outdoor space used to serve patrons, whether on a
seasonal basis or otherwise.
The terms “including” and “such as” are illustrative and not limitative.
An “international agreement” is—
(1) the Universal Copyright Convention;
(2) the Geneva Phonograms Convention;
(3) the Berne Convention;
(4) the WTO Agreement;
(5) the WIPO Copyright Treaty;
(6) the WIPO Performances and Phonograms Treaty; and
(7) any other copyright treaty to which the United States is a party.
A “joint work” is a work prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole.
“Literary works” are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks,
or cards, in which they are embodied.
The term “motion picture exhibition facility” means a movie theater, screening room,
or other venue that is being used primarily for the exhibition of a copyrighted motion
picture, if such exhibition is open to the public or is made to an assembled group of
viewers outside of a normal circle of a family and its social acquaintances.
“Motion pictures” are audiovisual works consisting of a series of related images which,
when shown in succession, impart an impression of motion, together with accompanying
sounds, if any.
To “perform” a work means to recite, render, play, dance, or act it, either directly or by
means of any device or process or, in the case of a motion picture or other audiovisual work,
to show its images in any sequence or to make the sounds accompanying it audible.
A “performing rights society” is an association, corporation, or other entity that licenses the public performance of nondramatic musical works on behalf of copyright
owners of such works, such as the American Society of Composers, Authors and Publishers (ASCAP), Broadcast Music, Inc. (BMI), and SESAC, Inc.
“Phonorecords” are material objects in which sounds, other than those accompanying
a motion picture or other audiovisual work, are fixed by any method now known or later
developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term
“phonorecords” includes the material object in which the sounds are first fixed.
“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions,
55

§ 101.

Copyright Act of 1976

maps, globes, charts, diagrams, models, and technical drawings, including architectural
plans. Such works shall include works of artistic craftsmanship insofar as their form but
not their mechanical or utilitarian aspects are concerned; the design of a useful article, as
defined in this section, shall be considered a pictorial, graphic, or sculptural work only
if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing independently
of, the utilitarian aspects of the article.
For purposes of section 513, a “proprietor” is an individual, corporation, partnership,
or other entity, as the case may be, that owns an establishment or a food service or drinking establishment, except that no owner or operator of a radio or television station licensed by the Federal Communications Commission, cable system or satellite carrier,
cable or satellite carrier service or programmer, provider of online services or network
access or the operator of facilities therefor, telecommunications company, or any other
such audio or audiovisual service or programmer now known or as may be developed in
the future, commercial subscription music service, or owner or operator of any other
transmission service, shall under any circumstances be deemed to be a proprietor.
A “pseudonymous work” is a work on the copies or phonorecords of which the author
is identified under a fictitious name.
“Publication” is the distribution of copies or phonorecords of a work to the public by
sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution,
public performance, or public display, constitutes publication. A public performance or
display of a work does not of itself constitute publication.
To perform or display a work “publicly” means—
(1) to perform or display it at a place open to the public or at any place where a
substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
(2) to transmit or otherwise communicate a performance or display of the work to a
place specified by clause (1) or to the public, by means of any device or process, whether
the members of the public capable of receiving the performance or display receive it in
the same place or in separate places and at the same time or at different times.
“Registration”, for purposes of sections 205(c)(2), 405, 406, 410(d), 411, 412, and
506(e), means a registration of a claim in the original or the renewed and extended term
of copyright.
“Sound recordings” are works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or
other audiovisual work, regardless of the nature of the material objects, such as disks,
tapes, or other phonorecords, in which they are embodied.
“State” includes the District of Columbia and the Commonwealth of Puerto Rico, and
any territories to which this title is made applicable by an Act of Congress.
A “transfer of copyright ownership” is an assignment, mortgage, exclusive license, or
any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect,
but not including a nonexclusive license.
A “transmission program” is a body of material that, as an aggregate, has been produced for the sole purpose of transmission to the public in sequence and as a unit.
To “transmit” a performance or display is to communicate it by any device or process
whereby images or sounds are received beyond the place from which they are sent.
A “treaty party” is a country or intergovernmental organization other than the United
56

Copyright Act of 1976

§ 101.

States that is a party to an international agreement.
The “United States”, when used in a geographical sense, comprises the several States,
the District of Columbia and the Commonwealth of Puerto Rico, and the organized territories under the jurisdiction of the United States Government.
For purposes of section 411, a work is a “United States work” only if—
(1) in the case of a published work, the work is first published—
(A) in the United States;
(B) simultaneously in the United States and another treaty party or parties, whose
law grants a term of copyright protection that is the same as or longer than the term
provided in the United States;
(C) simultaneously in the United States and a foreign nation that is not a treaty
party; or
(D) in a foreign nation that is not a treaty party, and all of the authors of the work
are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual
work legal entities with headquarters in, the United States;
(2) in the case of an unpublished work, all the authors of the work are nationals,
domiciliaries, or habitual residents of the United States, or, in the case of an unpublished audiovisual work, all the authors are legal entities with headquarters in the
United States; or
(3) in the case of a pictorial, graphic, or sculptural work incorporated in a building
or structure, the building or structure is located in the United States.
A “useful article” is an article having an intrinsic utilitarian function that is not merely
to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.
The author’s “widow” or “widower” is the author’s surviving spouse under the law of
the author’s domicile at the time of his or her death, whether or not the spouse has later
remarried.
The “WIPO Copyright Treaty” is the WIPO Copyright Treaty concluded at Geneva,
Switzerland, on December 20, 1996.
The “WIPO Performances and Phonograms Treaty” is the WIPO Performances and
Phonograms Treaty concluded at Geneva, Switzerland, on December 20, 1996.
A “work of visual art” is—
(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited
edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of
200 or fewer that are consecutively numbered by the author and bear the signature or
other identifying mark of the author; or
(2) a still photographic image produced for exhibition purposes only, existing in a
single copy that is signed by the author, or in a limited edition of 200 copies or fewer
that are signed and consecutively numbered by the author.
A work of visual art does not include—
(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art,
motion picture or other audiovisual work, book, magazine, newspaper, periodical, data
base, electronic information service, electronic publication, or similar publication;
(ii) any merchandising item or advertising, promotional, descriptive, covering,
or packaging material or container;
(iii) any portion or part of any item described in clause (i) or (ii);
(B) any work made for hire; or
(C) any work not subject to copyright protection under this title.
57

§ 102.

Copyright Act of 1976

A “work of the United States Government” is a work prepared by an officer or employee of the United States Government as part of that person’s official duties.
A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective
work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material
for a test, or as an atlas, if the parties expressly agree in a written instrument signed by
them that the work shall be considered a work made for hire. For the purpose of the
foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding,
illustrating, explaining, revising, commenting upon, or assisting in the use of the other
work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial
notes, musical arrangements, answer material for tests, bibliographies, appendixes, and
indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for
publication and with the purpose of use in systematic instructional activities.
In determining whether any work is eligible to be considered a work made for hire under
paragraph (2), neither the amendment contained in section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9)
of Public Law 106–113, nor the deletion of the words added by that amendment—
(A) shall be considered or otherwise given any legal significance, or
(B) shall be interpreted to indicate congressional approval or disapproval of, or
acquiescence in, any judicial determination,
by the courts or the Copyright Office. Paragraph (2) shall be interpreted as if both section
2(a)(1) of the Work Made For Hire and Copyright Corrections Act of 2000 and section
1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999,
as enacted by section 1000(a)(9) of Public Law 106–113, were never enacted, and without regard to any inaction or awareness by the Congress at any time of any judicial determinations.
The terms “WTO Agreement” and “WTO member country” have the meanings given
those terms in paragraphs (9) and (10), respectively, of section 2 of the Uruguay Round
Agreements Act.
§ 102.—Subject matter of copyright: In general
(a) Copyright protection subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium of expression, now known or later developed,
from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following
categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
(b) In no case does copyright protection for an original work of authorship extend to any
idea, procedure, process, system, method of operation, concept, principle, or discovery,
58

Copyright Act of 1976

§ 104.

regardless of the form in which it is described, explained, illustrated, or embodied in
such work.
§ 103.—Subject matter of copyright: Compilations and derivative works
(a) The subject matter of copyright as specified by section 102 includes compilations
and derivative works, but protection for a work employing preexisting material in which
copyright subsists does not extend to any part of the work in which such material has
been used unlawfully.
(b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed
in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration,
ownership, or subsistence of, any copyright protection in the preexisting material.
§ 104.—Subject matter of copyright: National origin
(a) Unpublished Works.—The works specified by sections 102 and 103, while unpublished, are subject to protection under this title without regard to the nationality or
domicile of the author.
(b) Published Works.—The works specified by sections 102 and 103, when published, are subject to protection under this title if—
(1) on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a
treaty party, or is a stateless person, wherever that person may be domiciled; or
(2) the work is first published in the United States or in a foreign nation that, on the
date of first publication, is a treaty party; or
(3) the work is a sound recording that was first fixed in a treaty party; or
(4) the work is a pictorial, graphic, or sculptural work that is incorporated in a building or other structure, or an architectural work that is embodied in a building and the
building or structure is located in the United States or a treaty party; or
(5) the work is first published by the United Nations or any of its specialized agencies, or by the Organization of American States; or
(6) the work comes within the scope of a Presidential proclamation. Whenever the
President finds that a particular foreign nation extends, to works by authors who are nationals or domiciliaries of the United States or to works that are first published in the
United States, copyright protection on substantially the same basis as that on which the
foreign nation extends protection to works of its own nationals and domiciliaries and
works first published in that nation, the President may by proclamation extend protection
under this title to works of which one or more of the authors is, on the date of first publication, a national, domiciliary, or sovereign authority of that nation, or which was first
published in that nation. The President may revise, suspend, or revoke any such proclamation or impose any conditions or limitations on protection under a proclamation.
For purposes of paragraph (2), a work that is published in the United States or a treaty
party within 30 days after publication in a foreign nation that is not a treaty party shall be
considered to be first published in the United States or such treaty party, as the case may be.
(c) Effect of Berne Convention.—No right or interest in a work eligible for protection
under this title may be claimed by virtue of, or in reliance upon, the provisions of the Berne
Convention, or the adherence of the United States thereto. Any rights in a work eligible for
protection under this title that derive from this title, other Federal or State statutes, or the
59

§ 104A.

Copyright Act of 1976

common law, shall not be expanded or reduced by virtue of, or in reliance upon, the provisions of the Berne Convention, or the adherence of the United States thereto.
(d) Effect of Phonograms Treaties.—Notwithstanding the provisions of subsection
(b), no works other than sound recordings shall be eligible for protection under this title
solely by virtue of the adherence of the United States to the Geneva Phonograms Convention or the WIPO Performances and Phonograms Treaty.
§ 104A.—Copyright in restored works
(a) Automatic Protection and Term.—
(1) Term.—
(A) Copyright subsists, in accordance with this section, in restored works, and
vests automatically on the date of restoration.
(B) Any work in which copyright is restored under this section shall subsist for the
remainder of the term of copyright that the work would have otherwise been granted
in the United States if the work never entered the public domain in the United States.
(2) Exception.—Any work in which the copyright was ever owned or administered
by the Alien Property Custodian and in which the restored copyright would be owned
by a government or instrumentality thereof, is not a restored work.
(b) Ownership of Restored Copyright.—A restored work vests initially in the author or
initial rightholder of the work as determined by the law of the source country of the work.
(c) Filing of Notice of Intent to Enforce Restored Copyright Against Reliance Parties.—On or after the date of restoration, any person who owns a copyright in a restored
work or an exclusive right therein may file with the Copyright Office a notice of intent
to enforce that person’s copyright or exclusive right or may serve such a notice directly
on a reliance party. Acceptance of a notice by the Copyright Office is effective as to any
reliance parties but shall not create a presumption of the validity of any of the facts stated
therein. Service on a reliance party is effective as to that reliance party and any other
reliance parties with actual knowledge of such service and of the contents of that notice.
(d) Remedies for Infringement of Restored Copyrights.—
(1) Enforcement of copyright in restored works in the absence of a reliance
party.—As against any party who is not a reliance party, the remedies provided in
chapter 5 of this title shall be available on or after the date of restoration of a restored
copyright with respect to an act of infringement of the restored copyright that is commenced on or after the date of restoration.
(2) Enforcement of copyright in restored works as against reliance parties.—As
against a reliance party, except to the extent provided in paragraphs (3) and (4), the
remedies provided in chapter 5 of this title shall be available, with respect to an act of
infringement of a restored copyright, on or after the date of restoration of the restored
copyright if the requirements of either of the following subparagraphs are met:
(A)(i) The owner of the restored copyright (or such owner’s agent) or the owner
of an exclusive right therein (or such owner’s agent) files with the Copyright Office,
during the 24-month period beginning on the date of restoration, a notice of intent to
enforce the restored copyright; and
(ii)(I) the act of infringement commenced after the end of the 12-month period
beginning on the date of publication of the notice in the Federal Register;
(II) the act of infringement commenced before the end of the 12-month period
described in subclause (I) and continued after the end of that 12-month period,
in which case remedies shall be available only for infringement occurring after
the end of that 12-month period; or
60

Copyright Act of 1976

§ 104A.

(III) copies or phonorecords of a work in which copyright has been restored under
this section are made after publication of the notice of intent in the Federal Register.
(B)(i) The owner of the restored copyright (or such owner’s agent) or the owner
of an exclusive right therein (or such owner’s agent) serves upon a reliance party a
notice of intent to enforce a restored copyright; and
(ii)(I) the act of infringement commenced after the end of the 12-month period
beginning on the date the notice of intent is received;
(II) the act of infringement commenced before the end of the 12-month period
described in subclause (I) and continued after the end of that 12-month period,
in which case remedies shall be available only for the infringement occurring
after the end of that 12-month period; or
(III) copies or phonorecords of a work in which copyright has been restored
under this section are made after receipt of the notice of intent.
In the event that notice is provided under both subparagraphs (A) and (B), the 12month period referred to in such subparagraphs shall run from the earlier of publication
or service of notice.
(3) Existing derivative works.—
(A) In the case of a derivative work that is based upon a restored work and is created—
(i) before the date of the enactment of the Uruguay Round Agreements Act, if
the source country of the restored work is an eligible country on such date, or
(ii) before the date on which the source country of the restored work becomes an
eligible country, if that country is not an eligible country on such date of enactment,
a reliance party may continue to exploit that derivative work for the duration of
the restored copyright if the reliance party pays to the owner of the restored copyright
reasonable compensation for conduct which would be subject to a remedy for infringement but for the provisions of this paragraph.
(B) In the absence of an agreement between the parties, the amount of such compensation shall be determined by an action in United States district court, and shall
reflect any harm to the actual or potential market for or value of the restored work
from the reliance party’s continued exploitation of the work, as well as compensation
for the relative contributions of expression of the author of the restored work and the
reliance party to the derivative work.
(4) Commencement of infringement for reliance parties.—For purposes of section
412, in the case of reliance parties, infringement shall be deemed to have commenced
before registration when acts which would have constituted infringement had the restored work been subject to copyright were commenced before the date of restoration.
(e) Notices of Intent To Enforce a Restored Copyright.—
(1) Notices of intent filed with the Copyright Office.—
(A)(i) A notice of intent filed with the Copyright Office to enforce a restored copyright shall be signed by the owner of the restored copyright or the owner of an exclusive right therein, who files the notice under subsection (d)(2)(A)(i) (hereafter in
this paragraph referred to as the “owner”), or by the owner’s agent, shall identify the
title of the restored work, and shall include an English translation of the title and any
other alternative titles known to the owner by which the restored work may be identified, and an address and telephone number at which the owner may be contacted. If
the notice is signed by an agent, the agency relationship must have been constituted
in a writing signed by the owner before the filing of the notice. The Copyright Office
may specifically require in regulations other information to be included in the notice,
but failure to provide such other information shall not invalidate the notice or be a
61

§ 104A.

Copyright Act of 1976

basis for refusal to list the restored work in the Federal Register.
(ii) If a work in which copyright is restored has no formal title, it shall be described in the notice of intent in detail sufficient to identify it.
(iii) Minor errors or omissions may be corrected by further notice at any time
after the notice of intent is filed. Notices of corrections for such minor errors or
omissions shall be accepted after the period established in subsection (d)(2)(A)(i).
Notices shall be published in the Federal Register pursuant to subparagraph (B).
(B)(i) The Register of Copyrights shall publish in the Federal Register, commencing
not later than 4 months after the date of restoration for a particular nation and every 4
months thereafter for a period of 2 years, lists identifying restored works and the ownership thereof if a notice of intent to enforce a restored copyright has been filed.
(ii) Not less than 1 list containing all notices of intent to enforce shall be maintained in the Public Information Office of the Copyright Office and shall be available for public inspection and copying during regular business hours pursuant to
sections 705 and 708.
(C) The Register of Copyrights is authorized to fix reasonable fees based on the
costs of receipt, processing, recording, and publication of notices of intent to enforce
a restored copyright and corrections thereto.
(D)(i) Not later than 90 days before the date the Agreement on Trade-Related Aspects of Intellectual Property referred to in section 101(d)(15) of the Uruguay Round
Agreements Act enters into force with respect to the United States, the Copyright
Office shall issue and publish in the Federal Register regulations governing the filing
under this subsection of notices of intent to enforce a restored copyright.
(ii) Such regulations shall permit owners of restored copyrights to file simultaneously for registration of the restored copyright.
(2) Notices of intent served on a reliance party.—
(A) Notices of intent to enforce a restored copyright may be served on a reliance
party at any time after the date of restoration of the restored copyright.
(B) Notices of intent to enforce a restored copyright served on a reliance party shall
be signed by the owner or the owner’s agent, shall identify the restored work and the
work in which the restored work is used, if any, in detail sufficient to identify them,
and shall include an English translation of the title, any other alternative titles known
to the owner by which the work may be identified, the use or uses to which the owner
objects, and an address and telephone number at which the reliance party may contact
the owner. If the notice is signed by an agent, the agency relationship must have been
constituted in writing and signed by the owner before service of the notice.
(3) Effect of material false statements.—Any material false statement knowingly
made with respect to any restored copyright identified in any notice of intent shall
make void all claims and assertions made with respect to such restored copyright.
(f) Immunity From Warranty and Related Liability.—
(1) In general.—Any person who warrants, promises, or guarantees that a work does
not violate an exclusive right granted in section 106 shall not be liable for legal, equitable, arbitral, or administrative relief if the warranty, promise, or guarantee is
breached by virtue of the restoration of copyright under this section, if such warranty,
promise, or guarantee is made before January 1, 1995.
(2) Performances.—No person shall be required to perform any act if such performance is made infringing by virtue of the restoration of copyright under the provisions
of this section, if the obligation to perform was undertaken before January 1, 1995.
(g) Proclamation of Copyright Restoration.—Whenever the President finds that a
62

Copyright Act of 1976

§ 104A.

particular foreign nation extends, to works by authors who are nationals or domiciliaries
of the United States, restored copyright protection on substantially the same basis as
provided under this section, the President may by proclamation extend restored protection provided under this section to any work—
(1) of which one or more of the authors is, on the date of first publication, a national,
domiciliary, or sovereign authority of that nation; or
(2) which was first published in that nation.
The President may revise, suspend, or revoke any such proclamation or impose any
conditions or limitations on protection under such a proclamation.
(h) Definitions.—For purposes of this section and section 109(a):
(1) The term “date of adherence or proclamation” means the earlier of the date on
which a foreign nation which, as of the date the WTO Agreement enters into force with
respect to the United States, is not a nation adhering to the Berne Convention or a
WTO member country, becomes—
(A) a nation adhering to the Berne Convention;
(B) a WTO member country;
(C) a nation adhering to the WIPO Copyright Treaty;
(D) a nation adhering to the WIPO Performances and Phonograms Treaty; or
(E) subject to a Presidential proclamation under subsection (g).
(2) The “date of restoration” of a restored copyright is—
(A) January 1, 1996, if the source country of the restored work is a nation adhering
to the Berne Convention or a WTO member country on such date, or
(B) the date of adherence or proclamation, in the case of any other source country
of the restored work.
(3) The term “eligible country” means a nation, other than the United States, that—
(A) becomes a WTO member country after the date of the enactment of the Uruguay Round Agreements Act;
(B) on such date of enactment is, or after such date of enactment becomes, a nation
adhering to the Berne Convention;
(C) adheres to the WIPO Copyright Treaty;
(D) adheres to the WIPO Performances and Phonograms Treaty; or
(E) after such date of enactment becomes subject to a proclamation under subsection (g).
(4) The term “reliance party” means any person who—
(A) with respect to a particular work, engages in acts, before the source country of
that work becomes an eligible country, which would have violated section 106 if the
restored work had been subject to copyright protection, and who, after the source
country becomes an eligible country, continues to engage in such acts;
(B) before the source country of a particular work becomes an eligible country,
makes or acquires 1 or more copies or phonorecords of that work; or
(C) as the result of the sale or other disposition of a derivative work covered under
subsection (d)(3), or significant assets of a person described in subparagraph (A) or
(B), is a successor, assignee, or licensee of that person.
(5) The term “restored copyright” means copyright in a restored work under this section.
(6) The term “restored work” means an original work of authorship that—
(A) is protected under subsection (a);
(B) is not in the public domain in its source country through expiration of term of
protection;
(C) is in the public domain in the United States due to—
63

§ 105.

Copyright Act of 1976

(i) noncompliance with formalities imposed at any time by United States copyright
law, including failure of renewal, lack of proper notice, or failure to comply with
any manufacturing requirements;
(ii) lack of subject matter protection in the case of sound recordings fixed before
February 15, 1972; or
(iii) lack of national eligibility;
(D) has at least one author or rightholder who was, at the time the work was created, a national or domiciliary of an eligible country, and if published, was first published in an eligible country and not published in the United States during the 30-day
period following publication in such eligible country; and
(E) if the source country for the work is an eligible country solely by virtue of its
adherence to the WIPO Performances and Phonograms Treaty, is a sound recording.
(7) The term “rightholder” means the person—
(A) who, with respect to a sound recording, first fixes a sound recording with authorization, or
(B) who has acquired rights from the person described in subparagraph (A) by
means of any conveyance or by operation of law.
(8) The “source country” of a restored work is—
(A) a nation other than the United States;
(B) in the case of an unpublished work—
(i) the eligible country in which the author or rightholder is a national or domiciliary, or, if a restored work has more than 1 author or rightholder, of which the
majority of foreign authors or rightholders are nationals or domiciliaries; or
(ii) if the majority of authors or rightholders are not foreign, the nation other
than the United States which has the most significant contacts with the work; and
(C) in the case of a published work—
(i) the eligible country in which the work is first published, or
(ii) if the restored work is published on the same day in 2 or more eligible countries, the eligible country which has the most significant contacts with the work.
§ 105.—Subject matter of copyright: United States Government works
Copyright protection under this title is not available for any work of the United States
Government, but the United States Government is not precluded from receiving and
holding copyrights transferred to it by assignment, bequest, or otherwise.
§ 106.—Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this title has the
exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale
or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and
motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes,
and pictorial, graphic, or sculptural works, including the individual images of a motion
picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by
means of a digital audio transmission.
64

Copyright Act of 1976

§ 106A.

§ 106A.—Rights of certain authors to attribution and integrity
(a) Rights of Attribution and Integrity.—Subject to section 107 and independent of
the exclusive rights provided in section 106, the author of a work of visual art—
(1) shall have the right—
(A) to claim authorship of that work, and
(B) to prevent the use of his or her name as the author of any work of visual art
which he or she did not create;
(2) shall have the right to prevent the use of his or her name as the author of the work
of visual art in the event of a distortion, mutilation, or other modification of the work
which would be prejudicial to his or her honor or reputation; and
(3) subject to the limitations set forth in section 113(d), shall have the right—
(A) to prevent any intentional distortion, mutilation, or other modification of that
work which would be prejudicial to his or her honor or reputation, and any intentional
distortion, mutilation, or modification of that work is a violation of that right, and
(B) to prevent any destruction of a work of recognized stature, and any intentional
or grossly negligent destruction of that work is a violation of that right.
(b) Scope and Exercise of Rights.—Only the author of a work of visual art has the
rights conferred by subsection (a) in that work, whether or not the author is the copyright
owner. The authors of a joint work of visual art are coowners of the rights conferred by
subsection (a) in that work.
(c) Exceptions.—
(1) The modification of a work of visual art which is a result of the passage of time
or the inherent nature of the materials is not a distortion, mutilation, or other modification described in subsection (a)(3)(A).
(2) The modification of a work of visual art which is the result of conservation, or
of the public presentation, including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification described in subsection (a)(3)
unless the modification is caused by gross negligence.
(3) The rights described in paragraphs (1) and (2) of subsection (a) shall not apply
to any reproduction, depiction, portrayal, or other use of a work in, upon, or in any
connection with any item described in subparagraph (A) or (B) of the definition of
“work of visual art” in section 101, and any such reproduction, depiction, portrayal, or
other use of a work is not a destruction, distortion, mutilation, or other modification
described in paragraph (3) of subsection (a).
(d) Duration of Rights.—
(1) With respect to works of visual art created on or after the effective date set forth
in section 610(a) of the Visual Artists Rights Act of 1990, the rights conferred by subsection (a) shall endure for a term consisting of the life of the author.
(2) With respect to works of visual art created before the effective date set forth in
section 610(a) of the Visual Artists Rights Act of 1990, but title to which has not, as of
such effective date, been transferred from the author, the rights conferred by subsection
(a) shall be coextensive with, and shall expire at the same time as, the rights conferred
by section 106.
(3) In the case of a joint work prepared by two or more authors, the rights conferred
by subsection (a) shall endure for a term consisting of the life of the last surviving author.
(4) All terms of the rights conferred by subsection (a) run to the end of the calendar
year in which they would otherwise expire.
(e) Transfer and Waiver.—
(1) The rights conferred by subsection (a) may not be transferred, but those rights may
65

§ 107.

Copyright Act of 1976

be waived if the author expressly agrees to such waiver in a written instrument signed
by the author. Such instrument shall specifically identify the work, and uses of that work,
to which the waiver applies, and the waiver shall apply only to the work and uses so
identified. In the case of a joint work prepared by two or more authors, a waiver of rights
under this paragraph made by one such author waives such rights for all such authors.
(2) Ownership of the rights conferred by subsection (a) with respect to a work of
visual art is distinct from ownership of any copy of that work, or of a copyright or any
exclusive right under a copyright in that work. Transfer of ownership of any copy of a
work of visual art, or of a copyright or any exclusive right under a copyright, shall not
constitute a waiver of the rights conferred by subsection (a). Except as may otherwise
be agreed by the author in a written instrument signed by the author, a waiver of the
rights conferred by subsection (a) with respect to a work of visual art shall not constitute a transfer of ownership of any copy of that work, or of ownership of a copyright
or of any exclusive right under a copyright in that work.
§ 107.—Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted
work, including such use by reproduction in copies or phonorecords or by any other
means specified by that section, for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship, or research, is not
an infringement of copyright. In determining whether the use made of a work in any
particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.
§ 108.—Limitations on exclusive rights: Reproduction by libraries and archives
(a) Except as otherwise provided in this title and notwithstanding the provisions of
section 106, it is not an infringement of copyright for a library or archives, or any of its
employees acting within the scope of their employment, to reproduce no more than one
copy or phonorecord of a work, except as provided in subsections (b) and (c), or to distribute such copy or phonorecord, under the conditions specified by this section, if—
(1) the reproduction or distribution is made without any purpose of direct or indirect
commercial advantage;
(2) the collections of the library or archives are
(i) open to the public, or
(ii) available not only to researchers affiliated with the library or archives or with
the institution of which it is a part, but also to other persons doing research in a
specialized field; and
(3) the reproduction or distribution of the work includes a notice of copyright that
appears on the copy or phonorecord that is reproduced under the provisions of this
section, or includes a legend stating that the work may be protected by copyright if no
such notice can be found on the copy or phonorecord that is reproduced under the
provisions of this section.
66

Copyright Act of 1976

§ 108.

(b) The rights of reproduction and distribution under this section apply to three copies
or phonorecords of an unpublished work duplicated solely for purposes of preservation
and security or for deposit for research use in another library or archives of the type
described by clause (2) of subsection (a), if—
(1) the copy or phonorecord reproduced is currently in the collections of the library
or archives; and
(2) any such copy or phonorecord that is reproduced in digital format is not otherwise
distributed in that format and is not made available to the public in that format outside
the premises of the library or archives.
(c) The right of reproduction under this section applies to three copies or phonorecords
of a published work duplicated solely for the purpose of replacement of a copy or
phonorecord that is damaged, deteriorating, lost, or stolen, or if the existing format in
which the work is stored has become obsolete, if—
(1) the library or archives has, after a reasonable effort, determined that an unused
replacement cannot be obtained at a fair price; and
(2) any such copy or phonorecord that is reproduced in digital format is not made
available to the public in that format outside the premises of the library or archives in
lawful possession of such copy.
For purposes of this subsection, a format shall be considered obsolete if the machine or
device necessary to render perceptible a work stored in that format is no longer manufactured or is no longer reasonably available in the commercial marketplace.
(d) The rights of reproduction and distribution under this section apply to a copy, made
from the collection of a library or archives where the user makes his or her request or
from that of another library or archives, of no more than one article or other contribution
to a copyrighted collection or periodical issue, or to a copy or phonorecord of a small
part of any other copyrighted work, if—
(1) the copy or phonorecord becomes the property of the user, and the library or
archives has had no notice that the copy or phonorecord would be used for any purpose
other than private study, scholarship, or research; and
(2) the library or archives displays prominently, at the place where orders are accepted, and includes on its order form, a warning of copyright in accordance with requirements that the Register of Copyrights shall prescribe by regulation.
(e) The rights of reproduction and distribution under this section apply to the entire
work, or to a substantial part of it, made from the collection of a library or archives where
the user makes his or her request or from that of another library or archives, if the library
or archives has first determined, on the basis of a reasonable investigation, that a copy or
phonorecord of the copyrighted work cannot be obtained at a fair price, if—
(1) the copy or phonorecord becomes the property of the user, and the library or
archives has had no notice that the copy or phonorecord would be used for any purpose
other than private study, scholarship, or research; and
(2) the library or archives displays prominently, at the place where orders are accepted, and includes on its order form, a warning of copyright in accordance with requirements that the Register of Copyrights shall prescribe by regulation.
(f) Nothing in this section—
(1) shall be construed to impose liability for copyright infringement upon a library
or archives or its employees for the unsupervised use of reproducing equipment located
on its premises: Provided, That such equipment displays a notice that the making of a
copy may be subject to the copyright law;
(2) excuses a person who uses such reproducing equipment or who requests a copy
67

§ 108.

Copyright Act of 1976

or phonorecord under subsection (d) from liability for copyright infringement for any
such act, or for any later use of such copy or phonorecord, if it exceeds fair use as
provided by section 107;
(3) shall be construed to limit the reproduction and distribution by lending of a limited number of copies and excerpts by a library or archives of an audiovisual news
program, subject to clauses (1), (2), and (3) of subsection (a); or
(4) in any way affects the right of fair use as provided by section 107, or any contractual obligations assumed at any time by the library or archives when it obtained a
copy or phonorecord of a work in its collections.
(g) The rights of reproduction and distribution under this section extend to the isolated
and unrelated reproduction or distribution of a single copy or phonorecord of the same
material on separate occasions, but do not extend to cases where the library or archives,
or its employee—
(1) is aware or has substantial reason to believe that it is engaging in the related or
concerted reproduction or distribution of multiple copies or phonorecords of the same
material, whether made on one occasion or over a period of time, and whether intended
for aggregate use by one or more individuals or for separate use by the individual
members of a group; or
(2) engages in the systematic reproduction or distribution of single or multiple copies
or phonorecords of material described in subsection (d): Provided, That nothing in this
clause prevents a library or archives from participating in interlibrary arrangements
that do not have, as their purpose or effect, that the library or archives receiving such
copies or phonorecords for distribution does so in such aggregate quantities as to substitute for a subscription to or purchase of such work.
(h)(1) For purposes of this section, during the last 20 years of any term of copyright of
a published work, a library or archives, including a nonprofit educational institution that
functions as such, may reproduce, distribute, display, or perform in facsimile or digital
form a copy or phonorecord of such work, or portions thereof, for purposes of preservation, scholarship, or research, if such library or archives has first determined, on the basis
of a reasonable investigation, that none of the conditions set forth in subparagraphs (A),
(B), and (C) of paragraph (2) apply.
(2) No reproduction, distribution, display, or performance is authorized under this
subsection if—
(A) the work is subject to normal commercial exploitation;
(B) a copy or phonorecord of the work can be obtained at a reasonable price; or
(C) the copyright owner or its agent provides notice pursuant to regulations promulgated by the Register of Copyrights that either of the conditions set forth in subparagraphs (A) and (B) applies.
(3) The exemption provided in this subsection does not apply to any subsequent uses
by users other than such library or archives.
(i) The rights of reproduction and distribution under this section do not apply to a musical
work, a pictorial, graphic or sculptural work, or a motion picture or other audiovisual work
other than an audiovisual work dealing with news, except that no such limitation shall apply with respect to rights granted by subsections (b), (c), and (h), or with respect to pictorial
or graphic works published as illustrations, diagrams, or similar adjuncts to works of which
copies are reproduced or distributed in accordance with subsections (d) and (e).

68

Copyright Act of 1976

§ 109.

§ 109.—Limitations on exclusive rights: Effect of transfer of particular copy or
phonorecord
(a) Notwithstanding the provisions of section 106(3), the owner of a particular copy or
phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. Notwithstanding the preceding sentence, copies or
phonorecords of works subject to restored copyright under section 104A that are manufactured before the date of restoration of copyright or, with respect to reliance parties, before
publication or service of notice under section 104A (e), may be sold or otherwise disposed
of without the authorization of the owner of the restored copyright for purposes of direct or
indirect commercial advantage only during the 12-month period beginning on—
(1) the date of the publication in the Federal Register of the notice of intent filed
with the Copyright Office under section 104A (d)(2)(A), or
(2) the date of the receipt of actual notice served under section 104A (d)(2)(B),
whichever occurs first.
(b)(1)(A) Notwithstanding the provisions of subsection (a), unless authorized by the
owners of copyright in the sound recording or the owner of copyright in a computer program (including any tape, disk, or other medium embodying such program), and in the case
of a sound recording in the musical works embodied therein, neither the owner of a particular phonorecord nor any person in possession of a particular copy of a computer program
(including any tape, disk, or other medium embodying such program), may, for the purposes of direct or indirect commercial advantage, dispose of, or authorize the disposal of,
the possession of that phonorecord or computer program (including any tape, disk, or other
medium embodying such program) by rental, lease, or lending, or by any other act or practice in the nature of rental, lease, or lending. Nothing in the preceding sentence shall apply
to the rental, lease, or lending of a phonorecord for nonprofit purposes by a nonprofit library or nonprofit educational institution. The transfer of possession of a lawfully made
copy of a computer program by a nonprofit educational institution to another nonprofit
educational institution or to faculty, staff, and students does not constitute rental, lease, or
lending for direct or indirect commercial purposes under this subsection.
(B) This subsection does not apply to—
(i) a computer program which is embodied in a machine or product and which
cannot be copied during the ordinary operation or use of the machine or product; or
(ii) a computer program embodied in or used in conjunction with a limited purpose computer that is designed for playing video games and may be designed for
other purposes.
(C) Nothing in this subsection affects any provision of chapter 9 of this title.
(2)(A) Nothing in this subsection shall apply to the lending of a computer program
for nonprofit purposes by a nonprofit library, if each copy of a computer program
which is lent by such library has affixed to the packaging containing the program a
warning of copyright in accordance with requirements that the Register of Copyrights
shall prescribe by regulation.
(B) Not later than three years after the date of the enactment of the Computer Software Rental Amendments Act of 1990, and at such times thereafter as the Register
of Copyrights considers appropriate, the Register of Copyrights, after consultation
with representatives of copyright owners and librarians, shall submit to the Congress
a report stating whether this paragraph has achieved its intended purpose of maintaining the integrity of the copyright system while providing nonprofit libraries the
capability to fulfill their function. Such report shall advise the Congress as to any
69

§ 110.

Copyright Act of 1976

information or recommendations that the Register of Copyrights considers necessary
to carry out the purposes of this subsection.
(3) Nothing in this subsection shall affect any provision of the antitrust laws. For
purposes of the preceding sentence, “antitrust laws” has the meaning given that term
in the first section of the Clayton Act and includes section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition.
(4) Any person who distributes a phonorecord or a copy of a computer program (including any tape, disk, or other medium embodying such program) in violation of paragraph (1) is an infringer of copyright under section 501 of this title and is subject to
the remedies set forth in sections 502, 503, 504, and 505. Such violation shall not be a
criminal offense under section 506 or cause such person to be subject to the criminal
penalties set forth in section 2319 of title 18.
(c) Notwithstanding the provisions of section 106(5), the owner of a particular copy
lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or
by the projection of no more than one image at a time, to viewers present at the place
where the copy is located.
(d) The privileges prescribed by subsections (a) and (c) do not, unless authorized by
the copyright owner, extend to any person who has acquired possession of the copy or
phonorecord from the copyright owner, by rental, lease, loan, or otherwise, without acquiring ownership of it.
(e) Notwithstanding the provisions of sections 106(4) and 106(5), in the case of an
electronic audiovisual game intended for use in coin-operated equipment, the owner of
a particular copy of such a game lawfully made under this title, is entitled, without the
authority of the copyright owner of the game, to publicly perform or display that game
in coin-operated equipment, except that this subsection shall not apply to any work of
authorship embodied in the audiovisual game if the copyright owner of the electronic
audiovisual game is not also the copyright owner of the work of authorship.
§ 110.—Limitations on exclusive rights: Exemption of certain performances and
displays
Notwithstanding the provisions of section 106, the following are not infringements of
copyright:
(1) performance or display of a work by instructors or pupils in the course of faceto-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction, unless, in the case of a motion picture or other audiovisual work, the performance, or the display of individual images, is given by means
of a copy that was not lawfully made under this title, and that the person responsible
for the performance knew or had reason to believe was not lawfully made;
(2) except with respect to a work produced or marketed primarily for performance
or display as part of mediated instructional activities transmitted via digital networks,
or a performance or display that is given by means of a copy or phonorecord that is not
lawfully made and acquired under this title, and the transmitting government body or
accredited nonprofit educational institution knew or had reason to believe was not lawfully made and acquired, the performance of a nondramatic literary or musical work
or reasonable and limited portions of any other work, or display of a work in an amount
comparable to that which is typically displayed in the course of a live classroom session, by or in the course of a transmission, if—
(A) the performance or display is made by, at the direction of, or under the actual
70

Copyright Act of 1976

§ 110.

supervision of an instructor as an integral part of a class session offered as a regular
part of the systematic mediated instructional activities of a governmental body or an
accredited nonprofit educational institution;
(B) the performance or display is directly related and of material assistance to the
teaching content of the transmission;
(C) the transmission is made solely for, and, to the extent technologically feasible,
the reception of such transmission is limited to—
(i) students officially enrolled in the course for which the transmission is made; or
(ii) officers or employees of governmental bodies as a part of their official duties
or employment; and
(D) the transmitting body or institution—
(i) institutes policies regarding copyright, provides informational materials to
faculty, students, and relevant staff members that accurately describe, and promote
compliance with, the laws of the United States relating to copyright, and provides
notice to students that materials used in connection with the course may be subject
to copyright protection; and
(ii) in the case of digital transmissions—
(I) applies technological measures that reasonably prevent—
(aa) retention of the work in accessible form by recipients of the transmission
from the transmitting body or institution for longer than the class session; and
(bb) unauthorized further dissemination of the work in accessible form by
such recipients to others; and
(II) does not engage in conduct that could reasonably be expected to interfere
with technological measures used by copyright owners to prevent such retention
or unauthorized further dissemination;
(3) performance of a nondramatic literary or musical work or of a dramatico-musical
work of a religious nature, or display of a work, in the course of services at a place of
worship or other religious assembly;
(4) performance of a nondramatic literary or musical work otherwise than in a transmission to the public, without any purpose of direct or indirect commercial advantage
and without payment of any fee or other compensation for the performance to any of
its performers, promoters, or organizers, if—
(A) there is no direct or indirect admission charge; or
(B) the proceeds, after deducting the reasonable costs of producing the performance, are used exclusively for educational, religious, or charitable purposes and not
for private financial gain, except where the copyright owner has served notice of
objection to the performance under the following conditions:
(i) the notice shall be in writing and signed by the copyright owner or such
owner’s duly authorized agent; and
(ii) the notice shall be served on the person responsible for the performance at
least seven days before the date of the performance, and shall state the reasons for
the objection; and
(iii) the notice shall comply, in form, content, and manner of service, with requirements that the Register of Copyrights shall prescribe by regulation;
(5)(A) except as provided in subparagraph (B), communication of a transmission embodying a performance or display of a work by the public reception of the transmission
on a single receiving apparatus of a kind commonly used in private homes, unless—
(i) a direct charge is made to see or hear the transmission; or
(ii) the transmission thus received is further transmitted to the public;
71

§ 110.

Copyright Act of 1976

(B) communication by an establishment of a transmission or retransmission embodying a performance or display of a nondramatic musical work intended to be
received by the general public, originated by a radio or television broadcast station
licensed as such by the Federal Communications Commission, or, if an audiovisual
transmission, by a cable system or satellite carrier, if—
(i) in the case of an establishment other than a food service or drinking establishment, either the establishment in which the communication occurs has less than
2,000 gross square feet of space (excluding space used for customer parking and
for no other purpose), or the establishment in which the communication occurs has
2,000 or more gross square feet of space (excluding space used for customer parking and for no other purpose) and—
(I) if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more
than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
(II) if the performance or display is by audiovisual means, any visual portion of
the performance or display is communicated by means of a total of not more than
4 audiovisual devices, of which not more than 1 audiovisual device is located in
any 1 room, and no such audiovisual device has a diagonal screen size greater than
55 inches, and any audio portion of the performance or display is communicated
by means of a total of not more than 6 loudspeakers, of which not more than 4
loudspeakers are located in any 1 room or adjoining outdoor space;
(ii) in the case of a food service or drinking establishment, either the establishment
in which the communication occurs has less than 3,750 gross square feet of space
(excluding space used for customer parking and for no other purpose), or the establishment in which the communication occurs has 3,750 gross square feet of space or
more (excluding space used for customer parking and for no other purpose) and—
(I) if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more
than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
(II) if the performance or display is by audiovisual means, any visual portion of
the performance or display is communicated by means of a total of not more than
4 audiovisual devices, of which not more than one audiovisual device is located in
any 1 room, and no such audiovisual device has a diagonal screen size greater than
55 inches, and any audio portion of the performance or display is communicated
by means of a total of not more than 6 loudspeakers, of which not more than 4
loudspeakers are located in any 1 room or adjoining outdoor space;
(iii) no direct charge is made to see or hear the transmission or retransmission;
(iv) the transmission or retransmission is not further transmitted beyond the establishment where it is received; and
(v) the transmission or retransmission is licensed by the copyright owner of the
work so publicly performed or displayed;
(6) performance of a nondramatic musical work by a governmental body or a nonprofit agricultural or horticultural organization, in the course of an annual agricultural
or horticultural fair or exhibition conducted by such body or organization; the exemption provided by this clause shall extend to any liability for copyright infringement that
would otherwise be imposed on such body or organization, under doctrines of vicarious liability or related infringement, for a performance by a concessionnaire, business
establishment, or other person at such fair or exhibition, but shall not excuse any such
person from liability for the performance;
72

Copyright Act of 1976

§ 110.

(7) performance of a nondramatic musical work by a vending establishment open to
the public at large without any direct or indirect admission charge, where the sole purpose of the performance is to promote the retail sale of copies or phonorecords of the
work, or of the audiovisual or other devices utilized in such performance, and the performance is not transmitted beyond the place where the establishment is located and is
within the immediate area where the sale is occurring;
(8) performance of a nondramatic literary work, by or in the course of a transmission
specifically designed for and primarily directed to blind or other handicapped persons
who are unable to read normal printed material as a result of their handicap, or deaf or
other handicapped persons who are unable to hear the aural signals accompanying a
transmission of visual signals, if the performance is made without any purpose of direct
or indirect commercial advantage and its transmission is made through the facilities of:
(i) a governmental body; or
(ii) a noncommercial educational broadcast station (as defined in section 397 of
title 47); or
(iii) a radio subcarrier authorization (as defined in 47 CFR 73.293–73.295 and
73.593–73.595); or
(iv) a cable system (as defined in section 111(f));
(9) performance on a single occasion of a dramatic literary work published at least
ten years before the date of the performance, by or in the course of a transmission
specifically designed for and primarily directed to blind or other handicapped persons
who are unable to read normal printed material as a result of their handicap, if the
performance is made without any purpose of direct or indirect commercial advantage
and its transmission is made through the facilities of a radio subcarrier authorization
referred to in clause (8)(iii), Provided, That the provisions of this clause shall not be
applicable to more than one performance of the same work by the same performers or
under the auspices of the same organization;
(10) notwithstanding paragraph (4), the following is not an infringement of copyright:
performance of a nondramatic literary or musical work in the course of a social function
which is organized and promoted by a nonprofit veterans’ organization or a nonprofit
fraternal organization to which the general public is not invited, but not including the
invitees of the organizations, if the proceeds from the performance, after deducting the
reasonable costs of producing the performance, are used exclusively for charitable purposes and not for financial gain. For purposes of this section the social functions of any
college or university fraternity or sorority shall not be included unless the social function is held solely to raise funds for a specific charitable purpose; and
(11) the making imperceptible, by or at the direction of a member of a private household, of limited portions of audio or video content of a motion picture, during a performance in or transmitted to that household for private home viewing, from an
authorized copy of the motion picture, or the creation or provision of a computer program or other technology that enables such making imperceptible and that is designed
and marketed to be used, at the direction of a member of a private household, for such
making imperceptible, if no fixed copy of the altered version of the motion picture is
created by such computer program or other technology.
The exemptions provided under paragraph (5) shall not be taken into account in any
administrative, judicial, or other governmental proceeding to set or adjust the royalties
payable to copyright owners for the public performance or display of their works. Royalties payable to copyright owners for any public performance or display of their works
other than such performances or displays as are exempted under paragraph (5) shall not
73

§ 111.

Copyright Act of 1976

be diminished in any respect as a result of such exemption.
In paragraph (2), the term “mediated instructional activities” with respect to the performance or display of a work by digital transmission under this section refers to activities that use such work as an integral part of the class experience, controlled by or under
the actual supervision of the instructor and analogous to the type of performance or display that would take place in a live classroom setting. The term does not refer to activities
that use, in 1 or more class sessions of a single course, such works as textbooks, course
packs, or other material in any media, copies or phonorecords of which are typically
purchased or acquired by the students in higher education for their independent use and
retention or are typically purchased or acquired for elementary and secondary students
for their possession and independent use.
For purposes of paragraph (2), accreditation—
(A) with respect to an institution providing post-secondary education, shall be as determined by a regional or national accrediting agency recognized by the Council on
Higher Education Accreditation or the United States Department of Education; and
(B) with respect to an institution providing elementary or secondary education, shall
be as recognized by the applicable state certification or licensing procedures.
For purposes of paragraph (2), no governmental body or accredited nonprofit educational institution shall be liable for infringement by reason of the transient or temporary
storage of material carried out through the automatic technical process of a digital transmission of the performance or display of that material as authorized under paragraph (2).
No such material stored on the system or network controlled or operated by the transmitting body or institution under this paragraph shall be maintained on such system or network in a manner ordinarily accessible to anyone other than anticipated recipients. No
such copy shall be maintained on the system or network in a manner ordinarily accessible
to such anticipated recipients for a longer period than is reasonably necessary to facilitate
the transmissions for which it was made.
For purposes of paragraph (11), the term “making imperceptible” does not include the
addition of audio or video content that is performed or displayed over or in place of
existing content in a motion picture.
Nothing in paragraph (11) shall be construed to imply further rights under section 106
of this title, or to have any effect on defenses or limitations on rights granted under any
other section of this title or under any other paragraph of this section.
§ 111.—Limitations on exclusive rights: Secondary transmissions of broadcast
programming by cable
(a) Certain Secondary Transmissions Exempted.—The secondary transmission of
a performance or display of a work embodied in a primary transmission is not an infringement of copyright if—
(1) the secondary transmission is not made by a cable system, and consists entirely
of the relaying, by the management of a hotel, apartment house, or similar establishment, of signals transmitted by a broadcast station licensed by the Federal Communications Commission, within the local service area of such station, to the private
lodgings of guests or residents of such establishment, and no direct charge is made to
see or hear the secondary transmission; or
(2) the secondary transmission is made solely for the purpose and under the conditions specified by paragraph (2) of section 110; or
(3) the secondary transmission is made by any carrier who has no direct or indirect
control over the content or selection of the primary transmission or over the particular
74

Copyright Act of 1976

§ 111.

recipients of the secondary transmission, and whose activities with respect to the secondary transmission consist solely of providing wires, cables, or other communications
channels for the use of others: Provided, That the provisions of this paragraph extend
only to the activities of said carrier with respect to secondary transmissions and do not
exempt from liability the activities of others with respect to their own primary or secondary transmissions;
(4) the secondary transmission is made by a satellite carrier pursuant to a statutory
license under section 119 or section 122;
(5) the secondary transmission is not made by a cable system but is made by a governmental body, or other nonprofit organization, without any purpose of direct or indirect commercial advantage, and without charge to the recipients of the secondary
transmission other than assessments necessary to defray the actual and reasonable costs
of maintaining and operating the secondary transmission service.
(b) Secondary Transmission of Primary Transmission to Controlled Group.—
Notwithstanding the provisions of subsections (a) and (c), the secondary transmission to
the public of a performance or display of a work embodied in a primary transmission is
actionable as an act of infringement under section 501, and is fully subject to the remedies provided by sections 502 through 506, if the primary transmission is not made for
reception by the public at large but is controlled and limited to reception by particular
members of the public: Provided, however, That such secondary transmission is not actionable as an act of infringement if—
(1) the primary transmission is made by a broadcast station licensed by the Federal
Communications Commission; and
(2) the carriage of the signals comprising the secondary transmission is required under
the rules, regulations, or authorizations of the Federal Communications Commission; and
(3) the signal of the primary transmitter is not altered or changed in any way by the
secondary transmitter.
(c) Secondary Transmissions by Cable Systems.—
(1) Subject to the provisions of paragraphs (2), (3), and (4) of this subsection and
section 114(d), secondary transmissions to the public by a cable system of a performance or display of a work embodied in a primary transmission made by a broadcast
station licensed by the Federal Communications Commission or by an appropriate governmental authority of Canada or Mexico shall be subject to statutory licensing upon
compliance with the requirements of subsection (d) where the carriage of the signals
comprising the secondary transmission is permissible under the rules, regulations, or
authorizations of the Federal Communications Commission.
(2) Notwithstanding the provisions of paragraph (1) of this subsection, the willful or
repeated secondary transmission to the public by a cable system of a primary transmission made by a broadcast station licensed by the Federal Communications Commission
or by an appropriate governmental authority of Canada or Mexico and embodying a
performance or display of a work is actionable as an act of infringement under section
501, and is fully subject to the remedies provided by sections 502 through 506, in the
following cases:
(A) where the carriage of the signals comprising the secondary transmission is not
permissible under the rules, regulations, or authorizations of the Federal Communications Commission; or
(B) where the cable system has not deposited the statement of account and royalty
fee required by subsection (d).
(3) Notwithstanding the provisions of paragraph (1) of this subsection and subject to
75

§ 111.

Copyright Act of 1976

the provisions of subsection (e) of this section, the secondary transmission to the public
by a cable system of a performance or display of a work embodied in a primary transmission made by a broadcast station licensed by the Federal Communications Commission or by an appropriate governmental authority of Canada or Mexico is actionable as
an act of infringement under section 501, and is fully subject to the remedies provided
by sections 502 through 506 and section 510, if the content of the particular program in
which the performance or display is embodied, or any commercial advertising or station
announcements transmitted by the primary transmitter during, or immediately before or
after, the transmission of such program, is in any way willfully altered by the cable system through changes, deletions, or additions, except for the alteration, deletion, or substitution of commercial advertisements performed by those engaged in television
commercial advertising market research: Provided, That the research company has obtained the prior consent of the advertiser who has purchased the original commercial
advertisement, the television station broadcasting that commercial advertisement, and
the cable system performing the secondary transmission: And provided further, That
such commercial alteration, deletion, or substitution is not performed for the purpose of
deriving income from the sale of that commercial time.
(4) Notwithstanding the provisions of paragraph (1) of this subsection, the secondary
transmission to the public by a cable system of a performance or display of a work
embodied in a primary transmission made by a broadcast station licensed by an appropriate governmental authority of Canada or Mexico is actionable as an act of infringement under section 501, and is fully subject to the remedies provided by sections 502
through 506, if
(A) with respect to Canadian signals, the community of the cable system is located
more than 150 miles from the United States-Canadian border and is also located
south of the forty-second parallel of latitude, or
(B) with respect to Mexican signals, the secondary transmission is made by a cable
system which received the primary transmission by means other than direct interception of a free space radio wave emitted by such broadcast television station, unless
prior to April 15, 1976, such cable system was actually carrying, or was specifically
authorized to carry, the signal of such foreign station on the system pursuant to the
rules, regulations, or authorizations of the Federal Communications Commission.
(d) Statutory License for Secondary Transmissions by Cable Systems.—
(1) Statement of account and royalty fees.—Subject to paragraph (5), a cable system
whose secondary transmissions have been subject to statutory licensing under subsection
(c) shall, on a semiannual basis, deposit with the Register of Copyrights, in accordance
with requirements that the Register shall prescribe by regulation the following:
(A) A statement of account, covering the six months next preceding, specifying the
number of channels on which the cable system made secondary transmissions to its
subscribers, the names and locations of all primary transmitters whose transmissions
were further transmitted by the cable system, the total number of subscribers, the gross
amounts paid to the cable system for the basic service of providing secondary transmissions of primary broadcast transmitters, and such other data as the Register of Copyrights may from time to time prescribe by regulation. In determining the total number
of subscribers and the gross amounts paid to the cable system for the basic service of
providing secondary transmissions of primary broadcast transmitters, the system shall
not include subscribers and amounts collected from subscribers receiving secondary
transmissions pursuant to section 119. Such statement shall also include a special statement of account covering any non-network television programming that was carried
76

Copyright Act of 1976

§ 111.

by the cable system in whole or in part beyond the local service area of the primary
transmitter, under rules, regulations, or authorizations of the Federal Communications
Commission permitting the substitution or addition of signals under certain circumstances, together with logs showing the times, dates, stations, and programs involved
in such substituted or added carriage.
(B) Except in the case of a cable system whose royalty fee is specified in subparagraph (E) or (F), a total royalty fee payable to copyright owners pursuant to paragraph (3) for the period covered by the statement, computed on the basis of specified
percentages of the gross receipts from subscribers to the cable service during such
period for the basic service of providing secondary transmissions of primary broadcast transmitters, as follows:
(i) 1.064 percent of such gross receipts for the privilege of further transmitting,
beyond the local service area of such primary transmitter, any non-network programming of a primary transmitter in whole or in part, such amount to be applied
against the fee, if any, payable pursuant to clauses (ii) through (iv);
(ii) 1.064 percent of such gross receipts for the first distant signal equivalent;
(iii) 0.701 percent of such gross receipts for each of the second, third, and fourth
distant signal equivalents; and
(iv) 0.330 percent of such gross receipts for the fifth distant signal equivalent
and each distant signal equivalent thereafter.
(C) In computing amounts under clauses (ii) through (iv) of subparagraph (B)—
(i) any fraction of a distant signal equivalent shall be computed at its fractional
value;
(ii) in the case of any cable system located partly within and partly outside of
the local service area of a primary transmitter, gross receipts shall be limited to
those gross receipts derived from subscribers located outside of the local service
area of such primary transmitter; and
(iii) if a cable system provides a secondary transmission of a primary transmitter
to some but not all communities served by that cable system—
(I) the gross receipts and the distant signal equivalent values for such secondary transmission shall be derived solely on the basis of the subscribers in those
communities where the cable system provides such secondary transmission; and
(II) the total royalty fee for the period paid by such system shall not be less
than the royalty fee calculated under subparagraph (B)(i) multiplied by the gross
receipts from all subscribers to the system.
(D) A cable system that, on a statement submitted before the date of the enactment of
the Satellite Television Extension and Localism Act of 2010, computed its royalty fee
consistent with the methodology under subparagraph (C)(iii), or that amends a statement filed before such date of enactment to compute the royalty fee due using such
methodology, shall not be subject to an action for infringement, or eligible for any royalty refund or offset, arising out of its use of such methodology on such statement.
(E) If the actual gross receipts paid by subscribers to a cable system for the period
covered by the statement for the basic service of providing secondary transmissions
of primary broadcast transmitters are $263,800 or less—
(i) gross receipts of the cable system for the purpose of this paragraph shall be
computed by subtracting from such actual gross receipts the amount by which
$263,800 exceeds such actual gross receipts, except that in no case shall a cable
system’s gross receipts be reduced to less than $10,400; and
(ii) the royalty fee payable under this paragraph to copyright owners pursuant to
77

§ 111.

Copyright Act of 1976

paragraph (3) shall be 0.5 percent, regardless of the number of distant signal equivalents, if any.
(F) If the actual gross receipts paid by subscribers to a cable system for the period
covered by the statement for the basic service of providing secondary transmissions
of primary broadcast transmitters are more than $263,800 but less than $527,600, the
royalty fee payable under this paragraph to copyright owners pursuant to paragraph
(3) shall be—
(i) 0.5 percent of any gross receipts up to $263,800, regardless of the number of
distant signal equivalents, if any; and
(ii) 1 percent of any gross receipts in excess of $263,800, but less than $527,600,
regardless of the number of distant signal equivalents, if any.
(G) A filing fee, as determined by the Register of Copyrights pursuant to section
708(a).
(2) Handling of fees.—The Register of Copyrights shall receive all fees (including
the filing fee specified in paragraph (1)(G)) deposited under this section and, after deducting the reasonable costs incurred by the Copyright Office under this section, shall
deposit the balance in the Treasury of the United States, in such manner as the Secretary of the Treasury directs. All funds held by the Secretary of the Treasury shall be
invested in interest-bearing United States securities for later distribution with interest
by the Librarian of Congress upon authorization by the Copyright Royalty Judges.
(3) Distribution of royalty fees to copyright owners.—The royalty fees thus deposited shall, in accordance with the procedures provided by clause (4), be distributed to
those among the following copyright owners who claim that their works were the subject of secondary transmissions by cable systems during the relevant semiannual period:
(A) Any such owner whose work was included in a secondary transmission made
by a cable system of a non-network television program in whole or in part beyond
the local service area of the primary transmitter.
(B) Any such owner whose work was included in a secondary transmission identified in a special statement of account deposited under clause (1)(A).
(C) Any such owner whose work was included in non-network programming consisting exclusively of aural signals carried by a cable system in whole or in part beyond the local service area of the primary transmitter of such programs.
(4) Procedures for royalty fee distribution.—The royalty fees thus deposited shall
be distributed in accordance with the following procedures:
(A) During the month of July in each year, every person claiming to be entitled to
statutory license fees for secondary transmissions shall file a claim with the Copyright Royalty Judges, in accordance with requirements that the Copyright Royalty
Judges shall prescribe by regulation. Notwithstanding any provisions of the antitrust
laws, for purposes of this clause any claimants may agree among themselves as to
the proportionate division of statutory licensing fees among them, may lump their
claims together and file them jointly or as a single claim, or may designate a common
agent to receive payment on their behalf.
(B) After the first day of August of each year, the Copyright Royalty Judges shall
determine whether there exists a controversy concerning the distribution of royalty
fees. If the Copyright Royalty Judges determine that no such controversy exists, the
Copyright Royalty Judges shall authorize the Librarian of Congress to proceed to
distribute such fees to the copyright owners entitled to receive them, or to their designated agents, subject to the deduction of reasonable administrative costs under this
78

Copyright Act of 1976

§ 111.

section. If the Copyright Royalty Judges find the existence of a controversy, the Copyright Royalty Judges shall, pursuant to chapter 8 of this title, conduct a proceeding
to determine the distribution of royalty fees.
(C) During the pendency of any proceeding under this subsection, the Copyright
Royalty Judges shall have the discretion to authorize the Librarian of Congress to
proceed to distribute any amounts that are not in controversy.
(5) 3.75 percent rate and syndicated exclusivity surcharge not applicable to
multicast streams.—The royalty rates specified in sections 256.2(c) and 256.2(d) of
title 37, Code of Federal Regulations (commonly referred to as the “3.75 percent rate”
and the “syndicated exclusivity surcharge”, respectively), as in effect on the date of
the enactment of the Satellite Television Extension and Localism Act of 2010, as such
rates may be adjusted, or such sections redesignated, thereafter by the Copyright Royalty Judges, shall not apply to the secondary transmission of a multicast stream.
(6) Verification of accounts and fee payments.—The Register of Copyrights shall
issue regulations to provide for the confidential verification by copyright owners
whose works were embodied in the secondary transmissions of primary transmissions
pursuant to this section of the information reported on the semiannual statements of
account filed under this subsection for accounting periods beginning on or after January 1, 2010, in order that the auditor designated under subparagraph (A) is able to
confirm the correctness of the calculations and royalty payments reported therein. The
regulations shall—
(A) establish procedures for the designation of a qualified independent auditor—
(i) with exclusive authority to request verification of such a statement of account
on behalf of all copyright owners whose works were the subject of secondary transmissions of primary transmissions by the cable system (that deposited the statement) during the accounting period covered by the statement; and
(ii) who is not an officer, employee, or agent of any such copyright owner for
any purpose other than such audit;
(B) establish procedures for safeguarding all non-public financial and business information provided under this paragraph;
(C)(i) require a consultation period for the independent auditor to review its conclusions with a designee of the cable system;
(ii) establish a mechanism for the cable system to remedy any errors identified
in the auditor’s report and to cure any underpayment identified; and
(iii) provide an opportunity to remedy any disputed facts or conclusions;
(D) limit the frequency of requests for verification for a particular cable system
and the number of audits that a multiple system operator can be required to undergo
in a single year; and
(E) permit requests for verification of a statement of account to be made only within
3 years after the last day of the year in which the statement of account is filed.
(7) Acceptance of additional deposits.—Any royalty fee payments received by the
Copyright Office from cable systems for the secondary transmission of primary transmissions that are in addition to the payments calculated and deposited in accordance
with this subsection shall be deemed to have been deposited for the particular accounting period for which they are received and shall be distributed as specified under this
subsection.
(e) Nonsimultaneous Secondary Transmissions by Cable Systems.—
(1) Notwithstanding those provisions of the subsection (f)(2) relating to nonsimultaneous secondary transmissions by a cable system, any such transmissions are actionable
79

§ 111.

Copyright Act of 1976

as an act of infringement under section 501, and are fully subject to the remedies provided by sections 502 through 506 and section 510, unless—
(A) the program on the videotape is transmitted no more than one time to the cable
system’s subscribers;
(B) the copyrighted program, episode, or motion picture videotape, including the
commercials contained within such program, episode, or picture, is transmitted without deletion or editing;
(C) an owner or officer of the cable system
(i) prevents the duplication of the videotape while in the possession of the system,
(ii) prevents unauthorized duplication while in the possession of the facility
making the videotape for the system if the system owns or controls the facility, or
takes reasonable precautions to prevent such duplication if it does not own or control the facility,
(iii) takes adequate precautions to prevent duplication while the tape is being
transported, and
(iv) subject to paragraph (2), erases or destroys, or causes the erasure or destruction of, the videotape;
(D) within forty-five days after the end of each calendar quarter, an owner or officer of the cable system executes an affidavit attesting
(i) to the steps and precautions taken to prevent duplication of the videotape, and
(ii) subject to paragraph (2), to the erasure or destruction of all videotapes made
or used during such quarter;
(E) such owner or officer places or causes each such affidavit, and affidavits received pursuant to paragraph (2)(C), to be placed in a file, open to public inspection,
at such system’s main office in the community where the transmission is made or in
the nearest community where such system maintains an office; and
(F) the nonsimultaneous transmission is one that the cable system would be authorized to transmit under the rules, regulations, and authorizations of the Federal
Communications Commission in effect at the time of the nonsimultaneous transmission if the transmission had been made simultaneously, except that this subparagraph
shall not apply to inadvertent or accidental transmissions.
(2) If a cable system transfers to any person a videotape of a program nonsimultaneously transmitted by it, such transfer is actionable as an act of infringement under section 501, and is fully subject to the remedies provided by sections 502 through 506,
except that, pursuant to a written, nonprofit contract providing for the equitable sharing
of the costs of such videotape and its transfer, a videotape nonsimultaneously transmitted by it, in accordance with paragraph (1), may be transferred by one cable system
in Alaska to another system in Alaska, by one cable system in Hawaii permitted to
make such nonsimultaneous transmissions to another such cable system in Hawaii, or
by one cable system in Guam, the Northern Mariana Islands, the Federated States of
Micronesia, the Republic of Palau, or the Republic of the Marshall Islands, to another
cable system in any of those five entities, if—
(A) each such contract is available for public inspection in the offices of the cable
systems involved, and a copy of such contract is filed, within thirty days after such
contract is entered into, with the Copyright Office (which Office shall make each
such contract available for public inspection);
(B) the cable system to which the videotape is transferred complies with paragraph
(1)(A), (B), (C)(i), (iii), and (iv), and (D) through (F); and
(C) such system provides a copy of the affidavit required to be made in accordance
80

Copyright Act of 1976

§ 111.

with paragraph (1)(D) to each cable system making a previous nonsimultaneous
transmission of the same videotape.
(3) This subsection shall not be construed to supersede the exclusivity protection
provisions of any existing agreement, or any such agreement hereafter entered into,
between a cable system and a television broadcast station in the area in which the cable
system is located, or a network with which such station is affiliated.
(4) As used in this subsection, the term “videotape” means the reproduction of the
images and sounds of a program or programs broadcast by a television broadcast station licensed by the Federal Communications Commission, regardless of the nature of
the material objects, such as tapes or films, in which the reproduction is embodied.
(f) Definitions.—As used in this section, the following terms mean the following:
(1) Primary transmission.—A “primary transmission” is a transmission made to
the public by a transmitting facility whose signals are being received and further transmitted by a secondary transmission service, regardless of where or when the performance or display was first transmitted. In the case of a television broadcast station, the
primary stream and any multicast streams transmitted by the station constitute primary
transmissions.
(2) Secondary transmission.—A “secondary transmission” is the further transmitting of a primary transmission simultaneously with the primary transmission, or nonsimultaneously with the primary transmission if by a cable system not located in whole
or in part within the boundary of the forty-eight contiguous States, Hawaii, or Puerto
Rico: Provided, however, That a nonsimultaneous further transmission by a cable system located in Hawaii of a primary transmission shall be deemed to be a secondary
transmission if the carriage of the television broadcast signal comprising such further
transmission is permissible under the rules, regulations, or authorizations of the Federal Communications Commission.
(3) Cable system.—A “cable system” is a facility, located in any State, territory,
trust territory, or possession of the United States, that in whole or in part receives signals transmitted or programs broadcast by one or more television broadcast stations
licensed by the Federal Communications Commission, and makes secondary transmissions of such signals or programs by wires, cables, microwave, or other communications channels to subscribing members of the public who pay for such service. For
purposes of determining the royalty fee under subsection (d)(1), two or more cable
systems in contiguous communities under common ownership or control or operating
from one headend shall be considered as one system.
(4) Local service area of a primary transmitter.—The “local service area of a primary transmitter”, in the case of both the primary stream and any multicast streams transmitted by a primary transmitter that is a television broadcast station, comprises the area
where such primary transmitter could have insisted upon its signal being retransmitted
by a cable system pursuant to the rules, regulations, and authorizations of the Federal
Communications Commission in effect on April 15, 1976, or such station’s television
market as defined in section 76.55(e) of title 47, Code of Federal Regulations (as in effect
on September 18, 1993), or any modifications to such television market made, on or after
September 18, 1993, pursuant to section 76.55(e) or 76.59 of title 47, Code of Federal
Regulations, or within the noise-limited contour as defined in 73.622(e)(1) of title 47,
Code of Federal Regulations, or in the case of a television broadcast station licensed by
an appropriate governmental authority of Canada or Mexico, the area in which it would
be entitled to insist upon its signal being retransmitted if it were a television broadcast
station subject to such rules, regulations, and authorizations. In the case of a low power
81

§ 111.

Copyright Act of 1976

television station, the “local service area of a primary transmitter” comprises the area
within 35 miles of the transmitter site, except that in the case of such a station located in
a standard metropolitan statistical area which has one of the 50 largest populations of all
standard metropolitan statistical areas (based on the 1980 decennial census of population
taken by the Secretary of Commerce), the number of miles shall be 20 miles. The “local
service area of a primary transmitter”, in the case of a radio broadcast station, comprises
the primary service area of such station, pursuant to the rules and regulations of the Federal Communications Commission.
(5) Distant signal equivalent.—
(A) In general.—Except as provided under subparagraph (B), a “distant signal
equivalent”—
(i) is the value assigned to the secondary transmission of any non-network television programming carried by a cable system in whole or in part beyond the local
service area of the primary transmitter of such programming; and
(ii) is computed by assigning a value of one to each primary stream and to each
multicast stream (other than a simulcast) that is an independent station, and by
assigning a value of one-quarter to each primary stream and to each multicast
stream (other than a simulcast) that is a network station or a noncommercial educational station.
(B) Exceptions.—The values for independent, network, and noncommercial educational stations specified in subparagraph (A) are subject to the following:
(i) Where the rules and regulations of the Federal Communications Commission
require a cable system to omit the further transmission of a particular program and
such rules and regulations also permit the substitution of another program embodying a performance or display of a work in place of the omitted transmission, or where
such rules and regulations in effect on the date of the enactment of the Copyright
Act of 1976 permit a cable system, at its election, to effect such omission and substitution of a nonlive program or to carry additional programs not transmitted by
primary transmitters within whose local service area the cable system is located, no
value shall be assigned for the substituted or additional program.
(ii) Where the rules, regulations, or authorizations of the Federal Communications Commission in effect on the date of the enactment of the Copyright Act of
1976 permit a cable system, at its election, to omit the further transmission of a
particular program and such rules, regulations, or authorizations also permit the
substitution of another program embodying a performance or display of a work in
place of the omitted transmission, the value assigned for the substituted or additional program shall be, in the case of a live program, the value of one full distant
signal equivalent multiplied by a fraction that has as its numerator the number of
days in the year in which such substitution occurs and as its denominator the number of days in the year.
(iii) In the case of the secondary transmission of a primary transmitter that is a
television broadcast station pursuant to the late-night or specialty programming
rules of the Federal Communications Commission, or the secondary transmission
of a primary transmitter that is a television broadcast station on a part-time basis
where full-time carriage is not possible because the cable system lacks the activated channel capacity to retransmit on a full-time basis all signals that it is authorized to carry, the values for independent, network, and noncommercial
educational stations set forth in subparagraph (A), as the case may be, shall be
multiplied by a fraction that is equal to the ratio of the broadcast hours of such
82

Copyright Act of 1976

§ 111.

primary transmitter retransmitted by the cable system to the total broadcast hours
of the primary transmitter.
(iv) No value shall be assigned for the secondary transmission of the primary
stream or any multicast streams of a primary transmitter that is a television broadcast station in any community that is within the local service area of the primary
transmitter.
(6) Network station.—
(A) Treatment of primary stream.—The term “network station” shall be applied
to a primary stream of a television broadcast station that is owned or operated by, or
affiliated with, one or more of the television networks in the United States providing
nationwide transmissions, and that transmits a substantial part of the programming
supplied by such networks for a substantial part of the primary stream’s typical
broadcast day.
(B) Treatment of multicast streams.—The term “network station” shall be applied to a multicast stream on which a television broadcast station transmits all or
substantially all of the programming of an interconnected program service that—
(i) is owned or operated by, or affiliated with, one or more of the television networks described in subparagraph (A); and
(ii) offers programming on a regular basis for 15 or more hours per week to at
least 25 of the affiliated television licensees of the interconnected program service
in 10 or more States.
(7) Independent station.—The term “independent station” shall be applied to the
primary stream or a multicast stream of a television broadcast station that is not a network station or a noncommercial educational station.
(8) Noncommercial educational station.—The term “noncommercial educational
station” shall be applied to the primary stream or a multicast stream of a television
broadcast station that is a noncommercial educational broadcast station as defined in
section 397 of the Communications Act of 1934, as in effect on the date of the enactment of the Satellite Television Extension and Localism Act of 2010.
(9) Primary stream.—A “primary stream” is—
(A) the single digital stream of programming that, before June 12, 2009, was substantially duplicating the programming transmitted by the television broadcast station as an analog signal; or
(B) if there is no stream described in subparagraph (A), then the single digital
stream of programming transmitted by the television broadcast station for the longest
period of time.
(10) Primary transmitter.—A “primary transmitter” is a television or radio broadcast
station licensed by the Federal Communications Commission, or by an appropriate governmental authority of Canada or Mexico, that makes primary transmissions to the public.
(11) Multicast stream.—A “multicast stream” is a digital stream of programming that
is transmitted by a television broadcast station and is not the station’s primary stream.
(12) Simulcast.—A “simulcast” is a multicast stream of a television broadcast station that duplicates the programming transmitted by the primary stream or another
multicast stream of such station.
(13) Subscriber; subscribe.—
(A) Subscriber.—The term “subscriber” means a person or entity that receives a
secondary transmission service from a cable system and pays a fee for the service,
directly or indirectly, to the cable system.
(B) Subscribe.—The term “subscribe” means to elect to become a subscriber.
83

§ 112.

Copyright Act of 1976

§ 112.—Limitations on exclusive rights: Ephemeral recordings
(a)(1) Notwithstanding the provisions of section 106, and except in the case of a motion
picture or other audiovisual work, it is not an infringement of copyright for a transmitting
organization entitled to transmit to the public a performance or display of a work, under
a license, including a statutory license under section 114(f), or transfer of the copyright
or under the limitations on exclusive rights in sound recordings specified by section
114(a), or for a transmitting organization that is a broadcast radio or television station
licensed as such by the Federal Communications Commission and that makes a broadcast
transmission of a performance of a sound recording in a digital format on a nonsubscription basis, to make no more than one copy or phonorecord of a particular transmission
program embodying the performance or display, if—
(A) the copy or phonorecord is retained and used solely by the transmitting organization that made it, and no further copies or phonorecords are reproduced from it; and
(B) the copy or phonorecord is used solely for the transmitting organization’s own
transmissions within its local service area, or for purposes of archival preservation
or security; and
(C) unless preserved exclusively for archival purposes, the copy or phonorecord is
destroyed within six months from the date the transmission program was first transmitted to the public.
(2) In a case in which a transmitting organization entitled to make a copy or phonorecord under paragraph (1) in connection with the transmission to the public of a performance or display of a work is prevented from making such copy or phonorecord by
reason of the application by the copyright owner of technical measures that prevent the
reproduction of the work, the copyright owner shall make available to the transmitting
organization the necessary means for permitting the making of such copy or
phonorecord as permitted under that paragraph, if it is technologically feasible and economically reasonable for the copyright owner to do so. If the copyright owner fails to
do so in a timely manner in light of the transmitting organization’s reasonable business
requirements, the transmitting organization shall not be liable for a violation of section
1201(a)(1) of this title for engaging in such activities as are necessary to make such
copies or phonorecords as permitted under paragraph (1) of this subsection.
(b) Notwithstanding the provisions of section 106, it is not an infringement of copyright for a governmental body or other nonprofit organization entitled to transmit a performance or display of a work, under section 110(2) or under the limitations on exclusive
rights in sound recordings specified by section 114(a), to make no more than thirty copies
or phonorecords of a particular transmission program embodying the performance or
display, if—
(1) no further copies or phonorecords are reproduced from the copies or phonorecords made under this clause; and
(2) except for one copy or phonorecord that may be preserved exclusively for archival purposes, the copies or phonorecords are destroyed within seven years from the
date the transmission program was first transmitted to the public.
(c) Notwithstanding the provisions of section 106, it is not an infringement of copyright for a governmental body or other nonprofit organization to make for distribution no
more than one copy or phonorecord, for each transmitting organization specified in
clause (2) of this subsection, of a particular transmission program embodying a performance of a nondramatic musical work of a religious nature, or of a sound recording of
such a musical work, if—
(1) there is no direct or indirect charge for making or distributing any such copies or
84

Copyright Act of 1976

§ 112.

phonorecords; and
(2) none of such copies or phonorecords is used for any performance other than a
single transmission to the public by a transmitting organization entitled to transmit to
the public a performance of the work under a license or transfer of the copyright; and
(3) except for one copy or phonorecord that may be preserved exclusively for archival purposes, the copies or phonorecords are all destroyed within one year from the
date the transmission program was first transmitted to the public.
(d) Notwithstanding the provisions of section 106, it is not an infringement of copyright for a governmental body or other nonprofit organization entitled to transmit a
performance of a work under section 110(8) to make no more than ten copies or phonorecords embodying the performance, or to permit the use of any such copy or
phonorecord by any governmental body or nonprofit organization entitled to transmit a
performance of a work under section 110(8), if—
(1) any such copy or phonorecord is retained and used solely by the organization that
made it, or by a governmental body or nonprofit organization entitled to transmit a
performance of a work under section 110(8), and no further copies or phonorecords
are reproduced from it; and
(2) any such copy or phonorecord is used solely for transmissions authorized under
section 110(8), or for purposes of archival preservation or security; and
(3) the governmental body or nonprofit organization permitting any use of any such
copy or phonorecord by any governmental body or nonprofit organization under this
subsection does not make any charge for such use.
(e) Statutory License.—
(1) A transmitting organization entitled to transmit to the public a performance of a
sound recording under the limitation on exclusive rights specified by section
114(d)(1)(C)(iv) or under a statutory license in accordance with section 114(f) is entitled to a statutory license, under the conditions specified by this subsection, to make
no more than 1 phonorecord of the sound recording (unless the terms and conditions
of the statutory license allow for more), if the following conditions are satisfied:
(A) The phonorecord is retained and used solely by the transmitting organization
that made it, and no further phonorecords are reproduced from it.
(B) The phonorecord is used solely for the transmitting organization’s own
transmissions originating in the United States under a statutory license in accordance
with section 114(f) or the limitation on exclusive rights specified by section
114(d)(1)(C)(iv).
(C) Unless preserved exclusively for purposes of archival preservation, the
phonorecord is destroyed within 6 months from the date the sound recording was
first transmitted to the public using the phonorecord.
(D) Phonorecords of the sound recording have been distributed to the public under
the authority of the copyright owner or the copyright owner authorizes the transmitting entity to transmit the sound recording, and the transmitting entity makes the
phonorecord under this subsection from a phonorecord lawfully made and acquired
under the authority of the copyright owner.
(2) Notwithstanding any provision of the antitrust laws, any copyright owners of
sound recordings and any transmitting organizations entitled to a statutory license under this subsection may negotiate and agree upon royalty rates and license terms and
conditions for making phonorecords of such sound recordings under this section and
the proportionate division of fees paid among copyright owners, and may designate
common agents to negotiate, agree to, pay, or receive such royalty payments.
85

§ 112.

Copyright Act of 1976

(3) Proceedings under chapter 8 shall determine reasonable rates and terms of royalty
payments for the activities specified by paragraph (1) during the 5-year period beginning on January 1 of the second year following the year in which the proceedings are
to be commenced, or such other period as the parties may agree. Such rates shall include a minimum fee for each type of service offered by transmitting organizations.
Any copyright owners of sound recordings or any transmitting organizations entitled
to a statutory license under this subsection may submit to the Copyright Royalty Judges
licenses covering such activities with respect to such sound recordings. The parties to
each proceeding shall bear their own costs.
(4) The schedule of reasonable rates and terms determined by the Copyright Royalty
Judges shall, subject to paragraph (5), be binding on all copyright owners of sound
recordings and transmitting organizations entitled to a statutory license under this subsection during the 5-year period specified in paragraph (3), or such other period as the
parties may agree. Such rates shall include a minimum fee for each type of service
offered by transmitting organizations. The Copyright Royalty Judges shall establish
rates that most clearly represent the fees that would have been negotiated in the marketplace between a willing buyer and a willing seller. In determining such rates and
terms, the Copyright Royalty Judges shall base their decision on economic, competitive, and programming information presented by the parties, including—
(A) whether use of the service may substitute for or may promote the sales of
phonorecords or otherwise interferes with or enhances the copyright owner’s traditional streams of revenue; and
(B) the relative roles of the copyright owner and the transmitting organization in the
copyrighted work and the service made available to the public with respect to relative
creative contribution, technological contribution, capital investment, cost, and risk.
In establishing such rates and terms, the Copyright Royalty Judges may consider the
rates and terms under voluntary license agreements described in paragraphs (2) and (3).
The Copyright Royalty Judges shall also establish requirements by which copyright
owners may receive reasonable notice of the use of their sound recordings under this
section, and under which records of such use shall be kept and made available by transmitting organizations entitled to obtain a statutory license under this subsection.
(5) License agreements voluntarily negotiated at any time between 1 or more copyright
owners of sound recordings and 1 or more transmitting organizations entitled to obtain
a statutory license under this subsection shall be given effect in lieu of any decision by
the Librarian of Congress or determination by the Copyright Royalty Judges.
(6)(A) Any person who wishes to make a phonorecord of a sound recording under a
statutory license in accordance with this subsection may do so without infringing the
exclusive right of the copyright owner of the sound recording under section 106(1)—
(i) by complying with such notice requirements as the Copyright Royalty Judges
shall prescribe by regulation and by paying royalty fees in accordance with this
subsection; or
(ii) if such royalty fees have not been set, by agreeing to pay such royalty fees
as shall be determined in accordance with this subsection.
(B) Any royalty payments in arrears shall be made on or before the 20th day of the
month next succeeding the month in which the royalty fees are set.
(7) If a transmitting organization entitled to make a phonorecord under this subsection is prevented from making such phonorecord by reason of the application by the
copyright owner of technical measures that prevent the reproduction of the sound recording, the copyright owner shall make available to the transmitting organization the
86

Copyright Act of 1976

§ 113.

necessary means for permitting the making of such phonorecord as permitted under
this subsection, if it is technologically feasible and economically reasonable for the
copyright owner to do so. If the copyright owner fails to do so in a timely manner in
light of the transmitting organization’s reasonable business requirements, the transmitting organization shall not be liable for a violation of section 1201(a)(1) of this title for
engaging in such activities as are necessary to make such phonorecords as permitted
under this subsection.
(8) Nothing in this subsection annuls, limits, impairs, or otherwise affects in any way
the existence or value of any of the exclusive rights of the copyright owners in a sound
recording, except as otherwise provided in this subsection, or in a musical work, including the exclusive rights to reproduce and distribute a sound recording or musical work,
including by means of a digital phonorecord delivery, under sections 106(1), 106(3), and
115, and the right to perform publicly a sound recording or musical work, including by
means of a digital audio transmission, under sections 106(4) and 106(6).
(f)(1) Notwithstanding the provisions of section 106, and without limiting the application
of subsection (b), it is not an infringement of copyright for a governmental body or other
nonprofit educational institution entitled under section 110(2) to transmit a performance or
display to make copies or phonorecords of a work that is in digital form and, solely to the
extent permitted in paragraph (2), of a work that is in analog form, embodying the performance or display to be used for making transmissions authorized under section 110(2), if—
(A) such copies or phonorecords are retained and used solely by the body or institution that made them, and no further copies or phonorecords are reproduced from
them, except as authorized under section 110(2); and
(B) such copies or phonorecords are used solely for transmissions authorized under
section 110(2).
(2) This subsection does not authorize the conversion of print or other analog versions of works into digital formats, except that such conversion is permitted hereunder,
only with respect to the amount of such works authorized to be performed or displayed
under section 110(2), if—
(A) no digital version of the work is available to the institution; or
(B) the digital version of the work that is available to the institution is subject to
technological protection measures that prevent its use for section 110(2).
(g) The transmission program embodied in a copy or phonorecord made under this section
is not subject to protection as a derivative work under this title except with the express consent of the owners of copyright in the preexisting works employed in the program.
§ 113.—Scope of exclusive rights in pictorial, graphic, and sculptural works
(a) Subject to the provisions of subsections (b) and (c) of this section, the exclusive right
to reproduce a copyrighted pictorial, graphic, or sculptural work in copies under section
106 includes the right to reproduce the work in or on any kind of article, whether useful
or otherwise.
(b) This title does not afford, to the owner of copyright in a work that portrays a useful
article as such, any greater or lesser rights with respect to the making, distribution, or
display of the useful article so portrayed than those afforded to such works under the law,
whether title 17 or the common law or statutes of a State, in effect on December 31, 1977,
as held applicable and construed by a court in an action brought under this title.
(c) In the case of a work lawfully reproduced in useful articles that have been offered
for sale or other distribution to the public, copyright does not include any right to prevent
87

§ 114.

Copyright Act of 1976

the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such
articles, or in connection with news reports.
(d)(1) In a case in which—
(A) a work of visual art has been incorporated in or made part of a building in such
a way that removing the work from the building will cause the destruction, distortion,
mutilation, or other modification of the work as described in section 106A(a)(3), and
(B) the author consented to the installation of the work in the building either before
the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990,
or in a written instrument executed on or after such effective date that is signed by the
owner of the building and the author and that specifies that installation of the work
may subject the work to destruction, distortion, mutilation, or other modification, by
reason of its removal,
then the rights conferred by paragraphs (2) and (3) of section 106A(a) shall not apply.
(2) If the owner of a building wishes to remove a work of visual art which is a part
of such building and which can be removed from the building without the destruction,
distortion, mutilation, or other modification of the work as described in section
106A(a)(3), the author’s rights under paragraphs (2) and (3) of section 106A(a) shall
apply unless—
(A) the owner has made a diligent, good faith attempt without success to notify the
author of the owner’s intended action affecting the work of visual art, or
(B) the owner did provide such notice in writing and the person so notified failed,
within 90 days after receiving such notice, either to remove the work or to pay for
its removal.
For purposes of subparagraph (A), an owner shall be presumed to have made a diligent, good faith attempt to send notice if the owner sent such notice by registered mail
to the author at the most recent address of the author that was recorded with the Register of Copyrights pursuant to paragraph (3). If the work is removed at the expense of
the author, title to that copy of the work shall be deemed to be in the author.
(3) The Register of Copyrights shall establish a system of records whereby any author of a work of visual art that has been incorporated in or made part of a building,
may record his or her identity and address with the Copyright Office. The Register
shall also establish procedures under which any such author may update the information so recorded, and procedures under which owners of buildings may record with
the Copyright Office evidence of their efforts to comply with this subsection.
§ 114.—Scope of exclusive rights in sound recordings
(a) The exclusive rights of the owner of copyright in a sound recording are limited to
the rights specified by clauses (1), (2), (3) and (6) of section 106, and do not include any
right of performance under section 106(4).
(b) The exclusive right of the owner of copyright in a sound recording under clause (1)
of section 106 is limited to the right to duplicate the sound recording in the form of
phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the
recording. The exclusive right of the owner of copyright in a sound recording under clause
(2) of section 106 is limited to the right to prepare a derivative work in which the actual
sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality. The exclusive rights of the owner of copyright in a sound recording
under clauses (1) and (2) of section 106 do not extend to the making or duplication of
another sound recording that consists entirely of an independent fixation of other sounds,
88

Copyright Act of 1976

§ 114.

even though such sounds imitate or simulate those in the copyrighted sound recording.
The exclusive rights of the owner of copyright in a sound recording under clauses (1), (2),
and (3) of section 106 do not apply to sound recordings included in educational television
and radio programs (as defined in section 397 of title 47) distributed or transmitted by or
through public broadcasting entities (as defined by section 118(f)): Provided, That copies
or phonorecords of said programs are not commercially distributed by or through public
broadcasting entities to the general public.
(c) This section does not limit or impair the exclusive right to perform publicly, by
means of a phonorecord, any of the works specified by section 106(4).
(d) Limitations on Exclusive Right.—Notwithstanding the provisions of section
106(6)—
(1) Exempt transmissions and retransmissions.—The performance of a sound recording publicly by means of a digital audio transmission, other than as a part of an interactive service, is not an infringement of section 106(6) if the performance is part of—
(A) a nonsubscription broadcast transmission;
(B) a retransmission of a nonsubscription broadcast transmission: Provided, That,
in the case of a retransmission of a radio station’s broadcast transmission—
(i) the radio station’s broadcast transmission is not willfully or repeatedly retransmitted more than a radius of 150 miles from the site of the radio broadcast
transmitter, however—
(I) the 150 mile limitation under this clause shall not apply when a nonsubscription broadcast transmission by a radio station licensed by the Federal Communications Commission is retransmitted on a nonsubscription basis by a
terrestrial broadcast station, terrestrial translator, or terrestrial repeater licensed
by the Federal Communications Commission; and
(II) in the case of a subscription retransmission of a nonsubscription broadcast
retransmission covered by subclause (I), the 150 mile radius shall be measured
from the transmitter site of such broadcast retransmitter;
(ii) the retransmission is of radio station broadcast transmissions that are—
(I) obtained by the retransmitter over the air;
(II) not electronically processed by the retransmitter to deliver separate and
discrete signals; and
(III) retransmitted only within the local communities served by the retransmitter;
(iii) the radio station’s broadcast transmission was being retransmitted to cable
systems (as defined in section 111(f)) by a satellite carrier on January 1, 1995, and
that retransmission was being retransmitted by cable systems as a separate and
discrete signal, and the satellite carrier obtains the radio station’s broadcast transmission in an analog format: Provided, That the broadcast transmission being retransmitted may embody the programming of no more than one radio station; or
(iv) the radio station’s broadcast transmission is made by a noncommercial educational broadcast station funded on or after January 1, 1995, under section 396(k)
of the Communications Act of 1934 (47 U.S.C. 396(k)), consists solely of noncommercial educational and cultural radio programs, and the retransmission, whether
or not simultaneous, is a nonsubscription terrestrial broadcast retransmission; or
(C) a transmission that comes within any of the following categories—
(i) a prior or simultaneous transmission incidental to an exempt transmission,
such as a feed received by and then retransmitted by an exempt transmitter: Provided, That such incidental transmissions do not include any subscription transmission directly for reception by members of the public;
89

§ 114.

Copyright Act of 1976

(ii) a transmission within a business establishment, confined to its premises or
the immediately surrounding vicinity;
(iii) a retransmission by any retransmitter, including a multichannel video programming distributor as defined in section 602(12) of the Communications Act of
1934 (47 U.S.C. 522 (12)), of a transmission by a transmitter licensed to publicly
perform the sound recording as a part of that transmission, if the retransmission is
simultaneous with the licensed transmission and authorized by the transmitter; or
(iv) a transmission to a business establishment for use in the ordinary course of
its business: Provided, That the business recipient does not retransmit the transmission outside of its premises or the immediately surrounding vicinity, and that
the transmission does not exceed the sound recording performance complement.
Nothing in this clause shall limit the scope of the exemption in clause (ii).
(2) Statutory licensing of certain transmissions.—
The performance of a sound recording publicly by means of a subscription digital
audio transmission not exempt under paragraph (1), an eligible nonsubscription transmission, or a transmission not exempt under paragraph (1) that is made by a preexisting
satellite digital audio radio service shall be subject to statutory licensing, in accordance
with subsection (f) if—
(A)(i) the transmission is not part of an interactive service;
(ii) except in the case of a transmission to a business establishment, the transmitting entity does not automatically and intentionally cause any device receiving
the transmission to switch from one program channel to another; and
(iii) except as provided in section 1002(e), the transmission of the sound recording is accompanied, if technically feasible, by the information encoded in that
sound recording, if any, by or under the authority of the copyright owner of that
sound recording, that identifies the title of the sound recording, the featured recording artist who performs on the sound recording, and related information, including information concerning the underlying musical work and its writer;
(B) in the case of a subscription transmission not exempt under paragraph (1) that
is made by a preexisting subscription service in the same transmission medium used
by such service on July 31, 1998, or in the case of a transmission not exempt under
paragraph (1) that is made by a preexisting satellite digital audio radio service—
(i) the transmission does not exceed the sound recording performance complement; and
(ii) the transmitting entity does not cause to be published by means of an advance
program schedule or prior announcement the titles of the specific sound recordings
or phonorecords embodying such sound recordings to be transmitted; and
(C) in the case of an eligible nonsubscription transmission or a subscription transmission not exempt under paragraph (1) that is made by a new subscription service
or by a preexisting subscription service other than in the same transmission medium
used by such service on July 31, 1998—
(i) the transmission does not exceed the sound recording performance complement, except that this requirement shall not apply in the case of a retransmission
of a broadcast transmission if the retransmission is made by a transmitting entity
that does not have the right or ability to control the programming of the broadcast
station making the broadcast transmission, unless—
(I) the broadcast station makes broadcast transmissions—
(aa) in digital format that regularly exceed the sound recording performance
complement; or
90

Copyright Act of 1976

§ 114.

(bb) in analog format, a substantial portion of which, on a weekly basis, exceed the sound recording performance complement; and
(II) the sound recording copyright owner or its representative has notified the
transmitting entity in writing that broadcast transmissions of the copyright
owner’s sound recordings exceed the sound recording performance complement
as provided in this clause;
(ii) the transmitting entity does not cause to be published, or induce or facilitate
the publication, by means of an advance program schedule or prior announcement,
the titles of the specific sound recordings to be transmitted, the phonorecords embodying such sound recordings, or, other than for illustrative purposes, the names
of the featured recording artists, except that this clause does not disqualify a transmitting entity that makes a prior announcement that a particular artist will be featured within an unspecified future time period, and in the case of a retransmission
of a broadcast transmission by a transmitting entity that does not have the right or
ability to control the programming of the broadcast transmission, the requirement
of this clause shall not apply to a prior oral announcement by the broadcast station,
or to an advance program schedule published, induced, or facilitated by the broadcast station, if the transmitting entity does not have actual knowledge and has not
received written notice from the copyright owner or its representative that the
broadcast station publishes or induces or facilitates the publication of such advance
program schedule, or if such advance program schedule is a schedule of classical
music programming published by the broadcast station in the same manner as published by that broadcast station on or before September 30, 1998;
(iii) the transmission—
(I) is not part of an archived program of less than 5 hours duration;
(II) is not part of an archived program of 5 hours or greater in duration that is
made available for a period exceeding 2 weeks;
(III) is not part of a continuous program which is of less than 3 hours duration;
or
(IV) is not part of an identifiable program in which performances of sound
recordings are rendered in a predetermined order, other than an archived or continuous program, that is transmitted at—
(aa) more than 3 times in any 2-week period that have been publicly announced in advance, in the case of a program of less than 1 hour in duration, or
(bb) more than 4 times in any 2-week period that have been publicly announced in advance, in the case of a program of 1 hour or more in duration,
except that the requirement of this subclause shall not apply in the case of a
retransmission of a broadcast transmission by a transmitting entity that does
not have the right or ability to control the programming of the broadcast transmission, unless the transmitting entity is given notice in writing by the copyright owner of the sound recording that the broadcast station makes broadcast
transmissions that regularly violate such requirement;
(iv) the transmitting entity does not knowingly perform the sound recording, as
part of a service that offers transmissions of visual images contemporaneously
with transmissions of sound recordings, in a manner that is likely to cause confusion, to cause mistake, or to deceive, as to the affiliation, connection, or association
of the copyright owner or featured recording artist with the transmitting entity or
a particular product or service advertised by the transmitting entity, or as to the
origin, sponsorship, or approval by the copyright owner or featured recording artist
91

§ 114.

Copyright Act of 1976

of the activities of the transmitting entity other than the performance of the sound
recording itself;
(v) the transmitting entity cooperates to prevent, to the extent feasible without
imposing substantial costs or burdens, a transmission recipient or any other person
or entity from automatically scanning the transmitting entity’s transmissions alone
or together with transmissions by other transmitting entities in order to select a
particular sound recording to be transmitted to the transmission recipient, except
that the requirement of this clause shall not apply to a satellite digital audio service
that is in operation, or that is licensed by the Federal Communications Commission, on or before July 31, 1998;
(vi) the transmitting entity takes no affirmative steps to cause or induce the making of a phonorecord by the transmission recipient, and if the technology used by
the transmitting entity enables the transmitting entity to limit the making by the
transmission recipient of phonorecords of the transmission directly in a digital format, the transmitting entity sets such technology to limit such making of phonorecords to the extent permitted by such technology;
(vii) phonorecords of the sound recording have been distributed to the public
under the authority of the copyright owner or the copyright owner authorizes the
transmitting entity to transmit the sound recording, and the transmitting entity
makes the transmission from a phonorecord lawfully made under the authority of
the copyright owner, except that the requirement of this clause shall not apply to a
retransmission of a broadcast transmission by a transmitting entity that does not
have the right or ability to control the programming of the broadcast transmission,
unless the transmitting entity is given notice in writing by the copyright owner of
the sound recording that the broadcast station makes broadcast transmissions that
regularly violate such requirement;
(viii) the transmitting entity accommodates and does not interfere with the transmission of technical measures that are widely used by sound recording copyright
owners to identify or protect copyrighted works, and that are technically feasible
of being transmitted by the transmitting entity without imposing substantial costs
on the transmitting entity or resulting in perceptible aural or visual degradation of
the digital signal, except that the requirement of this clause shall not apply to a
satellite digital audio service that is in operation, or that is licensed under the authority of the Federal Communications Commission, on or before July 31, 1998,
to the extent that such service has designed, developed, or made commitments to
procure equipment or technology that is not compatible with such technical
measures before such technical measures are widely adopted by sound recording
copyright owners; and
(ix) the transmitting entity identifies in textual data the sound recording during,
but not before, the time it is performed, including the title of the sound recording,
the title of the phonorecord embodying such sound recording, if any, and the featured recording artist, in a manner to permit it to be displayed to the transmission
recipient by the device or technology intended for receiving the service provided
by the transmitting entity, except that the obligation in this clause shall not take
effect until 1 year after the date of the enactment of the Digital Millennium Copyright Act and shall not apply in the case of a retransmission of a broadcast transmission by a transmitting entity that does not have the right or ability to control the
programming of the broadcast transmission, or in the case in which devices or technology intended for receiving the service provided by the transmitting entity that
92

Copyright Act of 1976

§ 114.

have the capability to display such textual data are not common in the marketplace.
(3) Licenses for transmissions by interactive services.—
(A) No interactive service shall be granted an exclusive license under section
106(6) for the performance of a sound recording publicly by means of digital audio
transmission for a period in excess of 12 months, except that with respect to an exclusive license granted to an interactive service by a licensor that holds the copyright
to 1,000 or fewer sound recordings, the period of such license shall not exceed 24
months: Provided, however, That the grantee of such exclusive license shall be ineligible to receive another exclusive license for the performance of that sound recording for a period of 13 months from the expiration of the prior exclusive license.
(B) The limitation set forth in subparagraph (A) of this paragraph shall not apply if—
(i) the licensor has granted and there remain in effect licenses under section
106(6) for the public performance of sound recordings by means of digital audio
transmission by at least 5 different interactive services; Provided, however, That
each such license must be for a minimum of 10 percent of the copyrighted sound
recordings owned by the licensor that have been licensed to interactive services,
but in no event less than 50 sound recordings; or
(ii) the exclusive license is granted to perform publicly up to 45 seconds of a
sound recording and the sole purpose of the performance is to promote the distribution or performance of that sound recording.
(C) Notwithstanding the grant of an exclusive or nonexclusive license of the right of
public performance under section 106(6), an interactive service may not publicly perform a sound recording unless a license has been granted for the public performance of
any copyrighted musical work contained in the sound recording: Provided, That such
license to publicly perform the copyrighted musical work may be granted either by a
performing rights society representing the copyright owner or by the copyright owner.
(D) The performance of a sound recording by means of a retransmission of a digital
audio transmission is not an infringement of section 106(6) if—
(i) the retransmission is of a transmission by an interactive service licensed to
publicly perform the sound recording to a particular member of the public as part
of that transmission; and
(ii) the retransmission is simultaneous with the licensed transmission, authorized
by the transmitter, and limited to that particular member of the public intended by
the interactive service to be the recipient of the transmission.
(E) For the purposes of this paragraph—
(i) a “licensor” shall include the licensing entity and any other entity under any
material degree of common ownership, management, or control that owns copyrights in sound recordings; and
(ii) a “performing rights society” is an association or corporation that licenses
the public performance of nondramatic musical works on behalf of the copyright
owner, such as the American Society of Composers, Authors and Publishers,
Broadcast Music, Inc., and SESAC, Inc.
(4) Rights not otherwise limited.—
(A) Except as expressly provided in this section, this section does not limit or impair the exclusive right to perform a sound recording publicly by means of a digital
audio transmission under section 106(6).
(B) Nothing in this section annuls or limits in any way—
(i) the exclusive right to publicly perform a musical work, including by means
of a digital audio transmission, under section 106(4);
93

§ 114.

Copyright Act of 1976

(ii) the exclusive rights in a sound recording or the musical work embodied
therein under sections 106(1), 106(2) and 106(3); or
(iii) any other rights under any other clause of section 106, or remedies available
under this title as such rights or remedies exist either before or after the date of
enactment of the Digital Performance Right in Sound Recordings Act of 1995.
(C) Any limitations in this section on the exclusive right under section 106(6) apply only to the exclusive right under section 106(6) and not to any other exclusive
rights under section 106. Nothing in this section shall be construed to annul, limit,
impair or otherwise affect in any way the ability of the owner of a copyright in a
sound recording to exercise the rights under sections 106(1), 106(2) and 106(3), or
to obtain the remedies available under this title pursuant to such rights, as such rights
and remedies exist either before or after the date of enactment of the Digital Performance Right in Sound Recordings Act of 1995.
(e) Authority for Negotiations.—
(1) Notwithstanding any provision of the antitrust laws, in negotiating statutory licenses in accordance with subsection (f), any copyright owners of sound recordings
and any entities performing sound recordings affected by this section may negotiate
and agree upon the royalty rates and license terms and conditions for the performance
of such sound recordings and the proportionate division of fees paid among copyright
owners, and may designate common agents on a nonexclusive basis to negotiate, agree
to, pay, or receive payments.
(2) For licenses granted under section 106(6), other than statutory licenses, such as
for performances by interactive services or performances that exceed the sound recording performance complement—
(A) copyright owners of sound recordings affected by this section may designate
common agents to act on their behalf to grant licenses and receive and remit royalty
payments: Provided, That each copyright owner shall establish the royalty rates and
material license terms and conditions unilaterally, that is, not in agreement, combination, or concert with other copyright owners of sound recordings; and
(B) entities performing sound recordings affected by this section may designate
common agents to act on their behalf to obtain licenses and collect and pay royalty
fees: Provided, That each entity performing sound recordings shall determine the
royalty rates and material license terms and conditions unilaterally, that is, not in
agreement, combination, or concert with other entities performing sound recordings.
(f) Licenses for Certain Nonexempt Transmissions.—
(1)(A) Proceedings under chapter 8 shall determine reasonable rates and terms of
royalty payments for transmissions subject to statutory licensing under subsection
(d)(2) during the 5-year period beginning on January 1 of the second year following
the year in which the proceedings are to be commenced pursuant to subparagraph or
(B) of section 804(b)(3), as the case may be, or such other period as the parties may
agree. The parties to each proceeding shall bear their own costs.
(B) The schedule of reasonable rates and terms determined by the Copyright Royalty
Judges shall, subject to paragraph (2), be binding on all copyright owners of sound
recordings and entities performing sound recordings affected by this paragraph during
the 5-year period specified in subparagraph (A), or such other period as the parties may
agree. Such rates and terms shall distinguish among the different types of services then
in operation and shall include a minimum fee for each such type of service, such differences to be based on criteria including the quantity and nature of the use of sound
94

Copyright Act of 1976

§ 114.

recordings and the degree to which use of the service may substitute for or may promote the purchase of phonorecords by consumers. The Copyright Royalty Judges shall
establish rates and terms that most clearly represent the rates and terms that would have
been negotiated in the marketplace between a willing buyer and a willing seller. In
determining such rates and terms, the Copyright Royalty Judges—
(i) shall base their decision on economic, competitive, and programming information presented by the parties, including—
(I) whether use of the service may substitute for or may promote the sales of
phonorecords or otherwise may interfere with or may enhance the sound recording copyright owner’s other streams of revenue from the copyright owner’s
sound recordings; and
(II) the relative roles of the copyright owner and the transmitting entity in the
copyrighted work and the service made available to the public with respect to
relative creative contribution, technological contribution, capital investment,
cost, and risk; and
(ii) may consider the rates and terms for comparable types of audio transmission
services and comparable circumstances under voluntary license agreements.
(C) The procedures under subparagraphs (A) and (B) shall also be initiated pursuant
to a petition filed by any sound recording copyright owner or any transmitting entity
indicating that a new type of service on which sound recordings are performed is or
is about to become operational, for the purpose of determining reasonable terms and
rates of royalty payments with respect to such new type of service for the period beginning with the inception of such new type of service and ending on the date on
which the royalty rates and terms for eligible nonsubscription services and new subscription services, or preexisting subscription services and preexisting satellite digital
audio radio services, as the case may be, most recently determined under subparagraph (A) or (B) and chapter 8 expire, or such other period as the parties may agree.
(2) License agreements voluntarily negotiated at any time between 1 or more copyright owners of sound recordings and 1 or more entities performing sound recordings
shall be given effect in lieu of any decision by the Librarian of Congress or determination by the Copyright Royalty Judges.
(3)(A) The Copyright Royalty Judges shall also establish requirements by which
copyright owners may receive reasonable notice of the use of their sound recordings
under this section, and under which records of such use shall be kept and made available by entities performing sound recordings. The notice and recordkeeping rules in
effect on the day before the effective date of the Copyright Royalty and Distribution
Reform Act of 2004 shall remain in effect unless and until new regulations are promulgated by the Copyright Royalty Judges. If new regulations are promulgated under
this subparagraph, the Copyright Royalty Judges shall take into account the substance
and effect of the rules in effect on the day before the effective date of the Copyright
Royalty and Distribution Reform Act of 2004 and shall, to the extent practicable, avoid
significant disruption of the functions of any designated agent authorized to collect and
distribute royalty fees.
(B) Any person who wishes to perform a sound recording publicly by means of a
transmission eligible for statutory licensing under this subsection may do so without
infringing the exclusive right of the copyright owner of the sound recording—
(i) by complying with such notice requirements as the Copyright Royalty Judges
shall prescribe by regulation and by paying royalty fees in accordance with this
subsection; or
95

§ 114.

Copyright Act of 1976

(ii) if such royalty fees have not been set, by agreeing to pay such royalty fees
as shall be determined in accordance with this subsection.
(C) Any royalty payments in arrears shall be made on or before the twentieth day
of the month next succeeding the month in which the royalty fees are set.
(4)(A) Notwithstanding section 112(e) and the other provisions of this subsection,
the receiving agent may enter into agreements for the reproduction and performance
of sound recordings under section 112(e) and this section by any 1 or more commercial
webcasters or noncommercial webcasters for a period of not more than 11 years beginning on January 1, 2005, that, once published in the Federal Register pursuant to
subparagraph (B), shall be binding on all copyright owners of sound recordings and
other persons entitled to payment under this section, in lieu of any determination by
the Copyright Royalty Judges. Any such agreement for commercial webcasters may
include provisions for payment of royalties on the basis of a percentage of revenue or
expenses, or both, and include a minimum fee. Any such agreement may include other
terms and conditions, including requirements by which copyright owners may receive
notice of the use of their sound recordings and under which records of such use shall
be kept and made available by commercial webcasters or noncommercial webcasters.
The receiving agent shall be under no obligation to negotiate any such agreement. The
receiving agent shall have no obligation to any copyright owner of sound recordings
or any other person entitled to payment under this section in negotiating any such
agreement, and no liability to any copyright owner of sound recordings or any other
person entitled to payment under this section for having entered into such agreement.
(B) The Copyright Office shall cause to be published in the Federal Register any
agreement entered into pursuant to subparagraph (A). Such publication shall include
a statement containing the substance of subparagraph (C). Such agreements shall not
be included in the Code of Federal Regulations. Thereafter, the terms of such agreement shall be available, as an option, to any commercial webcaster or noncommercial webcaster meeting the eligibility conditions of such agreement.
(C) Neither subparagraph (A) nor any provisions of any agreement entered into
pursuant to subparagraph (A), including any rate structure, fees, terms, conditions,
or notice and recordkeeping requirements set forth therein, shall be admissible as
evidence or otherwise taken into account in any administrative, judicial, or other
government proceeding involving the setting or adjustment of the royalties payable
for the public performance or reproduction in ephemeral phonorecords or copies of
sound recordings, the determination of terms or conditions related thereto, or the
establishment of notice or recordkeeping requirements by the Copyright Royalty
Judges under paragraph (3) or section 112(e)(4). It is the intent of Congress that any
royalty rates, rate structure, definitions, terms, conditions, or notice and recordkeeping requirements, included in such agreements shall be considered as a compromise
motivated by the unique business, economic and political circumstances of webcasters, copyright owners, and performers rather than as matters that would have
been negotiated in the marketplace between a willing buyer and a willing seller, or
otherwise meet the objectives set forth in section 801(b). This subparagraph shall not
apply to the extent that the receiving agent and a webcaster that is party to an agreement entered into pursuant to subparagraph (A) expressly authorize the submission
of the agreement in a proceeding under this subsection.
(D) Nothing in the Webcaster Settlement Act of 2008, the Webcaster Settlement
Act of 2009, or any agreement entered into pursuant to subparagraph (A) shall be
taken into account by the United States Court of Appeals for the District of Columbia
96

Copyright Act of 1976

§ 114.

Circuit in its review of the determination by the Copyright Royalty Judges of May
1, 2007, of rates and terms for the digital performance of sound recordings and
ephemeral recordings, pursuant to sections 112 and 114.
(E) As used in this paragraph—
(i) the term “noncommercial webcaster” means a webcaster that—
(I) is exempt from taxation under section 501 of the Internal Revenue Code of
1986 (26 U.S.C. 501);
(II) has applied in good faith to the Internal Revenue Service for exemption
from taxation under section 501 of the Internal Revenue Code and has a commercially reasonable expectation that such exemption shall be granted; or
(III) is operated by a State or possession or any governmental entity or subordinate thereof, or by the United States or District of Columbia, for exclusively
public purposes;
(ii) the term “receiving agent” shall have the meaning given that term in section
261.2 of title 37, Code of Federal Regulations, as published in the Federal Register
on July 8, 2002; and
(iii) the term “webcaster” means a person or entity that has obtained a compulsory license under section 112 or 114 and the implementing regulations therefor.
(F) The authority to make settlements pursuant to subparagraph (A) shall expire at
11:59 p.m. Eastern time on the 30th day after the date of the enactment of the
Webcaster Settlement Act of 2009.
(g) Proceeds from Licensing of Transmissions.—
(1) Except in the case of a transmission licensed under a statutory license in accordance with subsection (f) of this section—
(A) a featured recording artist who performs on a sound recording that has been
licensed for a transmission shall be entitled to receive payments from the copyright
owner of the sound recording in accordance with the terms of the artist’s contract; and
(B) a nonfeatured recording artist who performs on a sound recording that has been
licensed for a transmission shall be entitled to receive payments from the copyright
owner of the sound recording in accordance with the terms of the nonfeatured recording artist’s applicable contract or other applicable agreement.
(2) Except as provided for in paragraph (6), a nonprofit collective designated by the
Copyright Royalty Judges to distribute receipts from the licensing of transmissions in
accordance with subsection (f) shall distribute such receipts as follows:
(A) 50 percent of the receipts shall be paid to the copyright owner of the exclusive
right under section 106(6) of this title to publicly perform a sound recording by
means of a digital audio transmission.
(B) 2-1/2 percent of the receipts shall be deposited in an escrow account managed
by an independent administrator jointly appointed by copyright owners of sound recordings and the American Federation of Musicians (or any successor entity) to be
distributed to nonfeatured musicians (whether or not members of the American Federation of Musicians) who have performed on sound recordings.
(C) 2-1/2 percent of the receipts shall be deposited in an escrow account managed
by an independent administrator jointly appointed by copyright owners of sound recordings and the American Federation of Television and Radio Artists (or any successor entity) to be distributed to nonfeatured vocalists (whether or not members of
the American Federation of Television and Radio Artists) who have performed on
sound recordings.
(D) 45 percent of the receipts shall be paid, on a per sound recording basis, to the
97

§ 114.

Copyright Act of 1976

recording artist or artists featured on such sound recording (or the persons conveying
rights in the artists’ performance in the sound recordings).
(3) A nonprofit collective designated by the Copyright Royalty Judges to distribute
receipts from the licensing of transmissions in accordance with subsection (f) may deduct from any of its receipts, prior to the distribution of such receipts to any person or
entity entitled thereto other than copyright owners and performers who have elected to
receive royalties from another designated nonprofit collective and have notified such
nonprofit collective in writing of such election, the reasonable costs of such collective
incurred after November 1, 1995, in—
(A) the administration of the collection, distribution, and calculation of the royalties;
(B) the settlement of disputes relating to the collection and calculation of the royalties; and
(C) the licensing and enforcement of rights with respect to the making of ephemeral recordings and performances subject to licensing under section 112 and this section, including those incurred in participating in negotiations or arbitration
proceedings under section 112 and this section, except that all costs incurred relating
to the section 112 ephemeral recordings right may only be deducted from the royalties received pursuant to section 112.
(4) Notwithstanding paragraph (3), any nonprofit collective designated to distribute
receipts from the licensing of transmissions in accordance with subsection (f) may deduct from any of its receipts, prior to the distribution of such receipts, the reasonable
costs identified in paragraph (3) of such collective incurred after November 1, 1995,
with respect to such copyright owners and performers who have entered with such
collective a contractual relationship that specifies that such costs may be deducted from
such royalty receipts.
(5) Letter of direction.—
(A) IN GENERAL.—A nonprofit collective designated by the Copyright Royalty
Judges to distribute receipts from the licensing of transmissions in accordance with
subsection (f) shall adopt and reasonably implement a policy that provides, in circumstances determined by the collective to be appropriate, for acceptance of instructions from a payee identified under subparagraph (A) or (D) of paragraph (2) to
distribute, to a producer, mixer, or sound engineer who was part of the creative process that created a sound recording, a portion of the payments to which the payee
would otherwise be entitled from the licensing of transmissions of the sound recording. In this section, such instructions shall be referred to as a ‘letter of direction’.
(B) ACCEPTANCE OF LETTER.—To the extent that a collective described in subparagraph (A) accepts a letter of direction under that subparagraph, the person entitled
to payment pursuant to the letter of direction shall, during the period in which the letter
of direction is in effect and carried out by the collective, be treated for all purposes as
the owner of the right to receive such payment, and the payee providing the letter of
direction to the collective shall be treated as having no interest in such payment.
(C) AUTHORITY OF COLLECTIVE.—This paragraph shall not be construed in
such a manner so that the collective is not authorized to accept or act upon payment
instructions in circumstances other than those to which this paragraph applies.
(6) Sound recordings fixed before November 1, 1995.—
(A) PAYMENT ABSENT LETTER OF DIRECTION.—A nonprofit collective
designated by the Copyright Royalty Judges to distribute receipts from the licensing
of transmissions in accordance with subsection (f) (in this paragraph referred to as the
98

Copyright Act of 1976

§ 114.

‘collective’) shall adopt and reasonably implement a policy that provides, in circumstances determined by the collective to be appropriate, for the deduction of 2 percent
of all the receipts that are collected from the licensing of transmissions of a sound
recording fixed before November 1, 1995, but which is withdrawn from the amount
otherwise payable under paragraph (2)(D) to the recording artist or artists featured on
the sound recording (or the persons conveying rights in the artists’ performance in the
sound recording), and the distribution of such amount to 1 or more persons described
in subparagraph (B) of this paragraph, after deduction of costs described in paragraph
(3) or (4), as applicable, if each of the following requirements is met:
(i) CERTIFICATION OF ATTEMPT TO OBTAIN A LETTER OF
DIRECTION.—The person described in subparagraph (B) who is to receive the
distribution has certified to the collective, under penalty of perjury, that—
(I) for a period of not less than 120 days, that person made reasonable efforts
to contact the artist payee for such sound recording to request and obtain a letter
of direction instructing the collective to pay to that person a portion of the royalties payable to the featured recording artist or artists; and
(II) during the period beginning on the date on which that person began the
reasonable efforts described in subclause (I) and ending on the date of that person’s certification to the collective, the artist payee did not affirm or deny in
writing the request for a letter of direction.
(ii) COLLECTIVE ATTEMPT TO CONTACT ARTIST.—After receipt of the
certification described in clause (i) and for a period of not less than 120 days before
the first distribution by the collective to the person described in subparagraph (B),
the collective attempts, in a reasonable manner as determined by the collective, to
notify the artist payee of the certification made by the person described in subparagraph (B).
(iii) NO OBJECTION RECEIVED.—The artist payee does not, as of the date
that was 10 business days before the date on which the first distribution is made,
submit to the collective in writing an objection to the distribution.
(B) ELIGIBILITY FOR PAYMENT.—A person shall be eligible for payment under subparagraph (A) if the person—
(i) is a producer, mixer, or sound engineer of the sound recording;
(ii) has entered into a written contract with a record company involved in the
creation or lawful exploitation of the sound recording, or with the recording artist
or artists featured on the sound recording (or the persons conveying rights in the
artists’ performance in the sound recording), under which the person seeking payment is entitled to participate in royalty payments that are based on the exploitation
of the sound recording and are payable from royalties otherwise payable to the
recording artist or artists featured on the sound recording (or the persons conveying
rights in the artists’ performance in the sound recording);
(iii) made a creative contribution to the creation of the sound recording; and
(iv) submits to the collective—
(I) a written certification stating, under penalty of perjury, that the person
meets the requirements in clauses (i) through (iii); and
(II) a true copy of the contract described in clause (ii).
(C) MULTIPLE CERTIFICATIONS.—Subject to subparagraph (D), in a case in
which more than 1 person described in subparagraph (B) has met the requirements
for a distribution under subparagraph (A) with respect to a sound recording as of the
date that is 10 business days before the date on which the distribution is made, the
99

§ 114.

Copyright Act of 1976

collective shall divide the 2 percent distribution equally among all such persons.
(D) OBJECTION TO PAYMENT.—Not later than 10 business days after the date
on which the collective receives from the artist payee a written objection to a distribution made pursuant to subparagraph (A), the collective shall cease making any
further payment relating to such distribution. In any case in which the collective has
made 1 or more distributions pursuant to subparagraph (A) to a person described in
subparagraph (B) before the date that is 10 business days after the date on which the
collective receives from the artist payee an objection to such distribution, the objection shall not affect that person’s entitlement to any distribution made before the
collective ceases such distribution under this subparagraph.
(E) OWNERSHIP OF THE RIGHT TO RECEIVE PAYMENTS.—To the extent
that the collective determines that a distribution will be made under subparagraph
(A) to a person described in subparagraph (B), such person shall, during the period
covered by such distribution, be treated for all purposes as the owner of the right to
receive such payments, and the artist payee to whom such payments would otherwise
be payable shall be treated as having no interest in such payments.
(F) ARTIST PAYEE DEFINED.—In this paragraph, the term ‘artist payee’ means
a person, other than a person described in subparagraph (B), who owns the right to
receive all or part of the receipts payable under paragraph (2)(D) with respect to a
sound recording. In a case in which there are multiple artist payees with respect to a
sound recording, an objection by 1 such payee shall apply only to that payee’s share
of the receipts payable under paragraph (2)(D), and shall not preclude payment under
subparagraph (A) from the share of an artist payee that does not so object.
(7) Preemption of state property laws.—The holding and distribution of receipts
under section 112 and this section by a nonprofit collective designated by the Copyright Royalty Judges in accordance with this subsection and regulations adopted by the
Copyright Royalty Judges, or by an independent administrator pursuant to subparagraphs (B) and (C) of section 114(g)(2), shall supersede and preempt any State law
(including common law) concerning escheatment or abandoned property, or any analogous provision, that might otherwise apply.
(h) Licensing to Affiliates.—
(1) If the copyright owner of a sound recording licenses an affiliated entity the right to
publicly perform a sound recording by means of a digital audio transmission under section 106(6), the copyright owner shall make the licensed sound recording available under
section 106(6) on no less favorable terms and conditions to all bona fide entities that
offer similar services, except that, if there are material differences in the scope of the
requested license with respect to the type of service, the particular sound recordings licensed, the frequency of use, the number of subscribers served, or the duration, then the
copyright owner may establish different terms and conditions for such other services.
(2) The limitation set forth in paragraph (1) of this subsection shall not apply in the
case where the copyright owner of a sound recording licenses—
(A) an interactive service; or
(B) an entity to perform publicly up to 45 seconds of the sound recording and the
sole purpose of the performance is to promote the distribution or performance of that
sound recording.
(j) Definitions.—As used in this section, the following terms have the following
meanings:
(1) An “affiliated entity” is an entity engaging in digital audio transmissions covered
by section 106(6), other than an interactive service, in which the licensor has any direct
100

Copyright Act of 1976

§ 114.

or indirect partnership or any ownership interest amounting to 5 percent or more of the
outstanding voting or nonvoting stock.
(2) An “archived program” is a predetermined program that is available repeatedly
on the demand of the transmission recipient and that is performed in the same order
from the beginning, except that an archived program shall not include a recorded event
or broadcast transmission that makes no more than an incidental use of sound recordings, as long as such recorded event or broadcast transmission does not contain an
entire sound recording or feature a particular sound recording.
(3) A “broadcast” transmission is a transmission made by a terrestrial broadcast station licensed as such by the Federal Communications Commission.
(4) A “continuous program” is a predetermined program that is continuously performed in the same order and that is accessed at a point in the program that is beyond
the control of the transmission recipient.
(5) A “digital audio transmission” is a digital transmission as defined in section 101,
that embodies the transmission of a sound recording. This term does not include the
transmission of any audiovisual work.
(6) An “eligible nonsubscription transmission” is a noninteractive nonsubscription
digital audio transmission not exempt under subsection (d)(1) that is made as part of a
service that provides audio programming consisting, in whole or in part, of performances of sound recordings, including retransmissions of broadcast transmissions, if
the primary purpose of the service is to provide to the public such audio or other entertainment programming, and the primary purpose of the service is not to sell, advertise, or promote particular products or services other than sound recordings, live
concerts, or other music-related events.
(7) An “interactive service” is one that enables a member of the public to receive a
transmission of a program specially created for the recipient, or on request, a transmission of a particular sound recording, whether or not as part of a program, which is selected by or on behalf of the recipient. The ability of individuals to request that particular
sound recordings be performed for reception by the public at large, or in the case of a
subscription service, by all subscribers of the service, does not make a service interactive,
if the programming on each channel of the service does not substantially consist of sound
recordings that are performed within 1 hour of the request or at a time designated by
either the transmitting entity or the individual making such request. If an entity offers
both interactive and noninteractive services (either concurrently or at different times),
the noninteractive component shall not be treated as part of an interactive service.
(8) A “new subscription service” is a service that performs sound recordings by
means of noninteractive subscription digital audio transmissions and that is not a
preexisting subscription service or a preexisting satellite digital audio radio service.
(9) A “nonsubscription” transmission is any transmission that is not a subscription
transmission.
(10) A “preexisting satellite digital audio radio service” is a subscription satellite
digital audio radio service provided pursuant to a satellite digital audio radio service
license issued by the Federal Communications Commission on or before July 31, 1998,
and any renewal of such license to the extent of the scope of the original license, and
may include a limited number of sample channels representative of the subscription
service that are made available on a nonsubscription basis in order to promote the subscription service.
(11) A “preexisting subscription service” is a service that performs sound recordings
by means of noninteractive audio-only subscription digital audio transmissions, which
101

§ 115.

Copyright Act of 1976

was in existence and was making such transmissions to the public for a fee on or before
July 31, 1998, and may include a limited number of sample channels representative of
the subscription service that are made available on a nonsubscription basis in order to
promote the subscription service.
(12) A “retransmission” is a further transmission of an initial transmission, and includes any further retransmission of the same transmission. Except as provided in this
section, a transmission qualifies as a “retransmission” only if it is simultaneous with
the initial transmission. Nothing in this definition shall be construed to exempt a transmission that fails to satisfy a separate element required to qualify for an exemption
under section 114(d)(1).
(13) The “sound recording performance complement” is the transmission during any
3-hour period, on a particular channel used by a transmitting entity, of no more than—
(A) 3 different selections of sound recordings from any one phonorecord lawfully
distributed for public performance or sale in the United States, if no more than 2 such
selections are transmitted consecutively; or
(B) 4 different selections of sound recordings—
(i) by the same featured recording artist; or
(ii) from any set or compilation of phonorecords lawfully distributed together as
a unit for public performance or sale in the United States, if no more than three
such selections are transmitted consecutively: Provided, That the transmission of
selections in excess of the numerical limits provided for in clauses (A) and (B)
from multiple phonorecords shall nonetheless qualify as a sound recording performance complement if the programming of the multiple phonorecords was not willfully intended to avoid the numerical limitations prescribed in such clauses.
(14) A “subscription” transmission is a transmission that is controlled and limited to
particular recipients, and for which consideration is required to be paid or otherwise
given by or on behalf of the recipient to receive the transmission or a package of transmissions including the transmission.
(15) A “transmission” is either an initial transmission or a retransmission.
§ 115.—Scope of exclusive rights in nondramatic musical works: Compulsory
license for making and distributing phonorecords
In the case of nondramatic musical works, the exclusive rights provided by clauses (1)
and (3) of section 106, to make and to distribute phonorecords of such works, are subject
to compulsory licensing under the conditions specified by this section.
(a) Availability and Scope of Compulsory License in General.—
(1) Eligibility for compulsory license.—
(A) CONDITIONS FOR COMPULSORY LICENSE.—A person may by complying with the provisions of this section obtain a compulsory license to make and distribute phonorecords of a nondramatic musical work, including by means of digital
phonorecord delivery. A person may obtain a compulsory license only if the primary
purpose in making phonorecords of the musical work is to distribute them to the
public for private use, including by means of digital phonorecord delivery, and—
(i) phonorecords of such musical work have previously been distributed to the
public in the United States under the authority of the copyright owner of the work,
including by means of digital phonorecord delivery; or
(ii) in the case of a digital music provider seeking to make and distribute digital
phonorecord deliveries of a sound recording embodying a musical work under a
compulsory license for which clause (i) does not apply—
102

Copyright Act of 1976

§ 115.

(I) the first fixation of such sound recording was made under the authority of the
musical work copyright owner, and the sound recording copyright owner has the
authority of the musical work copyright owner to make and distribute digital phonorecord deliveries embodying such work to the public in the United States; and
(II) the sound recording copyright owner, or the authorized distributor of the
sound recording copyright owner, has authorized the digital music provider to
make and distribute digital phonorecord deliveries of the sound recording to the
public in the United States.
(B) DUPLICATION OF SOUND RECORDING.—A person may not obtain a
compulsory license for the use of the work in the making of phonorecords duplicating a sound recording fixed by another, including by means of digital phonorecord
delivery, unless—
(i) such sound recording was fixed lawfully; and
(ii) the making of the phonorecords was authorized by the owner of the copyright
in the sound recording or, if the sound recording was fixed before February 15,
1972, by any person who fixed the sound recording pursuant to an express license
from the owner of the copyright in the musical work or pursuant to a valid compulsory license for use of such work in a sound recording.
(2) Musical arrangement.—A compulsory license includes the privilege of making
a musical arrangement of the work to the extent necessary to conform it to the style or
manner of interpretation of the performance involved, but the arrangement shall not
change the basic melody or fundamental character of the work, and shall not be subject
to protection as a derivative work under this title, except with the express consent of
the copyright owner.
(b) Procedures To Obtain a Compulsory License.—
(1) Phonorecords other than digital phonorecord deliveries.—A person who
seeks to obtain a compulsory license under subsection (a) to make and distribute
phonorecords of a musical work other than by means of digital phonorecord delivery
shall, before, or not later than 30 calendar days after, making, and before distributing,
any phonorecord of the work, serve notice of intention to do so on the copyright owner.
If the registration or other public records of the Copyright Office do not identify the
copyright owner and include an address at which notice can be served, it shall be sufficient to file the notice of intention with the Copyright Office. The notice shall comply, in form, content, and manner of service, with requirements that the Register of
Copyrights shall prescribe by regulation.
(2) Digital phonorecord deliveries.—A person who seeks to obtain a compulsory
license under subsection (a) to make and distribute phonorecords of a musical work by
means of digital phonorecord delivery—
(A) prior to the license availability date, shall, before, or not later than 30 calendar
days after, first making any such digital phonorecord delivery, serve a notice of intention to do so on the copyright owner (but may not file the notice with the Copyright
Office, even if the public records of the Office do not identify the owner or the owner’s
address), and such notice shall comply, in form, content, and manner of service, with
requirements that the Register of Copyrights shall prescribe by regulation; or
(B) on or after the license availability date, shall, before making any such digital
phonorecord delivery, follow the procedure described in subsection (d)(2), except as
provided in paragraph (3).
(3) Record company individual download licenses.—Notwithstanding paragraph
103

§ 115.

Copyright Act of 1976

(2)(B), a record company may, on or after the license availability date, obtain an individual download license in accordance with the notice requirements described in paragraph (2)(A) (except for the requirement that notice occur prior to the license
availability date). A record company that obtains an individual download license as
permitted under this paragraph shall provide statements of account and pay royalties
as provided in subsection (c)(2)(I).
(4) Failure to obtain license.—
(A) PHONORECORDS OTHER THAN DIGITAL PHONORECORD
DELIVERIES.—In the case of phonorecords made and distributed other than by
means of digital phonorecord delivery, the failure to serve or file the notice of intention required by paragraph (1) forecloses the possibility of a compulsory license under paragraph (1). In the absence of a voluntary license, the failure to obtain a
compulsory license renders the making and distribution of phonorecords actionable
as acts of infringement under section 501 and subject to the remedies provided by
sections 502 through 506.
(B) DIGITAL PHONORECORD DELIVERIES.—
(i) IN GENERAL.—In the case of phonorecords made and distributed by means
of digital phonorecord delivery:
(I) The failure to serve the notice of intention required by paragraph (2)(A) or
paragraph (3), as applicable, forecloses the possibility of a compulsory license
under such paragraph.
(II) The failure to comply with paragraph (2)(B) forecloses the possibility of a
blanket license for a period of 3 years after the last calendar day on which the
notice of license was required to be submitted to the mechanical licensing collective under such paragraph.
(ii) EFFECT OF FAILURE.—In either case described in subclause (I) or (II) of
clause (i), in the absence of a voluntary license, the failure to obtain a compulsory
license renders the making and distribution of phonorecords by means of digital
phonorecord delivery actionable as acts of infringement under section 501 and
subject to the remedies provided by sections 502 through 506.
(c) General Conditions Applicable to Compulsory License.—
(1) Royalty payable under compulsory license.—
(A) IDENTIFICATION REQUIREMENT.—To be entitled to receive royalties under a compulsory license obtained under subsection (b)(1) the copyright owner must be
identified in the registration or other public records of the Copyright Office. The owner
is entitled to royalties for phonorecords made and distributed after being so identified,
but is not entitled to recover for any phonorecords previously made and distributed.
(B) ROYALTY FOR PHONORECORDS OTHER THAN DIGITAL PHONORECORD DELIVERIES.— Except as provided by subparagraph (A), for every
phonorecord made and distributed under a compulsory license under subsection (a)
other than by means of digital phonorecord delivery, with respect to each work embodied in the phonorecord, the royalty shall be the royalty prescribed under subparagraphs (D) through (F), paragraph (2)(A), and chapter 8. For purposes of this
subparagraph, a phonorecord is considered ‘distributed’ if the person exercising the
compulsory license has voluntarily and permanently parted with its possession.
(C) ROYALTY FOR DIGITAL PHONORECORD DELIVERIES.—For every
digital phonorecord delivery of a musical work made under a compulsory license
under this section, the royalty payable shall be the royalty prescribed under subparagraphs (D) through (F), paragraph (2)(A), and chapter 8.
104

Copyright Act of 1976

§ 115.

(D) AUTHORITY TO NEGOTIATE.—Notwithstanding any provision of the antitrust laws, any copyright owners of nondramatic musical works and any persons
entitled to obtain a compulsory license under subsection (a) may negotiate and agree
upon the terms and rates of royalty payments under this section and the proportionate
division of fees paid among copyright owners, and may designate common agents
on a nonexclusive basis to negotiate, agree to, pay or receive such royalty payments.
Such authority to negotiate the terms and rates of royalty payments includes, but is
not limited to, the authority to negotiate the year during which the royalty rates prescribed under this subparagraph, subparagraphs (E) and (F), paragraph (2)(A), and
chapter 8 shall next be determined.
(E) DETERMINATION OF REASONABLE RATES AND TERMS.—
Proceedings under chapter 8 shall determine reasonable rates and terms of royalty
payments for the activities specified by this section during the period beginning with
the effective date of such rates and terms, but not earlier than January 1 of the second
year following the year in which the petition requesting the proceeding is filed, and
ending on the effective date of successor rates and terms, or such other period as the
parties may agree. Any copyright owners of nondramatic musical works and any
persons entitled to obtain a compulsory license under subsection (a) may submit to
the Copyright Royalty Judges licenses covering such activities. The parties to each
proceeding shall bear their own costs.
(F) SCHEDULE OF REASONABLE RATES.—The schedule of reasonable rates
and terms determined by the Copyright Royalty Judges shall, subject to paragraph
(2)(A), be binding on all copyright owners of nondramatic musical works and persons
entitled to obtain a compulsory license under subsection (a) during the period specified in subparagraph (E), such other period as may be determined pursuant to subparagraphs (D) and (E), or such other period as the parties may agree. The Copyright
Royalty Judges shall establish rates and terms that most clearly represent the rates and
terms that would have been negotiated in the marketplace between a willing buyer
and a willing seller. In determining such rates and terms for digital phonorecord deliveries, the Copyright Royalty Judges shall base their decision on economic, competitive, and programming information presented by the parties, including—
(i) whether use of the compulsory licensee’s service may substitute for or may
promote the sales of phonorecords or otherwise may interfere with or may enhance
the musical work copyright owner’s other streams of revenue from its musical
works; and
(ii) the relative roles of the copyright owner and the compulsory licensee in the
copyrighted work and the service made available to the public with respect to the
relative creative contribution, technological contribution, capital investment, cost,
and risk.
(2) Additional terms and conditions.—
(A) VOLUNTARY LICENSES AND CONTRACTUAL ROYALTY RATES.—
(i) IN GENERAL.—License agreements voluntarily negotiated at any time between one or more copyright owners of nondramatic musical works and one or
more persons entitled to obtain a compulsory license under subsection (a) shall be
given effect in lieu of any determination by the Copyright Royalty Judges. Subject
to clause (ii), the royalty rates determined pursuant to subparagraphs (E) and (F)
of paragraph (1) shall be given effect as to digital phonorecord deliveries in lieu
of any contrary royalty rates specified in a contract pursuant to which a recording
artist who is the author of a nondramatic musical work grants a license under that
105

§ 115.

Copyright Act of 1976

person’s exclusive rights in the musical work under paragraphs (1) and (3) of section 106 or commits another person to grant a license in that musical work under
paragraphs (1) and (3) of section 106, to a person desiring to fix in a tangible medium of expression a sound recording embodying the musical work.
(ii) APPLICABILITY.—The second sentence of clause (i) shall not apply to—
(I) a contract entered into on or before June 22, 1995, and not modified thereafter for the purpose of reducing the royalty rates determined pursuant to subparagraphs (E) and (F) of paragraph (1) or of increasing the number of musical
works within the scope of the contract covered by the reduced rates, except if a
contract entered into on or before June 22, 1995, is modified thereafter for the
purpose of increasing the number of musical works within the scope of the contract, any contrary royalty rates specified in the contract shall be given effect in
lieu of royalty rates determined pursuant to subparagraphs (E) and (F) of paragraph (1) for the number of musical works within the scope of the contract as of
June 22, 1995; and
(II) a contract entered into after the date that the sound recording is fixed in a
tangible medium of expression substantially in a form intended for commercial
release, if at the time the contract is entered into, the recording artist retains the
right to grant licenses as to the musical work under paragraphs (1) and (3) of
section 106.
(B) SOUND RECORDING INFORMATION.—Except as provided in section
1002(e), a digital phonorecord delivery licensed under this paragraph shall be accompanied by the information encoded in the sound recording, if any, by or under
the authority of the copyright owner of that sound recording, that identifies the title
of the sound recording, the featured recording artist who performs on the sound recording, and related information, including information concerning the underlying
musical work and its writer.
(C) INFRINGEMENT REMEDIES.—
(i) IN GENERAL.—A digital phonorecord delivery of a sound recording is actionable as an act of infringement under section 501, and is fully subject to the
remedies provided by sections 502 through 506, unless—
(I) the digital phonorecord delivery has been authorized by the sound recording copyright owner; and
(II) the entity making the digital phonorecord delivery has obtained a compulsory license under subsection (a) or has otherwise been authorized by the musical
work copyright owner, or by a record company pursuant to an individual download license, to make and distribute phonorecords of each musical work embodied in the sound recording by means of digital phonorecord delivery.
(ii) OTHER REMEDIES.—Any cause of action under this subparagraph shall
be in addition to those available to the owner of the copyright in the nondramatic
musical work under subparagraph (J) and section 106(4) and the owner of the copyright in the sound recording under section 106(6).
(D) LIABILITY OF SOUND RECORDING OWNERS.—The liability of the copyright owner of a sound recording for infringement of the copyright in a nondramatic
musical work embodied in the sound recording shall be determined in accordance
with applicable law, except that the owner of a copyright in a sound recording shall
not be liable for a digital phonorecord delivery by a third party if the owner of the
copyright in the sound recording does not license the distribution of a phonorecord
of the nondramatic musical work.
106

Copyright Act of 1976

§ 115.

(E) RECORDING DEVICES AND MEDIA.—Nothing in section 1008 shall be
construed to prevent the exercise of the rights and remedies allowed by this paragraph,
subparagraph (J), and chapter 5 in the event of a digital phonorecord delivery, except
that no action alleging infringement of copyright may be brought under this title
against a manufacturer, importer or distributor of a digital audio recording device, a
digital audio recording medium, an analog recording device, or an analog recording
medium, or against a consumer, based on the actions described in such section.
(F) PRESERVATION OF RIGHTS.—Nothing in this section annuls or limits—
(i) the exclusive right to publicly perform a sound recording or the musical work
embodied therein, including by means of a digital transmission, under paragraphs
(4) and (6) of section 106;
(ii) except for compulsory licensing under the conditions specified by this section, the exclusive rights to reproduce and distribute the sound recording and the
musical work embodied therein under paragraphs (1) and (3) of section 106, including by means of a digital phonorecord delivery; or
(iii) any other rights under any other provision of section 106, or remedies available under this title, as such rights or remedies exist before, on, or after the date of
enactment of the Digital Performance Right in Sound Recordings Act of 1995.
(G) EXEMPT TRANSMISSIONS AND RETRANSMISSIONS.—The provisions
of this section concerning digital phonorecord deliveries shall not apply to any exempt transmissions or retransmissions under section 114(d)(1). The exemptions created in section 114(d)(1) do not expand or reduce the rights of copyright owners
under paragraphs (1) through (5) of section 106 with respect to such transmissions
and retransmissions.
(H) DISTRIBUTION BY RENTAL, LEASE, OR LENDING.—A compulsory license obtained under subsection (b)(1) to make and distribute phonorecords includes
the right of the maker of such a phonorecord to distribute or authorize distribution of
such phonorecord, other than by means of a digital phonorecord delivery, by rental,
lease, or lending (or by acts or practices in the nature of rental, lease, or lending).
With respect to each nondramatic musical work embodied in the phonorecord, the
royalty shall be a proportion of the revenue received by the compulsory licensee
from every such act of distribution of the phonorecord under this clause equal to the
proportion of the revenue received by the compulsory licensee from distribution of
the phonorecord under subsection (a)(1)(A)(ii)(II) that is payable by a compulsory
licensee under that clause and under chapter 8. The Register of Copyrights shall issue
regulations to carry out the purpose of this subparagraph.
(I) PAYMENT OF ROYALTIES AND STATEMENTS OF ACCOUNT.—
Except as provided in paragraphs (4)(A)(i) and (10)(B) of subsection (d), royalty
payments shall be made on or before the twentieth day of each month and shall include all royalties for the month next preceding. Each monthly payment shall be
made under oath and shall comply with requirements that the Register of Copyrights
shall prescribe by regulation. The Register shall also prescribe regulations under
which detailed cumulative annual statements of account, certified by a certified public accountant, shall be filed for every compulsory license under subsection (a). The
regulations covering both the monthly and the annual statements of account shall
prescribe the form, content, and manner of certification with respect to the number
of records made and the number of records distributed.
(J) NOTICE OF DEFAULT AND TERMINATION OF COMPULSORY
LICENSE.—In the case of a license obtained under paragraph (1), (2)(A), or (3) of
107

§ 115.

Copyright Act of 1976

subsection (b), if the copyright owner does not receive the monthly payment and the
monthly and annual statements of account when due, the owner may give written notice
to the licensee that, unless the default is remedied not later than 30 days after the date
on which the notice is sent, the compulsory license will be automatically terminated.
Such termination renders either the making or the distribution, or both, of all
phonorecords for which the royalty has not been paid, actionable as acts of infringement
under section 501 and fully subject to the remedies provided by sections 502 through
506. In the case of a license obtained under subsection (b)(2)(B), license authority under
the compulsory license may be terminated as provided in subsection (d)(4)(E).
(d) Blanket License for Digital Uses, Mechanical Licensing Collective, and Digital
Licensee Coordinator.—
(1) Blanket license for digital uses.—
(A) IN GENERAL.—A digital music provider that qualifies for a compulsory license under subsection (a) may, by complying with the terms and conditions of this
subsection, obtain a blanket license from copyright owners through the mechanical
licensing collective to make and distribute digital phonorecord deliveries of musical
works through one or more covered activities.
(B) INCLUDED ACTIVITIES.—A blanket license—
(i) covers all musical works (or shares of such works) available for compulsory
licensing under this section for purposes of engaging in covered activities, except
as provided in subparagraph (C);
(ii) includes the making and distribution of server, intermediate, archival, and
incidental reproductions of musical works that are reasonable and necessary for
the digital music provider to engage in covered activities licensed under this subsection, solely for the purpose of engaging in such covered activities; and
(iii) does not cover or include any rights or uses other than those described in
clauses (i) and (ii).
(C) OTHER LICENSES.—A voluntary license for covered activities entered into
by or under the authority of 1 or more copyright owners and 1 or more digital music
providers, or authority to make and distribute permanent downloads of a musical
work obtained by a digital music provider from a sound recording copyright owner
pursuant to an individual download license, shall be given effect in lieu of a blanket
license under this subsection with respect to the musical works (or shares thereof)
covered by such voluntary license or individual download authority and the following conditions apply:
(i) Where a voluntary license or individual download license applies, the license
authority provided under the blanket license shall exclude any musical works (or
shares thereof) subject to the voluntary license or individual download license.
(ii) An entity engaged in covered activities under a voluntary license or authority
obtained pursuant to an individual download license that is a significant nonblanket licensee shall comply with paragraph (6)(A).
(iii) The rates and terms of any voluntary license shall be subject to the second
sentence of clause (i) and clause (ii) of subsection (c)(2)(A) and paragraph (9)(C),
as applicable.
(D) PROTECTION AGAINST INFRINGEMENT ACTIONS.—A digital music
provider that obtains and complies with the terms of a valid blanket license under
this subsection shall not be subject to an action for infringement of the exclusive
rights provided by paragraphs (1) and (3) of section 106 under this title arising from
use of a musical work (or share thereof) to engage in covered activities authorized
108

Copyright Act of 1976

§ 115.

by such license, subject to paragraph (4)(E).
(E) OTHER REQUIREMENTS AND CONDITIONS APPLY.—Except as expressly provided in this subsection, each requirement, limitation, condition, privilege, right, and remedy otherwise applicable to compulsory licenses under this
section shall apply to compulsory blanket licenses under this subsection.
(2) Availability of blanket license.—
(A) PROCEDURE FOR OBTAINING LICENSE.—A digital music provider may
obtain a blanket license by submitting a notice of license to the mechanical licensing
collective that specifies the particular covered activities in which the digital music
provider seeks to engage, as follows:
(i) The notice of license shall comply in form and substance with requirements
that the Register of Copyrights shall establish by regulation.
(ii) Unless rejected in writing by the mechanical licensing collective not later
than 30 calendar days after the date on which the mechanical licensing collective
receives the notice, the blanket license shall be effective as of the date on which
the notice of license was sent by the digital music provider, as shown by a physical
or electronic record.
(iii) A notice of license may only be rejected by the mechanical licensing collective if—
(I) the digital music provider or notice of license does not meet the requirements
of this section or applicable regulations, in which case the requirements at issue
shall be specified with reasonable particularity in the notice of rejection; or
(II) the digital music provider has had a blanket license terminated by the mechanical licensing collective during the 3-year period preceding the date on which
the mechanical licensing collective receives the notice pursuant to paragraph (4)(E).
(iv) If a notice of license is rejected under clause (iii)(I), the digital music provider shall have 30 calendar days after receipt of the notice of rejection to cure any
deficiency and submit an amended notice of license to the mechanical licensing
collective. If the deficiency has been cured, the mechanical licensing collective
shall so confirm in writing, and the license shall be effective as of the date that the
original notice of license was provided by the digital music provider.
(v) A digital music provider that believes a notice of license was improperly
rejected by the mechanical licensing collective may seek review of such rejection
in an appropriate district court of the United States. The district court shall determine the matter de novo based on the record before the mechanical licensing collective and any additional evidence presented by the parties.
(B) BLANKET LICENSE EFFECTIVE DATE.—Blanket licenses shall be made
available by the mechanical licensing collective on and after the license availability
date. No such license shall be effective prior to the license availability date.
(3) Mechanical licensing collective.—
(A) IN GENERAL.—The mechanical licensing collective shall be a single entity
that—
(i) is a nonprofit entity, not owned by any other entity, that is created by copyright owners to carry out responsibilities under this subsection;
(ii) is endorsed by, and enjoys substantial support from, musical work copyright
owners that together represent the greatest percentage of the licensor market for
uses of such works in covered activities, as measured over the preceding 3 full
calendar years;
(iii) is able to demonstrate to the Register of Copyrights that the entity has, or
109

§ 115.

Copyright Act of 1976

will have prior to the license availability date, the administrative and technological
capabilities to perform the required functions of the mechanical licensing collective under this subsection and that is governed by a board of directors in accordance with subparagraph (D)(i); and
(iv) has been designated by the Register of Copyrights, with the approval of the
Librarian of Congress pursuant to section 702, in accordance with subparagraph (B).
(B) DESIGNATION OF MECHANICAL LICENSING COLLECTIVE.—
(i) INITIAL DESIGNATION.—Not later than 270 days after the enactment
date, the Register of Copyrights shall initially designate the mechanical licensing
collective as follows:
(I) Not later than 90 calendar days after the enactment date, the Register shall
publish notice in the Federal Register soliciting information to assist in identifying the appropriate entity to serve as the mechanical licensing collective, including the name and affiliation of each member of the board of directors described
under subparagraph (D)(i) and each committee established pursuant to clauses
(iii), (iv), and (v) of subparagraph (D).
(II) After reviewing the information requested under subclause (I) and making a
designation, the Register shall publish notice in the Federal Register setting forth—
(aa) the identity of and contact information for the mechanical licensing collective; and
(bb) the reasons for the designation.
(ii) PERIODIC REVIEW OF DESIGNATION.—Following the initial designation of the mechanical licensing collective, the Register shall, every 5 years, beginning with the fifth full calendar year to commence after the initial designation,
publish notice in the Federal Register in the month of January soliciting information
concerning whether the existing designation should be continued, or a different entity meeting the criteria described in clauses (i) through (iii) of subparagraph (A)
shall be designated. Following publication of such notice, the Register shall—
(I) after reviewing the information submitted and conducting additional proceedings as appropriate, publish notice in the Federal Register of a continuing
designation or new designation of the mechanical licensing collective, as the
case may be, and the reasons for such a designation, with any new designation
to be effective as of the first day of a month that is not less than 6 months and
not longer than 9 months after the date on which the Register publishes the notice, as specified by the Register; and
(II) if a new entity is designated as the mechanical licensing collective, adopt
regulations to govern the transfer of licenses, funds, records, data, and administrative responsibilities from the existing mechanical licensing collective to the
new entity.
(iii) CLOSEST ALTERNATIVE DESIGNATION.—If the Register is unable to
identify an entity that fulfills each of the qualifications set forth in clauses (i)
through (iii) of subparagraph (A), the Register shall designate the entity that most
nearly fulfills such qualifications for purposes of carrying out the responsibilities
of the mechanical licensing collective.
(C) AUTHORITIES AND FUNCTIONS.—
(i) IN GENERAL.—The mechanical licensing collective is authorized to perform the following functions, subject to more particular requirements as described
in this subsection:
(I) Offer and administer blanket licenses, including receipt of notices of license
110

Copyright Act of 1976

§ 115.

and reports of usage from digital music providers.
(II) Collect and distribute royalties from digital music providers for covered
activities.
(III) Engage in efforts to identify musical works (and shares of such works)
embodied in particular sound recordings, and to identify and locate the copyright
owners of such musical works (and shares of such works).
(IV) Maintain the musical works database and other information relevant to
the administration of licensing activities under this section.
(V) Administer a process by which copyright owners can claim ownership of
musical works (and shares of such works), and a process by which royalties for
works for which the owner is not identified or located are equitably distributed
to known copyright owners.
(VI) Administer collections of the administrative assessment from digital music providers and significant nonblanket licensees, including receipt of notices
of nonblanket activity.
(VII) Invest in relevant resources, and arrange for services of outside vendors
and others, to support the activities of the mechanical licensing collective.
(VIII) Engage in legal and other efforts to enforce rights and obligations under
this subsection, including by filing bankruptcy proofs of claims for amounts owed
under licenses, and acting in coordination with the digital licensee coordinator.
(IX) Initiate and participate in proceedings before the Copyright Royalty
Judges to establish the administrative assessment under this subsection.
(X) Initiate and participate in proceedings before the Copyright Office with
respect to activities under this subsection.
(XI) Gather and provide documentation for use in proceedings before the Copyright Royalty Judges to set rates and terms under this section.
(XII) Maintain records of the activities of the mechanical licensing collective
and engage in and respond to audits described in this subsection.
(XIII) Engage in such other activities as may be necessary or appropriate to fulfill the responsibilities of the mechanical licensing collective under this subsection.
(ii) RESTRICTIONS CONCERNING LICENSING AND ADMINISTRATIVE
ACTIVITIES.—With respect to the administration of licenses, except as provided
in clauses (i) and (iii) and subparagraph (E)(v), the mechanical licensing collective
may only—
(I) issue blanket licenses pursuant to subsection (d)(1); and
(II) administer blanket licenses for reproduction or distribution rights in musical works for covered activities, including collecting and distributing royalties,
pursuant to blanket licenses.
(iii) ADDITIONAL ADMINISTRATIVE ACTIVITIES.—Subject to paragraph
(11)(C), the mechanical licensing collective may also administer, including by collecting and distributing royalties, voluntary licenses issued by, or individual download licenses obtained from, copyright owners only for reproduction or distribution
rights in musical works for covered activities, for which the mechanical licensing
collective shall charge reasonable fees for such services.
(iv) RESTRICTION ON LOBBYING.—The mechanical licensing collective
may not engage in government lobbying activities, but may engage in the activities
described in subclauses (IX), (X), and (XI) of clause (i).
(D) GOVERNANCE.—
(i) BOARD OF DIRECTORS.—The mechanical licensing collective shall have
111

§ 115.

Copyright Act of 1976

a board of directors consisting of 14 voting members and 3 nonvoting members,
as follows:
(I) Ten voting members shall be representatives of music publishers—
(aa) to which songwriters have assigned exclusive rights of reproduction and
distribution of musical works with respect to covered activities; and
(bb) none of which may be owned by, or under common control with, any
other board member.
(II) Four voting members shall be professional songwriters who have retained
and exercise exclusive rights of reproduction and distribution with respect to
covered activities with respect to musical works they have authored.
(III) One nonvoting member shall be a representative of the nonprofit trade
association of music publishers that represents the greatest percentage of the licensor market for uses of musical works in covered activities, as measured for
the 3-year period preceding the date on which the member is appointed.
(IV) One nonvoting member shall be a representative of the digital licensee
coordinator, provided that a digital licensee coordinator has been designated pursuant to paragraph (5)(B). Otherwise, the nonvoting member shall be the nonprofit trade association of digital licensees that represents the greatest percentage
of the licensee market for uses of musical works in covered activities, as measured over the preceding 3 full calendar years.
(V) One nonvoting member shall be a representative of a nationally recognized
nonprofit trade association whose primary mission is advocacy on behalf of
songwriters in the United States.
(ii) BYLAWS.—
(I) ESTABLISHMENT.—Not later than 1 year after the date on which the
mechanical licensing collective is initially designated by the Register of Copyrights under subparagraph (B)(i), the collective shall establish bylaws to determine issues relating to the governance of the collective, including, but not
limited to—
(aa) the length of the term for each member of the board of directors;
(bb) the staggering of the terms of the members of the board of directors;
(cc) a process for filling a seat on the board of directors that is vacated before
the end of the term with respect to that seat;
(dd) a process for electing a member to the board of directors; and
(ee) a management structure for daily operation of the collective.
(II) PUBLIC AVAILABILITY.—The mechanical licensing collective shall
make the bylaws established under subclause (I) available to the public.
(iii) BOARD MEETINGS.—The board of directors shall meet not less frequently than biannually and discuss matters pertinent to the operations of the mechanical licensing collective, including the mechanical licensing collective budget.
(iv) OPERATIONS ADVISORY COMMITTEE.—The board of directors of the
mechanical licensing collective shall establish an operations advisory committee
consisting of not fewer than 6 members to make recommendations to the board of
directors concerning the operations of the mechanical licensing collective, including the efficient investment in and deployment of information technology and data
resources. Such committee shall have an equal number of members of the committee who are—
(I) musical work copyright owners who are appointed by the board of directors
of the mechanical licensing collective; and
112

Copyright Act of 1976

§ 115.

(II) representatives of digital music providers who are appointed by the digital
licensee coordinator.
(v) UNCLAIMED ROYALTIES OVERSIGHT COMMITTEE.—The board of
directors of the mechanical licensing collective shall establish and appoint an unclaimed royalties oversight committee consisting of 10 members, 5 of which shall
be musical work copyright owners and 5 of which shall be professional songwriters whose works are used in covered activities.
(vi) DISPUTE RESOLUTION COMMITTEE.—The board of directors of the
mechanical licensing collective shall establish and appoint a dispute resolution
committee that shall—
(I) consist of not fewer than 6 members; and
(II) include an equal number of representatives of musical work copyright
owners and professional songwriters.
(vii) MECHANICAL LICENSING COLLECTIVE ANNUAL REPORT.—
(I) IN GENERAL.—Not later than June 30 of each year commencing after the
license availability date, the mechanical licensing collective shall post, and make
available online for a period of not less than 3 years, an annual report that sets
forth information regarding—
(aa) the operational and licensing practices of the collective;
(bb) how royalties are collected and distributed;
(cc) budgeting and expenditures;
(dd) the collective total costs for the preceding calendar year;
(ee) the projected annual mechanical licensing collective budget;
(ff) aggregated royalty receipts and payments;
(gg) expenses that are more than 10 percent of the annual mechanical licensing collective budget; and
(hh) the efforts of the collective to locate and identify copyright owners of
unmatched musical works (and shares of works).
(II) SUBMISSION.—On the date on which the mechanical licensing collective posts each report required under subclause (I), the collective shall provide a
copy of the report to the Register of Copyrights.
(viii) INDEPENDENT OFFICERS.—An individual serving as an officer of the
mechanical licensing collective may not, at the same time, also be an employee or
agent of any member of the board of directors of the collective or any entity represented by a member of the board of directors, as described in clause (i).
(ix) OVERSIGHT AND ACCOUNTABILITY.—
(I) IN GENERAL.—The mechanical licensing collective shall—
(aa) ensure that the policies and practices of the collective are transparent
and accountable;
(bb) identify a point of contact for publisher inquiries and complaints with
timely redress; and
(cc) establish an anti-comingling policy for funds not collected under this
section and royalties collected under this section.
(II) AUDITS.—
(aa) IN GENERAL.—Beginning in the fourth full calendar year that begins
after the initial designation of the mechanical licensing collective by the Register of Copyrights under subparagraph (B)(i), and in every fifth calendar year
thereafter, the collective shall retain a qualified auditor that shall—
(AA) examine the books, records, and operations of the collective;
113

§ 115.

Copyright Act of 1976

(BB) prepare a report for the board of directors of the collective with respect to the matters described in item (bb); and
(CC) not later than December 31 of the year in which the qualified auditor
is retained, deliver the report described in subitem (BB) to the board of directors of the collective.
(bb) MATTERS ADDRESSED.—Each report prepared under item (aa)
shall address the implementation and efficacy of procedures of the mechanical
licensing collective—
(AA) for the receipt, handling, and distribution of royalty funds, including
any amounts held as unclaimed royalties;
(BB) to guard against fraud, abuse, waste, and the unreasonable use of
funds; and
(CC) to protect the confidentiality of financial, proprietary, and other sensitive information.
(cc) PUBLIC AVAILABILITY.—With respect to each report prepared under item (aa), the mechanical licensing collective shall—
(AA) submit the report to the Register of Copyrights; and
(BB) make the report available to the public.
(E) MUSICAL WORKS DATABASE.—
(i) ESTABLISHMENT AND MAINTENANCE OF DATABASE.—The mechanical licensing collective shall establish and maintain a database containing information relating to musical works (and shares of such works) and, to the extent
known, the identity and location of the copyright owners of such works (and shares
thereof) and the sound recordings in which the musical works are embodied. In
furtherance of maintaining such database, the mechanical licensing collective shall
engage in efforts to identify the musical works embodied in particular sound recordings, as well as to identify and locate the copyright owners of such works (and
shares thereof), and update such data as appropriate.
(ii) MATCHED WORKS.—With respect to musical works (and shares thereof)
that have been matched to copyright owners, the musical works database shall
include—
(I) the title of the musical work;
(II) the copyright owner of the work (or share thereof), and the ownership percentage of that owner;
(III) contact information for such copyright owner;
(IV) to the extent reasonably available to the mechanical licensing collective—
(aa) the international standard musical work code for the work; and
(bb) identifying information for sound recordings in which the musical work
is embodied, including the name of the sound recording, featured artist, sound
recording copyright owner, producer, international standard recording code,
and other information commonly used to assist in associating sound recordings
with musical works; and
(V) such other information as the Register of Copyrights may prescribe by
regulation.
(iii) UNMATCHED WORKS.—With respect to unmatched musical works (and
shares of works) in the database, the musical works database shall include—
(I) to the extent reasonably available to the mechanical licensing collective—
(aa) the title of the musical work;
(bb) the ownership percentage for which an owner has not been identified;
114

Copyright Act of 1976

§ 115.

(cc) if a copyright owner has been identified but not located, the identity of
such owner and the ownership percentage of that owner;
(dd) identifying information for sound recordings in which the work is embodied, including sound recording name, featured artist, sound recording copyright owner, producer, international standard recording code, and other
information commonly used to assist in associating sound recordings with musical works; and
(ee) any additional information reported to the mechanical licensing collective that may assist in identifying the work; and
(II) such other information relating to the identity and ownership of musical
works (and shares of such works) as the Register of Copyrights may prescribe
by regulation.
(iv) SOUND RECORDING INFORMATION.—Each musical work copyright
owner with any musical work listed in the musical works database shall engage in
commercially reasonable efforts to deliver to the mechanical licensing collective,
including for use in the musical works database, to the extent such information is
not then available in the database, information regarding the names of the sound
recordings in which that copyright owner’s musical works (or shares thereof) are
embodied, to the extent practicable.
(v) ACCESSIBILITY OF DATABASE.—The musical works database shall be
made available to members of the public in a searchable, online format, free of
charge. The mechanical licensing collective shall make such database available in
a bulk, machine-readable format, through a widely available software application,
to the following entities:
(I) Digital music providers operating under the authority of valid notices of
license, free of charge.
(II) Significant nonblanket licensees in compliance with their obligations under paragraph (6), free of charge.
(III) Authorized vendors of the entities described in subclauses (I) and (II),
free of charge.
(IV) The Register of Copyrights, free of charge (but the Register shall not treat
such database or any information therein as a Government record).
(V) Any other person or entity for a fee not to exceed the marginal cost to the
mechanical licensing collective of providing the database to such person or entity.
(vi) ADDITIONAL REQUIREMENTS.—The Register of Copyrights shall establish requirements by regulations to ensure the usability, interoperability, and
usage restrictions of the musical works database.
(F) NOTICES OF LICENSE AND NONBLANKET ACTIVITY.—
(i) NOTICES OF LICENSES.—The mechanical licensing collective shall receive, review, and confirm or reject notices of license from digital music providers,
as provided in paragraph (2)(A). The collective shall maintain a current, publicly
accessible list of blanket licenses that includes contact information for the licensees and the effective dates of such licenses.
(ii) NOTICES OF NONBLANKET ACTIVITY.—The mechanical licensing
collective shall receive notices of nonblanket activity from significant nonblanket
licensees, as provided in paragraph (6)(A). The collective shall maintain a current,
publicly accessible list of notices of nonblanket activity that includes contact information for significant nonblanket licensees and the dates of receipt of such notices.
(G) COLLECTION AND DISTRIBUTION OF ROYALTIES.—
115

§ 115.

Copyright Act of 1976

(i) IN GENERAL.—Upon receiving reports of usage and payments of royalties
from digital music providers for covered activities, the mechanical licensing collective shall—
(I) engage in efforts to—
(aa) identify the musical works embodied in sound recordings reflected in such
reports, and the copyright owners of such musical works (and shares thereof);
(bb) confirm uses of musical works subject to voluntary licenses and individual download licenses, and the corresponding pro rata amounts to be deducted
from royalties that would otherwise be due under the blanket license; and
(cc) confirm proper payment of royalties due;
(II) distribute royalties to copyright owners in accordance with the usage and
other information contained in such reports, as well as the ownership and other
information contained in the records of the collective; and
(III) deposit into an interest-bearing account, as provided in subparagraph
(H)(ii), royalties that cannot be distributed due to—
(aa) an inability to identify or locate a copyright owner of a musical work
(or share thereof); or
(bb) a pending dispute before the dispute resolution committee of the mechanical licensing collective.
(ii) OTHER COLLECTION EFFORTS.—Any royalties recovered by the mechanical licensing collective as a result of efforts to enforce rights or obligations
under a blanket license, including through a bankruptcy proceeding or other legal
action, shall be distributed to copyright owners based on available usage information and in accordance with the procedures described in subclauses (I) and (II)
of clause (i), on a pro rata basis in proportion to the overall percentage recovery of
the total royalties owed, with any pro rata share of royalties that cannot be distributed deposited in an interest-bearing account as provided in subparagraph (H)(ii).
(H) HOLDING OF ACCRUED ROYALTIES.—
(i) HOLDING PERIOD.—The mechanical licensing collective shall hold accrued royalties associated with particular musical works (and shares of works) that
remain unmatched for a period of not less than 3 years after the date on which the
funds were received by the mechanical licensing collective, or not less than 3 years
after the date on which the funds were accrued by a digital music provider that
subsequently transferred such funds to the mechanical licensing collective pursuant to paragraph (10)(B), whichever period expires sooner.
(ii) INTEREST-BEARING ACCOUNT.—Accrued royalties for unmatched
works (and shares thereof) shall be maintained by the mechanical licensing collective in an interest-bearing account that earns monthly interest—
(I) at the Federal, short-term rate; and
(II) that accrues for the benefit of copyright owners entitled to payment of such
accrued royalties.
(I) MUSICAL WORKS CLAIMING PROCESS.—When a copyright owner of an
unmatched work (or share of a work) has been identified and located in accordance
with the procedures of the mechanical licensing collective, the collective shall—
(i) update the musical works database and the other records of the collective
accordingly; and
(ii) provided that accrued royalties for the musical work (or share thereof) have
not yet been included in a distribution pursuant to subparagraph (J)(i), pay such accrued royalties and a proportionate amount of accrued interest associated with that
116

Copyright Act of 1976

§ 115.

work (or share thereof) to the copyright owner, accompanied by a cumulative statement of account reflecting usage of such work and accrued royalties based on information provided by digital music providers to the mechanical licensing collective.
(J) DISTRIBUTION OF UNCLAIMED ACCRUED ROYALTIES.—
(i) DISTRIBUTION PROCEDURES.—After the expiration of the prescribed
holding period for accrued royalties provided in subparagraph (H)(i), the mechanical licensing collective shall distribute such accrued royalties, along with a proportionate share of accrued interest, to copyright owners identified in the records
of the collective, subject to the following requirements, and in accordance with the
policies and procedures established under clause (ii):
(I) The first such distribution shall occur on or after January 1 of the second
full calendar year to commence after the license availability date, with not less
than 1 such distribution to take place during each calendar year thereafter.
(II) Copyright owners’ payment shares for unclaimed accrued royalties for
particular reporting periods shall be determined in a transparent and equitable
manner based on data indicating the relative market shares of such copyright
owners as reflected in reports of usage provided by digital music providers for
covered activities for the periods in question, including, in addition to usage data
provided to the mechanical licensing collective, usage data provided to copyright
owners under voluntary licenses and individual download licenses for covered
activities, to the extent such information is available to the mechanical licensing
collective. In furtherance of the determination of equitable market shares under
this subparagraph—
(aa) the mechanical licensing collective may require copyright owners seeking distributions of unclaimed accrued royalties to provide, or direct the provision of, information concerning the usage of musical works under voluntary
licenses and individual download licenses for covered activities; and
(bb) the mechanical licensing collective shall take appropriate steps to safeguard the confidentiality and security of usage, financial, and other sensitive
data used to compute market shares in accordance with the confidentiality provisions prescribed by the Register of Copyrights under paragraph (12)(C).
(ii) ESTABLISHMENT OF DISTRIBUTION POLICIES.—The unclaimed
royalties oversight committee established under subparagraph (D)(v) shall establish policies and procedures for the distribution of unclaimed accrued royalties and
accrued interest in accordance with this subparagraph, including the provision of
usage data to copyright owners to allocate payments and credits to songwriters
pursuant to clause (iv), subject to the approval of the board of directors of the
mechanical licensing collective.
(iii) PUBLIC NOTICE OF UNCLAIMED ACCRUED ROYALTIES.—The
mechanical licensing collective shall—
(I) maintain a publicly accessible online facility with contact information for
the collective that lists unmatched musical works (and shares of works), through
which a copyright owner may assert an ownership claim with respect to such a
work (and a share of such a work);
(II) engage in diligent, good-faith efforts to publicize, throughout the music
industry—
(aa) the existence of the collective and the ability to claim unclaimed accrued
royalties for unmatched musical works (and shares of such works) held by the
collective;
117

§ 115.

Copyright Act of 1976

(bb) the procedures by which copyright owners may identify themselves and
provide contact, ownership, and other relevant information to the collective in
order to receive payments of accrued royalties;
(cc) any transfer of accrued royalties for musical works under paragraph
(10)(B), not later than 180 days after the date on which the transfer is received;
and
(dd) any pending distribution of unclaimed accrued royalties and accrued interest, not less than 90 days before the date on which the distribution is made; and
(III) as appropriate, participate in music industry conferences and events for
the purpose of publicizing the matters described in subclause (II).
(iv) SONGWRITER PAYMENTS.—Copyright owners that receive a distribution of unclaimed accrued royalties and accrued interest shall pay or credit a portion to songwriters (or the authorized agents of songwriters) on whose behalf the
copyright owners license or administer musical works for covered activities, in
accordance with applicable contractual terms, but notwithstanding any agreement
to the contrary—
(I) such payments and credits to songwriters shall be allocated in proportion
to reported usage of individual musical works by digital music providers during
the reporting periods covered by the distribution from the mechanical licensing
collective; and
(II) in no case shall the payment or credit to an individual songwriter be less
than 50 percent of the payment received by the copyright owner attributable to
usage of musical works (or shares of works) of that songwriter.
(K) DISPUTE RESOLUTION.—The dispute resolution committee established
under subparagraph (D)(vi) shall establish policies and procedures—
(i) for copyright owners to address in a timely and equitable manner disputes
relating to ownership interests in musical works licensed under this section and
allocation and distribution of royalties by the mechanical licensing collective, subject to the approval of the board of directors of the mechanical licensing collective;
(ii) that shall include a mechanism to hold disputed funds in accordance with the
requirements described in subparagraph (H)(ii) pending resolution of the dispute; and
(iii) except as provided in paragraph (11)(D), that shall not affect any legal or
equitable rights or remedies available to any copyright owner or songwriter concerning ownership of, and entitlement to royalties for, a musical work.
(L) VERIFICATION OF PAYMENTS BY MECHANICAL LICENSING
COLLECTIVE.—
(i) VERIFICATION PROCESS.—A copyright owner entitled to receive payments of royalties for covered activities from the mechanical licensing collective
may, individually or with other copyright owners, conduct an audit of the mechanical licensing collective to verify the accuracy of royalty payments by the mechanical licensing collective to such copyright owner, as follows:
(I) A copyright owner may audit the mechanical licensing collective only once
in a year for any or all of the 3 calendar years preceding the year in which the audit
is commenced, and may not audit records for any calendar year more than once.
(II) The audit shall be conducted by a qualified auditor, who shall perform the
audit during the ordinary course of business by examining the books, records,
and data of the mechanical licensing collective, according to generally accepted
auditing standards and subject to applicable confidentiality requirements prescribed by the Register of Copyrights under paragraph (12)(C).
118

Copyright Act of 1976

§ 115.

(III) The mechanical licensing collective shall make such books, records, and
data available to the qualified auditor and respond to reasonable requests for relevant information, and shall use commercially reasonable efforts to facilitate access to relevant information maintained by third parties.
(IV) To commence the audit, any copyright owner shall file with the Copyright
Office a notice of intent to conduct an audit of the mechanical licensing collective, identifying the period of time to be audited, and shall simultaneously deliver
a copy of such notice to the mechanical licensing collective. The Register of
Copyrights shall cause the notice of audit to be published in the Federal Register
not later than 45 calendar days after the date on which the notice is received.
(V) The qualified auditor shall determine the accuracy of royalty payments,
including whether an underpayment or overpayment of royalties was made by
the mechanical licensing collective to each auditing copyright owner, except
that, before providing a final audit report to any such copyright owner, the qualified auditor shall provide a tentative draft of the report to the mechanical licensing collective and allow the mechanical licensing collective a reasonable
opportunity to respond to the findings, including by clarifying issues and correcting factual errors.
(VI) The auditing copyright owner or owners shall bear the cost of the audit.
In case of an underpayment to any copyright owner, the mechanical licensing
collective shall pay the amounts of any such underpayment to such auditing copyright owner, as appropriate. In case of an overpayment by the mechanical licensing collective, the mechanical licensing collective may debit the account of
the auditing copyright owner or owners for such overpaid amounts, or such
owner or owners shall refund overpaid amounts to the mechanical licensing collective, as appropriate.
(ii) ALTERNATIVE VERIFICATION PROCEDURES.—Nothing in this subparagraph shall preclude a copyright owner and the mechanical licensing collective from agreeing to audit procedures different from those described in this
subparagraph, except that a notice of the audit shall be provided to and published
by the Copyright Office as described in clause (i)(IV).
(M) RECORDS OF MECHANICAL LICENSING COLLECTIVE.—
(i) RECORDS MAINTENANCE.—The mechanical licensing collective shall
ensure that all material records of the operations of the mechanical licensing collective, including those relating to notices of license, the administration of the
claims process of the mechanical licensing collective, reports of usage, royalty payments, receipt and maintenance of accrued royalties, royalty distribution processes,
and legal matters, are preserved and maintained in a secure and reliable manner,
with appropriate commercially reasonable safeguards against unauthorized access,
copying, and disclosure, and subject to the confidentiality requirements prescribed
by the Register of Copyrights under paragraph (12)(C) for a period of not less than
7 years after the date of creation or receipt, whichever occurs later.
(ii) RECORDS ACCESS.—The mechanical licensing collective shall provide
prompt access to electronic and other records pertaining to the administration of a
copyright owner’s musical works upon reasonable written request of the owner or
the authorized representative of the owner.
(4) Terms and conditions of blanket license.—A blanket license is subject to, and
conditioned upon, the following requirements:
(A) ROYALTY REPORTING AND PAYMENTS.—
119

§ 115.

Copyright Act of 1976

(i) MONTHLY REPORTS AND PAYMENT.—A digital music provider shall
report and pay royalties to the mechanical licensing collective under the blanket
license on a monthly basis in accordance with clause (ii) and subsection (c)(2)(I),
except that the monthly reporting shall be due on the date that is 45 calendar days,
rather than 20 calendar days, after the end of the monthly reporting period.
(ii) DATA TO BE REPORTED.—In reporting usage of musical works to the
mechanical licensing collective, a digital music provider shall provide usage data
for musical works used under the blanket license and usage data for musical works
used in covered activities under voluntary licenses and individual download licenses. In the report of usage, the digital music provider shall—
(I) with respect to each sound recording embodying a musical work—
(aa) provide identifying information for the sound recording, including
sound recording name, featured artist, and, to the extent acquired by the digital
music provider in connection with its use of sound recordings of musical
works to engage in covered activities, including pursuant to subparagraph (B),
sound recording copyright owner, producer, international standard recording
code, and other information commonly used in the industry to identify sound
recordings and match them to the musical works the sound recordings embody;
(bb) to the extent acquired by the digital music provider in the metadata provided by sound recording copyright owners or other licensors of sound recordings in connection with the use of sound recordings of musical works to engage
in covered activities, including pursuant to subparagraph (B), provide information concerning authorship and ownership of the applicable rights in the
musical work embodied in the sound recording (including each songwriter,
publisher name, and respective ownership share) and the international standard
musical work code; and
(cc) provide the number of digital phonorecord deliveries of the sound recording, including limited downloads and interactive streams;
(II) identify and provide contact information for all musical work copyright owners for works embodied in sound recordings as to which a voluntary license, rather
than the blanket license, is in effect with respect to the uses being reported; and
(III) provide such other information as the Register of Copyrights shall require
by regulation.
(iii) FORMAT AND MAINTENANCE OF REPORTS.—Reports of usage provided by digital music providers to the mechanical licensing collective shall be in
a machine-readable format that is compatible with the information technology systems of the mechanical licensing collective and meets the requirements of regulations adopted by the Register of Copyrights. The Register shall also adopt
regulations setting forth requirements under which records of use shall be maintained and made available to the mechanical licensing collective by digital music
providers engaged in covered activities under a blanket license.
(iv) ADOPTION OF REGULATIONS.—The Register of Copyrights shall
adopt regulations—
(I) setting forth requirements under which records of use shall be maintained
and made available to the mechanical licensing collective by digital music providers engaged in covered activities under a blanket license; and
(II) regarding adjustments to reports of usage by digital music providers, including mechanisms to account for overpayment and underpayment of royalties
in prior periods.
120

Copyright Act of 1976

§ 115.

(B) COLLECTION OF SOUND RECORDING INFORMATION.—A digital music provider shall engage in good-faith, commercially reasonable efforts to obtain
from sound recording copyright owners and other licensors of sound recordings made
available through the service of such digital music provider information concerning—
(i) sound recording copyright owners, producers, international standard recording
codes, and other information commonly used in the industry to identify sound recordings and match them to the musical works the sound recordings embody; and
(ii) the authorship and ownership of musical works, including songwriters, publisher names, ownership shares, and international standard musical work codes.
(C) PAYMENT OF ADMINISTRATIVE ASSESSMENT.—A digital music provider and any significant nonblanket licensee shall pay the administrative assessment
established under paragraph (7)(D) in accordance with this subsection and applicable
regulations.
(D) VERIFICATION OF PAYMENTS BY DIGITAL MUSIC PROVIDERS.—
(i) VERIFICATION PROCESS.—The mechanical licensing collective may
conduct an audit of a digital music provider operating under the blanket license to
verify the accuracy of royalty payments by the digital music provider to the mechanical licensing collective as follows:
(I) The mechanical licensing collective may commence an audit of a digital
music provider not more frequently than once in any 3-calendar-year period to
cover a verification period of not more than the 3 full calendar years preceding
the date of commencement of the audit, and such audit may not audit records for
any such 3-year verification period more than once.
(II) The audit shall be conducted by a qualified auditor, who shall perform the
audit during the ordinary course of business by examining the books, records,
and data of the digital music provider, according to generally accepted auditing
standards and subject to applicable confidentiality requirements prescribed by
the Register of Copyrights under paragraph (12)(C).
(III) The digital music provider shall make such books, records, and data available to the qualified auditor and respond to reasonable requests for relevant information, and shall use commercially reasonable efforts to provide access to relevant
information maintained with respect to a digital music provider by third parties.
(IV) To commence the audit, the mechanical licensing collective shall file with
the Copyright Office a notice of intent to conduct an audit of the digital music
provider, identifying the period of time to be audited, and shall simultaneously
deliver a copy of such notice to the digital music provider. The Register of Copyrights shall cause the notice of audit to be published in the Federal Register not
later than 45 calendar days after the date on which notice is received.
(V) The qualified auditor shall determine the accuracy of royalty payments,
including whether an underpayment or overpayment of royalties was made by
the digital music provider to the mechanical licensing collective, except that,
before providing a final audit report to the mechanical licensing collective, the
qualified auditor shall provide a tentative draft of the report to the digital music
provider and allow the digital music provider a reasonable opportunity to respond to the findings, including by clarifying issues and correcting factual errors.
(VI) The mechanical licensing collective shall pay the cost of the audit, unless
the qualified auditor determines that there was an underpayment by the digital
music provider of not less than 10 percent, in which case the digital music provider shall bear the reasonable costs of the audit, in addition to paying the amount
121

§ 115.

Copyright Act of 1976

of any underpayment to the mechanical licensing collective. In case of an overpayment by the digital music provider, the mechanical licensing collective shall
provide a credit to the account of the digital music provider.
(VII) A digital music provider may not assert section 507 or any other Federal
or State statute of limitations, doctrine of laches or estoppel, or similar provision
as a defense to a legal action arising from an audit under this subparagraph if
such legal action is commenced not more than 6 years after the commencement
of the audit that is the basis for such action.
(ii) ALTERNATIVE VERIFICATION PROCEDURES.—Nothing in this subparagraph shall preclude the mechanical licensing collective and a digital music
provider from agreeing to audit procedures different from those described in this
subparagraph, except that a notice of the audit shall be provided to and published
by the Copyright Office as described in clause (i)(IV).
(E) DEFAULT UNDER BLANKET LICENSE.—
(i) CONDITIONS OF DEFAULT.—A digital music provider shall be in default
under a blanket license if the digital music provider—
(I) fails to provide 1 or more monthly reports of usage to the mechanical licensing collective when due;
(II) fails to make a monthly royalty or late fee payment to the mechanical licensing collective when due, in all or material part;
(III) provides 1 or more monthly reports of usage to the mechanical licensing
collective that, on the whole, is or are materially deficient as a result of inaccurate, missing, or unreadable data, where the correct data was available to the
digital music provider and required to be reported under this section and applicable regulations;
(IV) fails to pay the administrative assessment as required under this subsection and applicable regulations; or
(V) after being provided written notice by the mechanical licensing collective,
refuses to comply with any other material term or condition of the blanket license
under this section for a period of not less than 60 calendar days.
(ii) NOTICE OF DEFAULT AND TERMINATION.—In case of a default by a
digital music provider, the mechanical licensing collective may proceed to terminate the blanket license of the digital music provider as follows:
(I) The mechanical licensing collective shall provide written notice to the digital music provider describing with reasonable particularity the default and advising that unless such default is cured not later than 60 calendar days after the
date of the notice, the blanket license will automatically terminate at the end of
that period.
(II) If the digital music provider fails to remedy the default before the end of the
60-day period described in subclause (I), the license shall terminate without any
further action on the part of the mechanical licensing collective. Such termination
renders the making of all digital phonorecord deliveries of all musical works (and
shares thereof) covered by the blanket license for which the royalty or administrative assessment has not been paid actionable as acts of infringement under section
501 and subject to the remedies provided by sections 502 through 506.
(iii) NOTICE TO COPYRIGHT OWNERS.—The mechanical licensing collective shall provide written notice of any termination under this subparagraph
to copyright owners of affected works.
(iv) REVIEW BY FEDERAL DISTRICT COURT.—A digital music provider
122

Copyright Act of 1976

§ 115.

that believes a blanket license was improperly terminated by the mechanical licensing collective may seek review of such termination in an appropriate district
court of the United States. The district court shall determine the matter de novo
based on the record before the mechanical licensing collective and any additional
supporting evidence presented by the parties.
(5) Digital licensee coordinator.—
(A) IN GENERAL.—The digital licensee coordinator shall be a single entity that—
(i) is a nonprofit, not owned by any other entity, that is created to carry out responsibilities under this subsection;
(ii) is endorsed by and enjoys substantial support from digital music providers
and significant nonblanket licensees that together represent the greatest percentage
of the licensee market for uses of musical works in covered activities, as measured
over the preceding 3 calendar years;
(iii) is able to demonstrate that it has, or will have prior to the license availability
date, the administrative capabilities to perform the required functions of the digital
licensee coordinator under this subsection; and
(iv) has been designated by the Register of Copyrights, with the approval of the
Librarian of Congress pursuant to section 702, in accordance with subparagraph (B).
(B) DESIGNATION OF DIGITAL LICENSEE COORDINATOR.—
(i) INITIAL DESIGNATION.—The Register of Copyrights shall initially designate the digital licensee coordinator not later than 270 days after the enactment
date, in accordance with the same procedure described for designation of the mechanical licensing collective in paragraph (3)(B)(i).
(ii) PERIODIC REVIEW OF DESIGNATION.—Following the initial designation of the digital licensee coordinator, the Register of Copyrights shall, every 5
years, beginning with the fifth full calendar year to commence after the initial designation, determine whether the existing designation should be continued, or a different entity meeting the criteria described in clauses (i) through (iii) of
subparagraph (A) should be designated, in accordance with the same procedure
described for the mechanical licensing collective in paragraph (3)(B)(ii).
(iii) INABILITY TO DESIGNATE.—If the Register of Copyrights is unable to
identify an entity that fulfills each of the qualifications described in clauses (i)
through (iii) of subparagraph (A) to serve as the digital licensee coordinator, the
Register may decline to designate a digital licensee coordinator. The determination
of the Register not to designate a digital licensee coordinator shall not negate or
otherwise affect any provision of this subsection except to the limited extent that
a provision references the digital licensee coordinator. In such case, the reference
to the digital licensee coordinator shall be without effect unless and until a new
digital licensee coordinator is designated.
(C) AUTHORITIES AND FUNCTIONS.—
(i) IN GENERAL.—The digital licensee coordinator is authorized to perform
the following functions, subject to more particular requirements as described in
this subsection:
(I) Establish a governance structure, criteria for membership, and any dues to
be paid by its members.
(II) Engage in efforts to enforce notice and payment obligations with respect
to the administrative assessment, including by receiving information from and
coordinating with the mechanical licensing collective.
(III) Initiate and participate in proceedings before the Copyright Royalty
123

§ 115.

Copyright Act of 1976

Judges to establish the administrative assessment under this subsection.
(IV) Initiate and participate in proceedings before the Copyright Office with
respect to activities under this subsection.
(V) Gather and provide documentation for use in proceedings before the Copyright Royalty Judges to set rates and terms under this section.
(VI) Maintain records of its activities.
(VII) Assist in publicizing the existence of the mechanical licensing collective
and the ability of copyright owners to claim royalties for unmatched musical
works (and shares of works) through the collective.
(VIII) Engage in such other activities as may be necessary or appropriate to
fulfill its responsibilities under this subsection.
(ii) RESTRICTION ON LOBBYING.—The digital licensee coordinator may
not engage in government lobbying activities, but may engage in the activities described in subclauses (III), (IV), and (V) of clause (i).
(iii) ASSISTANCE WITH PUBLICITY FOR UNCLAIMED ROYALTIES.—
The digital licensee coordinator shall make reasonable, good-faith efforts to assist
the mechanical licensing collective in the efforts of the collective to locate and identify copyright owners of unmatched musical works (and shares of such works) by
encouraging digital music providers to publicize the existence of the collective and
the ability of copyright owners to claim unclaimed accrued royalties, including by—
(I) posting contact information for the collective at reasonably prominent locations on digital music provider websites and applications; and
(II) conducting in-person outreach activities with songwriters.
(6) Requirements for significant nonblanket licensees.—
(A) IN GENERAL.—
(i) NOTICE OF ACTIVITY.—Not later than 45 calendar days after the license
availability date, or 45 calendar days after the end of the first full calendar month
in which an entity initially qualifies as a significant nonblanket licensee, whichever
occurs later, a significant nonblanket licensee shall submit a notice of nonblanket
activity to the mechanical licensing collective. The notice of nonblanket activity
shall comply in form and substance with requirements that the Register of Copyrights shall establish by regulation, and a copy shall be made available to the digital
licensee coordinator.
(ii) REPORTING AND PAYMENT OBLIGATIONS.—The notice of nonblanket activity submitted to the mechanical licensing collective shall be accompanied
by a report of usage that contains the information described in paragraph (4)(A)(ii),
as well as any payment of the administrative assessment required under this subsection and applicable regulations. Thereafter, subject to clause (iii), a significant
nonblanket licensee shall continue to provide monthly reports of usage, accompanied by any required payment of the administrative assessment, to the mechanical
licensing collective. Such reports and payments shall be submitted not later than
45 calendar days after the end of the calendar month being reported.
(iii) DISCONTINUATION OF OBLIGATIONS.—An entity that has submitted
a notice of nonblanket activity to the mechanical licensing collective that has
ceased to qualify as a significant nonblanket licensee may so notify the collective
in writing. In such case, as of the calendar month in which such notice is provided,
such entity shall no longer be required to provide reports of usage or pay the administrative assessment, but if such entity later qualifies as a significant nonblanket licensee, such entity shall again be required to comply with clauses (i) and (ii).
124

Copyright Act of 1976

§ 115.

(B) REPORTING BY MECHANICAL LICENSING COLLECTIVE TO
DIGITAL LICENSEE COORDINATOR.—
(i) MONTHLY REPORTS OF NONCOMPLIANT LICENSEES.—The mechanical licensing collective shall provide monthly reports to the digital licensee
coordinator setting forth any significant nonblanket licensees of which the collective is aware that have failed to comply with subparagraph (A).
(ii) TREATMENT OF CONFIDENTIAL INFORMATION.—The mechanical
licensing collective and digital licensee coordinator shall take appropriate steps to
safeguard the confidentiality and security of financial and other sensitive data
shared under this subparagraph, in accordance with the confidentiality requirements prescribed by the Register of Copyrights under paragraph (12)(C).
(C) LEGAL ENFORCEMENT EFFORTS.—
(i) FEDERAL COURT ACTION.—Should the mechanical licensing collective
or digital licensee coordinator become aware that a significant nonblanket licensee
has failed to comply with subparagraph (A), either may commence an action in an
appropriate district court of the United States for damages and injunctive relief. If
the significant nonblanket licensee is found liable, the court shall, absent a finding
of excusable neglect, award damages in an amount equal to three times the total
amount of the unpaid administrative assessment and, notwithstanding anything to
the contrary in section 505, reasonable attorney’s fees and costs, as well as such
other relief as the court determines appropriate. In all other cases, the court shall
award relief as appropriate. Any recovery of damages shall be payable to the mechanical licensing collective as an offset to the collective total costs.
(ii) STATUTE OF LIMITATIONS FOR ENFORCEMENT ACTION.—Any
action described in this subparagraph shall be commenced within the time period
described in section 507(b).
(iii) OTHER RIGHTS AND REMEDIES PRESERVED.—The ability of the
mechanical licensing collective or digital licensee coordinator to bring an action
under this subparagraph shall in no way alter, limit or negate any other right or
remedy that may be available to any party at law or in equity.
(7) Funding of mechanical licensing collective.—
(A) IN GENERAL.—The collective total costs shall be funded by—
(i) an administrative assessment, as such assessment is established by the Copyright
Royalty Judges pursuant to subparagraph (D) from time to time, to be paid by—
(I) digital music providers that are engaged, in all or in part, in covered activities pursuant to a blanket license; and
(II) significant nonblanket licensees; and
(ii) voluntary contributions from digital music providers and significant nonblanket licensees as may be agreed with copyright owners.
(B) VOLUNTARY CONTRIBUTIONS.—
(i) AGREEMENTS CONCERNING CONTRIBUTIONS.—Except as provided
in clause (ii), voluntary contributions by digital music providers and significant
nonblanket licensees shall be determined by private negotiation and agreement,
and the following conditions apply:
(I) The date and amount of each voluntary contribution to the mechanical licensing collective shall be documented in a writing signed by an authorized
agent of the mechanical licensing collective and the contributing party.
(II) Such agreement shall be made available as required in proceedings before
the Copyright Royalty Judges to establish or adjust the administrative assessment
125

§ 115.

Copyright Act of 1976

in accordance with applicable statutory and regulatory provisions and rulings of
the Copyright Royalty Judges.
(ii) TREATMENT OF CONTRIBUTIONS.—Each voluntary contribution described in clause (i) shall be treated for purposes of an administrative assessment
proceeding as an offset to the collective total costs that would otherwise be recovered
through the administrative assessment. Any allocation or reallocation of voluntary
contributions between or among individual digital music providers or significant
nonblanket licensees shall be a matter of private negotiation and agreement among
such parties and outside the scope of the administrative assessment proceeding.
(C) INTERIM APPLICATION OF ACCRUED ROYALTIES.—In the event that
the administrative assessment, together with any funding from voluntary contributions as provided in subparagraphs (A) and (B), is inadequate to cover current collective total costs, the collective, with approval of its board of directors, may apply
unclaimed accrued royalties on an interim basis to defray such costs, subject to future
reimbursement of such royalties from future collections of the assessment.
(D) DETERMINATION OF ADMINISTRATIVE ASSESSMENT.—
(i) ADMINISTRATIVE ASSESSMENT TO COVER COLLECTIVE TOTAL
COSTS.—The administrative assessment shall be used solely and exclusively to
fund the collective total costs.
(ii) SEPARATE PROCEEDING BEFORE COPYRIGHT ROYALTY
JUDGES.—The amount and terms of the administrative assessment shall be determined and established in a separate and independent proceeding before the Copyright Royalty Judges, according to the procedures described in clauses (iii) and
(iv). The administrative assessment determined in such proceeding shall—
(I) be wholly independent of royalty rates and terms applicable to digital music
providers, which shall not be taken into consideration in any manner in establishing the administrative assessment;
(II) be established by the Copyright Royalty Judges in an amount that is calculated to defray the reasonable collective total costs;
(III) be assessed based on usage of musical works by digital music providers
and significant nonblanket licensees in covered activities under both compulsory
and nonblanket licenses;
(IV) may be in the form of a percentage of royalties payable under this section
for usage of musical works in covered activities (regardless of whether a different rate applies under a voluntary license), or any other usage-based metric reasonably calculated to equitably allocate the collective total costs across digital
music providers and significant nonblanket licensees engaged in covered activities, and shall include as a component a minimum fee for all digital music providers and significant nonblanket licensees; and
(V) take into consideration anticipated future collective total costs and collections of the administrative assessment, including, as applicable—
(aa) any portion of past actual collective total costs of the mechanical licensing collective not funded by previous collections of the administrative assessment or voluntary contributions because such collections or contributions
together were insufficient to fund such costs;
(bb) any past collections of the administrative assessment and voluntary contributions that exceeded past actual collective total costs, resulting in a surplus; and
(cc) the amount of any voluntary contributions by digital music providers or
significant nonblanket licensees in relevant periods, described in subparagraphs
126

Copyright Act of 1976

§ 115.

(A) and (B) of paragraph (7).
(iii) INITIAL ADMINISTRATIVE ASSESSMENT.—The procedure for establishing the initial administrative assessment shall be as follows:
(I) Not later than 270 days after the enactment date, the Copyright Royalty
Judges shall commence a proceeding to establish the initial administrative assessment by publishing a notice in the Federal Register seeking petitions to participate.
(II) The mechanical licensing collective and digital licensee coordinator shall
participate in the proceeding described in subclause (I), along with any interested
copyright owners, digital music providers or significant nonblanket licensees
that have notified the Copyright Royalty Judges of their desire to participate.
(III) The Copyright Royalty Judges shall establish a schedule for submission
by the parties of information that may be relevant to establishing the administrative assessment, including actual and anticipated collective total costs of the mechanical licensing collective, actual and anticipated collections from digital
music providers and significant nonblanket licensees, and documentation of voluntary contributions, as well as a schedule for further proceedings, which shall
include a hearing, as the Copyright Royalty Judges determine appropriate.
(IV) The initial administrative assessment shall be determined, and such determination shall be published in the Federal Register by the Copyright Royalty
Judges, not later than 1 year after commencement of the proceeding described in
this clause. The determination shall be supported by a written record. The initial
administrative assessment shall be effective as of the license availability date,
and shall continue in effect unless and until an adjusted administrative assessment is established pursuant to an adjustment proceeding under clause (iv).
(iv) ADJUSTMENT OF ADMINISTRATIVE ASSESSMENT.—The administrative assessment may be adjusted by the Copyright Royalty Judges periodically,
in accordance with the following procedures:
(I) Not earlier than 1 year after the most recent publication of a determination
of the administrative assessment by the Copyright Royalty Judges, the mechanical licensing collective, the digital licensee coordinator, or one or more interested copyright owners, digital music providers, or significant nonblanket
licensees, may file a petition with the Copyright Royalty Judges in the month of
May to commence a proceeding to adjust the administrative assessment.
(II) Notice of the commencement of such proceeding shall be published in the
Federal Register in the month of June following the filing of any petition, with
a schedule of requested information and additional proceedings, as described in
clause (iii)(III). The mechanical licensing collective and digital licensee coordinator shall participate in such proceeding, along with any interested copyright
owners, digital music providers, or significant nonblanket licensees that have
notified the Copyright Royalty Judges of their desire to participate.
(III) The determination of the adjusted administrative assessment, which shall
be supported by a written record, shall be published in the Federal Register during June of the calendar year following the commencement of the proceeding.
The adjusted administrative assessment shall take effect January 1 of the year
following such publication.
(v) ADOPTION OF VOLUNTARY AGREEMENTS.—In lieu of reaching their
own determination based on evaluation of relevant data, the Copyright Royalty Judges
shall approve and adopt a negotiated agreement to establish the amount and terms of
127

§ 115.

Copyright Act of 1976

the administrative assessment that has been agreed to by the mechanical licensing collective and the digital licensee coordinator (or if none has been designated, interested
digital music providers and significant nonblanket licensees representing more than
half of the market for uses of musical works in covered activities), except that the
Copyright Royalty Judges shall have the discretion to reject any such agreement for
good cause shown. An administrative assessment adopted under this clause shall apply
to all digital music providers and significant nonblanket licensees engaged in covered
activities during the period the administrative assessment is in effect.
(vi) CONTINUING AUTHORITY TO AMEND.—The Copyright Royalty
Judges shall retain continuing authority to amend a determination of an administrative assessment to correct technical or clerical errors, or modify the terms of
implementation, for good cause, with any such amendment to be published in the
Federal Register.
(vii) APPEAL OF ADMINISTRATIVE ASSESSMENT.—The determination
of an administrative assessment by the Copyright Royalty Judges shall be appealable, not later than 30 calendar days after publication in the Federal Register, to
the Court of Appeals for the District of Columbia Circuit by any party that fully
participated in the proceeding. The administrative assessment as established by the
Copyright Royalty Judges shall remain in effect pending the final outcome of any
such appeal, and the mechanical licensing collective, digital licensee coordinator,
digital music providers, and significant nonblanket licensees shall implement appropriate financial or other measures not later than 90 days after any modification
of the assessment to reflect and account for such outcome.
(viii) REGULATIONS.—The Copyright Royalty Judges may adopt regulations
to govern the conduct of proceedings under this paragraph.
(8) Establishment of rates and terms under blanket license.—
(A) RESTRICTIONS ON RATESETTING PARTICIPATION.—Neither the mechanical licensing collective nor the digital licensee coordinator shall be a party to a
proceeding described in subsection (c)(1)(E), except that the mechanical licensing
collective or the digital licensee coordinator may gather and provide financial and
other information for the use of a party to such a proceeding and comply with requests for information as required under applicable statutory and regulatory provisions and rulings of the Copyright Royalty Judges.
(B) APPLICATION OF LATE FEES.—In any proceeding described in subparagraph (A) in which the Copyright Royalty Judges establish a late fee for late payment
of royalties for uses of musical works under this section, such fee shall apply to covered activities under blanket licenses, as follows:
(i) Late fees for past due royalty payments shall accrue from the due date for
payment until payment is received by the mechanical licensing collective.
(ii) The availability of late fees shall in no way prevent a copyright owner or the
mechanical licensing collective from asserting any other rights or remedies to
which such copyright owner or the mechanical licensing collective may be entitled
under this title.
(C) INTERIM RATE AGREEMENTS IN GENERAL.—For any covered activity
for which no rate or terms have been established by the Copyright Royalty Judges,
the mechanical licensing collective and any digital music provider may agree to an
interim rate and terms for such activity under the blanket license, and any such rate
and terms—
(i) shall be treated as nonprecedential and not cited or relied upon in any ratesetting
128

Copyright Act of 1976

§ 115.

proceeding before the Copyright Royalty Judges or any other tribunal; and
(ii) shall automatically expire upon the establishment of a rate and terms for such
covered activity by the Copyright Royalty Judges, under subsection (c)(1)(E).
(D) ADJUSTMENTS FOR INTERIM RATES.—The rate and terms established
by the Copyright Royalty Judges for a covered activity to which an interim rate and
terms have been agreed under subparagraph (C) shall supersede the interim rate and
terms and apply retroactively to the inception of the activity under the blanket license. In such case, not later than 90 days after the effective date of the rate and
terms established by the Copyright Royalty Judges—
(i) if the rate established by the Copyright Royalty Judges exceeds the interim
rate, the digital music provider shall pay to the mechanical licensing collective the
amount of any underpayment of royalties due; or
(ii) if the interim rate exceeds the rate established by the Copyright Royalty
Judges, the mechanical licensing collective shall credit the account of the digital
music provider for the amount of any overpayment of royalties due.
(9) Transition to blanket licenses.—
(A) SUBSTITUTION OF BLANKET LICENSE.—On the license availability
date, a blanket license shall, without any interruption in license authority enjoyed by
such digital music provider, be automatically substituted for and supersede any existing compulsory license previously obtained under this section by the digital music
provider from a copyright owner to engage in 1 or more covered activities with respect to a musical work, except that such substitution shall not apply to any authority
obtained from a record company pursuant to a compulsory license to make and distribute permanent downloads unless and until such record company terminates such
authority in writing to take effect at the end of a monthly reporting period, with a
copy to the mechanical licensing collective.
(B) EXPIRATION OF EXISTING LICENSES.—Except to the extent provided in
subparagraph (A), on and after the license availability date, licenses other than individual download licenses obtained under this section for covered activities prior to
the license availability date shall no longer continue in effect.
(C) TREATMENT OF VOLUNTARY LICENSES.—A voluntary license for a
covered activity in effect on the license availability date will remain in effect unless
and until the voluntary license expires according to the terms of the voluntary license,
or the parties agree to amend or terminate the voluntary license. In a case where a
voluntary license for a covered activity entered into before the license availability
date incorporates the terms of this section by reference, the terms so incorporated
(but not the rates) shall be those in effect immediately prior to the license availability
date, and those terms shall continue to apply unless and until such voluntary license
is terminated or amended, or the parties enter into a new voluntary license.
(D) FURTHER ACCEPTANCE OF NOTICES FOR COVERED ACTIVITIES
BY COPYRIGHT OFFICE.— On and after the enactment date—
(i) the Copyright Office shall no longer accept notices of intention with respect
to covered activities; and
(ii) notices of intention filed before the enactment date will no longer be effective or provide license authority with respect to covered activities, except that, before the license availability date, there shall be no liability under section 501 for
the reproduction or distribution of a musical work (or share thereof) in covered
activities if a valid notice of intention was filed for such work (or share) before the
enactment date.
129

§ 115.

Copyright Act of 1976

(10) Prior unlicensed uses.—
(A) LIMITATION ON LIABILITY IN GENERAL.—A copyright owner that
commences an action under section 501 on or after January 1, 2018, against a digital
music provider for the infringement of the exclusive rights provided by paragraph
(1) or (3) of section 106 arising from the unauthorized reproduction or distribution
of a musical work by such digital music provider in the course of engaging in covered
activities prior to the license availability date, shall, as the copyright owner’s sole
and exclusive remedy against the digital music provider, be eligible to recover the
royalty prescribed under subsection (c)(1)(C) and chapter 8, from the digital music
provider, provided that such digital music provider can demonstrate compliance with
the requirements of subparagraph (B), as applicable. In all other cases the limitation
on liability under this subparagraph shall not apply.
(B) REQUIREMENTS FOR LIMITATION ON LIABILITY.—The following requirements shall apply on the enactment date and through the end of the period that
expires 90 days after the license availability date to digital music providers seeking
to avail themselves of the limitation on liability described in subparagraph (A):
(i) Not later than 30 calendar days after first making a particular sound recording
of a musical work available through its service via one or more covered activities,
or 30 calendar days after the enactment date, whichever occurs later, a digital music provider shall engage in good-faith, commercially reasonable efforts to identify
and locate each copyright owner of such musical work (or share thereof). Such
required matching efforts shall include the following:
(I) Good-faith, commercially reasonable efforts to obtain from the owner of
the corresponding sound recording made available through the digital music provider’s service the following information:
(aa) Sound recording name, featured artist, sound recording copyright
owner, producer, international standard recording code, and other information
commonly used in the industry to identify sound recordings and match them
to the musical works they embody.
(bb) Any available musical work ownership information, including each
songwriter and publisher name, percentage ownership share, and international
standard musical work code.
(II) Employment of 1 or more bulk electronic matching processes that are available to the digital music provider through a third-party vendor on commercially
reasonable terms, except that a digital music provider may rely on its own bulk
electronic matching process if that process has capabilities comparable to or better
than those available from a third-party vendor on commercially reasonable terms.
(ii) The required matching efforts shall be repeated by the digital music provider
not less than once per month for so long as the copyright owner remains unidentified or has not been located.
(iii) If the required matching efforts are successful in identifying and locating a
copyright owner of a musical work (or share thereof) by the end of the calendar
month in which the digital music provider first makes use of the work, the digital
music provider shall provide statements of account and pay royalties to such copyright owner in accordance with this section and applicable regulations.
(iv) If the copyright owner is not identified or located by the end of the calendar
month in which the digital music provider first makes use of the work, the digital
music provider shall accrue and hold royalties calculated under the applicable statutory rate in accordance with usage of the work, from initial use of the work until
130

Copyright Act of 1976

§ 115.

the accrued royalties can be paid to the copyright owner or are required to be transferred to the mechanical licensing collective, as follows:
(I) Accrued royalties shall be maintained by the digital music provider in accordance with generally accepted accounting principles.
(II) If a copyright owner of an unmatched musical work (or share thereof) is
identified and located by or to the digital music provider before the license availability date, the digital music provider shall—
(aa) not later than 45 calendar days after the end of the calendar month during which the copyright owner was identified and located, pay the copyright
owner all accrued royalties, such payment to be accompanied by a cumulative
statement of account that includes all of the information that would have been
provided to the copyright owner had the digital music provider been providing
monthly statements of account to the copyright owner from initial use of the
work in accordance with this section and applicable regulations, including the
requisite certification under subsection (c)(2)(I);
(bb) beginning with the accounting period following the calendar month in
which the copyright owner was identified and located, and for all other accounting periods prior to the license availability date, provide monthly statements of account and pay royalties to the copyright owner as required under
this section and applicable regulations; and
(cc) beginning with the monthly royalty reporting period commencing on
the license availability date, report usage and pay royalties for such musical
work (or share thereof) for such reporting period and reporting periods thereafter to the mechanical licensing collective, as required under this subsection
and applicable regulations.
(III) If a copyright owner of an unmatched musical work (or share thereof) is
not identified and located by the license availability date, the digital music provider shall—
(aa) not later than 45 calendar days after the license availability date, transfer
all accrued royalties to the mechanical licensing collective, such payment to
be accompanied by a cumulative statement of account that includes all of the
information that would have been provided to the copyright owner had the
digital music provider been serving monthly statements of account on the copyright owner from initial use of the work in accordance with this section and
applicable regulations, including the requisite certification under subsection
(c)(2)(I), and accompanied by an additional certification by a duly authorized
officer of the digital music provider that the digital music provider has fulfilled
the requirements of clauses (i) and (ii) of subparagraph (B) but has not been
successful in locating or identifying the copyright owner; and
(bb) beginning with the monthly royalty reporting period commencing on
the license availability date, report usage and pay royalties for such musical
work (or share thereof) for such period and reporting periods thereafter to the
mechanical licensing collective, as required under this subsection and applicable regulations.
(v) A digital music provider that complies with the requirements of this subparagraph with respect to unmatched musical works (or shares of works) shall not be
liable for or accrue late fees for late payments of royalties for such works until
such time as the digital music provider is required to begin paying monthly royalties to the copyright owner or the mechanical licensing collective, as applicable.
131

§ 115.

Copyright Act of 1976

(C) ADJUSTED STATUTE OF LIMITATIONS.—Notwithstanding anything to
the contrary in section 507(b), with respect to any claim of infringement of the exclusive rights provided by paragraphs (1) and (3) of section 106 against a digital
music provider arising from the unauthorized reproduction or distribution of a musical work by such digital music provider in the course of engaging in covered activities that accrued not more than 3 years prior to the license availability date, such
action may be commenced not later than the later of—
(i) 3 years after the date on which the claim accrued; or
(ii) 2 years after the license availability date.
(D) OTHER RIGHTS AND REMEDIES PRESERVED.—Except as expressly
provided in this paragraph, nothing in this paragraph shall be construed to alter, limit,
or negate any right or remedy of a copyright owner with respect to unauthorized use
of a musical work.
(11) Legal protections for licensing activities.—
(A) EXEMPTION FOR COMPULSORY LICENSE ACTIVITIES.—The antitrust exemption described in subsection (c)(1)(D) shall apply to negotiations and
agreements between and among copyright owners and persons entitled to obtain a
compulsory license for covered activities, and common agents acting on behalf of
such copyright owners or persons, including with respect to the administrative assessment established under this subsection.
(B) LIMITATION ON COMMON AGENT EXEMPTION.—Notwithstanding
the antitrust exemption provided in subsection (c)(1)(D) and subparagraph (A) of
this paragraph (except for the administrative assessment referenced in such subparagraph (A) and except as provided in paragraph (8)(C)), neither the mechanical licensing collective nor the digital licensee coordinator shall serve as a common agent
with respect to the establishment of royalty rates or terms under this section.
(C) ANTITRUST EXEMPTION FOR ADMINISTRATIVE ACTIVITIES.—
Notwithstanding any provision of the antitrust laws, copyright owners and persons
entitled to obtain a compulsory license under this section may designate the mechanical licensing collective to administer voluntary licenses for the reproduction or distribution of musical works in covered activities on behalf of such copyright owners
and persons, subject to the following conditions:
(i) Each copyright owner shall establish the royalty rates and material terms of
any such voluntary license individually and not in agreement, combination, or concert with any other copyright owner.
(ii) Each person entitled to obtain a compulsory license under this section shall
establish the royalty rates and material terms of any such voluntary license individually and not in agreement, combination, or concert with any other digital music provider.
(iii) The mechanical licensing collective shall maintain the confidentiality of the
voluntary licenses in accordance with the confidentiality provisions prescribed by
the Register of Copyrights under paragraph (12)(C).
(D) LIABILITY FOR GOOD-FAITH ACTIVITIES.—The mechanical licensing
collective shall not be liable to any person or entity based on a claim arising from its
good-faith administration of policies and procedures adopted and implemented to carry
out the responsibilities described in subparagraphs (J) and (K) of paragraph (3), except
to the extent of correcting an underpayment or overpayment of royalties as provided
in paragraph (3)(L)(i)(VI), but the collective may participate in a legal proceeding as
a stakeholder party if the collective is holding funds that are the subject of a dispute
132

Copyright Act of 1976

§ 115.

between copyright owners. For purposes of this subparagraph, the term ‘good-faith
administration’ means administration in a manner that is not grossly negligent.
(E) PREEMPTION OF STATE PROPERTY LAWS.—The holding and distribution of funds by the mechanical licensing collective in accordance with this subsection shall supersede and preempt any State law (including common law) concerning
escheatment or abandoned property, or any analogous provision, that might otherwise apply.
(F) RULE OF CONSTRUCTION.—Except as expressly provided in this subsection, nothing in this subsection shall negate or limit the ability of any person to pursue an action in Federal court against the mechanical licensing collective or any other
person based upon a claim arising under this title or other applicable law.
(12) Regulations.—
(A) ADOPTION BY REGISTER OF COPYRIGHTS AND COPYRIGHT
ROYALTY JUDGES.—The Register of Copyrights may conduct such proceedings
and adopt such regulations as may be necessary or appropriate to effectuate the provisions of this subsection, except for regulations concerning proceedings before the
Copyright Royalty Judges to establish the administrative assessment, which shall be
adopted by the Copyright Royalty Judges.
(B) JUDICIAL REVIEW OF REGULATIONS.—Except as provided in paragraph (7)(D)(vii), regulations adopted under this subsection shall be subject to judicial review pursuant to chapter 7 of title 5.
(C) PROTECTION OF CONFIDENTIAL INFORMATION.—The Register of
Copyrights shall adopt regulations to provide for the appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in the
records of the mechanical licensing collective and digital licensee coordinator is not
improperly disclosed or used, including through any disclosure or use by the board
of directors or personnel of either entity, and specifically including the unclaimed
royalties oversight committee and the dispute resolution committee of the mechanical licensing collective.
(13) Savings clauses.—
(A) LIMITATION ON ACTIVITIES AND RIGHTS COVERED.—This subsection applies solely to uses of musical works subject to licensing under this section.
The blanket license shall not be construed to extend or apply to activities other than
covered activities or to rights other than the exclusive rights of reproduction and
distribution licensed under this section, or serve or act as the basis to extend or expand the compulsory license under this section to activities and rights not covered
by this section on the day before the enactment date.
(B) RIGHTS OF PUBLIC PERFORMANCE NOT AFFECTED.—The rights,
protections, and immunities granted under this subsection, the data concerning musical works collected and made available under this subsection, and the definitions
under subsection (e) shall not extend to, limit, or otherwise affect any right of public
performance in a musical work.
(e) Definitions.—As used in this section:
(1) Accrued interest.—The term ‘accrued interest’ means interest accrued on accrued royalties, as described in subsection (d)(3)(H)(ii).
(2) Accrued royalties.—The term ‘accrued royalties’ means royalties accrued for
the reproduction or distribution of a musical work (or share thereof) in a covered activity, calculated in accordance with the applicable royalty rate under this section.
(3) Administrative assessment.—The term ‘administrative assessment’ means the
133

§ 115.

Copyright Act of 1976

fee established pursuant to subsection (d)(7)(D).
(4) Audit.—The term ‘audit’ means a royalty compliance examination to verify the
accuracy of royalty payments, or the conduct of such an examination, as applicable.
(5) Blanket license.—The term ‘blanket license’ means a compulsory license described in subsection (d)(1)(A) to engage in covered activities.
(6) Collective total costs.—The term ‘collective total costs’—
(A) means the total costs of establishing, maintaining, and operating the mechanical licensing collective to fulfill its statutory functions, including—
(i) startup costs;
(ii) financing, legal, audit, and insurance costs;
(iii) investments in information technology, infrastructure, and other long-term
resources;
(iv) outside vendor costs;
(v) costs of licensing, royalty administration, and enforcement of rights;
(vi) costs of bad debt; and
(vii) costs of automated and manual efforts to identify and locate copyright owners of musical works (and shares of such musical works) and match sound recordings to the musical works the sound recordings embody; and
(B) does not include any added costs incurred by the mechanical licensing collective to provide services under voluntary licenses.
(7) Covered activity.—The term ‘covered activity’ means the activity of making a
digital phonorecord delivery of a musical work, including in the form of a permanent
download, limited download, or interactive stream, where such activity qualifies for a
compulsory license under this section.
(8) Digital music provider.—The term ‘digital music provider’ means a person (or
persons operating under the authority of that person) that, with respect to a service
engaged in covered activities—
(A) has a direct contractual, subscription, or other economic relationship with end
users of the service, or, if no such relationship with end users exists, exercises direct
control over the provision of the service to end users;
(B) is able to fully report on any revenues and consideration generated by the service;
and
(C) is able to fully report on usage of sound recordings of musical works by the
service (or procure such reporting).
(9) Digital licensee coordinator.—The term ‘digital licensee coordinator’ means
the entity most recently designated pursuant to subsection (d)(5).
(10) Digital phonorecord delivery.—The term ‘digital phonorecord delivery’
means each individual delivery of a phonorecord by digital transmission of a sound
recording that results in a specifically identifiable reproduction by or for any transmission recipient of a phonorecord of that sound recording, regardless of whether the digital transmission is also a public performance of the sound recording or any musical
work embodied therein, and includes a permanent download, a limited download, or
an interactive stream. A digital phonorecord delivery does not result from a real-time,
noninteractive subscription transmission of a sound recording where no reproduction
of the sound recording or the musical work embodied therein is made from the inception of the transmission through to its receipt by the transmission recipient in order to
make the sound recording audible. A digital phonorecord delivery does not include the
digital transmission of sounds accompanying a motion picture or other audiovisual
work as defined in section 101.
134

Copyright Act of 1976

§ 115.

(11) Enactment date.—The term ‘enactment date’ means the date of the enactment
of the Musical Works Modernization Act.
(12) Individual download license.—The term ‘individual download license’ means
a compulsory license obtained by a record company to make and distribute, or authorize the making and distribution of, permanent downloads embodying a specific individual musical work.
(13) Interactive stream.—The term ‘interactive stream’ means a digital transmission of a sound recording of a musical work in the form of a stream, where the performance of the sound recording by means of such transmission is not exempt under
section 114(d)(1) and does not in itself, or as a result of a program in which it is included, qualify for statutory licensing under section 114(d)(2). An interactive stream
is a digital phonorecord delivery.
(14) Interested.—The term ‘interested’, as applied to a party seeking to participate
in a proceeding under subsection (d)(7)(D), is a party as to which the Copyright Royalty
Judges have not determined that the party lacks a significant interest in such proceeding.
(15) License availability date.—The term ‘license availability date’ means January
1 following the expiration of the 2-year period beginning on the enactment date.
(16) Limited download.—The term ‘limited download’ means a digital transmission of a sound recording of a musical work in the form of a download, where such
sound recording is accessible for listening only for a limited amount of time or specified number of times.
(17) Matched.—The term ‘matched’, as applied to a musical work (or share
thereof), means that the copyright owner of such work (or share thereof) has been
identified and located.
(18) Mechanical licensing collective.—The term ‘mechanical licensing collective’
means the entity most recently designated as such by the Register of Copyrights under
subsection (d)(3).
(19) Mechanical licensing collective budget.—The term ‘mechanical licensing collective budget’ means a statement of the financial position of the mechanical licensing
collective for a fiscal year or quarter thereof based on estimates of expenditures during
the period and proposals for financing those expenditures, including a calculation of
the collective total costs.
(20) Musical works database.—The term ‘musical works database’ means the database described in subsection (d)(3)(E).
(21) Nonprofit.—The term ‘nonprofit’ means a nonprofit created or organized in a
State.
(22) Notice of license.—The term ‘notice of license’ means a notice from a digital
music provider provided under subsection (d)(2)(A) for purposes of obtaining a blanket license.
(23) Notice of nonblanket activity.—The term ‘notice of nonblanket activity’
means a notice from a significant nonblanket licensee provided under subsection
(d)(6)(A) for purposes of notifying the mechanical licensing collective that the licensee
has been engaging in covered activities.
(24) Permanent download.—The term ‘permanent download’ means a digital
transmission of a sound recording of a musical work in the form of a download, where
such sound recording is accessible for listening without restriction as to the amount of
time or number of times it may be accessed.
(25) Qualified auditor.—The term ‘qualified auditor’ means an independent, certified public accountant with experience performing music royalty audits.
135

§ 115.

Copyright Act of 1976

(26) Record company.—The term ‘record company’ means an entity that invests
in, produces, and markets sound recordings of musical works, and distributes such
sound recordings for remuneration through multiple sales channels, including a corporate affiliate of such an entity engaged in distribution of sound recordings.
(27) Report of usage.—The term ‘report of usage’ means a report reflecting an entity’s usage of musical works in covered activities described in subsection (d)(4)(A).
(28) Required matching efforts.—The term ‘required matching efforts’ means efforts to identify and locate copyright owners of musical works as described in subsection (d)(10)(B)(i).
(29) Service.—The term ‘service’, as used in relation to covered activities, means
any site, facility, or offering by or through which sound recordings of musical works
are digitally transmitted to members of the public.
(30) Share.—The term ‘share’, as applied to a musical work, means a fractional
ownership interest in such work.
(31) Significant nonblanket licensee.—The term ‘significant nonblanket licensee’—
(A) means an entity, including a group of entities under common ownership or
control that, acting under the authority of one or more voluntary licenses or individual download licenses, offers a service engaged in covered activities, and such entity
or group of entities—
(i) is not currently operating under a blanket license and is not obligated to provide reports of usage reflecting covered activities under subsection (d)(4)(A);
(ii) has a direct contractual, subscription, or other economic relationship with
end users of the service or, if no such relationship with end users exists, exercises
direct control over the provision of the service to end users; and
(iii) either—
(I) on any day in a calendar month, makes more than 5,000 different sound
recordings of musical works available through such service; or
(II) derives revenue or other consideration in connection with such covered activities greater than $50,000 in a calendar month, or total revenue or other consideration greater than $500,000 during the preceding 12 calendar months; and
(B) does not include—
(i) an entity whose covered activity consists solely of free-to-the-user streams of
segments of sound recordings of musical works that do not exceed 90 seconds in
length, are offered only to facilitate a licensed use of musical works that is not a
covered activity, and have no revenue directly attributable to such streams constituting the covered activity; or
(ii) a ‘public broadcasting entity’ as defined in section 118(f).
(32) Songwriter.—The term ‘songwriter’ means the author of all or part of a musical
work, including a composer or lyricist.
(33) State.—The term ‘State’ means each State of the United States, the District of
Columbia, and each territory or possession of the United States.
(34) Unclaimed accrued royalties.—The term ‘unclaimed accrued royalties’ means
accrued royalties eligible for distribution under subsection (d)(3)(J).
(35) Unmatched.—The term ‘unmatched’, as applied to a musical work (or share
thereof), means that the copyright owner of such work (or share thereof) has not been
identified or located.
(36) Voluntary license.—The term ‘voluntary license’ means a license for use of a
musical work (or share thereof) other than a compulsory license obtained under this
section.
136

Copyright Act of 1976

§ 117.

§ 116.—Negotiated licenses for public performances by means of coin-operated
phonorecord players
(a) Applicability of Section.—This section applies to any nondramatic musical work
embodied in a phonorecord.
(b) Negotiated Licenses.—
(1) Authority for negotiations.—Any owners of copyright in works to which this
section applies and any operators of coin-operated phonorecord players may negotiate
and agree upon the terms and rates of royalty payments for the performance of such
works and the proportionate division of fees paid among copyright owners, and may
designate common agents to negotiate, agree to, pay, or receive such royalty payments.
(2) Chapter 8 proceeding.—Parties not subject to such a negotiation may have the
terms and rates and the division of fees described in paragraph (1) determined in a
proceeding in accordance with the provisions of chapter 8.
(c) License Agreements Superior to Determinations by Copyright Royalty
Judges.—License agreements between one or more copyright owners and one or more
operators of coin-operated phonorecord players, which are negotiated in accordance with
subsection (b), shall be given effect in lieu of any otherwise applicable determination by
the Copyright Royalty Judges.
(d) Definitions.—As used in this section, the following terms mean the following:
(1) A “coin-operated phonorecord player” is a machine or device that—
(A) is employed solely for the performance of nondramatic musical works by
means of phonorecords upon being activated by the insertion of coins, currency, tokens, or other monetary units or their equivalent;
(B) is located in an establishment making no direct or indirect charge for admission;
(C) is accompanied by a list which is comprised of the titles of all the musical
works available for performance on it, and is affixed to the phonorecord player or
posted in the establishment in a prominent position where it can be readily examined
by the public; and
(D) affords a choice of works available for performance and permits the choice to
be made by the patrons of the establishment in which it is located.
(2) An “operator” is any person who, alone or jointly with others—
(A) owns a coin-operated phonorecord player;
(B) has the power to make a coin-operated phonorecord player available for placement in an establishment for purposes of public performance; or
(C) has the power to exercise primary control over the selection of the musical works
made available for public performance on a coin-operated phonorecord player.
§ 117.—Limitations on exclusive rights: Computer programs
(a) Making of Additional Copy or Adaptation by Owner of Copy.—Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a
computer program to make or authorize the making of another copy or adaptation of that
computer program provided:
(1) that such a new copy or adaptation is created as an essential step in the utilization
of the computer program in conjunction with a machine and that it is used in no other
manner, or
(2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.
137

§ 118.

Copyright Act of 1976

(b) Lease, Sale, or Other Transfer of Additional Copy or Adaptation.—Any exact
copies prepared in accordance with the provisions of this section may be leased, sold, or
otherwise transferred, along with the copy from which such copies were prepared, only
as part of the lease, sale, or other transfer of all rights in the program. Adaptations so
prepared may be transferred only with the authorization of the copyright owner.
(c) Machine Maintenance or Repair.—Notwithstanding the provisions of section
106, it is not an infringement for the owner or lessee of a machine to make or authorize
the making of a copy of a computer program if such copy is made solely by virtue of the
activation of a machine that lawfully contains an authorized copy of the computer program, for purposes only of maintenance or repair of that machine, if—
(1) such new copy is used in no other manner and is destroyed immediately after the
maintenance or repair is completed; and
(2) with respect to any computer program or part thereof that is not necessary for
that machine to be activated, such program or part thereof is not accessed or used other
than to make such new copy by virtue of the activation of the machine.
(d) Definitions.—For purposes of this section—
(1) the “maintenance” of a machine is the servicing of the machine in order to make
it work in accordance with its original specifications and any changes to those specifications authorized for that machine; and
(2) the “repair” of a machine is the restoring of the machine to the state of working
in accordance with its original specifications and any changes to those specifications
authorized for that machine.
§ 118.—Scope of exclusive rights: Use of certain works in connection with
noncommercial broadcasting
(a) The exclusive rights provided by section 106 shall, with respect to the works specified by subsection (b) and the activities specified by subsection (d), be subject to the
conditions and limitations prescribed by this section.
(b) Notwithstanding any provision of the antitrust laws, any owners of copyright in
published nondramatic musical works and published pictorial, graphic, and sculptural
works and any public broadcasting entities, respectively, may negotiate and agree upon
the terms and rates of royalty payments and the proportionate division of fees paid among
various copyright owners, and may designate common agents to negotiate, agree to, pay,
or receive payments.
(1) Any owner of copyright in a work specified in this subsection or any public
broadcasting entity may submit to the Copyright Royalty Judges proposed licenses
covering such activities with respect to such works.
(2) License agreements voluntarily negotiated at any time between one or more copyright owners and one or more public broadcasting entities shall be given effect in lieu of
any determination by the Librarian of Congress or the Copyright Royalty Judges, if copies of such agreements are filed with the Copyright Royalty Judges within 30 days of
execution in accordance with regulations that the Copyright Royalty Judges shall issue.
(3) Voluntary negotiation proceedings initiated pursuant to a petition filed under
section 804(a) for the purpose of determining a schedule of terms and rates of royalty
payments by public broadcasting entities to owners of copyright in works specified by
this subsection and the proportionate division of fees paid among various copyright
owners shall cover the 5-year period beginning on January 1 of the second year following the year in which the petition is filed. The parties to each negotiation proceeding shall bear their own costs.
138

Copyright Act of 1976

§ 118.

(4) In the absence of license agreements negotiated under paragraph (2) or (3), the Copyright Royalty Judges shall, pursuant to chapter 8, conduct a proceeding to determine and
publish in the Federal Register a schedule of rates and terms which, subject to paragraph
(2), shall be binding on all owners of copyright in works specified by this subsection and
public broadcasting entities, regardless of whether such copyright owners have submitted
proposals to the Copyright Royalty Judges. In establishing such rates and terms the Copyright Royalty Judges may consider the rates for comparable circumstances under voluntary license agreements negotiated as provided in paragraph (2) or (3). The Copyright
Royalty Judges shall also establish requirements by which copyright owners may receive
reasonable notice of the use of their works under this section, and under which records of
such use shall be kept by public broadcasting entities.
(c) Subject to the terms of any voluntary license agreements that have been negotiated
as provided by subsection (b)(2) or (3), a public broadcasting entity may, upon compliance with the provisions of this section, including the rates and terms established by the
Copyright Royalty Judges under subsection (b)(4), engage in the following activities
with respect to published nondramatic musical works and published pictorial, graphic,
and sculptural works:
(1) performance or display of a work by or in the course of a transmission made by
a noncommercial educational broadcast station referred to in subsection (f); and
(2) production of a transmission program, reproduction of copies or phonorecords of
such a transmission program, and distribution of such copies or phonorecords, where
such production, reproduction, or distribution is made by a nonprofit institution or organization solely for the purpose of transmissions specified in paragraph (1); and
(3) the making of reproductions by a governmental body or a nonprofit institution of
a transmission program simultaneously with its transmission as specified in paragraph
(1), and the performance or display of the contents of such program under the conditions specified by paragraph (1) of section 110, but only if the reproductions are used
for performances or displays for a period of no more than seven days from the date of
the transmission specified in paragraph (1), and are destroyed before or at the end of
such period. No person supplying, in accordance with paragraph (2), a reproduction of
a transmission program to governmental bodies or nonprofit institutions under this paragraph shall have any liability as a result of failure of such body or institution to destroy
such reproduction: Provided, That it shall have notified such body or institution of the
requirement for such destruction pursuant to this paragraph: And provided further,
That if such body or institution itself fails to destroy such reproduction it shall be
deemed to have infringed.
(d) Except as expressly provided in this subsection, this section shall have no applicability to works other than those specified in subsection (b). Owners of copyright in nondramatic literary works and public broadcasting entities may, during the course of
voluntary negotiations, agree among themselves, respectively, as to the terms and rates
of royalty payments without liability under the antitrust laws. Any such terms and rates
of royalty payments shall be effective upon filing with the Copyright Royalty Judges, in
accordance with regulations that the Copyright Royalty Judges shall prescribe as provided in section 803(b)(6).
(e) Nothing in this section shall be construed to permit, beyond the limits of fair use as
provided by section 107, the unauthorized dramatization of a nondramatic musical work,
the production of a transmission program drawn to any substantial extent from a published compilation of pictorial, graphic, or sculptural works, or the unauthorized use of
any portion of an audiovisual work.
139

§ 119.

Copyright Act of 1976

(f) As used in this section, the term “public broadcasting entity” means a noncommercial
educational broadcast station as defined in section 397 of title 47 and any nonprofit institution or organization engaged in the activities described in paragraph (2) of subsection (c).
§ 119.—Limitations on exclusive rights: Secondary transmissions of distant
television programming by satellite
(a) Secondary Transmissions by Satellite Carriers.—
(1) Non-network stations.—Subject to the provisions of paragraphs (4), (5), and (7)
of this subsection and section 114(d), secondary transmissions of a performance or
display of a work embodied in a primary transmission made by a non-network station
shall be subject to statutory licensing under this section if the secondary transmission
is made by a satellite carrier to the public for private home viewing or for viewing in
a commercial establishment, with regard to secondary transmissions the satellite carrier is in compliance with the rules, regulations, or authorizations of the Federal Communications Commission governing the carriage of television broadcast station
signals, and the carrier makes a direct or indirect charge for each retransmission service
to each subscriber receiving the secondary transmission or to a distributor that has
contracted with the carrier for direct or indirect delivery of the secondary transmission
to the public for private home viewing or for viewing in a commercial establishment.
(2) Network stations.—
(A) In general.—Subject to the provisions of subparagraph (B) of this paragraph
and paragraphs (4), (5), (6), and (7) of this subsection and section 114(d), secondary
transmissions of a performance or display of a work embodied in a primary transmission made by a network station shall be subject to statutory licensing under this
section if the secondary transmission is made by a satellite carrier to the public for
private home viewing, with regard to secondary transmissions the satellite carrier is
in compliance with the rules, regulations, or authorizations of the Federal Communications Commission governing the carriage of television broadcast station signals,
and the carrier makes a direct or indirect charge for such retransmission service to
each subscriber receiving the secondary transmission.
(B) Secondary transmissions to unserved households.—
(i) In general.—The statutory license provided for in subparagraph (A) shall be
limited to secondary transmissions of the signals of no more than two network
stations in a single day for each television network to persons who reside in unserved households.
(ii) Accurate determinations of eligibility.—
(I) Accurate predictive model.—In determining presumptively whether a
person resides in an unserved household under subsection (d)(10)(A), a court
shall rely on the Individual Location Longley-Rice model set forth by the Federal
Communications Commission in Docket No. 98–201, as that model may be
amended by the Commission over time under section 339(c)(3) of the Communications Act of 1934 to increase the accuracy of that model.
(II) Accurate measurements.—For purposes of site measurements to determine
whether a person resides in an unserved household under subsection (d)(10)(A), a
court shall rely on section 339(c)(4) of the Communications Act of 1934.
(III) Accurate predictive model with respect to digital signals.—Notwithstanding subclause (I), in determining presumptively whether a person resides in
an unserved household under subsection (d)(10)(A) with respect to digital sig140

Copyright Act of 1976

§ 119.

nals, a court shall rely on a predictive model set forth by the Federal Communications Commission pursuant to a rulemaking as provided in section 339(c)(3)
of the Communications Act of 1934 (47 U.S.C. 339(c)(3)), as that model may
be amended by the Commission over time under such section to increase the
accuracy of that model. Until such time as the Commission sets forth such model,
a court shall rely on the predictive model as recommended by the Commission
with respect to digital signals in its Report to Congress in ET Docket No. 05–
182, FCC 05–199 (released December 9, 2005).
(iii) C-band exemption to unserved households.—
(I) In general.—The limitations of clause (i) shall not apply to any secondary
transmissions by C-band services of network stations that a subscriber to C-band
service received before any termination of such secondary transmissions before
October 31, 1999.
(II) Definition.—In this clause, the term “C-band service” means a service
that is licensed by the Federal Communications Commission and operates in the
Fixed Satellite Service under part 25 of title 47, Code of Federal Regulations.
(C) Submission of subscriber lists to networks.—
(i) Initial lists.—A satellite carrier that makes secondary transmissions of a primary transmission made by a network station pursuant to subparagraph (A) shall,
not later than 90 days after commencing such secondary transmissions, submit to
the network that owns or is affiliated with the network station a list identifying (by
name and address, including street or rural route number, city, State, and 9-digit
zip code) all subscribers to which the satellite carrier makes secondary transmissions of that primary transmission to subscribers in unserved households.
(ii) Monthly lists.—After the submission of the initial lists under clause (i), the
satellite carrier shall, not later than the 15th of each month, submit to the network
a list, aggregated by designated market area, identifying (by name and address,
including street or rural route number, city, State, and 9-digit zip code) any persons
who have been added or dropped as subscribers under clause (i) since the last submission under this subparagraph.
(iii) Use of subscriber information.—Subscriber information submitted by a
satellite carrier under this subparagraph may be used only for purposes of monitoring compliance by the satellite carrier with this subsection.
(iv) Applicability.—The submission requirements of this subparagraph shall
apply to a satellite carrier only if the network to which the submissions are to be
made places on file with the Register of Copyrights a document identifying the
name and address of the person to whom such submissions are to be made. The
Register shall maintain for public inspection a file of all such documents.
(3) Statutory license where retransmissions into local market available.—
(A) Rules for subscribers to signals under subsection (e).—
(i) For those receiving distant signals.—In the case of a subscriber of a satellite
carrier who is eligible to receive the secondary transmission of the primary transmission of a network station solely by reason of subsection (e) (in this subparagraph referred to as a “distant signal”), and who, as of October 1, 2004, is receiving
the distant signal of that network station, the following shall apply:
(I) In a case in which the satellite carrier makes available to the subscriber the
secondary transmission of the primary transmission of a local network station
affiliated with the same television network pursuant to the statutory license under section 122, the statutory license under paragraph (2) shall apply only to
141

§ 119.

Copyright Act of 1976

secondary transmissions by that satellite carrier to that subscriber of the distant
signal of a station affiliated with the same television network—
(aa) if, within 60 days after receiving the notice of the satellite carrier under
section 338(h)(1) of the Communications Act of 1934, the subscriber elects to
retain the distant signal; but
(bb) only until such time as the subscriber elects to receive such local signal.
(II) Notwithstanding subclause (I), the statutory license under paragraph (2)
shall not apply with respect to any subscriber who is eligible to receive the distant signal of a television network station solely by reason of subsection (e), unless the satellite carrier, within 60 days after the date of the enactment of the
Satellite Home Viewer Extension and Reauthorization Act of 2004, submits to
that television network a list, aggregated by designated market area (as defined
in section 122(j)(2)(C)), that—
(aa) identifies that subscriber by name and address (street or rural route number, city, State, and zip code) and specifies the distant signals received by the
subscriber; and
(bb) states, to the best of the satellite carrier’s knowledge and belief, after
having made diligent and good faith inquiries, that the subscriber is eligible
under subsection (e) to receive the distant signals.
(ii) For those not receiving distant signals.—In the case of any subscriber of a
satellite carrier who is eligible to receive the distant signal of a network station solely
by reason of subsection (e) and who did not receive a distant signal of a station affiliated with the same network on October 1, 2004, the statutory license under paragraph (2) shall not apply to secondary transmissions by that satellite carrier to that
subscriber of the distant signal of a station affiliated with the same network.
(B) Rules for lawful subscribers as of date of enactment of 2010 Act.—In the
case of a subscriber of a satellite carrier who, on the day before the date of the enactment of the Satellite Television Extension and Localism Act of 2010, was lawfully receiving the secondary transmission of the primary transmission of a network
station under the statutory license under paragraph (2) (in this subparagraph referred
to as the “distant signal”), other than subscribers to whom subparagraph (A) applies,
the statutory license under paragraph (2) shall apply to secondary transmissions by
that satellite carrier to that subscriber of the distant signal of a station affiliated with
the same television network, and the subscriber’s household shall continue to be
considered to be an unserved household with respect to such network, until such time
as the subscriber elects to terminate such secondary transmissions, whether or not
the subscriber elects to subscribe to receive the secondary transmission of the primary transmission of a local network station affiliated with the same network pursuant to the statutory license under section 122.
(C) Future applicability.—
(i) When local signal available at time of subscription.—The statutory license
under paragraph (2) shall not apply to the secondary transmission by a satellite carrier of the primary transmission of a network station to a person who is not a subscriber lawfully receiving such secondary transmission as of the date of the
enactment of the Satellite Television Extension and Localism Act of 2010 and, at
the time such person seeks to subscribe to receive such secondary transmission, resides in a local market where the satellite carrier makes available to that person the
secondary transmission of the primary transmission of a local network station affiliated with the same network pursuant to the statutory license under section 122.
142

Copyright Act of 1976

§ 119.

(ii) When local signal available after subscription.—In the case of a subscriber
who lawfully subscribes to and receives the secondary transmission by a satellite
carrier of the primary transmission of a network station under the statutory license
under paragraph (2) (in this clause referred to as the “distant signal”) on or after the
date of the enactment of the Satellite Television Extension and Localism Act of
2010, the statutory license under paragraph (2) shall apply to secondary transmissions by that satellite carrier to that subscriber of the distant signal of a station affiliated with the same television network, and the subscriber’s household shall
continue to be considered to be an unserved household with respect to such network,
until such time as the subscriber elects to terminate such secondary transmissions,
but only if such subscriber subscribes to the secondary transmission of the primary
transmission of a local network station affiliated with the same network within 60
days after the satellite carrier makes available to the subscriber such secondary transmission of the primary transmission of such local network station.
(D) Other provisions not affected.—This paragraph shall not affect the applicability of the statutory license to secondary transmissions to unserved households included under paragraph (11).
(E) Waiver.—A subscriber who is denied the secondary transmission of a network
station under subparagraph (B) or (C) may request a waiver from such denial by
submitting a request, through the subscriber’s satellite carrier, to the network station
in the local market affiliated with the same network where the subscriber is located.
The network station shall accept or reject the subscriber’s request for a waiver within
30 days after receipt of the request. If the network station fails to accept or reject the
subscriber’s request for a waiver within that 30-day period, that network station shall
be deemed to agree to the waiver request. Unless specifically stated by the network
station, a waiver that was granted before the date of the enactment of the Satellite
Home Viewer Extension and Reauthorization Act of 2004 under section 339(c)(2)
of the Communications Act of 1934 shall not constitute a waiver for purposes of this
subparagraph.
(F) Available defined.—For purposes of this paragraph, a satellite carrier makes
available a secondary transmission of the primary transmission of a local station to a
subscriber or person if the satellite carrier offers that secondary transmission to other
subscribers who reside in the same 9-digit zip code as that subscriber or person.
(4) Noncompliance with reporting and payment requirements.—Notwithstanding the provisions of paragraphs (1) and (2), the willful or repeated secondary transmission to the public by a satellite carrier of a primary transmission made by a nonnetwork station or a network station and embodying a performance or display of a
work is actionable as an act of infringement under section 501, and is fully subject to
the remedies provided by sections 502 through 506, where the satellite carrier has not
deposited the statement of account and royalty fee required by subsection (b), or has
failed to make the submissions to networks required by paragraph (2)(C).
(5) Willful alterations.—Notwithstanding the provisions of paragraphs (1) and (2),
the secondary transmission to the public by a satellite carrier of a performance or display
of a work embodied in a primary transmission made by a non-network station or a network station is actionable as an act of infringement under section 501, and is fully subject to the remedies provided by sections 502 through 506 and section 510, if the content
of the particular program in which the performance or display is embodied, or any commercial advertising or station announcement transmitted by the primary transmitter during, or immediately before or after, the transmission of such program, is in any way
143

§ 119.

Copyright Act of 1976

willfully altered by the satellite carrier through changes, deletions, or additions, or is
combined with programming from any other broadcast signal.
(6) Violation of territorial restrictions on statutory license for network stations.—
(A) Individual violations.—The willful or repeated secondary transmission by a satellite carrier of a primary transmission made by a network station and embodying a
performance or display of a work to a subscriber who is not eligible to receive the transmission under this section is actionable as an act of infringement under section 501 and
is fully subject to the remedies provided by sections 502 through 506, except that—
(i) no damages shall be awarded for such act of infringement if the satellite carrier took corrective action by promptly withdrawing service from the ineligible
subscriber, and
(ii) any statutory damages shall not exceed $250 for such subscriber for each
month during which the violation occurred.
(B) Pattern of violations.—If a satellite carrier engages in a willful or repeated
pattern or practice of delivering a primary transmission made by a network station
and embodying a performance or display of a work to subscribers who are not eligible to receive the transmission under this section, then in addition to the remedies set
forth in subparagraph (A)—
(i) if the pattern or practice has been carried out on a substantially nationwide
basis, the court shall order a permanent injunction barring the secondary transmission by the satellite carrier, for private home viewing, of the primary transmissions
of any primary network station affiliated with the same network, and the court may
order statutory damages of not to exceed $2,500,000 for each 3-month period during which the pattern or practice was carried out; and
(ii) if the pattern or practice has been carried out on a local or regional basis, the
court shall order a permanent injunction barring the secondary transmission, for
private home viewing in that locality or region, by the satellite carrier of the primary transmissions of any primary network station affiliated with the same network, and the court may order statutory damages of not to exceed $2,500,000 for
each 6-month period during which the pattern or practice was carried out.
(C) Previous subscribers excluded.—Subparagraphs (A) and (B) do not apply to
secondary transmissions by a satellite carrier to persons who subscribed to receive
such secondary transmissions from the satellite carrier or a distributor before November 16, 1988.
(D) Burden of proof.—In any action brought under this paragraph, the satellite
carrier shall have the burden of proving that its secondary transmission of a primary
transmission by a network station is to a subscriber who is eligible to receive the
secondary transmission under this section.
(E) Exception.—The secondary transmission by a satellite carrier of a performance or display of a work embodied in a primary transmission made by a network
station to subscribers who do not reside in unserved households shall not be an act
of infringement if—
(i) the station on May 1, 1991, was retransmitted by a satellite carrier and was
not on that date owned or operated by or affiliated with a television network that
offered interconnected program service on a regular basis for 15 or more hours per
week to at least 25 affiliated television licensees in 10 or more States;
(ii) as of July 1, 1998, such station was retransmitted by a satellite carrier under
the statutory license of this section; and
(iii) the station is not owned or operated by or affiliated with a television network
144

Copyright Act of 1976

§ 119.

that, as of January 1, 1995, offered interconnected program service on a regular basis
for 15 or more hours per week to at least 25 affiliated television licensees in 10 or
more States.
The court shall direct one half of any statutory damages ordered under clause (i)
to be deposited with the Register of Copyrights for distribution to copyright owners
pursuant to subsection (b). The Copyright Royalty Judges shall issue regulations establishing procedures for distributing such funds, on a proportional basis, to copyright owners whose works were included in the secondary transmissions that were
the subject of the statutory damages.
(7) Discrimination by a satellite carrier.—Notwithstanding the provisions of paragraph (1), the willful or repeated secondary transmission to the public by a satellite carrier of a performance or display of a work embodied in a primary transmission made by
a non-network station or a network station is actionable as an act of infringement under
section 501, and is fully subject to the remedies provided by sections 502 through 506,
if the satellite carrier unlawfully discriminates against a distributor.
(8) Geographic limitation on secondary transmissions.—The statutory license
created by this section shall apply only to secondary transmissions to households located in the United States.
(9) Loser pays for signal intensity measurement; recovery of measurement costs
in a civil action.—In any civil action filed relating to the eligibility of subscribing
households as unserved households—
(A) a network station challenging such eligibility shall, within 60 days after receipt
of the measurement results and a statement of such costs, reimburse the satellite carrier for any signal intensity measurement that is conducted by that carrier in response
to a challenge by the network station and that establishes the household is an unserved household; and
(B) a satellite carrier shall, within 60 days after receipt of the measurement results
and a statement of such costs, reimburse the network station challenging such eligibility for any signal intensity measurement that is conducted by that station and that
establishes the household is not an unserved household.
(10) Inability to conduct measurement.—If a network station makes a reasonable
attempt to conduct a site measurement of its signal at a subscriber’s household and is
denied access for the purpose of conducting the measurement, and is otherwise unable
to conduct a measurement, the satellite carrier shall within 60 days notice thereof, terminate service of the station’s network to that household.
(11) Service to recreational vehicles and commercial trucks.—
(A) Exemption.—
(i) In general.—For purposes of this subsection, and subject to clauses (ii) and
(iii), the term “unserved household” shall include—
(I) recreational vehicles as defined in regulations of the Secretary of Housing
and Urban Development under section 3282.8 of title 24, Code of Federal Regulations; and
(II) commercial trucks that qualify as commercial motor vehicles under regulations of the Secretary of Transportation under section 383.5 of title 49, Code
of Federal Regulations.
(ii) Limitation.—Clause (i) shall apply only to a recreational vehicle or commercial truck if any satellite carrier that proposes to make a secondary transmission of
a network station to the operator of such a recreational vehicle or commercial truck
complies with the documentation requirements under subparagraphs (B) and (C).
145

§ 119.

Copyright Act of 1976

(iii) Exclusion.—For purposes of this subparagraph, the terms “recreational vehicle” and “commercial truck” shall not include any fixed dwelling, whether a mobile home or otherwise.
(B) Documentation requirements.—A recreational vehicle or commercial truck
shall be deemed to be an unserved household beginning 10 days after the relevant
satellite carrier provides to the network that owns or is affiliated with the network
station that will be secondarily transmitted to the recreational vehicle or commercial
truck the following documents:
(i) Declaration.—A signed declaration by the operator of the recreational vehicle or commercial truck that the satellite dish is permanently attached to the recreational vehicle or commercial truck, and will not be used to receive satellite
programming at any fixed dwelling.
(ii) Registration.—In the case of a recreational vehicle, a copy of the current
State vehicle registration for the recreational vehicle.
(iii) Registration and license.—In the case of a commercial truck, a copy of—
(I) the current State vehicle registration for the truck; and
(II) a copy of a valid, current commercial driver’s license, as defined in regulations of the Secretary of Transportation under section 383 of title 49, Code of
Federal Regulations, issued to the operator.
(C) Updated documentation requirements.—If a satellite carrier wishes to continue to make secondary transmissions to a recreational vehicle or commercial truck
for more than a 2-year period, that carrier shall provide each network, upon request,
with updated documentation in the form described under subparagraph (B) during
the 90 days before expiration of that 2-year period.
(12) Statutory license contingent on compliance with FCC rules and remedial
steps.—Notwithstanding any other provision of this section, the willful or repeated
secondary transmission to the public by a satellite carrier of a primary transmission
embodying a performance or display of a work made by a broadcast station licensed
by the Federal Communications Commission is actionable as an act of infringement
under section 501, and is fully subject to the remedies provided by sections 502
through 506, if, at the time of such transmission, the satellite carrier is not in compliance with the rules, regulations, and authorizations of the Federal Communications
Commission concerning the carriage of television broadcast station signals.
(13) Waivers.—A subscriber who is denied the secondary transmission of a signal
of a network station under subsection (a)(2)(B) may request a waiver from such denial
by submitting a request, through the subscriber’s satellite carrier, to the network station
asserting that the secondary transmission is prohibited. The network station shall accept or reject a subscriber’s request for a waiver within 30 days after receipt of the
request. If a television network station fails to accept or reject a subscriber’s request
for a waiver within the 30-day period after receipt of the request, that station shall be
deemed to agree to the waiver request and have filed such written waiver. Unless specifically stated by the network station, a waiver that was granted before the date of the
enactment of the Satellite Home Viewer Extension and Reauthorization Act of 2004
under section 339(c)(2) of the Communications Act of 1934, and that was in effect on
such date of enactment, shall constitute a waiver for purposes of this paragraph.
(14) Restricted transmission of out-of-state distant network signals into certain
markets.—
(A) Out-of-state network affiliates.—Notwithstanding any other provision of
this title, the statutory license in this subsection and subsection (b) shall not apply to
146

Copyright Act of 1976

§ 119.

any secondary transmission of the primary transmission of a network station located
outside of the State of Alaska to any subscriber in that State to whom the secondary
transmission of the primary transmission of a television station located in that State
is made available by the satellite carrier pursuant to section 122.
(B) Exception.—The limitation in subparagraph (A) shall not apply to the secondary transmission of the primary transmission of a digital signal of a network station
located outside of the State of Alaska if at the time that the secondary transmission
is made, no television station licensed to a community in the State and affiliated with
the same network makes primary transmissions of a digital signal.
(b) Deposit of Statements and Fees; Verification Procedures.—
(1) Deposits with the Register of Copyrights.—A satellite carrier whose secondary
transmissions are subject to statutory licensing under subsection (a) shall, on a semiannual basis, deposit with the Register of Copyrights, in accordance with requirements
that the Register shall prescribe by regulation—
(A) a statement of account, covering the preceding 6-month period, specifying the
names and locations of all non-network stations and network stations whose signals
were retransmitted, at any time during that period, to subscribers as described in
subsections (a)(1) and (a)(2), the total number of subscribers that received such retransmissions, and such other data as the Register of Copyrights may from time to
time prescribe by regulation;
(B) a royalty fee payable to copyright owners pursuant to paragraph (4) for that 6month period, computed by multiplying the total number of subscribers receiving
each secondary transmission of a primary stream or multicast stream of each nonnetwork station or network station during each calendar year month by the appropriate rate in effect under this subsection; and
(C) a filing fee, as determined by the Register of Copyrights pursuant to section
708(a).
(2) Verification of accounts and fee payments.—The Register of Copyrights shall
issue regulations to permit interested parties to verify and audit the statements of account and royalty fees submitted by satellite carriers under this subsection.
(3) Investment of fees.—The Register of Copyrights shall receive all fees (including
the filing fee specified in paragraph (1)(C)) deposited under this section and, after deducting the reasonable costs incurred by the Copyright Office under this section (other
than the costs deducted under paragraph (5)), shall deposit the balance in the Treasury
of the United States, in such manner as the Secretary of the Treasury directs. All funds
held by the Secretary of the Treasury shall be invested in interest-bearing securities of
the United States for later distribution with interest by the Librarian of Congress as
provided by this title.
(4) Persons to whom fees are distributed.—The royalty fees deposited under paragraph (3) shall, in accordance with the procedures provided by paragraph (5), be distributed to those copyright owners whose works were included in a secondary
transmission made by a satellite carrier during the applicable 6-month accounting period and who file a claim with the Copyright Royalty Judges under paragraph (5).
(5) Procedures for distribution.—The royalty fees deposited under paragraph (3)
shall be distributed in accordance with the following procedures:
(A) Filing of claims for fees.—During the month of July in each year, each person
claiming to be entitled to statutory license fees for secondary transmissions shall file
a claim with the Copyright Royalty Judges, in accordance with requirements that the
147

§ 119.

Copyright Act of 1976

Copyright Royalty Judges shall prescribe by regulation. For purposes of this paragraph, any claimants may agree among themselves as to the proportionate division
of statutory license fees among them, may lump their claims together and file them
jointly or as a single claim, or may designate a common agent to receive payment on
their behalf.
(B) Determination of controversy; distributions.—After the first day of August
of each year, the Copyright Royalty Judges shall determine whether there exists a
controversy concerning the distribution of royalty fees. If the Copyright Royalty
Judges determine that no such controversy exists, the Copyright Royalty Judges shall
authorize the Librarian of Congress to proceed to distribute such fees to the copyright
owners entitled to receive them, or to their designated agents, subject to the deduction of reasonable administrative costs under this section. If the Copyright Royalty
Judges find the existence of a controversy, the Copyright Royalty Judges shall, pursuant to chapter 8 of this title, conduct a proceeding to determine the distribution of
royalty fees.
(C) Withholding of fees during controversy.—During the pendency of any proceeding under this subsection, the Copyright Royalty Judges shall have the discretion
to authorize the Librarian of Congress to proceed to distribute any amounts that are
not in controversy.
(c) Adjustment of Royalty Fees.—
(1) Applicability and determination of royalty fees for signals.—
(A) Initial fee.—The appropriate fee for purposes of determining the royalty fee
under subsection (b)(1)(B) for the secondary transmission of the primary transmissions of network stations and non-network stations shall be the appropriate fee set
forth in part 258 of title 37, Code of Federal Regulations, as in effect on July 1, 2009,
as modified under this paragraph.
(B) Fee set by voluntary negotiation.—On or before June 1, 2010, the Copyright
Royalty Judges shall cause to be published in the Federal Register of the initiation of
voluntary negotiation proceedings for the purpose of determining the royalty fee to
be paid by satellite carriers for the secondary transmission of the primary transmissions of network stations and non-network stations under subsection (b)(1)(B).
(C) Negotiations.—Satellite carriers, distributors, and copyright owners entitled to
royalty fees under this section shall negotiate in good faith in an effort to reach a
voluntary agreement or agreements for the payment of royalty fees. Any such satellite
carriers, distributors and copyright owners may at any time negotiate and agree to the
royalty fee, and may designate common agents to negotiate, agree to, or pay such
fees. If the parties fail to identify common agents, the Copyright Royalty Judges shall
do so, after requesting recommendations from the parties to the negotiation proceeding. The parties to each negotiation proceeding shall bear the cost thereof.
(D) Agreements binding on parties; filing of agreements; public notice.—
(i) Voluntary agreements; filing.—Voluntary agreements negotiated at any
time in accordance with this paragraph shall be binding upon all satellite carriers,
distributors, and copyright owners that are parties thereto. Copies of such agreements shall be filed with the Copyright Office within 30 days after execution in
accordance with regulations that the Register of Copyrights shall prescribe.
(ii) Procedure for adoption of fees.—
(I) Publication of notice.—Within 10 days after publication in the Federal
Register of a notice of the initiation of voluntary negotiation proceedings, parties
who have reached a voluntary agreement may request that the royalty fees in that
148

Copyright Act of 1976

§ 119.

agreement be applied to all satellite carriers, distributors, and copyright owners
without convening a proceeding under subparagraph (F).
(II) Public notice of fees.—Upon receiving a request under subclause (I), the
Copyright Royalty Judges shall immediately provide public notice of the royalty
fees from the voluntary agreement and afford parties an opportunity to state that
they object to those fees.
(III) Adoption of fees.—The Copyright Royalty Judges shall adopt the royalty
fees from the voluntary agreement for all satellite carriers, distributors, and copyright owners without convening the proceeding under subparagraph (F) unless
a party with an intent to participate in that proceeding and a significant interest
in the outcome of that proceeding objects under subclause (II).
(E) Period agreement is in effect.—The obligation to pay the royalty fees established under a voluntary agreement which has been filed with the Copyright Royalty
Judges in accordance with this paragraph shall become effective on the date specified
in the agreement, and shall remain in effect until December 31, 2014, or in accordance with the terms of the agreement, whichever is later.
(F) Fee set by Copyright Royalty Judges proceeding.—
(i) Notice of initiation of the proceeding.—On or before September 1, 2010,
the Copyright Royalty Judges shall cause notice to be published in the Federal
Register of the initiation of a proceeding for the purpose of determining the royalty
fees to be paid for the secondary transmission of the primary transmissions of network stations and non-network stations under subsection (b)(1)(B) by satellite carriers and distributors—
(I) in the absence of a voluntary agreement filed in accordance with subparagraph (D) that establishes royalty fees to be paid by all satellite carriers and distributors; or
(II) if an objection to the fees from a voluntary agreement submitted for adoption
by the Copyright Royalty Judges to apply to all satellite carriers, distributors, and
copyright owners is received under subparagraph (D) from a party with an intent
to participate in the proceeding and a significant interest in the outcome of that
proceeding. Such proceeding shall be conducted under chapter 8.
(ii) Establishment of royalty fees.—In determining royalty fees under this subparagraph, the Copyright Royalty Judges shall establish fees for the secondary transmissions of the primary transmissions of network stations and non-network stations
that most clearly represent the fair market value of secondary transmissions, except
that the Copyright Royalty Judges shall adjust royalty fees to account for the obligations of the parties under any applicable voluntary agreement filed with the Copyright Royalty Judges in accordance with subparagraph (D). In determining the fair
market value, the Judges shall base their decision on economic, competitive, and
programming information presented by the parties, including—
(I) the competitive environment in which such programming is distributed, the
cost of similar signals in similar private and compulsory license marketplaces,
and any special features and conditions of the retransmission marketplace;
(II) the economic impact of such fees on copyright owners and satellite carriers;
and
(III) the impact on the continued availability of secondary transmissions to the
public.
(iii) Effective date for decision of Copyright Royalty Judges.—The obligation to pay the royalty fees established under a determination that is made by the
149

§ 119.

Copyright Act of 1976

Copyright Royalty Judges in a proceeding under this paragraph shall be effective
as of January 1, 2010.
(iv) Persons subject to royalty fees.—The royalty fees referred to in clause (iii)
shall be binding on all satellite carriers, distributors and copyright owners, who are
not party to a voluntary agreement filed with the Copyright Office under subparagraph (D).
(2) Annual royalty fee adjustment.—Effective January 1 of each year, the royalty
fee payable under subsection (b)(1)(B) for the secondary transmission of the primary
transmissions of network stations and non-network stations shall be adjusted by the
Copyright Royalty Judges to reflect any changes occurring in the cost of living as determined by the most recent Consumer Price Index (for all consumers and for all items)
published by the Secretary of Labor before December 1 of the preceding year. Notification of the adjusted fees shall be published in the Federal Register at least 25 days
before January 1.
(d) Definitions.—As used in this section—
(1) Distributor.—The term “distributor” means an entity that contracts to distribute
secondary transmissions from a satellite carrier and, either as a single channel or in a
package with other programming, provides the secondary transmission either directly
to individual subscribers or indirectly through other program distribution entities in
accordance with the provisions of this section.
(2) Network station.—The term “network station” means—
(A) a television station licensed by the Federal Communications Commission, including any translator station or terrestrial satellite station that rebroadcasts all or
substantially all of the programming broadcast by a network station, that is owned
or operated by, or affiliated with, one or more of the television networks in the United
States that offer an interconnected program service on a regular basis for 15 or more
hours per week to at least 25 of its affiliated television licensees in 10 or more States;
or
(B) a noncommercial educational broadcast station (as defined in section 397 of
the Communications Act of 1934);
except that the term does not include the signal of the Alaska Rural Communications
Service, or any successor entity to that service.
(3) Primary network station.—The term “primary network station” means a network station that broadcasts or rebroadcasts the basic programming service of a particular national network.
(4) Primary transmission.—The term “primary transmission” has the meaning
given that term in section 111(f) of this title.
(5) Private home viewing.—The term “private home viewing” means the viewing,
for private use in a household by means of satellite reception equipment that is operated by an individual in that household and that serves only such household, of a secondary transmission delivered by a satellite carrier of a primary transmission of a
television station licensed by the Federal Communications Commission.
(6) Satellite carrier.—The term “satellite carrier” means an entity that uses the facilities of a satellite or satellite service licensed by the Federal Communications Commission and operates in the Fixed-Satellite Service under part 25 of title 47, Code of Federal
Regulations, or the Direct Broadcast Satellite Service under part 100 of title 47, Code
of Federal Regulations, to establish and operate a channel of communications for pointto-multipoint distribution of television station signals, and that owns or leases a capacity
or service on a satellite in order to provide such point-to-multipoint distribution, except
150

Copyright Act of 1976

§ 119.

to the extent that such entity provides such distribution pursuant to tariff under the Communications Act of 1934, other than for private home viewing pursuant to this section.
(7) Secondary transmission.—The term “secondary transmission” has the meaning
given that term in section 111(f) of this title.
(8) Subscriber; subscribe.—
(A) Subscriber.—The term “subscriber” means a person or entity that receives a
secondary transmission service from a satellite carrier and pays a fee for the service,
directly or indirectly, to the satellite carrier or to a distributor.
(B) Subscribe.—The term “subscribe” means to elect to become a subscriber.
(9) Non-network station.—The term “non-network station” means a television station, other than a network station, licensed by the Federal Communications Commission, that is secondarily transmitted by a satellite carrier.
(10) Unserved household.—The term “unserved household”, with respect to a particular television network, means a household that—
(A) cannot receive, through the use of an antenna, an over-the-air signal containing
the primary stream, or, on or after the qualifying date, the multicast stream, originating in that household’s local market and affiliated with that network of—
(i) if the signal originates as an analog signal, Grade B intensity as defined by
the Federal Communications Commission in section 73.683(a) of title 47, Code of
Federal Regulations, as in effect on January 1, 1999; or
(ii) if the signal originates as a digital signal, intensity defined in the values for the
digital television noise-limited service contour, as defined in regulations issued by
the Federal Communications Commission (section 73.622(e) of title 47, Code of
Federal Regulations), as such regulations may be amended from time to time;
(B) is subject to a waiver that meets the standards of subsection (a)(13), whether
or not the waiver was granted before the date of the enactment of the Satellite Television Extension and Localism Act of 2010;
(C) is a subscriber to whom subsection (e) applies;
(D) is a subscriber to whom subsection (a)(11) applies; or
(E) is a subscriber to whom the exemption under subsection (a)(2)(B)(iii) applies.
(11) Local market.—The term “local market” has the meaning given such term under section 122(j).
(12) Commercial establishment.—The term “commercial establishment”—
(A) means an establishment used for commercial purposes, such as a bar, restaurant, private office, fitness club, oil rig, retail store, bank or other financial institution,
supermarket, automobile or boat dealership, or any other establishment with a common business area; and
(B) does not include a multi-unit permanent or temporary dwelling where private
home viewing occurs, such as a hotel, dormitory, hospital, apartment, condominium,
or prison.
(13) Qualifying date.—The term “qualifying date”, for purposes of paragraph
(10)(A), means—
(A) October 1, 2010, for multicast streams that exist on March 31, 2010; and
(B) January 1, 2011, for all other multicast streams.
(14) Multicast stream.—The term “multicast stream” means a digital stream containing programming and program-related material affiliated with a television network, other than the primary stream.
(15) Primary stream.—The term “primary stream” means—
(A) the single digital stream of programming as to which a television broadcast
151

§ 119.

Copyright Act of 1976

station has the right to mandatory carriage with a satellite carrier under the rules of
the Federal Communications Commission in effect on July 1, 2009; or
(B) if there is no stream described in subparagraph (A), then either—
(i) the single digital stream of programming associated with the network last
transmitted by the station as an analog signal; or
(ii) if there is no stream described in clause (i), then the single digital stream of
programming affiliated with the network that, as of July 1, 2009, had been offered
by the television broadcast station for the longest period of time.
(e) Moratorium on Copyright Liability.—Until December 31, 2014, a subscriber
who does not receive a signal of Grade A intensity (as defined in the regulations of the
Federal Communications Commission under section 73.683(a) of title 47, Code of Federal Regulations, as in effect on January 1, 1999, or predicted by the Federal Communications Commission using the Individual Location Longley-Rice methodology described
by the Federal Communications Commission in Docket No. 98–201) of a local network
television broadcast station shall remain eligible to receive signals of network stations
affiliated with the same network, if that subscriber had satellite service of such network
signal terminated after July 11, 1998, and before October 31, 1999, as required by this
section, or received such service on October 31, 1999.
(f) Expedited Consideration by Justice Department of Voluntary Agreements to
Provide Satellite Secondary Transmissions to Local Markets.—
(1) In general.—In a case in which no satellite carrier makes available, to subscribers located in a local market, as defined in section 122(j)(2), the secondary transmission into that market of a primary transmission of one or more television
broadcast stations licensed by the Federal Communications Commission, and two or
more satellite carriers request a business review letter in accordance with section
50.6 of title 28, Code of Federal Regulations (as in effect on July 7, 2004), in order
to assess the legality under the antitrust laws of proposed business conduct to make
or carry out an agreement to provide such secondary transmission into such local
market, the appropriate official of the Department of Justice shall respond to the
request no later than 90 days after the date on which the request is received.
(2) Definition.—For purposes of this subsection, the term “antitrust laws”—
(A) has the meaning given that term in subsection (a) of the first section of the
Clayton Act (15 U.S.C. 12(a)), except that such term includes section 5 of the Federal
Trade Commission Act (15 U.S.C. 45) to the extent such section 5 applies to unfair
methods of competition; and
(B) includes any State law similar to the laws referred to in paragraph (1).
(g) Certain Waivers Granted to Providers of Local-into-local Service to All
DMAs.—
(1) Injunction waiver.—A court that issued an injunction pursuant to subsection
(a)(7)(B) before the date of the enactment of this subsection shall waive such injunction if the court recognizes the entity against which the injunction was issued as a
qualified carrier.
(2) Limited temporary waiver.—
(A) In general.—Upon a request made by a satellite carrier, a court that issued an
injunction against such carrier under subsection (a)(7)(B) before the date of the enactment of this subsection shall waive such injunction with respect to the statutory
license provided under subsection (a)(2) to the extent necessary to allow such carrier
to make secondary transmissions of primary transmissions made by a network station to unserved households located in short markets in which such carrier was not
152

Copyright Act of 1976

§ 119.

providing local service pursuant to the license under section 122 as of December 31,
2009.
(B) Expiration of temporary waiver.—A temporary waiver of an injunction under subparagraph (A) shall expire after the end of the 120-day period beginning on
the date such temporary waiver is issued unless extended for good cause by the court
making the temporary waiver.
(C) Failure to provide local-into-local service to all DMAs.—
(i) Failure to act reasonably and in good faith.—If the court issuing a temporary waiver under subparagraph (A) determines that the satellite carrier that made
the request for such waiver has failed to act reasonably or has failed to make a good
faith effort to provide local-into-local service to all DMAs, such failure—
(I) is actionable as an act of infringement under section 501 and the court may
in its discretion impose the remedies provided for in sections 502 through 506
and subsection (a)(6)(B) of this section; and
(II) shall result in the termination of the waiver issued under subparagraph (A).
(ii) Failure to provide local-into-local service.—If the court issuing a temporary waiver under subparagraph (A) determines that the satellite carrier that made
the request for such waiver has failed to provide local-into-local service to all
DMAs, but determines that the carrier acted reasonably and in good faith, the court
may in its discretion impose financial penalties that reflect—
(I) the degree of control the carrier had over the circumstances that resulted in
the failure;
(II) the quality of the carrier’s efforts to remedy the failure; and
(III) the severity and duration of any service interruption.
(D) Single temporary waiver available.—An entity may only receive one temporary waiver under this paragraph.
(E) Short market defined.—For purposes of this paragraph, the term “short market” means a local market in which programming of one or more of the four most
widely viewed television networks nationwide as measured on the date of the enactment of this subsection is not offered on the primary stream transmitted by any local
television broadcast station.
(3) Establishment of qualified carrier recognition.—
(A) Statement of eligibility.—An entity seeking to be recognized as a qualified
carrier under this subsection shall file a statement of eligibility with the court that
imposed the injunction. A statement of eligibility must include—
(i) an affidavit that the entity is providing local-into-local service to all DMAs;
(ii) a motion for a waiver of the injunction;
(iii) a motion that the court appoint a special master under Rule 53 of the Federal
Rules of Civil Procedure;
(iv) an agreement by the carrier to pay all expenses incurred by the special master under paragraph (4)(B)(ii); and
(v) a certification issued pursuant to section 342(a) of Communications Act of
1934.
(B) Grant of recognition as a qualified carrier.—Upon receipt of a statement of
eligibility, the court shall recognize the entity as a qualified carrier and issue the
waiver under paragraph (1). Upon motion pursuant to subparagraph (A)(iii), the
court shall appoint a special master to conduct the examination and provide a report
to the court as provided in paragraph (4)(B).
(C) Voluntary termination.—At any time, an entity recognized as a qualified
153

§ 119.

Copyright Act of 1976

carrier may file a statement of voluntary termination with the court certifying that it
no longer wishes to be recognized as a qualified carrier. Upon receipt of such statement, the court shall reinstate the injunction waived under paragraph (1).
(D) Loss of recognition prevents future recognition.—No entity may be recognized as a qualified carrier if such entity had previously been recognized as a qualified carrier and subsequently lost such recognition or voluntarily terminated such
recognition under subparagraph (C).
(4) Qualified carrier obligations and compliance.—
(A) Continuing obligations.—
(i) In general.—An entity recognized as a qualified carrier shall continue to
provide local-into-local service to all DMAs.
(ii) Cooperation with compliance examination.—An entity recognized as a
qualified carrier shall fully cooperate with the special master appointed by the
court under paragraph (3)(B) in an examination set forth in subparagraph (B).
(B) Qualified carrier compliance examination.—
(i) Examination and report.—A special master appointed by the court under
paragraph (3)(B) shall conduct an examination of, and file a report on, the qualified
carrier’s compliance with the royalty payment and household eligibility requirements of the license under this section. The report shall address the qualified carrier’s conduct during the period beginning on the date on which the qualified
carrier is recognized as such under paragraph (3)(B) and ending on April 30, 2012.
(ii) Records of qualified carrier.—Beginning on the date that is one year after
the date on which the qualified carrier is recognized as such under paragraph
(3)(B), but not later than December 1, 2011, the qualified carrier shall provide the
special master with all records that the special master considers to be directly pertinent to the following requirements under this section:
(I) Proper calculation and payment of royalties under the statutory license under this section.
(II) Provision of service under this license to eligible subscribers only.
(iii) Submission of report.—The special master shall file the report required by
clause (i) not later than July 24, 2012, with the court referred to in paragraph (1)
that issued the injunction, and the court shall transmit a copy of the report to the
Register of Copyrights, the Committees on the Judiciary and on Energy and Commerce of the House of Representatives, and the Committees on the Judiciary and
on Commerce, Science, and Transportation of the Senate.
(iv) Evidence of infringement.—The special master shall include in the report
a statement of whether the examination by the special master indicated that there
is substantial evidence that a copyright holder could bring a successful action under this section against the qualified carrier for infringement.
(v) Subsequent examination.—If the special master’s report includes a statement that its examination indicated the existence of substantial evidence that a copyright holder could bring a successful action under this section against the qualified
carrier for infringement, the special master shall, not later than 6 months after the
report under clause (i) is filed, initiate another examination of the qualified carrier’s
compliance with the royalty payment and household eligibility requirements of the
license under this section since the last report was filed under clause (iii). The special master shall file a report on the results of the examination conducted under this
clause with the court referred to in paragraph (1) that issued the injunction, and the
court shall transmit a copy to the Register of Copyrights, the Committees on the
154

Copyright Act of 1976

§ 119.

Judiciary and on Energy and Commerce of the House of Representatives, and the
Committees on the Judiciary and on Commerce, Science, and Transportation of the
Senate. The report shall include a statement described in clause (iv).
(vi) Compliance.—Upon motion filed by an aggrieved copyright owner, the
court recognizing an entity as a qualified carrier shall terminate such designation
upon finding that the entity has failed to cooperate with an examination required
by this subparagraph.
(vii) Oversight.—During the period of time that the special master is conducting
an examination under this subparagraph, the Comptroller General shall monitor
the degree to which the entity seeking to be recognized or recognized as a qualified
carrier under paragraph (3) is complying with the special master’s examination.
The qualified carrier shall make available to the Comptroller General all records
and individuals that the Comptroller General considers necessary to meet the
Comptroller General’s obligations under this clause. The Comptroller General
shall report the results of the monitoring required by this clause to the Committees
on the Judiciary and on Energy and Commerce of the House of Representatives
and the Committees on the Judiciary and on Commerce, Science, and Transportation of the Senate at intervals of not less than six months during such period.
(C) Affirmation.—A qualified carrier shall file an affidavit with the district court
and the Register of Copyrights 30 months after such status was granted stating that,
to the best of the affiant’s knowledge, it is in compliance with the requirements for
a qualified carrier. The qualified carrier shall attach to its affidavit copies of all reports or orders issued by the court, the special master, and the Comptroller General.
(D) Compliance determination.—Upon the motion of an aggrieved television
broadcast station, the court recognizing an entity as a qualified carrier may make a
determination of whether the entity is providing local-into-local service to all DMAs.
(E) Pleading requirement.—In any motion brought under subparagraph (D), the
party making such motion shall specify one or more designated market areas (as such
term is defined in section 122(j)(2)(C)) for which the failure to provide service is
being alleged, and, for each such designated market area, shall plead with particularity the circumstances of the alleged failure.
(F) Burden of proof.—In any proceeding to make a determination under subparagraph (D), and with respect to a designated market area for which failure to provide
service is alleged, the entity recognized as a qualified carrier shall have the burden
of proving that the entity provided local-into-local service with a good quality satellite signal to at least 90 percent of the households in such designated market area
(based on the most recent census data released by the United States Census Bureau)
at the time and place alleged.
(5) Failure to provide service.—
(A) Penalties.—If the court recognizing an entity as a qualified carrier finds that
such entity has willfully failed to provide local-into-local service to all DMAs, such
finding shall result in the loss of recognition of the entity as a qualified carrier and
the termination of the waiver provided under paragraph (1), and the court may, in its
discretion—
(i) treat such failure as an act of infringement under section 501, and subject
such infringement to the remedies provided for in sections 502 through 506 and
subsection (a)(6)(B) of this section; and
(ii) impose a fine of not less than $250,000 and not more than $5,000,000.
(B) Exception for nonwillful violation.—If the court determines that the failure
155

§ 120.

Copyright Act of 1976

to provide local-into-local service to all DMAs is nonwillful, the court may in its
discretion impose financial penalties for noncompliance that reflect—
(i) the degree of control the entity had over the circumstances that resulted in the
failure;
(ii) the quality of the entity’s efforts to remedy the failure and restore service;
and
(iii) the severity and duration of any service interruption.
(6) Penalties for violations of license.—A court that finds, under subsection
(a)(6)(A), that an entity recognized as a qualified carrier has willfully made a secondary transmission of a primary transmission made by a network station and embodying
a performance or display of a work to a subscriber who is not eligible to receive the
transmission under this section shall reinstate the injunction waived under paragraph
(1), and the court may order statutory damages of not more than $2,500,000.
(7) Local-into-local service to all DMAs defined.—For purposes of this subsection:
(A) In general.—An entity provides “local-into-local service to all DMAs” if the
entity provides local service in all designated market areas (as such term is defined
in section 122(j)(2)(C)) pursuant to the license under section 122.
(B) Household coverage.—For purposes of subparagraph (A), an entity that
makes available local-into-local service with a good quality satellite signal to at least
90 percent of the households in a designated market area based on the most recent
census data released by the United States Census Bureau shall be considered to be
providing local service to such designated market area.
(C) Good quality satellite signal defined.—The term “good quality satellite signal” has the meaning given such term under section 342(e)(2) of Communications
Act of 1934.
§ 120.—Scope of exclusive rights in architectural works
(a) Pictorial Representations Permitted.—The copyright in an architectural work
that has been constructed does not include the right to prevent the making, distributing,
or public display of pictures, paintings, photographs, or other pictorial representations of
the work, if the building in which the work is embodied is located in or ordinarily visible
from a public place.
(b) Alterations to and Destruction of Buildings.—Notwithstanding the provisions of
section 106(2), the owners of a building embodying an architectural work may, without
the consent of the author or copyright owner of the architectural work, make or authorize
the making of alterations to such building, and destroy or authorize the destruction of
such building.
§ 121.—Limitations on exclusive rights: Reproduction for blind or other people
with disabilities
(a) Notwithstanding the provisions of section 106, it is not an infringement of copyright for an authorized entity to reproduce or to distribute copies or phonorecords of a
previously published, nondramatic literary work if such copies or phonorecords are reproduced or distributed in specialized formats exclusively for use by blind or other persons with disabilities.
(b)(1) Copies or phonorecords to which this section applies shall—
(A) not be reproduced or distributed in a format other than a specialized format
exclusively for use by blind or other persons with disabilities;
156

Copyright Act of 1976

§ 121A.

(B) bear a notice that any further reproduction or distribution in a format other than
a specialized format is an infringement; and
(C) include a copyright notice identifying the copyright owner and the date of the
original publication.
(2) The provisions of this subsection shall not apply to standardized, secure, or normreferenced tests and related testing material, or to computer programs, except the portions thereof that are in conventional human language (including descriptions of pictorial works) and displayed to users in the ordinary course of using the computer
programs.
(c) Notwithstanding the provisions of section 106, it is not an infringement of copyright for a publisher of print instructional materials for use in elementary or secondary
schools to create and distribute to the National Instructional Materials Access Center
copies of the electronic files described in sections 612(a)(23)(C), 613(a)(6), and section
674(e) of the Individuals with Disabilities Education Act that contain the contents of
print instructional materials using the National Instructional Material Accessibility
Standard (as defined in section 674(e)(3) of that Act), if—
(1) the inclusion of the contents of such print instructional materials is required by
any State educational agency or local educational agency;
(2) the publisher had the right to publish such print instructional materials in print
formats; and
(3) such copies are used solely for reproduction or distribution of the contents of
such print instructional materials in specialized formats.
(d) For purposes of this section, the term—
(1) “authorized entity” means a nonprofit organization or a governmental agency
that has a primary mission to provide specialized services relating to training, education, or adaptive reading or information access needs of blind or other persons with
disabilities;
(2) “blind or other persons with disabilities” means individuals who are eligible or
who may qualify in accordance with the Act entitled “An Act to provide books for the
adult blind”, approved March 3, 1931 (2 U.S.C. 135a; 46 Stat. 1487) to receive books
and other publications produced in specialized formats;
(3) “print instructional materials” has the meaning given under section 674(e)(3)(C)
of the Individuals with Disabilities Education Act; and
(4) “specialized formats” means—
(A) braille, audio, or digital text which is exclusively for use by blind or other
persons with disabilities; and
(B) with respect to print instructional materials, includes large print formats when
such materials are distributed exclusively for use by blind or other persons with disabilities.
§ 121A.—Limitations on exclusive rights: Reproduction for blind or other people
with disabilities in Marrakesh Treaty countries
(a) Notwithstanding the provisions of sections 106 and 602, it is not an infringement
of copyright for an authorized entity, acting pursuant to this section, to export copies or
phonorecords of a previously published literary work or of a previously published musical work that has been fixed in the form of text or notation in accessible formats to another country when the exportation is made either to—
(1) an authorized entity located in a country that is a Party to the Marrakesh Treaty; or
(2) an eligible person in a country that is a Party to the Marrakesh Treaty,
157

§ 122.

Copyright Act of 1976

if prior to the exportation of such copies or phonorecords, the authorized entity engaged
in the exportation did not know or have reasonable grounds to know that the copies or
phonorecords would be used other than by eligible persons.
(b) Notwithstanding the provisions of sections 106 and 602, it is not an infringement
of copyright for an authorized entity or an eligible person, or someone acting on behalf
of an eligible person, acting pursuant to this section, to import copies or phonorecords of
a previously published literary work or of a previously published musical work that has
been fixed in the form of text or notation in accessible formats.
(c) In conducting activities under subsection (a) or (b), an authorized entity shall establish and follow its own practices, in keeping with its particular circumstances, to—
(1) establish that the persons the authorized entity serves are eligible persons;
(2) limit to eligible persons and authorized entities the distribution of accessible format copies by the authorized entity;
(3) discourage the reproduction and distribution of unauthorized copies;
(4) maintain due care in, and records of, the handling of copies of works by the
authorized entity, while respecting the privacy of eligible persons on an equal basis
with others; and
(5) facilitate effective cross-border exchange of accessible format copies by making
publicly available—
(A) the titles of works for which the authorized entity has accessible format copies
or phonorecords and the specific accessible formats in which they are available; and
(B) information on the policies, practices, and authorized entity partners of the
authorized entity for the cross-border exchange of accessible format copies.
(d) Nothing in this section shall be construed to establish—
(1) a cause of action under this title; or
(2) a basis for regulation by any Federal agency.
(e) Nothing in this section shall be construed to limit the ability to engage in any activity otherwise permitted under this title.
(f) For purposes of this section—
(1) the terms ‘accessible format’, ‘authorized entity’, and ‘eligible person’ have the
meanings given those terms in section 121; and
(2) the term ‘Marrakesh Treaty’ means the Marrakesh Treaty to Facilitate Access to
Published Works by Visually Impaired Persons and Persons with Print Disabilities
concluded at Marrakesh, Morocco, on June 28, 2013.
§ 122.—Limitations on exclusive rights: Secondary transmissions of local
television programming by satellite
(a) Secondary Transmissions Into Local Markets.—
(1) Secondary transmissions of television broadcast stations within a local market.—A secondary transmission of a performance or display of a work embodied in a
primary transmission of a television broadcast station into the station’s local market
shall be subject to statutory licensing under this section if—
(A) the secondary transmission is made by a satellite carrier to the public;
(B) with regard to secondary transmissions, the satellite carrier is in compliance
with the rules, regulations, or authorizations of the Federal Communications Commission governing the carriage of television broadcast station signals; and
(C) the satellite carrier makes a direct or indirect charge for the secondary transmission to—
(i) each subscriber receiving the secondary transmission; or
158

Copyright Act of 1976

§ 122.

(ii) a distributor that has contracted with the satellite carrier for direct or indirect
delivery of the secondary transmission to the public.
(2) Significantly viewed stations.—
(A) In general.—A secondary transmission of a performance or display of a work
embodied in a primary transmission of a television broadcast station to subscribers
who receive secondary transmissions of primary transmissions under paragraph (1)
shall be subject to statutory licensing under this paragraph if the secondary transmission is of the primary transmission of a network station or a non-network station to
a subscriber who resides outside the station’s local market but within a community
in which the signal has been determined by the Federal Communications Commission to be significantly viewed in such community, pursuant to the rules, regulations,
and authorizations of the Federal Communications Commission in effect on April
15, 1976, applicable to determining with respect to a cable system whether signals
are significantly viewed in a community.
(B) Waiver.—A subscriber who is denied the secondary transmission of the primary transmission of a network station or a non-network station under subparagraph
(A) may request a waiver from such denial by submitting a request, through the subscriber’s satellite carrier, to the network station or non-network station in the local
market affiliated with the same network or non-network where the subscriber is located. The network station or non-network station shall accept or reject the subscriber’s request for a waiver within 30 days after receipt of the request. If the
network station or non-network station fails to accept or reject the subscriber’s request for a waiver within that 30-day period, that network station or non-network
station shall be deemed to agree to the waiver request.
(3) Secondary transmission of low power programming.—
(A) In general.—Subject to subparagraphs (B) and (C), a secondary transmission
of a performance or display of a work embodied in a primary transmission of a television broadcast station to subscribers who receive secondary transmissions of primary transmissions under paragraph (1) shall be subject to statutory licensing under
this paragraph if the secondary transmission is of the primary transmission of a television broadcast station that is licensed as a low power television station, to a subscriber who resides within the same designated market area as the station that
originates the transmission.
(B) No applicability to repeaters and translators.—Secondary transmissions
provided for in subparagraph (A) shall not apply to any low power television station
that retransmits the programs and signals of another television station for more than
2 hours each day.
(C) No impact on other secondary transmissions obligations.—A satellite carrier
that makes secondary transmissions of a primary transmission of a low power television station under a statutory license provided under this section is not required, by
reason of such secondary transmissions, to make any other secondary transmissions.
(4) Special exceptions.—A secondary transmission of a performance or display of
a work embodied in a primary transmission of a television broadcast station to subscribers who receive secondary transmissions of primary transmissions under paragraph (1) shall, if the secondary transmission is made by a satellite carrier that complies
with the requirements of paragraph (1), be subject to statutory licensing under this
paragraph as follows:
(A) States with single full-power network station.—In a State in which there is
licensed by the Federal Communications Commission a single full-power station that
159

§ 122.

Copyright Act of 1976

was a network station on January 1, 1995, the statutory license provided for in this
paragraph shall apply to the secondary transmission by a satellite carrier of the primary transmission of that station to any subscriber in a community that is located
within that State and that is not within the first 50 television markets as listed in the
regulations of the Commission as in effect on such date (47 C.F.R. 76.51).
(B) States with all network stations and non-network stations in same local
market.—In a State in which all network stations and non-network stations licensed
by the Federal Communications Commission within that State as of January 1, 1995,
are assigned to the same local market and that local market does not encompass all
counties of that State, the statutory license provided under this paragraph shall apply
to the secondary transmission by a satellite carrier of the primary transmissions of
such station to all subscribers in the State who reside in a local market that is within
the first 50 major television markets as listed in the regulations of the Commission
as in effect on such date (section 76.51 of title 47, Code of Federal Regulations).
(C) Additional stations.—In the case of that State in which are located 4 counties
that—
(i) on January 1, 2004, were in local markets principally comprised of counties
in another State, and
(ii) had a combined total of 41,340 television households, according to the U.S.
Television Household Estimates by Nielsen Media Research for 2004,
the statutory license provided under this paragraph shall apply to secondary transmissions by a satellite carrier to subscribers in any such county of the primary transmissions of any network station located in that State, if the satellite carrier was making
such secondary transmissions to any subscribers in that county on January 1, 2004.
(D) Certain additional stations.—If 2 adjacent counties in a single State are in a
local market comprised principally of counties located in another State, the statutory
license provided for in this paragraph shall apply to the secondary transmission by a
satellite carrier to subscribers in those 2 counties of the primary transmissions of any
network station located in the capital of the State in which such 2 counties are located, if—
(i) the 2 counties are located in a local market that is in the top 100 markets for
the year 2003 according to Nielsen Media Research; and
(ii) the total number of television households in the 2 counties combined did not
exceed 10,000 for the year 2003 according to Nielsen Media Research.
(E) Networks of noncommercial educational broadcast stations.—In the case
of a system of three or more noncommercial educational broadcast stations licensed
to a single State, public agency, or political, educational, or special purpose subdivision of a State, the statutory license provided for in this paragraph shall apply to the
secondary transmission of the primary transmission of such system to any subscriber
in any county or county equivalent within such State, if such subscriber is located in
a designated market area that is not otherwise eligible to receive the secondary transmission of the primary transmission of a noncommercial educational broadcast station located within the State pursuant to paragraph (1).
(5) Applicability of royalty rates and procedures.—The royalty rates and procedures under section 119(b) shall apply to the secondary transmissions to which the
statutory license under paragraph (4) applies.
(b) Reporting Requirements.—
(1) Initial lists.—A satellite carrier that makes secondary transmissions of a primary
transmission made by a network station under subsection (a) shall, within 90 days after
160

Copyright Act of 1976

§ 122.

commencing such secondary transmissions, submit to the network that owns or is affiliated with the network station—
(A) a list identifying (by name in alphabetical order and street address, including
county and 9-digit zip code) all subscribers to which the satellite carrier makes secondary transmissions of that primary transmission under subsection (a); and
(B) a separate list, aggregated by designated market area (by name and address,
including street or rural route number, city, State, and 9-digit zip code), which shall
indicate those subscribers being served pursuant to paragraph (2) of subsection (a).
(2) Subsequent lists.—After the list is submitted under paragraph (1), the satellite
carrier shall, on the 15th of each month, submit to the network—
(A) a list identifying (by name in alphabetical order and street address, including
county and 9-digit zip code) any subscribers who have been added or dropped as
subscribers since the last submission under this subsection; and
(B) a separate list, aggregated by designated market area (by name and street address, including street or rural route number, city, State, and 9-digit zip code), identifying those subscribers whose service pursuant to paragraph (2) of subsection (a)
has been added or dropped since the last submission under this subsection.
(3) Use of subscriber information.—Subscriber information submitted by a satellite carrier under this subsection may be used only for the purposes of monitoring compliance by the satellite carrier with this section.
(4) Requirements of networks.—The submission requirements of this subsection
shall apply to a satellite carrier only if the network to which the submissions are to be
made places on file with the Register of Copyrights a document identifying the name
and address of the person to whom such submissions are to be made. The Register of
Copyrights shall maintain for public inspection a file of all such documents.
(c) No Royalty Fee Required for Certain Secondary Transmissions.—A satellite
carrier whose secondary transmissions are subject to statutory licensing under paragraphs
(1), (2), and (3) of subsection (a) shall have no royalty obligation for such secondary
transmissions.
(d) Noncompliance With Reporting and Regulatory Requirements.—Notwithstanding subsection (a), the willful or repeated secondary transmission to the public by a
satellite carrier into the local market of a television broadcast station of a primary transmission embodying a performance or display of a work made by that television broadcast
station is actionable as an act of infringement under section 501, and is fully subject to
the remedies provided under sections 502 through 506, if the satellite carrier has not
complied with the reporting requirements of subsection (b) or with the rules, regulations,
and authorizations of the Federal Communications Commission concerning the carriage
of television broadcast signals.
(e) Willful Alterations.—Notwithstanding subsection (a), the secondary transmission
to the public by a satellite carrier into the local market of a television broadcast station
of a performance or display of a work embodied in a primary transmission made by that
television broadcast station is actionable as an act of infringement under section 501, and
is fully subject to the remedies provided by sections 502 through 506 and section 510, if
the content of the particular program in which the performance or display is embodied,
or any commercial advertising or station announcement transmitted by the primary transmitter during, or immediately before or after, the transmission of such program, is in any
way willfully altered by the satellite carrier through changes, deletions, or additions, or
is combined with programming from any other broadcast signal.
(f) Violation of Territorial Restrictions on Statutory License for Television
161

§ 122.

Copyright Act of 1976

Broadcast Stations.—
(1) Individual violations.—The willful or repeated secondary transmission to the
public by a satellite carrier of a primary transmission embodying a performance or
display of a work made by a television broadcast station to a subscriber who does not
reside in that station’s local market, and is not subject to statutory licensing under section 119, subject to statutory licensing by reason of paragraph (2)(A), (3), or (4) of
subsection (a), or subject to a private licensing agreement, is actionable as an act of
infringement under section 501 and is fully subject to the remedies provided by sections 502 through 506, except that—
(A) no damages shall be awarded for such act of infringement if the satellite carrier
took corrective action by promptly withdrawing service from the ineligible subscriber; and
(B) any statutory damages shall not exceed $250 for such subscriber for each
month during which the violation occurred.
(2) Pattern of violations.—If a satellite carrier engages in a willful or repeated pattern or practice of secondarily transmitting to the public a primary transmission embodying a performance or display of a work made by a television broadcast station to
subscribers who do not reside in that station’s local market, and are not subject to statutory licensing under section 119, subject to statutory licensing by reason of paragraph
(2)(A), (3), or (4) of subsection (a), or subject to a private licensing agreement, then in
addition to the remedies under paragraph (1)—
(A) if the pattern or practice has been carried out on a substantially nationwide
basis, the court—
(i) shall order a permanent injunction barring the secondary transmission by the
satellite carrier of the primary transmissions of that television broadcast station
(and if such television broadcast station is a network station, all other television
broadcast stations affiliated with such network); and
(ii) may order statutory damages not exceeding $2,500,000 for each 6-month
period during which the pattern or practice was carried out; and
(B) if the pattern or practice has been carried out on a local or regional basis with
respect to more than one television broadcast station, the court—
(i) shall order a permanent injunction barring the secondary transmission in that
locality or region by the satellite carrier of the primary transmissions of any television broadcast station; and
(ii) may order statutory damages not exceeding $2,500,000 for each 6-month
period during which the pattern or practice was carried out.
(g) Burden of Proof.—In any action brought under subsection (f), the satellite carrier
shall have the burden of proving that its secondary transmission of a primary transmission by a television broadcast station is made only to subscribers located within that
station’s local market or subscribers being served in compliance with section 119, paragraph (2)(A), (3), or (4) of subsection (a), or a private licensing agreement.
(h) Geographic Limitations on Secondary Transmissions.—The statutory license created by this section shall apply to secondary transmissions to locations in the United States.
(i) Exclusivity With Respect to Secondary Transmissions of Broadcast Stations
by Satellite to Members of the Public.—No provision of section 111 or any other law
(other than this section and section 119) shall be construed to contain any authorization,
exemption, or license through which secondary transmissions by satellite carriers of programming contained in a primary transmission made by a television broadcast station
may be made without obtaining the consent of the copyright owner.
162

Copyright Act of 1976

§ 122.

(j) Definitions.—In this section—
(1) Distributor.—The term “distributor” means an entity that contracts to distribute
secondary transmissions from a satellite carrier and, either as a single channel or in a
package with other programming, provides the secondary transmission either directly
to individual subscribers or indirectly through other program distribution entities.
(2) Local market.—
(A) In general.—The term “local market”, in the case of both commercial and
noncommercial television broadcast stations, means the designated market area in
which a station is located, and—
(i) in the case of a commercial television broadcast station, all commercial television broadcast stations licensed to a community within the same designated market area are within the same local market; and
(ii) in the case of a noncommercial educational television broadcast station, the
market includes any station that is licensed to a community within the same designated market area as the noncommercial educational television broadcast station.
(B) County of license.—In addition to the area described in subparagraph (A), a
station’s local market includes the county in which the station’s community of license is located.
(C) Designated market area.—For purposes of subparagraph (A), the term “designated market area” means a designated market area, as determined by Nielsen Media Research and published in the 1999–2000 Nielsen Station Index Directory and
Nielsen Station Index United States Television Household Estimates or any successor publication.
(D) Certain areas outside of any designated market area.—Any census area,
borough, or other area in the State of Alaska that is outside of a designated market
area, as determined by Nielsen Media Research, shall be deemed to be part of one of
the local markets in the State of Alaska. A satellite carrier may determine which local
market in the State of Alaska will be deemed to be the relevant local market in connection with each subscriber in such census area, borough, or other area.
(3) Low power television station.—The term “low power television station” means
a low power TV station as defined in section 74.701(f) of title 47, Code of Federal
Regulations, as in effect on June 1, 2004. For purposes of this paragraph, the term “low
power television station” includes a low power television station that has been accorded primary status as a Class A television licensee under section 73.6001(a) of title
47, Code of Federal Regulations.
(4) Network station; non-network station; satellite carrier; secondary transmission.—The terms “network station”, “non-network station”, “satellite carrier”, and
“secondary transmission” have the meanings given such terms under section 119(d).
(5) Noncommercial educational broadcast station.—The term “noncommercial
educational broadcast station” means a television broadcast station that is a noncommercial educational broadcast station as defined in section 397 of the Communications
Act of 1934, as in effect on the date of the enactment of the Satellite Television Extension and Localism Act of 2010.
(6) Subscriber.—The term “subscriber” means a person or entity that receives a
secondary transmission service from a satellite carrier and pays a fee for the service,
directly or indirectly, to the satellite carrier or to a distributor.
(7) Television broadcast station.—The term “television broadcast station”—
(A) means an over-the-air, commercial or noncommercial television broadcast station licensed by the Federal Communications Commission under subpart E of part
163

§ 201.

Copyright Act of 1976

73 of title 47, Code of Federal Regulations, except that such term does not include a
low-power or translator television station; and
(B) includes a television broadcast station licensed by an appropriate governmental
authority of Canada or Mexico if the station broadcasts primarily in the English language and is a network station as defined in section 119(d)(2)(A).
Chapter 2—Copyright Ownership and Transfer
§ 201.—Ownership of copyright
(a) Initial Ownership.—Copyright in a work protected under this title vests initially
in the author or authors of the work. The authors of a joint work are coowners of copyright in the work.
(b) Works Made for Hire.—In the case of a work made for hire, the employer or other
person for whom the work was prepared is considered the author for purposes of this
title, and, unless the parties have expressly agreed otherwise in a written instrument
signed by them, owns all of the rights comprised in the copyright.
(c) Contributions to Collective Works.—Copyright in each separate contribution to
a collective work is distinct from copyright in the collective work as a whole, and vests
initially in the author of the contribution. In the absence of an express transfer of the
copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and
any later collective work in the same series.
(d) Transfer of Ownership.—
(1) The ownership of a copyright may be transferred in whole or in part by any means
of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.
(2) Any of the exclusive rights comprised in a copyright, including any subdivision
of any of the rights specified by section 106, may be transferred as provided by clause
(1) and owned separately. The owner of any particular exclusive right is entitled, to
the extent of that right, to all of the protection and remedies accorded to the copyright
owner by this title.
(e) Involuntary Transfer.—When an individual author’s ownership of a copyright,
or of any of the exclusive rights under a copyright, has not previously been transferred
voluntarily by that individual author, no action by any governmental body or other official or organization purporting to seize, expropriate, transfer, or exercise rights of ownership with respect to the copyright, or any of the exclusive rights under a copyright,
shall be given effect under this title, except as provided under title 11.
§ 202.—Ownership of copyright as distinct from ownership of material object
Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct
from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is
first fixed, does not of itself convey any rights in the copyrighted work embodied in the
object; nor, in the absence of an agreement, does transfer of ownership of a copyright or
of any exclusive rights under a copyright convey property rights in any material object.

164

Copyright Act of 1976

§ 203.

§ 203.—Termination of transfers and licenses granted by the author
(a) Conditions for Termination.—In the case of any work other than a work made
for hire, the exclusive or nonexclusive grant of a transfer or license of copyright or of
any right under a copyright, executed by the author on or after January 1, 1978, otherwise
than by will, is subject to termination under the following conditions:
(1) In the case of a grant executed by one author, termination of the grant may be
effected by that author or, if the author is dead, by the person or persons who, under
clause (2) of this subsection, own and are entitled to exercise a total of more than onehalf of that author’s termination interest. In the case of a grant executed by two or more
authors of a joint work, termination of the grant may be effected by a majority of the
authors who executed it; if any of such authors is dead, the termination interest of any
such author may be exercised as a unit by the person or persons who, under clause (2)
of this subsection, own and are entitled to exercise a total of more than one-half of that
author’s interest.
(2) Where an author is dead, his or her termination interest is owned, and may be
exercised, as follows:
(A) The widow or widower owns the author’s entire termination interest unless
there are any surviving children or grandchildren of the author, in which case the
widow or widower owns one-half of the author’s interest.
(B) The author’s surviving children, and the surviving children of any dead child
of the author, own the author’s entire termination interest unless there is a widow or
widower, in which case the ownership of one-half of the author’s interest is divided
among them.
(C) The rights of the author’s children and grandchildren are in all cases divided
among them and exercised on a per stirpes basis according to the number of such
author’s children represented; the share of the children of a dead child in a termination interest can be exercised only by the action of a majority of them.
(D) In the event that the author’s widow or widower, children, and grandchildren
are not living, the author’s executor, administrator, personal representative, or trustee
shall own the author’s entire termination interest.
(3) Termination of the grant may be effected at any time during a period of five years
beginning at the end of thirty-five years from the date of execution of the grant; or, if
the grant covers the right of publication of the work, the period begins at the end of
thirty-five years from the date of publication of the work under the grant or at the end
of forty years from the date of execution of the grant, whichever term ends earlier.
(4) The termination shall be effected by serving an advance notice in writing, signed
by the number and proportion of owners of termination interests required under clauses
(1) and (2) of this subsection, or by their duly authorized agents, upon the grantee or
the grantee’s successor in title.
(A) The notice shall state the effective date of the termination, which shall fall
within the five-year period specified by clause (3) of this subsection, and the notice
shall be served not less than two or more than ten years before that date. A copy of
the notice shall be recorded in the Copyright Office before the effective date of termination, as a condition to its taking effect.
(B) The notice shall comply, in form, content, and manner of service, with requirements that the Register of Copyrights shall prescribe by regulation.
(5) Termination of the grant may be effected notwithstanding any agreement to the
contrary, including an agreement to make a will or to make any future grant.
(b) Effect of Termination.—Upon the effective date of termination, all rights under
165

§ 204.

Copyright Act of 1976

this title that were covered by the terminated grants revert to the author, authors, and
other persons owning termination interests under clauses (1) and (2) of subsection (a),
including those owners who did not join in signing the notice of termination under clause
(4) of subsection (a), but with the following limitations:
(1) A derivative work prepared under authority of the grant before its termination
may continue to be utilized under the terms of the grant after its termination, but this
privilege does not extend to the preparation after the termination of other derivative
works based upon the copyrighted work covered by the terminated grant.
(2) The future rights that will revert upon termination of the grant become vested on
the date the notice of termination has been served as provided by clause (4) of subsection (a). The rights vest in the author, authors, and other persons named in, and in the
proportionate shares provided by, clauses (1) and (2) of subsection (a).
(3) Subject to the provisions of clause (4) of this subsection, a further grant, or agreement to make a further grant, of any right covered by a terminated grant is valid only if
it is signed by the same number and proportion of the owners, in whom the right has
vested under clause (2) of this subsection, as are required to terminate the grant under
clauses (1) and (2) of subsection (a). Such further grant or agreement is effective with
respect to all of the persons in whom the right it covers has vested under clause (2) of
this subsection, including those who did not join in signing it. If any person dies after
rights under a terminated grant have vested in him or her, that person’s legal representatives, legatees, or heirs at law represent him or her for purposes of this clause.
(4) A further grant, or agreement to make a further grant, of any right covered by a
terminated grant is valid only if it is made after the effective date of the termination.
As an exception, however, an agreement for such a further grant may be made between
the persons provided by clause (3) of this subsection and the original grantee or such
grantee’s successor in title, after the notice of termination has been served as provided
by clause (4) of subsection (a).
(5) Termination of a grant under this section affects only those rights covered by the
grants that arise under this title, and in no way affects rights arising under any other
Federal, State, or foreign laws.
(6) Unless and until termination is effected under this section, the grant, if it does not
provide otherwise, continues in effect for the term of copyright provided by this title.
§ 204.—Execution of transfers of copyright ownership
(a) A transfer of copyright ownership, other than by operation of law, is not valid unless
an instrument of conveyance, or a note or memorandum of the transfer, is in writing and
signed by the owner of the rights conveyed or such owner’s duly authorized agent.
(b) A certificate of acknowledgement is not required for the validity of a transfer, but
is prima facie evidence of the execution of the transfer if—
(1) in the case of a transfer executed in the United States, the certificate is issued by
a person authorized to administer oaths within the United States; or
(2) in the case of a transfer executed in a foreign country, the certificate is issued by
a diplomatic or consular officer of the United States, or by a person authorized to administer oaths whose authority is proved by a certificate of such an officer.
§ 205.—Recordation of transfers and other documents
(a) Conditions for Recordation.—Any transfer of copyright ownership or other document pertaining to a copyright may be recorded in the Copyright Office if the document
166

Copyright Act of 1976

§ 301.

filed for recordation bears the actual signature of the person who executed it, or if it is
accompanied by a sworn or official certification that it is a true copy of the original,
signed document. A sworn or official certification may be submitted to the Copyright
Office electronically, pursuant to regulations established by the Register of Copyrights.
(b) Certificate of Recordation.—The Register of Copyrights shall, upon receipt of a
document as provided by subsection (a) and of the fee provided by section 708, record
the document and return it with a certificate of recordation.
(c) Recordation as Constructive Notice.—Recordation of a document in the Copyright Office gives all persons constructive notice of the facts stated in the recorded document, but only if—
(1) the document, or material attached to it, specifically identifies the work to which it
pertains so that, after the document is indexed by the Register of Copyrights, it would be
revealed by a reasonable search under the title or registration number of the work; and
(2) registration has been made for the work.
(d) Priority Between Conflicting Transfers.—As between two conflicting transfers,
the one executed first prevails if it is recorded, in the manner required to give constructive
notice under subsection (c), within one month after its execution in the United States or
within two months after its execution outside the United States, or at any time before
recordation in such manner of the later transfer. Otherwise the later transfer prevails if
recorded first in such manner, and if taken in good faith, for valuable consideration or on
the basis of a binding promise to pay royalties, and without notice of the earlier transfer.
(e) Priority Between Conflicting Transfer of Ownership and Nonexclusive License.—A nonexclusive license, whether recorded or not, prevails over a conflicting transfer of copyright ownership if the license is evidenced by a written instrument signed by the
owner of the rights licensed or such owner’s duly authorized agent, and if—
(1) the license was taken before execution of the transfer; or
(2) the license was taken in good faith before recordation of the transfer and without
notice of it.
Chapter 3—Duration of Copyright
§ 301.—Preemption with respect to other laws
(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any
of the exclusive rights within the general scope of copyright as specified by section 106
in works of authorship that are fixed in a tangible medium of expression and come within
the subject matter of copyright as specified by sections 102 and 103, whether created
before or after that date and whether published or unpublished, are governed exclusively
by this title. Thereafter, no person is entitled to any such right or equivalent right in any
such work under the common law or statutes of any State.
(b) Nothing in this title annuls or limits any rights or remedies under the common law
or statutes of any State with respect to—
(1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible
medium of expression; or
(2) any cause of action arising from undertakings commenced before January 1, 1978;
(3) activities violating legal or equitable rights that are not equivalent to any of the
exclusive rights within the general scope of copyright as specified by section 106; or
(4) State and local landmarks, historic preservation, zoning, or building codes, relating
167

§ 302.

Copyright Act of 1976

to architectural works protected under section 102(a)(8).
(c) Notwithstanding the provisions of section 303, and in accordance with chapter 14,
no sound recording fixed before February 15, 1972, shall be subject to copyright under
this title. With respect to sound recordings fixed before February 15, 1972, the preemptive provisions of subsection (a) shall apply to activities that are commenced on and after
the date of enactment of the Classics Protection and Access Act. Nothing in this subsection may be construed to affirm or negate the preemption of rights and remedies pertaining to any cause of action arising from the nonsubscription broadcast transmission of
sound recordings under the common law or statutes of any State for activities that do not
qualify as covered activities under chapter 14 undertaken during the period between the
date of enactment of the Classics Protection and Access Act and the date on which the
term of prohibition on unauthorized acts under section 1401(a)(2) expires for such sound
recordings. Any potential preemption of rights and remedies related to such activities
undertaken during that period shall apply in all respects as it did the day before the date
of enactment of the Classics Protection and Access Act.
(d) Nothing in this title annuls or limits any rights or remedies under any other Federal
statute.
(e) The scope of Federal preemption under this section is not affected by the adherence
of the United States to the Berne Convention or the satisfaction of obligations of the
United States thereunder.
(f)(1) On or after the effective date set forth in section 610(a) of the Visual Artists
Rights Act of 1990, all legal or equitable rights that are equivalent to any of the rights
conferred by section 106A with respect to works of visual art to which the rights conferred by section 106A apply are governed exclusively by section 106A and section
113(d) and the provisions of this title relating to such sections. Thereafter, no person is
entitled to any such right or equivalent right in any work of visual art under the common
law or statutes of any State.
(2) Nothing in paragraph (1) annuls or limits any rights or remedies under the common law or statutes of any State with respect to—
(A) any cause of action from undertakings commenced before the effective date
set forth in section 610(a) of the Visual Artists Rights Act of 1990;
(B) activities violating legal or equitable rights that are not equivalent to any of the
rights conferred by section 106A with respect to works of visual art; or
(C) activities violating legal or equitable rights which extend beyond the life of the
author.
§ 302.—Duration of copyright: Works created on or after January 1, 1978
(a) In General.—Copyright in a work created on or after January 1, 1978, subsists
from its creation and, except as provided by the following subsections, endures for a term
consisting of the life of the author and 70 years after the author’s death.
(b) Joint Works.—In the case of a joint work prepared by two or more authors who
did not work for hire, the copyright endures for a term consisting of the life of the last
surviving author and 70 years after such last surviving author’s death.
(c) Anonymous Works, Pseudonymous Works, and Works Made for Hire.—In
the case of an anonymous work, a pseudonymous work, or a work made for hire, the
copyright endures for a term of 95 years from the year of its first publication, or a term
of 120 years from the year of its creation, whichever expires first. If, before the end of
such term, the identity of one or more of the authors of an anonymous or pseudonymous
work is revealed in the records of a registration made for that work under subsections (a)
168

Copyright Act of 1976

§ 304.

or (d) of section 408, or in the records provided by this subsection, the copyright in the
work endures for the term specified by subsection (a) or (b), based on the life of the
author or authors whose identity has been revealed. Any person having an interest in the
copyright in an anonymous or pseudonymous work may at any time record, in records
to be maintained by the Copyright Office for that purpose, a statement identifying one or
more authors of the work; the statement shall also identify the person filing it, the nature
of that person’s interest, the source of the information recorded, and the particular work
affected, and shall comply in form and content with requirements that the Register of
Copyrights shall prescribe by regulation.
(d) Records Relating to Death of Authors.—Any person having an interest in a copyright may at any time record in the Copyright Office a statement of the date of death of
the author of the copyrighted work, or a statement that the author is still living on a
particular date. The statement shall identify the person filing it, the nature of that person’s
interest, and the source of the information recorded, and shall comply in form and content
with requirements that the Register of Copyrights shall prescribe by regulation. The Register shall maintain current records of information relating to the death of authors of copyrighted works, based on such recorded statements and, to the extent the Register
considers practicable, on data contained in any of the records of the Copyright Office or
in other reference sources.
(e) Presumption as to Author’s Death.—After a period of 95 years from the year of
first publication of a work, or a period of 120 years from the year of its creation, whichever
expires first, any person who obtains from the Copyright Office a certified report that the
records provided by subsection (d) disclose nothing to indicate that the author of the work
is living, or died less than 70 years before, is entitled to the benefits of a presumption that
the author has been dead for at least 70 years. Reliance in good faith upon this presumption
shall be a complete defense to any action for infringement under this title.
§ 303.—Duration of copyright: Works created but not published or copyrighted
before January 1, 1978
(a) Copyright in a work created before January 1, 1978, but not theretofore in the public
domain or copyrighted, subsists from January 1, 1978, and endures for the term provided
by section 302. In no case, however, shall the term of copyright in such a work expire
before December 31, 2002; and, if the work is published on or before December 31,
2002, the term of copyright shall not expire before December 31, 2047.
(b) The distribution before January 1, 1978, of a phonorecord shall not for any purpose
constitute a publication of any musical work, dramatic work, or literary work embodied
therein.
§ 304.—Duration of copyright: Subsisting copyrights
(a) Copyrights in Their First Term on January 1, 1978.—
(1)(A) Any copyright, the first term of which is subsisting on January 1, 1978, shall
endure for 28 years from the date it was originally secured.
(B) In the case of—
(i) any posthumous work or of any periodical, cyclopedic, or other composite work
upon which the copyright was originally secured by the proprietor thereof, or
(ii) any work copyrighted by a corporate body (otherwise than as assignee or
licensee of the individual author) or by an employer for whom such work is made
for hire,
169

§ 304.

Copyright Act of 1976

the proprietor of such copyright shall be entitled to a renewal and extension of the
copyright in such work for the further term of 67 years.
(C) In the case of any other copyrighted work, including a contribution by an individual author to a periodical or to a cyclopedic or other composite work—
(i) the author of such work, if the author is still living,
(ii) the widow, widower, or children of the author, if the author is not living,
(iii) the author’s executors, if such author, widow, widower, or children are not
living, or
(iv) the author’s next of kin, in the absence of a will of the author,
shall be entitled to a renewal and extension of the copyright in such work for a further
term of 67 years.
(2)(A) At the expiration of the original term of copyright in a work specified in paragraph (1)(B) of this subsection, the copyright shall endure for a renewed and extended
further term of 67 years, which—
(i) if an application to register a claim to such further term has been made to the
Copyright Office within 1 year before the expiration of the original term of copyright, and the claim is registered, shall vest, upon the beginning of such further
term, in the proprietor of the copyright who is entitled to claim the renewal of
copyright at the time the application is made; or
(ii) if no such application is made or the claim pursuant to such application is
not registered, shall vest, upon the beginning of such further term, in the person or
entity that was the proprietor of the copyright as of the last day of the original term
of copyright.
(B) At the expiration of the original term of copyright in a work specified in paragraph (1)(C) of this subsection, the copyright shall endure for a renewed and extended further term of 67 years, which—
(i) if an application to register a claim to such further term has been made to the
Copyright Office within 1 year before the expiration of the original term of copyright, and the claim is registered, shall vest, upon the beginning of such further
term, in any person who is entitled under paragraph (1)(C) to the renewal and extension of the copyright at the time the application is made; or
(ii) if no such application is made or the claim pursuant to such application is
not registered, shall vest, upon the beginning of such further term, in any person
entitled under paragraph (1)(C), as of the last day of the original term of copyright,
to the renewal and extension of the copyright.
(3)(A) An application to register a claim to the renewed and extended term of copyright in a work may be made to the Copyright Office—
(i) within 1 year before the expiration of the original term of copyright by any
person entitled under paragraph (1)(B) or (C) to such further term of 67 years; and
(ii) at any time during the renewed and extended term by any person in whom
such further term vested, under paragraph (2)(A) or (B), or by any successor or
assign of such person, if the application is made in the name of such person.
(B) Such an application is not a condition of the renewal and extension of the copyright in a work for a further term of 67 years.
(4)(A) If an application to register a claim to the renewed and extended term of copyright in a work is not made within 1 year before the expiration of the original term of
copyright in a work, or if the claim pursuant to such application is not registered, then a
derivative work prepared under authority of a grant of a transfer or license of the copyright that is made before the expiration of the original term of copyright may continue to
170

Copyright Act of 1976

§ 304.

be used under the terms of the grant during the renewed and extended term of copyright
without infringing the copyright, except that such use does not extend to the preparation
during such renewed and extended term of other derivative works based upon the copyrighted work covered by such grant.
(B) If an application to register a claim to the renewed and extended term of copyright in a work is made within 1 year before its expiration, and the claim is registered, the certificate of such registration shall constitute prima facie evidence as to
the validity of the copyright during its renewed and extended term and of the facts
stated in the certificate. The evidentiary weight to be accorded the certificates of a
registration of a renewed and extended term of copyright made after the end of that
1-year period shall be within the discretion of the court.
(b) Copyrights in Their Renewal Term at the Time of the Effective Date of the
Sonny Bono Copyright Term Extension Act.—Any copyright still in its renewal term
at the time that the Sonny Bono Copyright Term Extension Act becomes effective shall
have a copyright term of 95 years from the date copyright was originally secured.
(c) Termination of Transfers and Licenses Covering Extended Renewal Term.—
In the case of any copyright subsisting in either its first or renewal term on January 1,
1978, other than a copyright in a work made for hire, the exclusive or nonexclusive grant
of a transfer or license of the renewal copyright or any right under it, executed before
January 1, 1978, by any of the persons designated by subsection (a)(1)(C) of this section,
otherwise than by will, is subject to termination under the following conditions:
(1) In the case of a grant executed by a person or persons other than the author, termination of the grant may be effected by the surviving person or persons who executed it.
In the case of a grant executed by one or more of the authors of the work, termination of
the grant may be effected, to the extent of a particular author’s share in the ownership of
the renewal copyright, by the author who executed it or, if such author is dead, by the
person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author’s termination interest.
(2) Where an author is dead, his or her termination interest is owned, and may be
exercised, as follows:
(A) The widow or widower owns the author’s entire termination interest unless
there are any surviving children or grandchildren of the author, in which case the
widow or widower owns one-half of the author’s interest.
(B) The author’s surviving children, and the surviving children of any dead child
of the author, own the author’s entire termination interest unless there is a widow or
widower, in which case the ownership of one-half of the author’s interest is divided
among them.
(C) The rights of the author’s children and grandchildren are in all cases divided
among them and exercised on a per stirpes basis according to the number of such
author’s children represented; the share of the children of a dead child in a termination interest can be exercised only by the action of a majority of them.
(D) In the event that the author’s widow or widower, children, and grandchildren
are not living, the author’s executor, administrator, personal representative, or trustee
shall own the author’s entire termination interest.
(3) Termination of the grant may be effected at any time during a period of five years
beginning at the end of fifty-six years from the date copyright was originally secured,
or beginning on January 1, 1978, whichever is later.
(4) The termination shall be effected by serving an advance notice in writing upon
the grantee or the grantee’s successor in title. In the case of a grant executed by a
171

§ 304.

Copyright Act of 1976

person or persons other than the author, the notice shall be signed by all of those entitled to terminate the grant under clause (1) of this subsection, or by their duly authorized agents. In the case of a grant executed by one or more of the authors of the work,
the notice as to any one author’s share shall be signed by that author or his or her duly
authorized agent or, if that author is dead, by the number and proportion of the owners
of his or her termination interest required under clauses (1) and (2) of this subsection,
or by their duly authorized agents.
(A) The notice shall state the effective date of the termination, which shall fall
within the five-year period specified by clause (3) of this subsection, or, in the case
of a termination under subsection (d), within the five-year period specified by subsection (d)(2), and the notice shall be served not less than two or more than ten years
before that date. A copy of the notice shall be recorded in the Copyright Office before
the effective date of termination, as a condition to its taking effect.
(B) The notice shall comply, in form, content, and manner of service, with requirements that the Register of Copyrights shall prescribe by regulation.
(5) Termination of the grant may be effected notwithstanding any agreement to the
contrary, including an agreement to make a will or to make any future grant.
(6) In the case of a grant executed by a person or persons other than the author, all
rights under this title that were covered by the terminated grant revert, upon the effective date of termination, to all of those entitled to terminate the grant under clause (1)
of this subsection. In the case of a grant executed by one or more of the authors of the
work, all of a particular author’s rights under this title that were covered by the terminated grant revert, upon the effective date of termination, to that author or, if that author
is dead, to the persons owning his or her termination interest under clause (2) of this
subsection, including those owners who did not join in signing the notice of termination under clause (4) of this subsection. In all cases the reversion of rights is subject to
the following limitations:
(A) A derivative work prepared under authority of the grant before its termination
may continue to be utilized under the terms of the grant after its termination, but this
privilege does not extend to the preparation after the termination of other derivative
works based upon the copyrighted work covered by the terminated grant.
(B) The future rights that will revert upon termination of the grant become vested
on the date the notice of termination has been served as provided by clause (4) of
this subsection.
(C) Where the author’s rights revert to two or more persons under clause (2) of
this subsection, they shall vest in those persons in the proportionate shares provided
by that clause. In such a case, and subject to the provisions of subclause (D) of this
clause, a further grant, or agreement to make a further grant, of a particular author’s
share with respect to any right covered by a terminated grant is valid only if it is
signed by the same number and proportion of the owners, in whom the right has
vested under this clause, as are required to terminate the grant under clause (2) of
this subsection. Such further grant or agreement is effective with respect to all of the
persons in whom the right it covers has vested under this subclause, including those
who did not join in signing it. If any person dies after rights under a terminated grant
have vested in him or her, that person’s legal representatives, legatees, or heirs at
law represent him or her for purposes of this subclause.
(D) A further grant, or agreement to make a further grant, of any right covered by a
terminated grant is valid only if it is made after the effective date of the termination.
As an exception, however, an agreement for such a further grant may be made between
172

Copyright Act of 1976

§ 401.

the author or any of the persons provided by the first sentence of clause (6) of this
subsection, or between the persons provided by subclause (C) of this clause, and the
original grantee or such grantee’s successor in title, after the notice of termination has
been served as provided by clause (4) of this subsection.
(E) Termination of a grant under this subsection affects only those rights covered
by the grant that arise under this title, and in no way affects rights arising under any
other Federal, State, or foreign laws.
(F) Unless and until termination is effected under this subsection, the grant, if it
does not provide otherwise, continues in effect for the remainder of the extended
renewal term.
(d) Termination Rights Provided in Subsection (c) Which Have Expired on or
Before the Effective Date of the Sonny Bono Copyright Term Extension Act.—In
the case of any copyright other than a work made for hire, subsisting in its renewal term
on the effective date of the Sonny Bono Copyright Term Extension Act for which the
termination right provided in subsection (c) has expired by such date, where the author
or owner of the termination right has not previously exercised such termination right, the
exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any
right under it, executed before January 1, 1978, by any of the persons designated in subsection (a)(1)(C) of this section, other than by will, is subject to termination under the
following conditions:
(1) The conditions specified in subsections (c)(1), (2), (4), (5), and (6) of this section
apply to terminations of the last 20 years of copyright term as provided by the amendments made by the Sonny Bono Copyright Term Extension Act.
(2) Termination of the grant may be effected at any time during a period of 5 years
beginning at the end of 75 years from the date copyright was originally secured.
§ 305.—Duration of copyright: Terminal date
All terms of copyright provided by sections 302 through 304 run to the end of the
calendar year in which they would otherwise expire.
Chapter 4—Copyright Notice, Deposit, and Registration
§ 401.—Notice of copyright: Visually perceptible copies
(a) General Provisions.—Whenever a work protected under this title is published in
the United States or elsewhere by authority of the copyright owner, a notice of copyright
as provided by this section may be placed on publicly distributed copies from which the
work can be visually perceived, either directly or with the aid of a machine or device.
(b) Form of Notice.—If a notice appears on the copies, it shall consist of the following
three elements:
(1) the symbol © (the letter C in a circle), or the word “Copyright”, or the abbreviation “Copr.”; and
(2) the year of first publication of the work; in the case of compilations, or derivative
works incorporating previously published material, the year date of first publication of
the compilation or derivative work is sufficient. The year date may be omitted where
a pictorial, graphic, or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any
useful articles; and
(3) the name of the owner of copyright in the work, or an abbreviation by which the
173

§ 402.

Copyright Act of 1976

name can be recognized, or a generally known alternative designation of the owner.
(c) Position of Notice.—The notice shall be affixed to the copies in such manner and
location as to give reasonable notice of the claim of copyright. The Register of Copyrights shall prescribe by regulation, as examples, specific methods of affixation and positions of the notice on various types of works that will satisfy this requirement, but these
specifications shall not be considered exhaustive.
(d) Evidentiary Weight of Notice.—If a notice of copyright in the form and position
specified by this section appears on the published copy or copies to which a defendant
in a copyright infringement suit had access, then no weight shall be given to such a defendant’s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages, except as provided in the last sentence of section 504(c)(2).
§ 402.—Notice of copyright: Phonorecords of sound recordings
(a) General Provisions.—Whenever a sound recording protected under this title is
published in the United States or elsewhere by authority of the copyright owner, a notice
of copyright as provided by this section may be placed on publicly distributed
phonorecords of the sound recording.
(b) Form of Notice.—If a notice appears on the phonorecords, it shall consist of the
following three elements:
(1) the symbol ℗ (the letter P in a circle); and
(2) the year of first publication of the sound recording; and
(3) the name of the owner of copyright in the sound recording, or an abbreviation by
which the name can be recognized, or a generally known alternative designation of the
owner; if the producer of the sound recording is named on the phonorecord labels or
containers, and if no other name appears in conjunction with the notice, the producer’s
name shall be considered a part of the notice.
(c) Position of Notice.—The notice shall be placed on the surface of the phonorecord,
or on the phonorecord label or container, in such manner and location as to give reasonable notice of the claim of copyright.
(d) Evidentiary Weight of Notice.—If a notice of copyright in the form and position
specified by this section appears on the published phonorecord or phonorecords to which
a defendant in a copyright infringement suit had access, then no weight shall be given to
such a defendant’s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages, except as provided in the last sentence of section
504(c)(2).
§ 403.—Notice of copyright: Publications incorporating United States
Government works
Sections 401(d) and 402(d) shall not apply to a work published in copies or
phonorecords consisting predominantly of one or more works of the United States Government unless the notice of copyright appearing on the published copies or
phonorecords to which a defendant in the copyright infringement suit had access includes
a statement identifying, either affirmatively or negatively, those portions of the copies or
phonorecords embodying any work or works protected under this title.
§ 404.—Notice of copyright: Contributions to collective works
(a) A separate contribution to a collective work may bear its own notice of copyright, as
provided by sections 401 through 403. However, a single notice applicable to the collective
174

Copyright Act of 1976

§ 406.

work as a whole is sufficient to invoke the provisions of section 401(d) or 402(d), as applicable with respect to the separate contributions it contains (not including advertisements
inserted on behalf of persons other than the owner of copyright in the collective work),
regardless of the ownership of copyright in the contributions and whether or not they have
been previously published.
(b) With respect to copies and phonorecords publicly distributed by authority of the
copyright owner before the effective date of the Berne Convention Implementation Act
of 1988, where the person named in a single notice applicable to a collective work as a
whole is not the owner of copyright in a separate contribution that does not bear its own
notice, the case is governed by the provisions of section 406(a).
§ 405.—Notice of copyright: Omission of notice on certain copies and
phonorecords
(a) Effect of Omission on Copyright.—With respect to copies and phonorecords publicly distributed by authority of the copyright owner before the effective date of the Berne
Convention Implementation Act of 1988, the omission of the copyright notice described
in sections 401 through 403 from copies or phonorecords publicly distributed by authority of the copyright owner does not invalidate the copyright in a work if—
(1) the notice has been omitted from no more than a relatively small number of copies or phonorecords distributed to the public; or
(2) registration for the work has been made before or is made within five years after
the publication without notice, and a reasonable effort is made to add notice to all
copies or phonorecords that are distributed to the public in the United States after the
omission has been discovered; or
(3) the notice has been omitted in violation of an express requirement in writing that,
as a condition of the copyright owner’s authorization of the public distribution of copies or phonorecords, they bear the prescribed notice.
(b) Effect of Omission on Innocent Infringers.—Any person who innocently infringes a copyright, in reliance upon an authorized copy or phonorecord from which the
copyright notice has been omitted and which was publicly distributed by authority of the
copyright owner before the effective date of the Berne Convention Implementation Act
of 1988, incurs no liability for actual or statutory damages under section 504 for any infringing acts committed before receiving actual notice that registration for the work has
been made under section 408, if such person proves that he or she was misled by the
omission of notice. In a suit for infringement in such a case the court may allow or disallow recovery of any of the infringer’s profits attributable to the infringement, and may
enjoin the continuation of the infringing undertaking or may require, as a condition for
permitting the continuation of the infringing undertaking, that the infringer pay the copyright owner a reasonable license fee in an amount and on terms fixed by the court.
(c) Removal of Notice.—Protection under this title is not affected by the removal,
destruction, or obliteration of the notice, without the authorization of the copyright
owner, from any publicly distributed copies or phonorecords.
§ 406.—Notice of copyright: Error in name or date on certain copies and
phonorecords
(a) Error in Name.—With respect to copies and phonorecords publicly distributed by
authority of the copyright owner before the effective date of the Berne Convention Implementation Act of 1988, where the person named in the copyright notice on copies or
175

§ 407.

Copyright Act of 1976

phonorecords publicly distributed by authority of the copyright owner is not the owner of
copyright, the validity and ownership of the copyright are not affected. In such a case, however, any person who innocently begins an undertaking that infringes the copyright has a
complete defense to any action for such infringement if such person proves that he or she
was misled by the notice and began the undertaking in good faith under a purported transfer
or license from the person named therein, unless before the undertaking was begun—
(1) registration for the work had been made in the name of the owner of copyright; or
(2) a document executed by the person named in the notice and showing the ownership of the copyright had been recorded.
The person named in the notice is liable to account to the copyright owner for all receipts
from transfers or licenses purportedly made under the copyright by the person named in
the notice.
(b) Error in Date.—When the year date in the notice on copies or phonorecords distributed before the effective date of the Berne Convention Implementation Act of 1988
by authority of the copyright owner is earlier than the year in which publication first
occurred, any period computed from the year of first publication under section 302 is to
be computed from the year in the notice. Where the year date is more than one year later
than the year in which publication first occurred, the work is considered to have been
published without any notice and is governed by the provisions of section 405.
(c) Omission of Name or Date.—Where copies or phonorecords publicly distributed
before the effective date of the Berne Convention Implementation Act of 1988 by authority of the copyright owner contain no name or no date that could reasonably be considered a part of the notice, the work is considered to have been published without any
notice and is governed by the provisions of section 405 as in effect on the day before the
effective date of the Berne Convention Implementation Act of 1988.
§ 407.—Deposit of copies or phonorecords for Library of Congress
(a) Except as provided by subsection (c), and subject to the provisions of subsection (e),
the owner of copyright or of the exclusive right of publication in a work published in the
United States shall deposit, within three months after the date of such publication—
(1) two complete copies of the best edition; or
(2) if the work is a sound recording, two complete phonorecords of the best edition,
together with any printed or other visually perceptible material published with such
phonorecords.
Neither the deposit requirements of this subsection nor the acquisition provisions of subsection (e) are conditions of copyright protection.
(b) The required copies or phonorecords shall be deposited in the Copyright Office for
the use or disposition of the Library of Congress. The Register of Copyrights shall, when
requested by the depositor and upon payment of the fee prescribed by section 708, issue
a receipt for the deposit.
(c) The Register of Copyrights may by regulation exempt any categories of material
from the deposit requirements of this section, or require deposit of only one copy or
phonorecord with respect to any categories. Such regulations shall provide either for
complete exemption from the deposit requirements of this section, or for alternative
forms of deposit aimed at providing a satisfactory archival record of a work without
imposing practical or financial hardships on the depositor, where the individual author is
the owner of copyright in a pictorial, graphic, or sculptural work and
(i) less than five copies of the work have been published, or
(ii) the work has been published in a limited edition consisting of numbered copies,
176

Copyright Act of 1976

§ 408.

the monetary value of which would make the mandatory deposit of two copies of the
best edition of the work burdensome, unfair, or unreasonable.
(d) At any time after publication of a work as provided by subsection (a), the Register
of Copyrights may make written demand for the required deposit on any of the persons
obligated to make the deposit under subsection (a). Unless deposit is made within three
months after the demand is received, the person or persons on whom the demand was
made are liable—
(1) to a fine of not more than $250 for each work; and
(2) to pay into a specially designated fund in the Library of Congress the total retail
price of the copies or phonorecords demanded, or, if no retail price has been fixed, the
reasonable cost to the Library of Congress of acquiring them; and
(3) to pay a fine of $2,500, in addition to any fine or liability imposed under clauses
(1) and (2), if such person willfully or repeatedly fails or refuses to comply with such a
demand.
(e) With respect to transmission programs that have been fixed and transmitted to the
public in the United States but have not been published, the Register of Copyrights shall,
after consulting with the Librarian of Congress and other interested organizations and officials, establish regulations governing the acquisition, through deposit or otherwise, of
copies or phonorecords of such programs for the collections of the Library of Congress.
(1) The Librarian of Congress shall be permitted, under the standards and conditions
set forth in such regulations, to make a fixation of a transmission program directly
from a transmission to the public, and to reproduce one copy or phonorecord from such
fixation for archival purposes.
(2) Such regulations shall also provide standards and procedures by which the Register of Copyrights may make written demand, upon the owner of the right of transmission
in the United States, for the deposit of a copy or phonorecord of a specific transmission
program. Such deposit may, at the option of the owner of the right of transmission in
the United States, be accomplished by gift, by loan for purposes of reproduction, or by
sale at a price not to exceed the cost of reproducing and supplying the copy or
phonorecord. The regulations established under this clause shall provide reasonable periods of not less than three months for compliance with a demand, and shall allow for
extensions of such periods and adjustments in the scope of the demand or the methods
for fulfilling it, as reasonably warranted by the circumstances. Willful failure or refusal
to comply with the conditions prescribed by such regulations shall subject the owner of
the right of transmission in the United States to liability for an amount, not to exceed
the cost of reproducing and supplying the copy or phonorecord in question, to be paid
into a specially designated fund in the Library of Congress.
(3) Nothing in this subsection shall be construed to require the making or retention,
for purposes of deposit, of any copy or phonorecord of an unpublished transmission
program, the transmission of which occurs before the receipt of a specific written demand as provided by clause (2).
(4) No activity undertaken in compliance with regulations prescribed under clauses
(1) or (2) of this subsection shall result in liability if intended solely to assist in the
acquisition of copies or phonorecords under this subsection.
§ 408.—Copyright registration in general
(a) Registration Permissive.—At any time during the subsistence of the first term of
copyright in any published or unpublished work in which the copyright was secured before January 1, 1978, and during the subsistence of any copyright secured on or after that
177

§ 408.

Copyright Act of 1976

date, the owner of copyright or of any exclusive right in the work may obtain registration
of the copyright claim by delivering to the Copyright Office the deposit specified by this
section, together with the application and fee specified by sections 409 and 708. Such
registration is not a condition of copyright protection.
(b) Deposit for Copyright Registration.—Except as provided by subsection (c), the
material deposited for registration shall include—
(1) in the case of an unpublished work, one complete copy or phonorecord;
(2) in the case of a published work, two complete copies or phonorecords of the best
edition;
(3) in the case of a work first published outside the United States, one complete copy
or phonorecord as so published;
(4) in the case of a contribution to a collective work, one complete copy or
phonorecord of the best edition of the collective work.
Copies or phonorecords deposited for the Library of Congress under section 407 may be
used to satisfy the deposit provisions of this section, if they are accompanied by the prescribed application and fee, and by any additional identifying material that the Register
may, by regulation, require. The Register shall also prescribe regulations establishing
requirements under which copies or phonorecords acquired for the Library of Congress
under subsection (e) of section 407, otherwise than by deposit, may be used to satisfy the
deposit provisions of this section.
(c) Administrative Classification and Optional Deposit.—
(1) The Register of Copyrights is authorized to specify by regulation the administrative
classes into which works are to be placed for purposes of deposit and registration, and
the nature of the copies or phonorecords to be deposited in the various classes specified.
The regulations may require or permit, for particular classes, the deposit of identifying
material instead of copies or phonorecords, the deposit of only one copy or phonorecord
where two would normally be required, or a single registration for a group of related
works. This administrative classification of works has no significance with respect to the
subject matter of copyright or the exclusive rights provided by this title.
(2) Without prejudice to the general authority provided under clause (1), the Register
of Copyrights shall establish regulations specifically permitting a single registration for
a group of works by the same individual author, all first published as contributions to
periodicals, including newspapers, within a twelve-month period, on the basis of a single
deposit, application, and registration fee, under the following conditions:
(A) if the deposit consists of one copy of the entire issue of the periodical, or of
the entire section in the case of a newspaper, in which each contribution was first
published; and
(B) if the application identifies each work separately, including the periodical containing it and its date of first publication.
(3) As an alternative to separate renewal registrations under subsection (a) of section
304, a single renewal registration may be made for a group of works by the same individual author, all first published as contributions to periodicals, including newspapers,
upon the filing of a single application and fee, under all of the following conditions:
(A) the renewal claimant or claimants, and the basis of claim or claims under section 304(a), is the same for each of the works; and
(B) the works were all copyrighted upon their first publication, either through separate copyright notice and registration or by virtue of a general copyright notice in
the periodical issue as a whole; and
(C) the renewal application and fee are received not more than twenty-eight or less
178

Copyright Act of 1976

§ 409.

than twenty-seven years after the thirty-first day of December of the calendar year
in which all of the works were first published; and
(D) the renewal application identifies each work separately, including the periodical containing it and its date of first publication.
(d) Corrections and Amplifications.—The Register may also establish, by regulation, formal procedures for the filing of an application for supplementary registration, to
correct an error in a copyright registration or to amplify the information given in a registration. Such application shall be accompanied by the fee provided by section 708, and
shall clearly identify the registration to be corrected or amplified. The information contained in a supplementary registration augments but does not supersede that contained in
the earlier registration.
(e) Published Edition of Previously Registered Work.—Registration for the first
published edition of a work previously registered in unpublished form may be made even
though the work as published is substantially the same as the unpublished version.
(f) Preregistration of Works Being Prepared for Commercial Distribution.—
(1) Rulemaking.—Not later than 180 days after the date of enactment of this subsection, the Register of Copyrights shall issue regulations to establish procedures for
preregistration of a work that is being prepared for commercial distribution and has
not been published.
(2) Class of works.—The regulations established under paragraph (1) shall permit
preregistration for any work that is in a class of works that the Register determines has
had a history of infringement prior to authorized commercial distribution.
(3) Application for registration.—Not later than 3 months after the first publication
of a work preregistered under this subsection, the applicant shall submit to the Copyright Office—
(A) an application for registration of the work;
(B) a deposit; and
(C) the applicable fee.
(4) Effect of untimely application.—An action under this chapter for infringement
of a work preregistered under this subsection, in a case in which the infringement commenced no later than 2 months after the first publication of the work, shall be dismissed
if the items described in paragraph (3) are not submitted to the Copyright Office in
proper form within the earlier of—
(A) 3 months after the first publication of the work; or
(B) 1 month after the copyright owner has learned of the infringement.
§ 409.—Application for copyright registration
The application for copyright registration shall be made on a form prescribed by the
Register of Copyrights and shall include—
(1) the name and address of the copyright claimant;
(2) in the case of a work other than an anonymous or pseudonymous work, the name
and nationality or domicile of the author or authors, and, if one or more of the authors
is dead, the dates of their deaths;
(3) if the work is anonymous or pseudonymous, the nationality or domicile of the
author or authors;
(4) in the case of a work made for hire, a statement to this effect;
(5) if the copyright claimant is not the author, a brief statement of how the claimant
obtained ownership of the copyright;
(6) the title of the work, together with any previous or alternative titles under which
179

§ 410.

Copyright Act of 1976

the work can be identified;
(7) the year in which creation of the work was completed;
(8) if the work has been published, the date and nation of its first publication;
(9) in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of
the additional material covered by the copyright claim being registered; and
(10) any other information regarded by the Register of Copyrights as bearing upon
the preparation or identification of the work or the existence, ownership, or duration
of the copyright.
If an application is submitted for the renewed and extended term provided for in section 304(a)(3)(A) and an original term registration has not been made, the Register may
request information with respect to the existence, ownership, or duration of the copyright
for the original term.
§ 410.—Registration of claim and issuance of certificate
(a) When, after examination, the Register of Copyrights determines that, in accordance
with the provisions of this title, the material deposited constitutes copyrightable subject
matter and that the other legal and formal requirements of this title have been met, the
Register shall register the claim and issue to the applicant a certificate of registration
under the seal of the Copyright Office. The certificate shall contain the information given
in the application, together with the number and effective date of the registration.
(b) In any case in which the Register of Copyrights determines that, in accordance with
the provisions of this title, the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason, the Register shall refuse
registration and shall notify the applicant in writing of the reasons for such refusal.
(c) In any judicial proceedings the certificate of a registration made before or within
five years after first publication of the work shall constitute prima facie evidence of the
validity of the copyright and of the facts stated in the certificate. The evidentiary weight
to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.
(d) The effective date of a copyright registration is the day on which an application,
deposit, and fee, which are later determined by the Register of Copyrights or by a court
of competent jurisdiction to be acceptable for registration, have all been received in the
Copyright Office.
§ 411.—Registration and civil infringement actions
(a) Except for an action brought for a violation of the rights of the author under section
106A (a), and subject to the provisions of subsection (b), no civil action for infringement
of the copyright in any United States work shall be instituted until preregistration or
registration of the copyright claim has been made in accordance with this title. In any
case, however, where the deposit, application, and fee required for registration have been
delivered to the Copyright Office in proper form and registration has been refused, the
applicant is entitled to institute a civil action for infringement if notice thereof, with a
copy of the complaint, is served on the Register of Copyrights. The Register may, at his
or her option, become a party to the action with respect to the issue of registrability of
the copyright claim by entering an appearance within sixty days after such service, but
the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.
180

Copyright Act of 1976

§ 501.

(b)(1) A certificate of registration satisfies the requirements of this section and section
412, regardless of whether the certificate contains any inaccurate information, unless—
(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and
(B) the inaccuracy of the information, if known, would have caused the Register
of Copyrights to refuse registration.
(2) In any case in which inaccurate information described under paragraph (1) is
alleged, the court shall request the Register of Copyrights to advise the court whether
the inaccurate information, if known, would have caused the Register of Copyrights to
refuse registration.
(3) Nothing in this subsection shall affect any rights, obligations, or requirements of
a person related to information contained in a registration certificate, except for the institution of and remedies in infringement actions under this section and section 412.
(c) In the case of a work consisting of sounds, images, or both, the first fixation of
which is made simultaneously with its transmission, the copyright owner may, either
before or after such fixation takes place, institute an action for infringement under section
501, fully subject to the remedies provided by sections 502 through 505 and section 510,
if, in accordance with requirements that the Register of Copyrights shall prescribe by
regulation, the copyright owner—
(1) serves notice upon the infringer, not less than 48 hours before such fixation, identifying the work and the specific time and source of its first transmission, and declaring
an intention to secure copyright in the work; and
(2) makes registration for the work, if required by subsection (a), within three months
after its first transmission.
§ 412.—Registration as prerequisite to certain remedies for infringement
In any action under this title, other than an action brought for a violation of the rights
of the author under section 106A(a), an action for infringement of the copyright of a
work that has been preregistered under section 408(f) before the commencement of the
infringement and that has an effective date of registration not later than the earlier of 3
months after the first publication of the work or 1 month after the copyright owner has
learned of the infringement, or an action instituted under section 411(c), no award of
statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be
made for—
(1) any infringement of copyright in an unpublished work commenced before the
effective date of its registration; or
(2) any infringement of copyright commenced after first publication of the work and
before the effective date of its registration, unless such registration is made within three
months after the first publication of the work.
Chapter 5—Copyright Infringement and Remedies
§ 501.—Infringement of copyright
(a) Anyone who violates any of the exclusive rights of the copyright owner as provided
by sections 106 through 122 or of the author as provided in section 106A(a), or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be. For purposes of this
chapter (other than section 506), any reference to copyright shall be deemed to include
181

§ 502.

Copyright Act of 1976

the rights conferred by section 106A(a). As used in this subsection, the term “anyone”
includes any State, any instrumentality of a State, and any officer or employee of a State
or instrumentality of a State acting in his or her official capacity. Any State, and any such
instrumentality, officer, or employee, shall be subject to the provisions of this title in the
same manner and to the same extent as any nongovernmental entity.
(b) The legal or beneficial owner of an exclusive right under a copyright is entitled,
subject to the requirements of section 411, to institute an action for any infringement of
that particular right committed while he or she is the owner of it. The court may require
such owner to serve written notice of the action with a copy of the complaint upon any
person shown, by the records of the Copyright Office or otherwise, to have or claim an
interest in the copyright, and shall require that such notice be served upon any person
whose interest is likely to be affected by a decision in the case. The court may require
the joinder, and shall permit the intervention, of any person having or claiming an interest
in the copyright.
(c) For any secondary transmission by a cable system that embodies a performance or
a display of a work which is actionable as an act of infringement under subsection (c) of
section 111, a television broadcast station holding a copyright or other license to transmit
or perform the same version of that work shall, for purposes of subsection (b) of this
section, be treated as a legal or beneficial owner if such secondary transmission occurs
within the local service area of that television station.
(d) For any secondary transmission by a cable system that is actionable as an act of
infringement pursuant to section 111(c)(3), the following shall also have standing to sue:
(i) the primary transmitter whose transmission has been altered by the cable system;
and
(ii) any broadcast station within whose local service area the secondary transmission
occurs.
(e) With respect to any secondary transmission that is made by a satellite carrier of a
performance or display of a work embodied in a primary transmission and is actionable
as an act of infringement under section 119(a)(5), a network station holding a copyright
or other license to transmit or perform the same version of that work shall, for purposes
of subsection (b) of this section, be treated as a legal or beneficial owner if such secondary transmission occurs within the local service area of that station.
(f)(1) With respect to any secondary transmission that is made by a satellite carrier of
a performance or display of a work embodied in a primary transmission and is actionable
as an act of infringement under section 122, a television broadcast station holding a copyright or other license to transmit or perform the same version of that work shall, for
purposes of subsection (b) of this section, be treated as a legal or beneficial owner if such
secondary transmission occurs within the local market of that station.
(2) A television broadcast station may file a civil action against any satellite carrier
that has refused to carry television broadcast signals, as required under section
122(a)(2), to enforce that television broadcast station’s rights under section 338(a)
of the Communications Act of 1934.
§ 502.—Remedies for infringement: Injunctions
(a) Any court having jurisdiction of a civil action arising under this title may, subject to
the provisions of section 1498 of title 28, grant temporary and final injunctions on such
terms as it may deem reasonable to prevent or restrain infringement of a copyright.
(b) Any such injunction may be served anywhere in the United States on the person
enjoined; it shall be operative throughout the United States and shall be enforceable, by
182

Copyright Act of 1976

§ 504.

proceedings in contempt or otherwise, by any United States court having jurisdiction of
that person. The clerk of the court granting the injunction shall, when requested by any
other court in which enforcement of the injunction is sought, transmit promptly to the
other court a certified copy of all the papers in the case on file in such clerk’s office.
§ 503.—Remedies for infringement: Impounding and disposition of infringing
articles
(a)(1) At any time while an action under this title is pending, the court may order the
impounding, on such terms as it may deem reasonable—
(A) of all copies or phonorecords claimed to have been made or used in violation
of the exclusive right of the copyright owner;
(B) of all plates, molds, matrices, masters, tapes, film negatives, or other articles
by means of which such copies or phonorecords may be reproduced; and
(C) of records documenting the manufacture, sale, or receipt of things involved in
any such violation, provided that any records seized under this subparagraph shall
be taken into the custody of the court.
(2) For impoundments of records ordered under paragraph (1)(C), the court shall
enter an appropriate protective order with respect to discovery and use of any records
or information that has been impounded. The protective order shall provide for appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in such records is not improperly disclosed or used.
(3) The relevant provisions of paragraphs (2) through (11) of section 34(d) of the
Trademark Act (15 U.S.C. 1116(d)(2) through (11)) shall extend to any impoundment
of records ordered under paragraph (1)(C) that is based upon an ex parte application,
notwithstanding the provisions of rule 65 of the Federal Rules of Civil Procedure. Any
references in paragraphs (2) through (11) of section 34(d) of the Trademark Act to section 32 of such Act shall be read as references to section 501 of this title, and references
to use of a counterfeit mark in connection with the sale, offering for sale, or distribution
of goods or services shall be read as references to infringement of a copyright.
(b) As part of a final judgment or decree, the court may order the destruction or other
reasonable disposition of all copies or phonorecords found to have been made or used in
violation of the copyright owner’s exclusive rights, and of all plates, molds, matrices,
masters, tapes, film negatives, or other articles by means of which such copies or
phonorecords may be reproduced.
§ 504.—Remedies for infringement: Damages and profits
(a) In General.—Except as otherwise provided by this title, an infringer of copyright
is liable for either—
(1) the copyright owner’s actual damages and any additional profits of the infringer,
as provided by subsection (b); or
(2) statutory damages, as provided by subsection (c).
(b) Actual Damages and Profits.—The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of
the infringer that are attributable to the infringement and are not taken into account in
computing the actual damages. In establishing the infringer’s profits, the copyright
owner is required to present proof only of the infringer’s gross revenue, and the infringer
is required to prove his or her deductible expenses and the elements of profit attributable
to factors other than the copyrighted work.
183

§ 505.

Copyright Act of 1976

(c) Statutory Damages.—
(1) Except as provided by clause (2) of this subsection, the copyright owner may
elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the
action, with respect to any one work, for which any one infringer is liable individually,
or for which any two or more infringers are liable jointly and severally, in a sum of not
less than $750 or more than $30,000 as the court considers just. For the purposes of
this subsection, all the parts of a compilation or derivative work constitute one work.
(2) In a case where the copyright owner sustains the burden of proving, and the court
finds, that infringement was committed willfully, the court in its discretion may increase
the award of statutory damages to a sum of not more than $150,000. In a case where the
infringer sustains the burden of proving, and the court finds, that such infringer was not
aware and had no reason to believe that his or her acts constituted an infringement of
copyright, the court in its discretion may reduce the award of statutory damages to a sum
of not less than $200. The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was:
(i) an employee or agent of a nonprofit educational institution, library, or archives
acting within the scope of his or her employment who, or such institution, library, or
archives itself, which infringed by reproducing the work in copies or phonorecords;
or
(ii) a public broadcasting entity which or a person who, as a regular part of the
nonprofit activities of a public broadcasting entity (as defined in section 118(f)) infringed by performing a published nondramatic literary work or by reproducing a
transmission program embodying a performance of such a work.
(3)(A) In a case of infringement, it shall be a rebuttable presumption that the infringement was committed willfully for purposes of determining relief if the violator, or a
person acting in concert with the violator, knowingly provided or knowingly caused to
be provided materially false contact information to a domain name registrar, domain
name registry, or other domain name registration authority in registering, maintaining,
or renewing a domain name used in connection with the infringement.
(B) Nothing in this paragraph limits what may be considered willful infringement
under this subsection.
(C) For purposes of this paragraph, the term “domain name” has the meaning given
that term in section 45 of the Act entitled “An Act to provide for the registration and
protection of trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes” approved July 5, 1946 (commonly
referred to as the “Trademark Act of 1946”; 15 U.S.C. 1127).
(d) Additional Damages in Certain Cases.—In any case in which the court finds that
a defendant proprietor of an establishment who claims as a defense that its activities were
exempt under section 110(5) did not have reasonable grounds to believe that its use of a
copyrighted work was exempt under such section, the plaintiff shall be entitled to, in addition to any award of damages under this section, an additional award of two times the
amount of the license fee that the proprietor of the establishment concerned should have
paid the plaintiff for such use during the preceding period of up to 3 years.
§ 505.—Remedies for infringement: Costs and attorney’s fees
In any civil action under this title, the court in its discretion may allow the recovery of
full costs by or against any party other than the United States or an officer thereof. Except
184

Copyright Act of 1976

§ 506.

as otherwise provided by this title, the court may also award a reasonable attorney’s fee
to the prevailing party as part of the costs.
§ 506.—Criminal offenses
(a) Criminal Infringement.—
(1) In general.—Any person who willfully infringes a copyright shall be punished
as provided under section 2319 of title 18, if the infringement was committed—
(A) for purposes of commercial advantage or private financial gain;
(B) by the reproduction or distribution, including by electronic means, during any
180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works,
which have a total retail value of more than $1,000; or
(C) by the distribution of a work being prepared for commercial distribution, by
making it available on a computer network accessible to members of the public, if
such person knew or should have known that the work was intended for commercial
distribution.
(2) Evidence.—For purposes of this subsection, evidence of reproduction or distribution of a copyrighted work, by itself, shall not be sufficient to establish willful infringement of a copyright.
(3) Definition.—In this subsection, the term “work being prepared for commercial
distribution” means—
(A) a computer program, a musical work, a motion picture or other audiovisual
work, or a sound recording, if, at the time of unauthorized distribution—
(i) the copyright owner has a reasonable expectation of commercial distribution;
and
(ii) the copies or phonorecords of the work have not been commercially distributed; or
(B) a motion picture, if, at the time of unauthorized distribution, the motion picture—
(i) has been made available for viewing in a motion picture exhibition facility;
and
(ii) has not been made available in copies for sale to the general public in the
United States in a format intended to permit viewing outside a motion picture exhibition facility.
(b) Forfeiture, Destruction, and Restitution.—Forfeiture, destruction, and restitution relating to this section shall be subject to section 2323 of title 18, to the extent provided in that section, in addition to any other similar remedies provided by law.
(c) Fraudulent Copyright Notice.—Any person who, with fraudulent intent, places
on any article a notice of copyright or words of the same purport that such person knows
to be false, or who, with fraudulent intent, publicly distributes or imports for public distribution any article bearing such notice or words that such person knows to be false,
shall be fined not more than $2,500.
(d) Fraudulent Removal of Copyright Notice.—Any person who, with fraudulent
intent, removes or alters any notice of copyright appearing on a copy of a copyrighted
work shall be fined not more than $2,500.
(e) False Representation.—Any person who knowingly makes a false representation
of a material fact in the application for copyright registration provided for by section 409,
or in any written statement filed in connection with the application, shall be fined not
more than $2,500.
(f) Rights of Attribution and Integrity.—Nothing in this section applies to infringement of the rights conferred by section 106A(a).
185

§ 507.

Copyright Act of 1976

§ 507.—Limitations on actions
(a) Criminal Proceedings.—Except as expressly provided otherwise in this title, no
criminal proceeding shall be maintained under the provisions of this title unless it is
commenced within 5 years after the cause of action arose.
(b) Civil Actions.—No civil action shall be maintained under the provisions of this
title unless it is commenced within three years after the claim accrued.
§ 508.—Notification of filing and determination of actions
(a) Within one month after the filing of any action under this title, the clerks of the
courts of the United States shall send written notification to the Register of Copyrights
setting forth, as far as is shown by the papers filed in the court, the names and addresses
of the parties and the title, author, and registration number of each work involved in the
action. If any other copyrighted work is later included in the action by amendment, answer, or other pleading, the clerk shall also send a notification concerning it to the Register within one month after the pleading is filed.
(b) Within one month after any final order or judgment is issued in the case, the clerk
of the court shall notify the Register of it, sending with the notification a copy of the
order or judgment together with the written opinion, if any, of the court.
(c) Upon receiving the notifications specified in this section, the Register shall make
them a part of the public records of the Copyright Office.
§ 510.—Remedies for alteration of programming by cable systems
(a) In any action filed pursuant to section 111(c)(3), the following remedies shall be
available:
(1) Where an action is brought by a party identified in subsections (b) or (c) of section
501, the remedies provided by sections 502 through 505, and the remedy provided by
subsection (b) of this section; and
(2) When an action is brought by a party identified in subsection (d) of section 501,
the remedies provided by sections 502 and 505, together with any actual damages suffered by such party as a result of the infringement, and the remedy provided by subsection (b) of this section.
(b) In any action filed pursuant to section 111(c)(3), the court may decree that, for a
period not to exceed thirty days, the cable system shall be deprived of the benefit of a
statutory license for one or more distant signals carried by such cable system.
§ 511.—Liability of States, instrumentalities of States, and State officials for
infringement of copyright
(a) In General.—Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall
not be immune, under the Eleventh Amendment of the Constitution of the United States
or under any other doctrine of sovereign immunity, from suit in Federal court by any
person, including any governmental or nongovernmental entity, for a violation of any of
the exclusive rights of a copyright owner provided by sections 106 through 122, for importing copies of phonorecords in violation of section 602, or for any other violation
under this title.
(b) Remedies.—In a suit described in subsection (a) for a violation described in that
subsection, remedies (including remedies both at law and in equity) are available for the
violation to the same extent as such remedies are available for such a violation in a suit
186

Copyright Act of 1976

§ 512.

against any public or private entity other than a State, instrumentality of a State, or officer
or employee of a State acting in his or her official capacity. Such remedies include impounding and disposition of infringing articles under section 503, actual damages and
profits and statutory damages under section 504, costs and attorney’s fees under section
505, and the remedies provided in section 510.
§ 512.—Limitations on liability relating to material online
(a) Transitory Digital Network Communications.—A service provider shall not be
liable for monetary relief, or, except as provided in subsection (j), for injunctive or other
equitable relief, for infringement of copyright by reason of the provider’s transmitting,
routing, or providing connections for, material through a system or network controlled
or operated by or for the service provider, or by reason of the intermediate and transient
storage of that material in the course of such transmitting, routing, or providing connections, if—
(1) the transmission of the material was initiated by or at the direction of a person
other than the service provider;
(2) the transmission, routing, provision of connections, or storage is carried out
through an automatic technical process without selection of the material by the service
provider;
(3) the service provider does not select the recipients of the material except as an
automatic response to the request of another person;
(4) no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is
maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission,
routing, or provision of connections; and
(5) the material is transmitted through the system or network without modification
of its content.
(b) System Caching.—
(1) Limitation on liability.—A service provider shall not be liable for monetary
relief, or, except as provided in subsection (j), for injunctive or other equitable relief,
for infringement of copyright by reason of the intermediate and temporary storage of
material on a system or network controlled or operated by or for the service provider
in a case in which—
(A) the material is made available online by a person other than the service provider;
(B) the material is transmitted from the person described in subparagraph (A)
through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person; and
(C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after
the material is transmitted as described in subparagraph (B), request access to the
material from the person described in subparagraph (A),
if the conditions set forth in paragraph (2) are met.
(2) Conditions.—The conditions referred to in paragraph (1) are that—
(A) the material described in paragraph (1) is transmitted to the subsequent users
described in paragraph (1)(C) without modification to its content from the manner in
which the material was transmitted from the person described in paragraph (1)(A);
(B) the service provider described in paragraph (1) complies with rules concerning
187

§ 512.

Copyright Act of 1976

the refreshing, reloading, or other updating of the material when specified by the
person making the material available online in accordance with a generally accepted
industry standard data communications protocol for the system or network through
which that person makes the material available, except that this subparagraph applies
only if those rules are not used by the person described in paragraph (1)(A) to prevent
or unreasonably impair the intermediate storage to which this subsection applies;
(C) the service provider does not interfere with the ability of technology associated
with the material to return to the person described in paragraph (1)(A) the information that would have been available to that person if the material had been obtained by the subsequent users described in paragraph (1)(C) directly from that
person, except that this subparagraph applies only if that technology—
(i) does not significantly interfere with the performance of the provider’s system
or network or with the intermediate storage of the material;
(ii) is consistent with generally accepted industry standard communications protocols; and
(iii) does not extract information from the provider’s system or network other
than the information that would have been available to the person described in
paragraph (1)(A) if the subsequent users had gained access to the material directly
from that person;
(D) if the person described in paragraph (1)(A) has in effect a condition that a
person must meet prior to having access to the material, such as a condition based
on payment of a fee or provision of a password or other information, the service
provider permits access to the stored material in significant part only to users of its
system or network that have met those conditions and only in accordance with those
conditions; and
(E) if the person described in paragraph (1)(A) makes that material available online
without the authorization of the copyright owner of the material, the service provider
responds expeditiously to remove, or disable access to, the material that is claimed
to be infringing upon notification of claimed infringement as described in subsection
(c)(3), except that this subparagraph applies only if—
(i) the material has previously been removed from the originating site or access
to it has been disabled, or a court has ordered that the material be removed from
the originating site or that access to the material on the originating site be disabled;
and
(ii) the party giving the notification includes in the notification a statement confirming that the material has been removed from the originating site or access to it
has been disabled or that a court has ordered that the material be removed from the
originating site or that access to the material on the originating site be disabled.
(c) Information Residing on Systems or Networks At Direction of Users.—
(1) In general.—A service provider shall not be liable for monetary relief, or, except
as provided in subsection (j), for injunctive or other equitable relief, for infringement
of copyright by reason of the storage at the direction of a user of material that resides
on a system or network controlled or operated by or for the service provider, if the
service provider—
(A)(i) does not have actual knowledge that the material or an activity using the
material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove,
188

Copyright Act of 1976

§ 512.

or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such
activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to
be infringing or to be the subject of infringing activity.
(2) Designated agent.—The limitations on liability established in this subsection apply
to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through
its service, including on its website in a location accessible to the public, and by providing
to the Copyright Office, substantially the following information:
(A) the name, address, phone number, and electronic mail address of the agent.
(B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to
the public for inspection, including through the Internet, and may require payment of
a fee by service providers to cover the costs of maintaining the directory.
(3) Elements of notification.—
(A) To be effective under this subsection, a notification of claimed infringement
must be a written communication provided to the designated agent of a service provider that includes substantially the following:
(i) A physical or electronic signature of a person authorized to act on behalf of
the owner of an exclusive right that is allegedly infringed.
(ii) Identification of the copyrighted work claimed to have been infringed, or, if
multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
(iii) Identification of the material that is claimed to be infringing or to be the
subject of infringing activity and that is to be removed or access to which is to be
disabled, and information reasonably sufficient to permit the service provider to
locate the material.
(iv) Information reasonably sufficient to permit the service provider to contact
the complaining party, such as an address, telephone number, and, if available, an
electronic mail address at which the complaining party may be contacted.
(v) A statement that the complaining party has a good faith belief that use of the
material in the manner complained of is not authorized by the copyright owner, its
agent, or the law.
(vi) A statement that the information in the notification is accurate, and under
penalty of perjury, that the complaining party is authorized to act on behalf of the
owner of an exclusive right that is allegedly infringed.
(B)(i) Subject to clause (ii), a notification from a copyright owner or from a person
authorized to act on behalf of the copyright owner that fails to comply substantially
with the provisions of subparagraph (A) shall not be considered under paragraph
(1)(A) in determining whether a service provider has actual knowledge or is aware
of facts or circumstances from which infringing activity is apparent.
(ii) In a case in which the notification that is provided to the service provider’s
designated agent fails to comply substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii), (iii), and (iv) of subparagraph (A), clause (i) of this subparagraph applies only if the service provider
189

§ 512.

Copyright Act of 1976

promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with
all the provisions of subparagraph (A).
(d) Information Location Tools.—A service provider shall not be liable for monetary
relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for
infringement of copyright by reason of the provider referring or linking users to an online
location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link, if the service
provider—
(1)(A) does not have actual knowledge that the material or activity is infringing;
(B) in the absence of such actual knowledge, is not aware of facts or circumstances
from which infringing activity is apparent; or
(C) upon obtaining such knowledge or awareness, acts expeditiously to remove,
or disable access to, the material;
(2) does not receive a financial benefit directly attributable to the infringing activity,
in a case in which the service provider has the right and ability to control such activity;
and
(3) upon notification of claimed infringement as described in subsection (c)(3), responds expeditiously to remove, or disable access to, the material that is claimed to be
infringing or to be the subject of infringing activity, except that, for purposes of this
paragraph, the information described in subsection (c)(3)(A)(iii) shall be identification
of the reference or link, to material or activity claimed to be infringing, that is to be
removed or access to which is to be disabled, and information reasonably sufficient to
permit the service provider to locate that reference or link.
(e) Limitation on Liability of Nonprofit Educational Institutions.—
(1) When a public or other nonprofit institution of higher education is a service provider, and when a faculty member or graduate student who is an employee of such
institution is performing a teaching or research function, for the purposes of subsections (a) and (b) such faculty member or graduate student shall be considered to be a
person other than the institution, and for the purposes of subsections (c) and (d) such
faculty member’s or graduate student’s knowledge or awareness of his or her infringing activities shall not be attributed to the institution, if—
(A) such faculty member’s or graduate student’s infringing activities do not involve the provision of online access to instructional materials that are or were required or recommended, within the preceding 3-year period, for a course taught at
the institution by such faculty member or graduate student;
(B) the institution has not, within the preceding 3-year period, received more than
two notifications described in subsection (c)(3) of claimed infringement by such faculty member or graduate student, and such notifications of claimed infringement
were not actionable under subsection (f); and
(C) the institution provides to all users of its system or network informational materials that accurately describe, and promote compliance with, the laws of the United
States relating to copyright.
(2) For the purposes of this subsection, the limitations on injunctive relief contained
in subsections (j)(2) and (j)(3), but not those in (j)(1), shall apply.
(f) Misrepresentations.—Any person who knowingly materially misrepresents under
this section—
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled by mistake or misidentification,
190

Copyright Act of 1976

§ 512.

shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by
a service provider, who is injured by such misrepresentation, as the result of the service
provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing
to disable access to it.
(g) Replacement of Removed or Disabled Material and Limitation on Other
Liability.—
(1) No liability for taking down generally.—Subject to paragraph (2), a service provider shall not be liable to any person for any claim based on the service provider’s
good faith disabling of access to, or removal of, material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent,
regardless of whether the material or activity is ultimately determined to be infringing.
(2) Exception.—Paragraph (1) shall not apply with respect to material residing at
the direction of a subscriber of the service provider on a system or network controlled
or operated by or for the service provider that is removed, or to which access is disabled
by the service provider, pursuant to a notice provided under subsection (c)(1)(C), unless the service provider—
(A) takes reasonable steps promptly to notify the subscriber that it has removed or
disabled access to the material;
(B) upon receipt of a counter notification described in paragraph (3), promptly
provides the person who provided the notification under subsection (c)(1)(C) with a
copy of the counter notification, and informs that person that it will replace the removed material or cease disabling access to it in 10 business days; and
(C) replaces the removed material and ceases disabling access to it not less than
10, nor more than 14, business days following receipt of the counter notice, unless
its designated agent first receives notice from the person who submitted the notification under subsection (c)(1)(C) that such person has filed an action seeking a court
order to restrain the subscriber from engaging in infringing activity relating to the
material on the service provider’s system or network.
(3) Contents of counter notification.—To be effective under this subsection, a
counter notification must be a written communication provided to the service provider’s designated agent that includes substantially the following:
(A) A physical or electronic signature of the subscriber.
(B) Identification of the material that has been removed or to which access has
been disabled and the location at which the material appeared before it was removed
or access to it was disabled.
(C) A statement under penalty of perjury that the subscriber has a good faith belief
that the material was removed or disabled as a result of mistake or misidentification
of the material to be removed or disabled.
(D) The subscriber’s name, address, and telephone number, and a statement that
the subscriber consents to the jurisdiction of Federal District Court for the judicial
district in which the address is located, or if the subscriber’s address is outside of the
United States, for any judicial district in which the service provider may be found,
and that the subscriber will accept service of process from the person who provided
notification under subsection (c)(1)(C) or an agent of such person.
(4) Limitation on other liability.—A service provider’s compliance with paragraph
(2) shall not subject the service provider to liability for copyright infringement with respect to the material identified in the notice provided under subsection (c)(1)(C).
191

§ 512.

Copyright Act of 1976

(h) Subpoena To Identify Infringer.—
(1) Request.—A copyright owner or a person authorized to act on the owner’s behalf
may request the clerk of any United States district court to issue a subpoena to a service
provider for identification of an alleged infringer in accordance with this subsection.
(2) Contents of request.—The request may be made by filing with the clerk—
(A) a copy of a notification described in subsection (c)(3)(A);
(B) a proposed subpoena; and
(C) a sworn declaration to the effect that the purpose for which the subpoena is
sought is to obtain the identity of an alleged infringer and that such information will
only be used for the purpose of protecting rights under this title.
(3) Contents of subpoena.—The subpoena shall authorize and order the service
provider receiving the notification and the subpoena to expeditiously disclose to the
copyright owner or person authorized by the copyright owner information sufficient to
identify the alleged infringer of the material described in the notification to the extent
such information is available to the service provider.
(4) Basis for granting subpoena.—If the notification filed satisfies the provisions of
subsection (c)(3)(A), the proposed subpoena is in proper form, and the accompanying
declaration is properly executed, the clerk shall expeditiously issue and sign the proposed subpoena and return it to the requester for delivery to the service provider.
(5) Actions of service provider receiving subpoena.—Upon receipt of the issued
subpoena, either accompanying or subsequent to the receipt of a notification described
in subsection (c)(3)(A), the service provider shall expeditiously disclose to the copyright owner or person authorized by the copyright owner the information required by
the subpoena, notwithstanding any other provision of law and regardless of whether
the service provider responds to the notification.
(6) Rules applicable to subpoena.—Unless otherwise provided by this section or
by applicable rules of the court, the procedure for issuance and delivery of the subpoena, and the remedies for noncompliance with the subpoena, shall be governed to
the greatest extent practicable by those provisions of the Federal Rules of Civil Procedure governing the issuance, service, and enforcement of a subpoena duces tecum.
(i) Conditions for Eligibility.—
(1) Accommodation of technology.—The limitations on liability established by this
section shall apply to a service provider only if the service provider—
(A) has adopted and reasonably implemented, and informs subscribers and account
holders of the service provider’s system or network of, a policy that provides for the
termination in appropriate circumstances of subscribers and account holders of the
service provider’s system or network who are repeat infringers; and
(B) accommodates and does not interfere with standard technical measures.
(2) Definition.—As used in this subsection, the term “standard technical measures”
means technical measures that are used by copyright owners to identify or protect copyrighted works and—
(A) have been developed pursuant to a broad consensus of copyright owners and
service providers in an open, fair, voluntary, multi-industry standards process;
(B) are available to any person on reasonable and nondiscriminatory terms; and
(C) do not impose substantial costs on service providers or substantial burdens on
their systems or networks.
(j) Injunctions.—The following rules shall apply in the case of any application for an
injunction under section 502 against a service provider that is not subject to monetary
remedies under this section:
192

Copyright Act of 1976

§ 512.

(1) Scope of relief.—
(A) With respect to conduct other than that which qualifies for the limitation on
remedies set forth in subsection (a), the court may grant injunctive relief with respect
to a service provider only in one or more of the following forms:
(i) An order restraining the service provider from providing access to infringing
material or activity residing at a particular online site on the provider’s system or
network.
(ii) An order restraining the service provider from providing access to a subscriber or account holder of the service provider’s system or network who is engaging in infringing activity and is identified in the order, by terminating the
accounts of the subscriber or account holder that are specified in the order.
(iii) Such other injunctive relief as the court may consider necessary to prevent
or restrain infringement of copyrighted material specified in the order of the court
at a particular online location, if such relief is the least burdensome to the service
provider among the forms of relief comparably effective for that purpose.
(B) If the service provider qualifies for the limitation on remedies described in
subsection (a), the court may only grant injunctive relief in one or both of the following forms:
(i) An order restraining the service provider from providing access to a subscriber or account holder of the service provider’s system or network who is using
the provider’s service to engage in infringing activity and is identified in the order,
by terminating the accounts of the subscriber or account holder that are specified
in the order.
(ii) An order restraining the service provider from providing access, by taking
reasonable steps specified in the order to block access, to a specific, identified,
online location outside the United States.
(2) Considerations.—The court, in considering the relevant criteria for injunctive
relief under applicable law, shall consider—
(A) whether such an injunction, either alone or in combination with other such injunctions issued against the same service provider under this subsection, would significantly burden either the provider or the operation of the provider’s system or network;
(B) the magnitude of the harm likely to be suffered by the copyright owner in the
digital network environment if steps are not taken to prevent or restrain the infringement;
(C) whether implementation of such an injunction would be technically feasible
and effective, and would not interfere with access to noninfringing material at other
online locations; and
(D) whether other less burdensome and comparably effective means of preventing
or restraining access to the infringing material are available.
(3) Notice and ex parte orders.—Injunctive relief under this subsection shall be
available only after notice to the service provider and an opportunity for the service
provider to appear are provided, except for orders ensuring the preservation of evidence or other orders having no material adverse effect on the operation of the service
provider’s communications network.
(k) Definitions.—
(1) Service provider.—
(A) As used in subsection (a), the term “service provider” means an entity offering
the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received.
193

§ 513.

Copyright Act of 1976

(B) As used in this section, other than subsection (a), the term “service provider”
means a provider of online services or network access, or the operator of facilities
therefor, and includes an entity described in subparagraph (A).
(2) Monetary relief.—As used in this section, the term “monetary relief” means
damages, costs, attorneys’ fees, and any other form of monetary payment.
(l) Other Defenses Not Affected.—The failure of a service provider’s conduct to qualify for limitation of liability under this section shall not bear adversely upon the consideration of a defense by the service provider that the service provider’s conduct is not
infringing under this title or any other defense.
(m) Protection of Privacy.—Nothing in this section shall be construed to condition
the applicability of subsections (a) through (d) on—
(1) a service provider monitoring its service or affirmatively seeking facts indicating
infringing activity, except to the extent consistent with a standard technical measure
complying with the provisions of subsection (i); or
(2) a service provider gaining access to, removing, or disabling access to material in
cases in which such conduct is prohibited by law.
(n) Construction.—Subsections (a), (b), (c), and (d) describe separate and distinct
functions for purposes of applying this section. Whether a service provider qualifies for
the limitation on liability in any one of those subsections shall be based solely on the
criteria in that subsection, and shall not affect a determination of whether that service
provider qualifies for the limitations on liability under any other such subsection.
§ 513.—Determination of reasonable license fees for individual proprietors
In the case of any performing rights society subject to a consent decree which provides
for the determination of reasonable license rates or fees to be charged by the performing
rights society, notwithstanding the provisions of that consent decree, an individual proprietor who owns or operates fewer than 7 non-publicly traded establishments in which
nondramatic musical works are performed publicly and who claims that any license
agreement offered by that performing rights society is unreasonable in its license rate or
fee as to that individual proprietor, shall be entitled to determination of a reasonable
license rate or fee as follows:
(1) The individual proprietor may commence such proceeding for determination of a
reasonable license rate or fee by filing an application in the applicable district court
under paragraph (2) that a rate disagreement exists and by serving a copy of the application on the performing rights society. Such proceeding shall commence in the applicable district court within 90 days after the service of such copy, except that such 90day requirement shall be subject to the administrative requirements of the court.
(2) The proceeding under paragraph (1) shall be held, at the individual proprietor’s
election, in the judicial district of the district court with jurisdiction over the applicable
consent decree or in that place of holding court of a district court that is the seat of the
Federal circuit (other than the Court of Appeals for the Federal Circuit) in which the
proprietor’s establishment is located.
(3) Such proceeding shall be held before the judge of the court with jurisdiction over
the consent decree governing the performing rights society. At the discretion of the
court, the proceeding shall be held before a special master or magistrate judge appointed by such judge. Should that consent decree provide for the appointment of an
advisor or advisors to the court for any purpose, any such advisor shall be the special
master so named by the court.
194

Copyright Act of 1976

§ 602.

(4) In any such proceeding, the industry rate shall be presumed to have been reasonable at the time it was agreed to or determined by the court. Such presumption shall in
no way affect a determination of whether the rate is being correctly applied to the
individual proprietor.
(5) Pending the completion of such proceeding, the individual proprietor shall have
the right to perform publicly the copyrighted musical compositions in the repertoire of
the performing rights society by paying an interim license rate or fee into an interest
bearing escrow account with the clerk of the court, subject to retroactive adjustment
when a final rate or fee has been determined, in an amount equal to the industry rate,
or, in the absence of an industry rate, the amount of the most recent license rate or fee
agreed to by the parties.
(6) Any decision rendered in such proceeding by a special master or magistrate judge
named under paragraph (3) shall be reviewed by the judge of the court with jurisdiction
over the consent decree governing the performing rights society. Such proceeding, including such review, shall be concluded within 6 months after its commencement.
(7) Any such final determination shall be binding only as to the individual proprietor
commencing the proceeding, and shall not be applicable to any other proprietor or any
other performing rights society, and the performing rights society shall be relieved of
any obligation of nondiscrimination among similarly situated music users that may be
imposed by the consent decree governing its operations.
(8) An individual proprietor may not bring more than one proceeding provided for
in this section for the determination of a reasonable license rate or fee under any license
agreement with respect to any one performing rights society.
(9) For purposes of this section, the term “industry rate” means the license fee a
performing rights society has agreed to with, or which has been determined by the
court for, a significant segment of the music user industry to which the individual proprietor belongs.
Chapter 6—Importation and Exportation
§ 602.—Infringing importation or exportation of copies or phonorecords
(a) Infringing Importation or Exportation.—
(1) Importation.—Importation into the United States, without the authority of the
owner of copyright under this title, of copies or phonorecords of a work that have been
acquired outside the United States is an infringement of the exclusive right to distribute
copies or phonorecords under section 106, actionable under section 501.
(2) Importation or exportation of infringing items.—Importation into the United
States or exportation from the United States, without the authority of the owner of copyright under this title, of copies or phonorecords, the making of which either constituted an
infringement of copyright, or which would have constituted an infringement of copyright
if this title had been applicable, is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under sections 501 and 506.
(3) Exceptions.—This subsection does not apply to—
(A) importation or exportation of copies or phonorecords under the authority or
for the use of the Government of the United States or of any State or political subdivision of a State, but not including copies or phonorecords for use in schools, or
copies of any audiovisual work imported for purposes other than archival use;
(B) importation or exportation, for the private use of the importer or exporter and
195

§ 603.

Copyright Act of 1976

not for distribution, by any person with respect to no more than one copy or
phonorecord of any one work at any one time, or by any person arriving from outside
the United States or departing from the United States with respect to copies or
phonorecords forming part of such person’s personal baggage; or
(C) importation by or for an organization operated for scholarly, educational, or
religious purposes and not for private gain, with respect to no more than one copy of
an audiovisual work solely for its archival purposes, and no more than five copies or
phonorecords of any other work for its library lending or archival purposes, unless
the importation of such copies or phonorecords is part of an activity consisting of
systematic reproduction or distribution, engaged in by such organization in violation
of the provisions of section 108(g)(2).
(b) Import Prohibition.—In a case where the making of the copies or phonorecords
would have constituted an infringement of copyright if this title had been applicable,
their importation is prohibited. In a case where the copies or phonorecords were lawfully
made, United States Customs and Border Protection has no authority to prevent their
importation. In either case, the Secretary of the Treasury is authorized to prescribe, by
regulation, a procedure under which any person claiming an interest in the copyright in
a particular work may, upon payment of a specified fee, be entitled to notification by
United States Customs and Border Protection of the importation of articles that appear
to be copies or phonorecords of the work.
§ 603.—Importation prohibitions: Enforcement and disposition of excluded
articles
(a) The Secretary of the Treasury and the United States Postal Service shall separately
or jointly make regulations for the enforcement of the provisions of this title prohibiting
importation.
(b) These regulations may require, as a condition for the exclusion of articles under
section 602—
(1) that the person seeking exclusion obtain a court order enjoining importation of
the articles; or
(2) that the person seeking exclusion furnish proof, of a specified nature and in accordance with prescribed procedures, that the copyright in which such person claims an interest is valid and that the importation would violate the prohibition in section 602; the
person seeking exclusion may also be required to post a surety bond for any injury that
may result if the detention or exclusion of the articles proves to be unjustified.
(c) Articles imported in violation of the importation prohibitions of this title are subject
to seizure and forfeiture in the same manner as property imported in violation of the
customs revenue laws. Forfeited articles shall be destroyed as directed by the Secretary
of the Treasury or the court, as the case may be.
Chapter 7—Copyright Office
§ 701.—The Copyright Office: General responsibilities and organization
(a) All administrative functions and duties under this title, except as otherwise specified,
are the responsibility of the Register of Copyrights as director of the Copyright Office of
the Library of Congress. The Register of Copyrights, together with the subordinate officers
and employees of the Copyright Office, shall be appointed by the Librarian of Congress,
and shall act under the Librarian’s general direction and supervision.
196

Copyright Act of 1976

§ 703.

(b) In addition to the functions and duties set out elsewhere in this chapter, the Register
of Copyrights shall perform the following functions:
(1) Advise Congress on national and international issues relating to copyright, other
matters arising under this title, and related matters.
(2) Provide information and assistance to Federal departments and agencies and the
Judiciary on national and international issues relating to copyright, other matters arising under this title, and related matters.
(3) Participate in meetings of international intergovernmental organizations and
meetings with foreign government officials relating to copyright, other matters arising
under this title, and related matters, including as a member of United States delegations
as authorized by the appropriate Executive branch authority.
(4) Conduct studies and programs regarding copyright, other matters arising under
this title, and related matters, the administration of the Copyright Office, or any function vested in the Copyright Office by law, including educational programs conducted
cooperatively with foreign intellectual property offices and international intergovernmental organizations.
(5) Perform such other functions as Congress may direct, or as may be appropriate
in furtherance of the functions and duties specifically set forth in this title.
(c) The Register of Copyrights shall adopt a seal to be used on and after January 1,
1978, to authenticate all certified documents issued by the Copyright Office.
(d) The Register of Copyrights shall make an annual report to the Librarian of Congress
of the work and accomplishments of the Copyright Office during the previous fiscal year.
The annual report of the Register of Copyrights shall be published separately and as a
part of the annual report of the Librarian of Congress.
(e) Except as provided by section 706(b) and the regulations issued thereunder, all
actions taken by the Register of Copyrights under this title are subject to the provisions
of the Administrative Procedure Act of June 11, 1946, as amended (c. 324, 60 Stat. 237,
title 5, United States Code, Chapter 5, Subchapter II and Chapter 7).
(f) The Register of Copyrights shall be compensated at the rate of pay in effect for level
III of the Executive Schedule under section 5314 of title 5. The Librarian of Congress shall
establish not more than four positions for Associate Registers of Copyrights, in accordance
with the recommendations of the Register of Copyrights. The Librarian shall make appointments to such positions after consultation with the Register of Copyrights. Each Associate Register of Copyrights shall be paid at a rate not to exceed the maximum annual
rate of basic pay payable for GS-18 of the General Schedule under section 5332 of title 5.
§ 702.—Copyright Office regulations
The Register of Copyrights is authorized to establish regulations not inconsistent with
law for the administration of the functions and duties made the responsibility of the Register under this title. All regulations established by the Register under this title are subject
to the approval of the Librarian of Congress.
§ 703.—Effective date of actions in Copyright Office
In any case in which time limits are prescribed under this title for the performance of
an action in the Copyright Office, and in which the last day of the prescribed period falls
on a Saturday, Sunday, holiday, or other nonbusiness day within the District of Columbia
or the Federal Government, the action may be taken on the next succeeding business day,
and is effective as of the date when the period expired.
197

§ 704.

Copyright Act of 1976

§ 704.—Retention and disposition of articles deposited in Copyright Office
(a) Upon their deposit in the Copyright Office under sections 407 and 408, all copies,
phonorecords, and identifying material, including those deposited in connection with claims
that have been refused registration, are the property of the United States Government.
(b) In the case of published works, all copies, phonorecords, and identifying material
deposited are available to the Library of Congress for its collections, or for exchange or
transfer to any other library. In the case of unpublished works, the Library is entitled,
under regulations that the Register of Copyrights shall prescribe, to select any deposits
for its collections or for transfer to the National Archives of the United States or to a
Federal records center, as defined in section 2901 of title 44.
(c) The Register of Copyrights is authorized, for specific or general categories of
works, to make a facsimile reproduction of all or any part of the material deposited under
section 408, and to make such reproduction a part of the Copyright Office records of the
registration, before transferring such material to the Library of Congress as provided by
subsection (b), or before destroying or otherwise disposing of such material as provided
by subsection (d).
(d) Deposits not selected by the Library under subsection (b), or identifying portions
or reproductions of them, shall be retained under the control of the Copyright Office,
including retention in Government storage facilities, for the longest period considered
practicable and desirable by the Register of Copyrights and the Librarian of Congress.
After that period it is within the joint discretion of the Register and the Librarian to order
their destruction or other disposition; but, in the case of unpublished works, no deposit
shall be knowingly or intentionally destroyed or otherwise disposed of during its term of
copyright unless a facsimile reproduction of the entire deposit has been made a part of
the Copyright Office records as provided by subsection (c).
(e) The depositor of copies, phonorecords, or identifying material under section 408,
or the copyright owner of record, may request retention, under the control of the Copyright Office, of one or more of such articles for the full term of copyright in the work.
The Register of Copyrights shall prescribe, by regulation, the conditions under which
such requests are to be made and granted, and shall fix the fee to be charged under section
708(a) if the request is granted.
§ 705.—Copyright Office records: Preparation, maintenance, public inspection,
and searching
(a) The Register of Copyrights shall ensure that records of deposits, registrations, recordations, and other actions taken under this title are maintained, and that indexes of
such records are prepared.
(b) Such records and indexes, as well as the articles deposited in connection with completed copyright registrations and retained under the control of the Copyright Office,
shall be open to public inspection.
(c) Upon request and payment of the fee specified by section 708, the Copyright Office
shall make a search of its public records, indexes, and deposits, and shall furnish a report
of the information they disclose with respect to any particular deposits, registrations, or
recorded documents.
§ 706.—Copies of Copyright Office records
(a) Copies may be made of any public records or indexes of the Copyright Office; additional certificates of copyright registration and copies of any public records or indexes
198

Copyright Act of 1976

§ 708.

may be furnished upon request and payment of the fees specified by section 708.
(b) Copies or reproductions of deposited articles retained under the control of the Copyright Office shall be authorized or furnished only under the conditions specified by the
Copyright Office regulations.
§ 707.—Copyright Office forms and publications
(a) Catalog of Copyright Entries.—The Register of Copyrights shall compile and
publish at periodic intervals catalogs of all copyright registrations. These catalogs shall
be divided into parts in accordance with the various classes of works, and the Register
has discretion to determine, on the basis of practicability and usefulness, the form and
frequency of publication of each particular part.
(b) Other Publications.—The Register shall furnish, free of charge upon request, application forms for copyright registration and general informational material in connection with the functions of the Copyright Office. The Register also has the authority to
publish compilations of information, bibliographies, and other material he or she considers to be of value to the public.
(c) Distribution of Publications.—All publications of the Copyright Office shall be
furnished to depository libraries as specified under section 1905 of title 44, and, aside
from those furnished free of charge, shall be offered for sale to the public at prices based
on the cost of reproduction and distribution.
§ 708.—Copyright Office fees
(a) Fees.—Fees shall be paid to the Register of Copyrights—
(1) on filing each application under section 408 for registration of a copyright claim
or for a supplementary registration, including the issuance of a certificate of registration if registration is made;
(2) on filing each application for registration of a claim for renewal of a subsisting
copyright under section 304(a), including the issuance of a certificate of registration if
registration is made;
(3) for the issuance of a receipt for a deposit under section 407;
(4) for the recordation, as provided by section 205, of a transfer of copyright ownership or other document;
(5) for the filing, under section 115(b), of a notice of intention to obtain a compulsory
license;
(6) for the recordation, under section 302(c), of a statement revealing the identity of
an author of an anonymous or pseudonymous work, or for the recordation, under section 302(d), of a statement relating to the death of an author;
(7) for the issuance, under section 706, of an additional certificate of registration;
(8) for the issuance of any other certification;
(9) for the making and reporting of a search as provided by section 705, and for any
related services;
(10) on filing a statement of account based on secondary transmissions of primary
transmissions pursuant to section 119 or 122; and
(11) on filing a statement of account based on secondary transmissions of primary
transmissions pursuant to section 111.
The Register is authorized to fix fees for other services, including the cost of preparing
copies of Copyright Office records, whether or not such copies are certified, based on
the cost of providing the service. Fees established under paragraphs (10) and (11) shall
199

§ 708.

Copyright Act of 1976

be reasonable and may not exceed one-half of the cost necessary to cover reasonable
expenses incurred by the Copyright Office for the collection and administration of the
statements of account and any royalty fees deposited with such statements.
(b) Adjustment of Fees.—The Register of Copyrights may, by regulation, adjust the
fees for the services specified in paragraphs (1) through (9) of subsection (a) in the following manner:
(1) The Register shall conduct a study of the costs incurred by the Copyright Office
for the registration of claims, the recordation of documents, and the provision of services. The study shall also consider the timing of any adjustment in fees and the authority to use such fees consistent with the budget.
(2) The Register may, on the basis of the study under paragraph (1), and subject to
paragraph (5), adjust fees to not more than that necessary to cover the reasonable costs
incurred by the Copyright Office for the services described in paragraph (1), plus a
reasonable inflation adjustment to account for any estimated increase in costs.
(3) Any fee established under paragraph (2) shall be rounded off to the nearest dollar,
or for a fee less than $12, rounded off to the nearest 50 cents.
(4) Fees established under this subsection shall be fair and equitable and give due
consideration to the objectives of the copyright system.
(5) If the Register determines under paragraph (2) that fees should be adjusted, the
Register shall prepare a proposed fee schedule and submit the schedule with the accompanying economic analysis to the Congress. The fees proposed by the Register
may be instituted after the end of 120 days after the schedule is submitted to the Congress unless, within that 120-day period, a law is enacted stating in substance that the
Congress does not approve the schedule.
(c) The fees prescribed by or under this section are applicable to the United States
Government and any of its agencies, employees, or officers, but the Register of Copyrights has discretion to waive the requirement of this subsection in occasional or isolated
cases involving relatively small amounts.
(d)(1) Except as provided in paragraph (2), all fees received under this section shall be
deposited by the Register of Copyrights in the Treasury of the United States and shall be
credited to the appropriations for necessary expenses of the Copyright Office. Such fees
that are collected shall remain available until expended. The Register may, in accordance
with regulations that he or she shall prescribe, refund any sum paid by mistake or in
excess of the fee required by this section.
(2) In the case of fees deposited against future services, the Register of Copyrights
shall request the Secretary of the Treasury to invest in interest-bearing securities in the
United States Treasury any portion of the fees that, as determined by the Register, is
not required to meet current deposit account demands. Funds from such portion of fees
shall be invested in securities that permit funds to be available to the Copyright Office
at all times if they are determined to be necessary to meet current deposit account
demands. Such investments shall be in public debt securities with maturities suitable
to the needs of the Copyright Office, as determined by the Register of Copyrights, and
bearing interest at rates determined by the Secretary of the Treasury, taking into consideration current market yields on outstanding marketable obligations of the United
States of comparable maturities.
(3) The income on such investments shall be deposited in the Treasury of the United
States and shall be credited to the appropriations for necessary expenses of the Copyright Office.
200

Copyright Act of 1976

§ 801.

§ 709.—Delay in delivery caused by disruption of postal or other services
In any case in which the Register of Copyrights determines, on the basis of such evidence as the Register may by regulation require, that a deposit, application, fee, or any
other material to be delivered to the Copyright Office by a particular date, would have
been received in the Copyright Office in due time except for a general disruption or suspension of postal or other transportation or communications services, the actual receipt
of such material in the Copyright Office within one month after the date on which the
Register determines that the disruption or suspension of such services has terminated,
shall be considered timely.
Chapter 8—Proceedings by Copyright Royalty Judges
§ 801.—Copyright Royalty Judges: appointment and functions
(a) Appointment.—The Librarian of Congress shall appoint 3 full-time Copyright
Royalty Judges, and shall appoint 1 of the 3 as the Chief Copyright Royalty Judge. The
Librarian shall make appointments to such positions after consultation with the Register
of Copyrights.
(b) Functions.—Subject to the provisions of this chapter, the functions of the Copyright Royalty Judges shall be as follows:
(1) To make determinations and adjustments of reasonable terms and rates of royalty
payments as provided in sections 112(e), 114, 115, 116, 118, 119, and 1004.
(2) To make determinations concerning the adjustment of the copy-right royalty rates
under section 111 solely in accordance with the following provisions:
(A) The rates established by section 111(d)(1)(B) may be adjusted to reflect—
(i) national monetary inflation or deflation; or
(ii) changes in the average rates charged cable subscribers for the basic service
of providing secondary transmissions to maintain the real constant dollar level of
the royalty fee per subscriber which existed as of the date of October 19, 1976,
except that—
(I) if the average rates charged cable system subscribers for the basic service
of providing secondary transmissions are changed so that the average rates exceed national monetary inflation, no change in the rates established by section
111(d)(1)(B) shall be permitted; and
(II) no increase in the royalty fee shall be permitted based on any reduction in
the average number of distant signal equivalents per subscriber.
The Copyright Royalty Judges may consider all factors relating to the maintenance
of such level of payments, including, as an extenuating factor, whether the industry
has been restrained by subscriber rate regulating authorities from increasing the
rates for the basic service of providing secondary transmissions.
(B) In the event that the rules and regulations of the Federal Communications
Commission are amended at any time after April 15, 1976, to permit the carriage by
cable systems of additional television broadcast signals beyond the local service area
of the primary transmitters of such signals, the royalty rates established by section
111(d)(1)(B) may be adjusted to ensure that the rates for the additional distant signal
equivalents resulting from such carriage are reasonable in the light of the changes
effected by the amendment to such rules and regulations. In determining the reasonableness of rates proposed following an amendment of Federal Communications
Commission rules and regulations, the Copyright Royalty Judges shall consider,
201

§ 801.

Copyright Act of 1976

among other factors, the economic impact on copyright owners and users; except
that no adjustment in royalty rates shall be made under this subparagraph with respect to any distant signal equivalent or fraction thereof represented by—
(i) carriage of any signal permitted under the rules and regulations of the Federal
Communications Commission in effect on April 15, 1976, or the carriage of a signal of the same type (that is, independent, network, or noncommercial educational)
substituted for such permitted signal; or
(ii) a television broadcast signal first carried after April 15, 1976, pursuant to an
individual waiver of the rules and regulations of the Federal Communications
Commission, as such rules and regulations were in effect on April 15, 1976.
(C) In the event of any change in the rules and regulations of the Federal Communications Commission with respect to syndicated and sports program exclusivity after April 15, 1976, the rates established by section 111(d)(1)(B) may be adjusted to
assure that such rates are reasonable in light of the changes to such rules and regulations, but any such adjustment shall apply only to the affected television broadcast
signals carried on those systems affected by the change.
(D) The gross receipts limitations established by section 111(d)(1)(C) and (D) shall
be adjusted to reflect national monetary inflation or deflation or changes in the average
rates charged cable system subscribers for the basic service of providing secondary
transmissions to maintain the real constant dollar value of the exemption provided by
such section, and the royalty rate specified therein shall not be subject to adjustment.
(3)(A) To authorize the distribution, under sections 111, 119, and 1007, of those
royalty fees collected under sections 111, 119, and 1005, as the case may be, to the
extent that the Copyright Royalty Judges have found that the distribution of such fees
is not subject to controversy.
(B) In cases where the Copyright Royalty Judges determine that controversy exists, the Copyright Royalty Judges shall determine the distribution of such fees, including partial distributions, in accordance with section 111, 119, or 1007, as the
case may be.
(C) Notwithstanding section 804(b)(8), the Copyright Royalty Judges, at any time
after the filing of claims under section 111, 119, or 1007, may, upon motion of one
or more of the claimants and after publication in the Federal Register of a request for
responses to the motion from interested claimants, make a partial distribution of such
fees, if, based upon all responses received during the 30-day period beginning on the
date of such publication, the Copyright Royalty Judges conclude that no claimant
entitled to receive such fees has stated a reasonable objection to the partial distribution, and all such claimants—
(i) agree to the partial distribution;
(ii) sign an agreement obligating them to return any excess amounts to the extent
necessary to comply with the final determination on the distribution of the fees
made under subparagraph (B);
(iii) file the agreement with the Copyright Royalty Judges; and
(iv) agree that such funds are available for distribution.
(D) The Copyright Royalty Judges and any other officer or employee acting in good
faith in distributing funds under subparagraph (C) shall not be held liable for the payment of any excess fees under subparagraph (C). The Copyright Royalty Judges shall,
at the time the final determination is made, calculate any such excess amounts.
(4) To accept or reject royalty claims filed under sections 111, 119, and 1007, on the
basis of timeliness or the failure to establish the basis for a claim.
202

Copyright Act of 1976

§ 801.

(5) To accept or reject rate adjustment petitions as provided in section 804 and petitions to participate as provided in section 803(b)(1) and (2).
(6) To determine the status of a digital audio recording device or a digital audio
interface device under sections 1002 and 1003, as provided in section 1010.
(7)(A) To adopt as a basis for statutory terms and rates or as a basis for the distribution of statutory royalty payments, an agreement concerning such matters reached
among some or all of the participants in a proceeding at any time during the proceeding, except that—
(i) the Copyright Royalty Judges shall provide to those that would be bound by
the terms, rates, or other determination set by any agreement in a proceeding to
determine royalty rates an opportunity to comment on the agreement and shall
provide to participants in the proceeding under section 803(b)(2) that would be
bound by the terms, rates, or other determination set by the agreement an opportunity to comment on the agreement and object to its adoption as a basis for statutory terms and rates; and
(ii) the Copyright Royalty Judges may decline to adopt the agreement as a basis
for statutory terms and rates for participants that are not parties to the agreement,
if any participant described in clause (i) objects to the agreement and the Copyright
Royalty Judges conclude, based on the record before them if one exists, that the
agreement does not provide a reasonable basis for setting statutory terms or rates.
(B) License agreements voluntarily negotiated pursuant to section 112(e)(5),
114(f)(2), 115(c)(3)(E)(i), 116(c), or 118(b)(2) that do not result in statutory terms
and rates shall not be subject to clauses (i) and (ii) of subparagraph (A).
(C) Interested parties may negotiate and agree to, and the Copyright Royalty
Judges may adopt, an agreement that specifies as terms notice and recordkeeping
requirements that apply in lieu of those that would otherwise apply under regulations.
(8) To determine the administrative assessment to be paid by digital music providers
under section 115(d). The provisions of section 115(d) shall apply to the conduct of
proceedings by the Copyright Royalty Judges under section 115(d) and not the procedures described in this section, or section 803, 804, or 805.
(9) To perform other duties, as assigned by the Register of Copyrights within the
Library of Congress, except as provided in section 802(g), at times when Copyright
Royalty Judges are not engaged in performing the other duties set forth in this section.
(c) Rulings.—The Copyright Royalty Judges may make any necessary procedural or
evidentiary rulings in any proceeding under this chapter and may, before commencing a
proceeding under this chapter, make any such rulings that would apply to the proceedings
conducted by the Copyright Royalty Judges.
(d) Administrative Support.—The Librarian of Congress shall provide the Copyright
Royalty Judges with the necessary administrative services related to proceedings under
this chapter.
(e) Location in Library of Congress.—The offices of the Copyright Royalty Judges
and staff shall be in the Library of Congress.
(f) Effective Date of Actions.—On and after the date of the enactment of the Copyright Royalty and Distribution Reform Act of 2004, in any case in which time limits are
prescribed under this title for performance of an action with or by the Copyright Royalty
Judges, and in which the last day of the prescribed period falls on a Saturday, Sunday,
holiday, or other nonbusiness day within the District of Columbia or the Federal Government, the action may be taken on the next succeeding business day, and is effective
as of the date when the period expired.
203

§ 802.

Copyright Act of 1976

§ 802.—Copyright Royalty Judgeships: staff
(a) Qualifications of Copyright Royalty Judges.—
(1) In general.—Each Copyright Royalty Judge shall be an attorney who has at least
7 years of legal experience. The Chief Copyright Royalty Judge shall have at least 5
years of experience in adjudications, arbitrations, or court trials. Of the other 2 Copyright Royalty Judges, 1 shall have significant knowledge of copyright law, and the
other shall have significant knowledge of economics. An individual may serve as a
Copyright Royalty Judge only if the individual is free of any financial conflict of interest under subsection (h).
(2) Definition.—In this subsection, the term “adjudication” has the meaning given
that term in section 551 of title 5, but does not include mediation.
(b) Staff.—The Chief Copyright Royalty Judge shall hire 3 full-time staff members to
assist the Copyright Royalty Judges in performing their functions.
(c) Terms.—The individual first appointed as the Chief Copyright Royalty Judge shall
be appointed to a term of 6 years, and of the remaining individuals first appointed as
Copyright Royalty Judges, 1 shall be appointed to a term of 4 years, and the other shall
be appointed to a term of 2 years. Thereafter, the terms of succeeding Copyright Royalty
Judges shall each be 6 years. An individual serving as a Copyright Royalty Judge may
be reappointed to subsequent terms. The term of a Copyright Royalty Judge shall begin
when the term of the predecessor of that Copyright Royalty Judge ends. When the term
of office of a Copyright Royalty Judge ends, the individual serving that term may continue to serve until a successor is selected.
(d) Vacancies or Incapacity.—
(1) Vacancies.—If a vacancy should occur in the position of Copyright Royalty
Judge, the Librarian of Congress shall act expeditiously to fill the vacancy, and may
appoint an interim Copyright Royalty Judge to serve until another Copyright Royalty
Judge is appointed under this section. An individual appointed to fill the vacancy occurring before the expiration of the term for which the predecessor of that individual
was appointed shall be appointed for the remainder of that term.
(2) Incapacity.—In the case in which a Copyright Royalty Judge is temporarily unable to perform his or her duties, the Librarian of Congress may appoint an interim
Copyright Royalty Judge to perform such duties during the period of such incapacity.
(e) Compensation.—
(1) Judges.—The Chief Copyright Royalty Judge shall receive compensation at the
rate of basic pay payable for level AL–1 for administrative law judges pursuant to
section 5372(b) of title 5, and each of the other two Copyright Royalty Judges shall
receive compensation at the rate of basic pay payable for level AL–2 for administrative
law judges pursuant to such section. The compensation of the Copyright Royalty
Judges shall not be subject to any regulations adopted by the Office of Personnel Management pursuant to its authority under section 5376(b)(1) of title 5.
(2) Staff members.—Of the staff members appointed under subsection (b)—
(A) the rate of pay of 1 staff member shall be not more than the basic rate of pay
payable for level 10 of GS-15 of the General Schedule;
(B) the rate of pay of 1 staff member shall be not less than the basic rate of pay
payable for GS-13 of the General Schedule and not more than the basic rate of pay
payable for level 10 of GS-14 of such Schedule; and
(C) the rate of pay for the third staff member shall be not less than the basic rate
of pay payable for GS-8 of the General Schedule and not more than the basic rate of
pay payable for level 10 of GS-11 of such Schedule.
204

Copyright Act of 1976

§ 802.

(3) Locality pay.—All rates of pay referred to under this subsection shall include
locality pay.
(f) Independence of Copyright Royalty Judge.—
(1) In making determinations.—
(A) In general.—
(i) Subject to subparagraph (B) and clause (ii) of this subparagraph, the Copyright Royalty Judges shall have full independence in making determinations concerning adjustments and determinations of copyright royalty rates and terms, the
distribution of copyright royalties, the acceptance or rejection of royalty claims,
rate adjustment petitions, and petitions to participate, and in issuing other rulings
under this title, except that the Copyright Royalty Judges may consult with the
Register of Copyrights on any matter other than a question of fact.
(ii) One or more Copyright Royalty Judges may, or by motion to the Copyright
Royalty Judges, any participant in a proceeding may, request from the Register of
Copyrights an interpretation of any material questions of substantive law that relate
to the construction of provisions of this title and arise in the course of the proceeding.
Any request for a written interpretation shall be in writing and on the record, and
reasonable provision shall be made to permit participants in the proceeding to comment on the material questions of substantive law in a manner that minimizes duplication and delay. Except as provided in subparagraph (B), the Register of Copyrights
shall deliver to the Copyright Royalty Judges a written response within 14 days after
the receipt of all briefs and comments from the participants. The Copyright Royalty
Judges shall apply the legal interpretation embodied in the response of the Register
of Copyrights if it is timely delivered, and the response shall be included in the record that accompanies the final determination. The authority under this clause shall
not be construed to authorize the Register of Copyrights to provide an interpretation
of questions of procedure before the Copyright Royalty Judges, the ultimate adjustments and determinations of copyright royalty rates and terms, the ultimate distribution of copyright royalties, or the acceptance or rejection of royalty claims, rate
adjustment petitions, or petitions to participate in a proceeding.
(B) Novel questions.—
(i) In any case in which a novel material question of substantive law concerning
an interpretation of those provisions of this title that are the subject of the proceeding
is presented, the Copyright Royalty Judges shall request a decision of the Register
of Copyrights, in writing, to resolve such novel question. Reasonable provision shall
be made for comment on such request by the participants in the proceeding, in such
a way as to minimize duplication and delay. The Register of Copyrights shall transmit his or her decision to the Copyright Royalty Judges within 30 days after the
Register of Copyrights receives all of the briefs or comments of the participants.
Such decision shall be in writing and included by the Copyright Royalty Judges in
the record that accompanies their final determination. If such a decision is timely
delivered to the Copyright Royalty Judges, the Copyright Royalty Judges shall apply
the legal determinations embodied in the decision of the Register of Copyrights in
resolving material questions of substantive law.
(ii) In clause (i), a “novel question of law” is a question of law that has not been
determined in prior decisions, determinations, and rulings described in section 803(a).
(C) Consultation.—Notwithstanding the provisions of subparagraph (A), the
Copyright Royalty Judges shall consult with the Register of Copyrights with respect
to any determination or ruling that would require that any act be performed by the
205

§ 802.

Copyright Act of 1976

Copyright Office, and any such determination or ruling shall not be binding upon the
Register of Copyrights.
(D) Review of legal conclusions by the Register of Copyrights.—The Register of
Copyrights may review for legal error the resolution by the Copyright Royalty Judges
of a material question of substantive law under this title that underlies or is contained
in a final determination of the Copyright Royalty Judges. If the Register of Copyrights
concludes, after taking into consideration the views of the participants in the proceeding, that any resolution reached by the Copyright Royalty Judges was in material error,
the Register of Copyrights shall issue a written decision correcting such legal error,
which shall be made part of the record of the proceeding. The Register of Copyrights
shall issue such written decision not later than 60 days after the date on which the final
determination by the Copyright Royalty Judges is issued. Additionally, the Register of
Copyrights shall cause to be published in the Federal Register such written decision,
together with a specific identification of the legal conclusion of the Copyright Royalty
Judges that is determined to be erroneous. As to conclusions of substantive law involving an interpretation of the statutory provisions of this title, the decision of the Register
of Copyrights shall be binding as precedent upon the Copyright Royalty Judges in
subsequent proceedings under this chapter. When a decision has been rendered pursuant to this subparagraph, the Register of Copyrights may, on the basis of and in accordance with such decision, intervene as of right in any appeal of a final determination
of the Copyright Royalty Judges pursuant to section 803(d) in the United States Court
of Appeals for the District of Columbia Circuit. If, prior to intervening in such an appeal, the Register of Copyrights gives notification to, and undertakes to consult with,
the Attorney General with respect to such intervention, and the Attorney General fails,
within a reasonable period after receiving such notification, to intervene in such appeal,
the Register of Copyrights may intervene in such appeal in his or her own name by
any attorney designated by the Register of Copyrights for such purpose. Intervention
by the Register of Copyrights in his or her own name shall not preclude the Attorney
General from intervening on behalf of the United States in such an appeal as may be
otherwise provided or required by law.
(E) Effect on judicial review.—Nothing in this section shall be interpreted to alter
the standard applied by a court in reviewing legal determinations involving an interpretation or construction of the provisions of this title or to affect the extent to which
any construction or interpretation of the provisions of this title shall be accorded
deference by a reviewing court.
(2) Performance appraisals.—
(A) In general.—Notwithstanding any other provision of law or any regulation of
the Library of Congress, and subject to subparagraph (B), the Copyright Royalty
Judges shall not receive performance appraisals.
(B) Relating to sanction or removal.—To the extent that the Librarian of Congress adopts regulations under subsection (h) relating to the sanction or removal of
a Copyright Royalty Judge and such regulations require documentation to establish
the cause of such sanction or removal, the Copyright Royalty Judge may receive an
appraisal related specifically to the cause of the sanction or removal.
(g) Inconsistent Duties Barred.—No Copyright Royalty Judge may undertake duties
that conflict with his or her duties and responsibilities as a Copyright Royalty Judge.
(h) Standards of Conduct.—The Librarian of Congress shall adopt regulations regarding the standards of conduct, including financial conflict of interest and restrictions
against ex parte communications, which shall govern the Copyright Royalty Judges and
206

Copyright Act of 1976

§ 803.

the proceedings under this chapter.
(i) Removal or Sanction.—The Librarian of Congress may sanction or remove a Copyright Royalty Judge for violation of the standards of conduct adopted under subsection
(h), misconduct, neglect of duty, or any disqualifying physical or mental disability. Any
such sanction or removal may be made only after notice and opportunity for a hearing,
but the Librarian of Congress may suspend the Copyright Royalty Judge during the pendency of such hearing. The Librarian shall appoint an interim Copyright Royalty Judge
during the period of any such suspension.
§ 803.—Proceedings of Copyright Royalty Judges
(a) Proceedings.—
(1) In general.—The Copyright Royalty Judges shall act in accordance with this title,
and to the extent not inconsistent with this title, in accordance with subchapter II of chapter 5 of title 5, in carrying out the purposes set forth in section 801. The Copyright Royalty Judges shall act in accordance with regulations issued by the Copyright Royalty
Judges and the Librarian of Congress, and on the basis of a written record, prior determinations and interpretations of the Copyright Royalty Tribunal, Librarian of Congress,
the Register of Copyrights, copyright arbitration royalty panels (to the extent those determinations are not inconsistent with a decision of the Librarian of Congress or the Register of Copyrights), and the Copyright Royalty Judges (to the extent those
determinations are not inconsistent with a decision of the Register of Copyrights that
was timely delivered to the Copyright Royalty Judges pursuant to section 802(f)(1)(A)
or (B), or with a decision of the Register of Copyrights pursuant to section 802(f)(1)(D)),
under this chapter, and decisions of the court of appeals under this chapter before, on, or
after the effective date of the Copyright Royalty and Distribution Reform Act of 2004.
(2) Judges acting as panel and individually.—The Copyright Royalty Judges shall
preside over hearings in proceedings under this chapter en banc. The Chief Copyright
Royalty Judge may designate a Copyright Royalty Judge to preside individually over
such collateral and administrative proceedings, and over such proceedings under paragraphs (1) through (5) of subsection (b), as the Chief Judge considers appropriate.
(3) Determinations.—Final determinations of the Copyright Royalty Judges in proceedings under this chapter shall be made by majority vote. A Copyright Royalty Judge
dissenting from the majority on any determination under this chapter may issue his or
her dissenting opinion, which shall be included with the determination.
(b) Procedures.—
(1) Initiation.—
(A) CALL FOR PETITIONS TO PARTICIPATE.—(i) The Copyright Royalty
Judges shall cause to be published in the Federal Register notice of commencement
of proceedings under this chapter, calling for the filing of petitions to participate in
a proceeding under this chapter for the purpose of making the relevant determination
under section 111, 112, 114, 115, 116, 118, 119, 1004, or 1007, as the case may be—
(I) promptly upon a determination made under section 804(a);
(II) by no later than January 5 of a year specified in paragraph (2) of section
804(b) for the commencement of proceedings;
(III) by no later than January 5 of a year specified in subparagraph (A) or (B)
of paragraph (3) of section 804(b) for the commencement of proceedings, or as
otherwise provided in subparagraph (A) or (C) of such paragraph for the commencement of proceedings;
(IV) as provided under section 804(b)(8); or
207

§ 803.

Copyright Act of 1976

(V) by no later than January 5 of a year specified in any other provision of
section 804(b) for the filing of petitions for the commencement of proceedings,
if a petition has not been filed by that date, except that the publication of notice
requirement shall not apply in the case of pro-ceedings under section 111 that
are scheduled to commence in 2005.
(ii) Petitions to participate shall be filed by no later than 30 days after publication
of notice of commencement of a proceeding under clause (i), except that the Copyright Royalty Judges may, for substantial good cause shown and if there is no
prejudice to the participants that have already filed petitions, accept late petitions
to participate at any time up to the date that is 90 days before the date on which
participants in the proceeding are to file their written direct statements. Notwithstanding the preceding sentence, petitioners whose petitions are filed more than 30
days after publication of notice of commencement of a proceeding are not eligible
to object to a settlement reached during the voluntary negotiation period under
paragraph (3), and any objection filed by such a petitioner shall not be taken into
account by the Copyright Royalty Judges.
(B) PETITIONS TO PARTICIPATE.—Each petition to participate in a proceeding shall describe the petitioner’s interest in the subject matter of the proceeding.
Parties with similar interests may file a single petition to participate.
(2) Participation in general.—Subject to paragraph (4), a person may participate in
a proceeding under this chapter, including through the submission of briefs or other
information, only if—
(A) that person has filed a petition to participate in accordance with paragraph (1)
(either individually or as a group under paragraph (1)(B));
(B) the Copyright Royalty Judges have not determined that the petition to participate is facially invalid;
(C) the Copyright Royalty Judges have not determined, sua sponte or on the motion of another participant in the proceeding, that the person lacks a significant interest in the proceeding; and
(D) the petition to participate is accompanied by either—
(i) in a proceeding to determine royalty rates, a filing fee of $150; or
(ii) in a proceeding to determine distribution of royalty fees—
(I) a filing fee of $150; or
(II) a statement that the petitioner (individually or as a group) will not seek a
distribution of more than $1000, in which case the amount distributed to the petitioner shall not exceed $1000.
(3) Voluntary negotiation period.—
(A) COMMENCEMENT OF PROCEEDINGS.—
(i) RATE ADJUSTMENT PROCEEDING.—Promptly after the date for filing
of petitions to participate in a proceeding, the Copyright Royalty Judges shall make
available to all participants in the proceeding a list of such participants and shall
initiate a voluntary negotiation period among the participants.
(ii) DISTRIBUTION PROCEEDING.—Promptly after the date for filing of petitions to participate in a proceeding to determine the distribution of royalties, the
Copyright Royalty Judges shall make available to all participants in the proceeding
a list of such participants. The initiation of a voluntary negotiation period among
the participants shall be set at a time determined by the Copyright Royalty Judges.
(B) LENGTH OF PROCEEDINGS.—The voluntary negotiation period initiated
under subparagraph (A) shall be 3 months.
208

Copyright Act of 1976

§ 803.

(C) DETERMINATION OF SUBSEQUENT PROCEEDINGS.—At the close of
the voluntary negotiation proceedings, the Copyright Royalty Judges shall, if further
proceedings under this chapter are necessary, determine whether and to what extent
paragraphs (4) and (5) will apply to the parties.
(4) Small claims procedure in distribution proceedings.—
(A) IN GENERAL.—If, in a proceeding under this chapter to determine the distribution of royalties, the contested amount of a claim is $10,000 or less, the Copyright Royalty Judges shall decide the controversy on the basis of the filing of the
written direct statement by the participant, the response by any opposing participant,
and 1 additional response by each such party.
(B) BAD FAITH INFLATION OF CLAIM.—If the Copyright Royalty Judges
determine that a participant asserts in bad faith an amount in controversy in excess
of $10,000 for the purpose of avoiding a determination under the procedure set forth
in subparagraph (A), the Copyright Royalty Judges shall impose a fine on that participant in an amount not to exceed the difference between the actual amount distributed and the amount asserted by the participant.
(5) Paper proceedings.—The Copyright Royalty Judges in proceedings under this
chapter may decide, sua sponte or upon motion of a participant, to determine issues on
the basis of the filing of the written direct statement by the participant, the response by
any opposing participant, and one additional response by each such participant. Prior
to making such decision to proceed on such a paper record only, the Copyright Royalty
Judges shall offer to all parties to the proceeding the opportunity to comment on the
decision. The procedure under this paragraph—
(A) shall be applied in cases in which there is no genuine issue of material fact,
there is no need for evidentiary hearings, and all participants in the proceeding agree
in writing to the procedure; and
(B) may be applied under such other circumstances as the Copyright Royalty
Judges consider appropriate.
(6) Regulations.—
(A) IN GENERAL.—The Copyright Royalty Judges may issue regulations to
carry out their functions under this title. All regulations issued by the Copyright Royalty Judges are subject to the approval of the Librarian of Congress and are subject
to judicial review pursuant to chapter 7 of title 5, except as set forth in subsection
(d). Not later than 120 days after Copyright Royalty Judges or interim Copyright
Royalty Judges, as the case may be, are first appointed after the enactment of the
Copyright Royalty and Distribution Reform Act of 2004, such judges shall issue
regulations to govern proceedings under this chapter.
(B) INTERIM REGULATIONS.— Until regulations are adopted under subparagraph (A), the Copyright Royalty Judges shall apply the regulations in effect under this
chapter on the day before the effective date of the Copyright Royalty and Distribution
Reform Act of 2004, to the extent such regulations are not inconsistent with this chapter,
except that functions carried out under such regulations by the Librarian of Congress,
the Register of Copyrights, or copyright arbitration royalty panels that, as of such date
of enactment, are to be carried out by the Copyright Royalty Judges under this chapter,
shall be carried out by the Copyright Royalty Judges under such regulations.
(C) REQUIREMENTS.—Regulations issued under subparagraph (A) shall include the following:
(i) The written direct statements and written rebuttal statements of all participants
in a proceeding under paragraph (2) shall be filed by a date specified by the Copyright
209

§ 803.

Copyright Act of 1976

Royalty Judges, which, in the case of written direct statements, may be not earlier
than 4 months, and not later than 5 months, after the end of the voluntary negotiation
period under paragraph (3). Notwithstanding the preceding sentence, the Copyright
Royalty Judges may allow a participant in a proceeding to file an amended written
direct statement based on new information received during the discovery process,
within 15 days after the end of the discovery period specified in clause (iv).
(ii)(I) Following the submission to the Copyright Royalty Judges of written direct statements and written rebuttal statements by the participants in a proceeding
under paragraph (2), the Copyright Royalty Judges, after taking into consideration
the views of the participants in the proceeding, shall determine a schedule for conducting and completing discovery.
(II) In this chapter, the term “written direct statements” means wit-ness statements, testimony, and exhibits to be presented in the proceed-ings, and such
other information that is necessary to establish terms and rates, or the distribution
of royalty payments, as the case may be, as set forth in regulations issued by the
Copyright Royalty Judges.
(iii) Hearsay may be admitted in proceedings under this chapter to the extent
deemed appropriate by the Copyright Royalty Judges.
(iv) Discovery in connection with written direct statements shall be permitted
for a period of 60 days, except for discovery ordered by the Copyright Royalty
Judges in connection with the resolution of motions, orders, and disputes pending
at the end of such period. The Copyright Royalty Judges may order a discovery
schedule in connection with written rebuttal statements.
(v) Any participant under paragraph (2) in a proceeding under this chapter to
determine royalty rates may request of an opposing participant nonprivileged documents directly related to the written direct statement or written rebuttal statement
of that participant. Any objection to such a request shall be resolved by a motion
or request to compel production made to the Copyright Royalty Judges in accordance with regulations adopted by the Copyright Royalty Judges. Each motion or
request to compel discovery shall be determined by the Copyright Royalty Judges,
or by a Copyright Royalty Judge when permitted under subsection (a)(2). Upon
such motion, the Copyright Royalty Judges may order discovery pursuant to regulations established under this paragraph.
(vi)(I) Any participant under paragraph (2) in a proceeding under this chapter to
determine royalty rates may, by means of written motion or on the record, request
of an opposing participant or witness other relevant information and materials if,
absent the discovery sought, the Copyright Royalty Judges’ resolution of the proceeding would be substantially impaired. In determining whether discovery will
be granted under this clause, the Copyright Royalty Judges may consider—
(aa) whether the burden or expense of producing the requested information
or materials outweighs the likely benefit, taking into account the needs and resources of the participants, the importance of the issues at stake, and the probative value of the requested information or materials in resolving such issues;
(bb) whether the requested information or materials would be unreasonably
cumulative or duplicative, or are obtainable from another source that is more
convenient, less burdensome, or less expensive; and
(cc) whether the participant seeking discovery has had ample opportunity by
discovery in the proceeding or by other means to obtain the information
sought.
210

Copyright Act of 1976

§ 803.

(II) This clause shall not apply to any proceeding scheduled to commence after
December 31, 2010.
(vii) In a proceeding under this chapter to determine royalty rates, the participants entitled to receive royalties shall collectively be permitted to take no more
than 10 depositions and secure responses to no more than 25 interrogatories, and
the participants obligated to pay royalties shall collectively be permitted to take no
more than 10 depositions and secure responses to no more than 25 interrogatories.
The Copyright Royalty Judges shall resolve any disputes among similarly aligned
participants to allocate the number of depositions or interrogatories permitted under this clause.
(viii) The rules and practices in effect on the day before the effective date of the
Copyright Royalty and Distribution Reform Act of 2004, relating to discovery in
proceedings under this chapter to determine the distribution of royalty fees, shall
continue to apply to such proceedings on and after such effective date.
(ix) In proceedings to determine royalty rates, the Copyright Royalty Judges may
issue a subpoena commanding a participant or witness to appear and give testimony, or to produce and permit inspection of documents or tangible things, if the
Copyright Royalty Judges’ resolution of the proceeding would be substantially
impaired by the absence of such testimony or production of documents or tangible
things. Such subpoena shall specify with reasonable particularity the materials to
be produced or the scope and nature of the required testimony. Nothing in this
clause shall preclude the Copyright Royalty Judges from requesting the production
by a nonparticipant of information or materials relevant to the resolution by the
Copyright Royalty Judges of a material issue of fact.
(x) The Copyright Royalty Judges shall order a settlement conference among the
participants in the proceeding to facilitate the presentation of offers of settlement
among the participants. The settlement conference shall be held during a 21-day
period following the 60-day discovery period specified in clause (iv) and shall take
place outside the presence of the Copyright Royalty Judges.
(xi) No evidence, including exhibits, may be submitted in the written direct statement or written rebuttal statement of a participant without a sponsoring witness,
except where the Copyright Royalty Judges have taken official notice, or in the
case of incorporation by reference of past records, or for good cause shown.
(c) Determination of Copyright Royalty Judges.—
(1) Timing.—The Copyright Royalty Judges shall issue their determination in a proceeding not later than 11 months after the conclusion of the 21-day settlement conference period under subsection (b)(6)(C)(x), but, in the case of a proceeding to determine
successors to rates or terms that expire on a specified date, in no event later than 15
days before the expiration of the then current statutory rates and terms.
(2) Rehearings.—
(A) IN GENERAL.—The Copyright Royalty Judges may, in exceptional cases,
upon motion of a participant in a proceeding under subsection (b)(2), order a rehearing, after the determination in the proceeding is issued under paragraph (1), on such
matters as the Copyright Royalty Judges determine to be appropriate.
(B) TIMING FOR FILING MOTION.—Any motion for a rehearing under subparagraph (A) may only be filed within 15 days after the date on which the Copyright
Royalty Judges deliver to the participants in the proceeding their initial determination.
(C) PARTICIPATION BY OPPOSING PARTY NOT REQUIRED.—In any case
211

§ 803.

Copyright Act of 1976

in which a rehearing is ordered, any opposing party shall not be required to participate in the rehearing, except that nonparticipation may give rise to the limitations
with respect to judicial review provided for in subsection (d)(1).
(D) NO NEGATIVE INFERENCE.—No negative inference shall be drawn from
lack of participation in a rehearing.
(E) CONTINUITY OF RATES AND TERMS.—(i) If the decision of the Copyright
Royalty Judges on any motion for a rehearing is not rendered before the expiration of
the statutory rates and terms that were previously in effect, in the case of a proceeding
to determine successors to rates and terms that expire on a specified date, then—
(I) the initial determination of the Copyright Royalty Judges that is the subject
of the rehearing motion shall be effective as of the day following the date on
which the rates and terms that were previously in effect expire; and
(II) in the case of a proceeding under section 114(f)(1)(C) , royalty rates and
terms shall, for purposes of section 114(f)(3)(B), be deemed to have been set at
those rates and terms contained in the initial determination of the Copyright Royalty Judges that is the subject of the rehearing motion, as of the date of that
determination.
(ii) The pendency of a motion for a rehearing under this paragraph shall not
relieve persons obligated to make royalty payments who would be af-fected by the
determination on that motion from providing the statements of account and any
reports of use, to the extent required, and paying the royalties required under the
relevant determination or regulations.
(iii) Notwithstanding clause (ii), whenever royalties described in clause (ii) are
paid to a person other than the Copyright Office, the entity designated by the Copyright Royalty Judges to which such royalties are paid by the copyright user (and any
successor thereto) shall, within 60 days after the motion for rehearing is resolved or,
if the motion is granted, within 60 days after the rehearing is concluded, return any
excess amounts previously paid to the extent necessary to comply with the final determination of royalty rates by the Copyright Royalty Judges. Any underpayment of
royalties resulting from a rehearing shall be paid within the same period.
(3) Contents of determination.—A determination of the Copyright Royalty Judges
shall be supported by the written record and shall set forth the findings of fact relied
on by the Copyright Royalty Judges. Among other terms adopted in a determination,
the Copyright Royalty Judges may specify notice and recordkeeping requirements of
users of the copyrights at issue that apply in lieu of those that would otherwise apply
under regulations.
(4) Continuing jurisdiction.—The Copyright Royalty Judges may issue an amendment to a written determination to correct any technical or clerical errors in the determination or to modify the terms, but not the rates, of royalty payments in response to
unforeseen circumstances that would frustrate the proper implementation of such determination. Such amendment shall be set forth in a written addendum to the determination that shall be distributed to the participants of the proceeding and shall be
published in the Federal Register.
(5) Protective order.—The Copyright Royalty Judges may issue such orders as may
be appropriate to protect confidential information, including orders excluding confidential information from the record of the determination that is published or made
available to the public, except that any terms or rates of royalty payments or distributions may not be excluded.
(6) Publication of determination.—By no later than the end of the 60-day period
212

Copyright Act of 1976

§ 803.

provided in section 802(f)(1)(D), the Librarian of Congress shall cause the determination, and any corrections thereto, to be published in the Federal Register. The Librarian
of Congress shall also publicize the determination and corrections in such other manner as the Librarian considers appropriate, including, but not limited to, publication on
the Internet. The Librarian of Congress shall also make the determination, corrections,
and the accompanying record available for public inspection and copying.
(7) Late payment.—A determination of the Copyright Royalty Judges may include
terms with respect to late payment, but in no way shall such terms prevent the copyright
holder from asserting other rights or remedies provided under this title.
(d) Judicial Review.—
(1) Appeal.—Any determination of the Copyright Royalty Judges under subsection
(c) may, within 30 days after the publication of the determination in the Federal Register, be appealed, to the United States Court of Appeals for the District of Columbia
Circuit, by any aggrieved participant in the proceeding under subsection (b)(2) who
fully participated in the proceeding and who would be bound by the determination. Any
participant that did not participate in a rehearing may not raise any issue that was the
subject of that rehearing at any stage of judicial review of the hearing determination. If
no appeal is brought within that 30-day period, the determination of the Copyright Royalty Judges shall be final, and the royalty fee or determination with respect to the distribution of fees, as the case may be, shall take effect as set forth in paragraph (2).
(2) Effect of rates.—
(A) EXPIRATION ON SPECIFIED DATE.—When this title provides that the
royalty rates and terms that were previously in effect are to expire on a specified
date, any adjustment or determination by the Copyright Royalty Judges of successor
rates and terms for an ensuing statutory license period shall be effective as of the day
following the date of expiration of the rates and terms that were previously in effect,
even if the determination of the Copyright Royalty Judges is rendered on a later date.
A licensee shall be obligated to continue making payments under the rates and terms
previously in effect until such time as rates and terms for the successor period are
established. Whenever royalties pursuant to this section are paid to a person other
than the Copyright Office, the entity designated by the Copyright Royalty Judges to
which such royalties are paid by the copyright user (and any successor thereto) shall,
within 60 days after the final determination of the Copyright Royalty Judges establishing rates and terms for a successor period or the exhaustion of all rehearings or
appeals of such determination, if any, return any excess amounts previously paid to
the extent necessary to comply with the final determination of royalty rates. Any
underpayment of royalties by a copyright user shall be paid to the entity designated
by the Copyright Royalty Judges within the same period.
(B) OTHER CASES.—In cases where rates and terms have not, prior to the inception of an activity, been established for that particular activity under the relevant
license, such rates and terms shall be retroactive to the inception of activity under
the relevant license covered by such rates and terms. In other cases where rates and
terms do not expire on a specified date, successor rates and terms shall take effect on
the first day of the second month that begins after the publication of the determination of the Copyright Royalty Judges in the Federal Register, except as otherwise
provided in this title, or by the Copyright Royalty Judges, or as agreed by the participants in a proceeding that would be bound by the rates and terms. Except as otherwise provided in this title, the rates and terms, to the extent applicable, shall remain
in effect until such successor rates and terms become effective.
213

§ 804.

Copyright Act of 1976

(C) OBLIGATION TO MAKE PAYMENTS.—
(i) The pendency of an appeal under this subsection shall not relieve persons
obligated to make royalty payments under section 111, 112, 114, 115, 116, 118,
119, or 1003, who would be affected by the determination on appeal, from–
(I) providing the applicable statements of account and report of use; and
(II) paying the royalties required under the relevant determination or regulations.
(ii) Notwithstanding clause (i), whenever royalties described in clause (i) are paid
to a person other than the Copyright Office, the entity designated by the Copyright
Royalty Judges to which such royalties are paid by the copyright user (and any successor thereto) shall, within 60 days after the final resolution of the appeal, return any
excess amounts previously paid (and interest thereon, if ordered pursuant to paragraph (3)) to the extent necessary to comply with the final determination of royalty
rates on appeal. Any underpayment of royalties resulting from an appeal (and interest
thereon, if ordered pursuant to paragraph (3)) shall be paid within the same period.
(3) Jurisdiction of court.—Section 706 of title 5 shall apply with respect to review
by the court of appeals under this subsection. If the court modifies or vacates a determination of the Copyright Royalty Judges, the court may enter its own determination with
respect to the amount or distribution of royalty fees and costs, and order the repayment
of any excess fees, the payment of any underpaid fees, and the payment of interest pertaining respectively thereto, in accordance with its final judgment. The court may also
vacate the determination of the Copyright Royalty Judges and remand the case to the
Copyright Royalty Judges for further proceedings in accordance with subsection (a).
(e) Administrative Matters.—
(1) Deduction of costs of Library of Congress and Copyright Office from filing
fees.—
(A) DEDUCTION FROM FILING FEES.—The Librarian of Congress may, to the
extent not otherwise provided under this title, deduct from the filing fees collected
under subsection (b) for a particular proceeding under this chapter the reasonable
costs incurred by the Librarian of Congress, the Copyright Office, and the Copyright
Royalty Judges in conducting that proceeding, other than the salaries of the Copyright
Royalty Judges and the 3 staff members appointed under section 802(b).
(B) AUTHORIZATION OF APPROPRIATIONS.—There are authorized to be
appropriated such sums as may be necessary to pay the costs incurred under this
chapter not covered by the filing fees collected under subsection (b). All funds made
available pursuant to this subparagraph shall remain available until expended.
(2) Positions required for administration of compulsory licensing.—Section 307
of the Legislative Branch Appropriations Act, 1994, shall not apply to employee positions in the Library of Congress that are required to be filled in order to carry out
section 111, 112, 114, 115, 116, 118, or 119 or chapter 10.
§ 804.—Institution of proceedings
(a) Filing of Petition.—With respect to proceedings referred to in paragraphs (1) and
(2) of section 801(b) concerning the determination or adjustment of royalty rates as provided in sections 111, 112, 114, 115, 116, 118, 119, and 1004, during the calendar years
specified in the schedule set forth in subsection (b), any owner or user of a copyrighted
work whose royalty rates are specified by this title, or are established under this chapter
before or after the enactment of the Copyright Royalty and Distribution Reform Act of
2004, may file a petition with the Copyright Royalty Judges declaring that the petitioner
requests a determination or adjustment of the rate. The Copyright Royalty Judges shall
214

Copyright Act of 1976

§ 804.

make a determination as to whether the petitioner has such a significant interest in the
royalty rate in which a determination or adjustment is requested. If the Copyright Royalty
Judges determine that the petitioner has such a significant interest, the Copyright Royalty
Judges shall cause notice of this determination, with the reasons for such determination, to
be published in the Federal Register, together with the notice of commencement of proceedings under this chapter. With respect to proceedings under paragraph (1) of section
801(b) concerning the determination or adjustment of royalty rates as provided in sections
112 and 114, during the calendar years specified in the schedule set forth in subsection (b),
the Copyright Royalty Judges shall cause notice of commencement of proceedings under
this chapter to be published in the Federal Register as provided in section 803(b)(1)(A).
(b) Timing of Proceedings.—
(1) Section 111 proceedings.—(A) A petition described in subsection (a) to initiate
proceedings under section 801(b)(2) concerning the adjustment of royalty rates under
section 111 to which subparagraph (A) or (D) of section 801(b)(2) applies may be filed
during the year 2015 and in each subsequent fifth calendar year.
(B) In order to initiate proceedings under section 801(b)(2) concerning the adjustment of royalty rates under section 111 to which subparagraph (B) or (C) of section
801(b)(2) applies, within 12 months after an event described in either of those subsections, any owner or user of a copyrighted work whose royalty rates are specified
by section 111, or by a rate established under this chapter before or after the enactment of the Copyright Royalty and Distribution Reform Act of 2004, may file a petition with the Copyright Royalty Judges declaring that the petitioner requests an
adjustment of the rate. The Copyright Royalty Judges shall then proceed as set forth
in subsection (a) of this section. Any change in royalty rates made under this chapter
pursuant to this subparagraph may be reconsidered in the year 2015, and each fifth
calendar year thereafter, in accordance with the provisions in section 801(b)(2) (B)
or (C), as the case may be. A petition for adjustment of rates established by section
111(d)(1)(B) as a result of a change in the rules and regulations of the Federal Communications Commission shall set forth the change on which the petition is based.
(C) Any adjustment of royalty rates under section 111 shall take effect as of the
first accounting period commencing after the publication of the determination of the
Copyright Royalty Judges in the Federal Register, or on such other date as is specified in that determination.
(2) Certain Section 112 proceedings.—Proceedings under this chapter shall be
commenced in the year 2007 to determine reasonable terms and rates of royalty payments for the activities described in section 112(e)(1) relating to the limitation on exclusive rights specified by section 114(d)(1)(C)(iv), to become effective on January 1,
2009. Such proceedings shall be repeated in each subsequent fifth calendar year.
(3) Section 114 and corresponding 112 proceedings.—
(A) FOR ELIGIBLE NONSUBSCRIPTION SERVICES AND NEW SUBSCRIPTION SERVICES.—Proceedings under this chapter shall be commenced as
soon as practicable after the date of enactment of the Copyright Royalty and Distribution Reform Act of 2004 to determine reasonable terms and rates of royalty payments under sections 114 and 112 for the activities of eligible nonsubscription
transmission services and new subscription services, to be effective for the period
beginning on January 1, 2006, and ending on December 31, 2010. Such proceedings
shall next be commenced in January 2009 to determine reasonable terms and rates
of royalty payments, to become effective on January 1, 2011. Thereafter, such proceedings shall be repeated in each subsequent fifth calendar year.
215

§ 804.

Copyright Act of 1976

(B) FOR PREEXISTING SUBSCRIPTION AND SATELLITE DIGITAL
AUDIO RADIO SERVICES.—Proceedings under this chapter shall be commenced
in January 2006 to determine reasonable terms and rates of royalty payments under
sections 114 and 112 for the activities of preexisting subscription services, to be effective during the period beginning on January 1, 2008, and ending on December 31,
2012, and preexisting satellite digital audio radio services, to be effective during the
period beginning on January 1, 2007, and ending on December 31, 2012. Such proceedings shall next be commenced in 2011 to determine reasonable terms and rates
of royalty payments, to become effective on January 1, 2013. Thereafter, such proceedings shall be repeated in each subsequent fifth calendar year , except that—
(i) with respect to preexisting subscription services, the terms and rates finally
determined for the rate period ending on December 31, 2022, shall remain in effect
through December 31, 2027, and there shall be no proceeding to determine terms
and rates for preexisting subscription services for the period beginning on January
1, 2023, and ending on December 31, 2027; and
(ii) with respect to pre-existing satellite digital audio radio services, the terms
and rates set forth by the Copyright Royalty Judges on December 14, 2017, in their
initial determination for the rate period ending on December 31, 2022, shall be in
effect through December 31, 2027, without any change based on a rehearing under
section 803(c)(2) and without the possibility of appeal under section 803(d), and
there shall be no proceeding to determine terms and rates for preexisting satellite
digital audio radio services for the period beginning on January 1, 2023, and ending on December 31, 2027.
(C)(i) Notwithstanding any other provision of this chapter, this subparagraph shall
govern proceedings commenced pursuant to section 114(f)(1)(C) concerning new
types of services.
(ii) Not later than 30 days after a petition to determine rates and terms for a new
type of service is filed by any copyright owner of sound recordings, or such new
type of service, indicating that such new type of service is or is about to become
operational, the Copyright Royalty Judges shall issue a notice for a proceeding to
determine rates and terms for such service.
(iii) The proceeding shall follow the schedule set forth in subsections (b), (c),
and (d) of section 803, except that—
(I) the determination shall be issued by not later than 24 months after the publication of the notice under clause (ii); and
(I) the decision shall take effect as provided in subsections (c)(2) and (d)(2) of
section 803 and section 114(f)(3)(B)(ii) and (C).
(iv) The rates and terms shall remain in effect for the period set forth in section
114(f)(1)(C) .
(4) Section 115 proceedings.—A petition described in subsection (a) to initiate proceedings under section 801(b)(1) concerning the adjustment or determination of royalty rates as provided in section 115 may be filed in the year 2006 and in each
subsequent fifth calendar year, or at such other times as the parties have agreed under
section 115(c)(3) (B) and (C).
(5) Section 116 proceedings.—(A) A petition described in subsection (a) to initiate
proceedings under section 801(b) concerning the determination of royalty rates and
terms as provided in section 116 may be filed at any time within 1 year after negotiated
licenses authorized by section 116 are terminated or expire and are not replaced by
subsequent agreements.
216

Copyright Act of 1976

§ 901.

(B) If a negotiated license authorized by section 116 is terminated or expires and
is not replaced by another such license agreement which provides permission to use
a quantity of musical works not substantially smaller than the quantity of such works
performed on coin-operated phonorecord players during the 1-year period ending
March 1, 1989, the Copyright Royalty Judges shall, upon petition filed under paragraph (1) within 1 year after such termination or expiration, commence a proceeding
to promptly establish an interim royalty rate or rates for the public performance by
means of a coin-operated phonorecord player of nondramatic musical works embodied in phonorecords which had been subject to the terminated or expired negotiated
license agreement. Such rate or rates shall be the same as the last such rate or rates
and shall remain in force until the conclusion of proceedings by the Copyright Royalty Judges, in accordance with section 803, to adjust the royalty rates applicable to
such works, or until superseded by a new negotiated license agreement, as provided
in section 116(b).
(6) Section 118 proceedings.—A petition described in subsection (a) to initiate proceedings under section 801(b)(1) concerning the determination of reasonable terms
and rates of royalty payments as provided in section 118 may be filed in the year 2006
and in each subsequent fifth calendar year.
(7) Section 1004 proceedings.—A petition described in subsection (a) to initiate
proceedings under section 801(b)(1) concerning the adjustment of reasonable royalty
rates under section 1004 may be filed as provided in section 1004(a)(3).
(8) Proceedings concerning distribution of royalty fees.—With respect to proceedings under section 801(b)(3) concerning the distribution of royalty fees in certain
circumstances under section 111, 119, or 1007, the Copyright Royalty Judges shall,
upon a determination that a controversy exists concerning such distribution, cause to
be published in the Federal Register notice of commencement of proceedings under
this chapter.
§ 805.—General rule for voluntarily negotiated agreements
Any rates or terms under this title that—
(1) are agreed to by participants to a proceeding under section 803(b)(3),
(2) are adopted by the Copyright Royalty Judges as part of a determination under
this chapter, and
(3) are in effect for a period shorter than would otherwise apply under a determination pursuant to this chapter,
shall remain in effect for such period of time as would otherwise apply under such determination, except that the Copyright Royalty Judges shall adjust the rates pursuant to
the voluntary negotiations to reflect national monetary inflation during the additional
period the rates remain in effect.
Chapter 9—Protection of Semiconductor Chip Products
§ 901.—Definitions
(a) As used in this chapter—
(1) a “semiconductor chip product” is the final or intermediate form of any product—
(A) having two or more layers of metallic, insulating, or semiconductor material,
deposited or otherwise placed on, or etched away or otherwise removed from, a piece
of semiconductor material in accordance with a predetermined pattern; and
217

§ 902.

Copyright Act of 1976

(B) intended to perform electronic circuitry functions;
(2) a “mask work” is a series of related images, however fixed or encoded—
(A) having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a
semiconductor chip product; and
(B) in which series the relation of the images to one another is that each image has
the pattern of the surface of one form of the semiconductor chip product;
(3) a mask work is “fixed” in a semiconductor chip product when its embodiment in
the product is sufficiently permanent or stable to permit the mask work to be perceived
or reproduced from the product for a period of more than transitory duration;
(4) to “distribute” means to sell, or to lease, bail, or otherwise transfer, or to offer to
sell, lease, bail, or otherwise transfer;
(5) to “commercially exploit” a mask work is to distribute to the public for commercial purposes a semiconductor chip product embodying the mask work; except that
such term includes an offer to sell or transfer a semiconductor chip product only when
the offer is in writing and occurs after the mask work is fixed in the semiconductor
chip product;
(6) the “owner” of a mask work is the person who created the mask work, the legal
representative of that person if that person is deceased or under a legal incapacity, or a
party to whom all the rights under this chapter of such person or representative are
transferred in accordance with section 903(b); except that, in the case of a work made
within the scope of a person’s employment, the owner is the employer for whom the
person created the mask work or a party to whom all the rights under this chapter of
the employer are transferred in accordance with section 903(b);
(7) an “innocent purchaser” is a person who purchases a semiconductor chip product
in good faith and without having notice of protection with respect to the semiconductor
chip product;
(8) having “notice of protection” means having actual knowledge that, or reasonable
grounds to believe that, a mask work is protected under this chapter; and
(9) an “infringing semiconductor chip product” is a semiconductor chip product
which is made, imported, or distributed in violation of the exclusive rights of the owner
of a mask work under this chapter.
(b) For purposes of this chapter, the distribution or importation of a product incorporating a semiconductor chip product as a part thereof is a distribution or importation of
that semiconductor chip product.
§ 902.—Subject matter of protection
(a)(1) Subject to the provisions of subsection (b), a mask work fixed in a semiconductor chip product, by or under the authority of the owner of the mask work, is eligible for
protection under this chapter if—
(A) on the date on which the mask work is registered under section 908, or is first
commercially exploited anywhere in the world, whichever occurs first, the owner of
the mask work is
(i) a national or domiciliary of the United States,
(ii) a national, domiciliary, or sovereign authority of a foreign nation that is a
party to a treaty affording protection to mask works to which the United States is
also a party, or
(iii) a stateless person, wherever that person may be domiciled;
(B) the mask work is first commercially exploited in the United States; or
218

Copyright Act of 1976

§ 903.

(C) the mask work comes within the scope of a Presidential proclamation issued
under paragraph (2).
(2) Whenever the President finds that a foreign nation extends, to mask works of
owners who are nationals or domiciliaries of the United States protection
(A) on substantially the same basis as that on which the foreign nation extends
protection to mask works of its own nationals and domiciliaries and mask works first
commercially exploited in that nation, or
(B) on substantially the same basis as provided in this chapter, the President may
by proclamation extend protection under this chapter to mask works
(i) of owners who are, on the date on which the mask works are registered under
section 908, or the date on which the mask works are first commercially exploited
anywhere in the world, whichever occurs first, nationals, domiciliaries, or sovereign authorities of that nation, or
(ii) which are first commercially exploited in that nation. The President may
revise, suspend, or revoke any such proclamation or impose any conditions or limitations on protection extended under any such proclamation.
(b) Protection under this chapter shall not be available for a mask work that—
(1) is not original; or
(2) consists of designs that are staple, commonplace, or familiar in the semiconductor industry, or variations of such designs, combined in a way that, considered as a
whole, is not original.
(c) In no case does protection under this chapter for a mask work extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
§ 903.—Ownership, transfer, licensing, and recordation
(a) The exclusive rights in a mask work subject to protection under this chapter belong
to the owner of the mask work.
(b) The owner of the exclusive rights in a mask work may transfer all of those rights,
or license all or less than all of those rights, by any written instrument signed by such
owner or a duly authorized agent of the owner. Such rights may be transferred or licensed
by operation of law, may be bequeathed by will, and may pass as personal property by
the applicable laws of intestate succession.
(c)(1) Any document pertaining to a mask work may be recorded in the Copyright
Office if the document filed for recordation bears the actual signature of the person who
executed it, or if it is accompanied by a sworn or official certification that it is a true copy
of the original, signed document. The Register of Copyrights shall, upon receipt of the
document and the fee specified pursuant to section 908(d), record the document and return it with a certificate of recordation. The recordation of any transfer or license under
this paragraph gives all persons constructive notice of the facts stated in the recorded
document concerning the transfer or license.
(2) In any case in which conflicting transfers of the exclusive rights in a mask work
are made, the transfer first executed shall be void as against a subsequent transfer
which is made for a valuable consideration and without notice of the first transfer,
unless the first transfer is recorded in accordance with paragraph (1) within three
months after the date on which it is executed, but in no case later than the day before
the date of such subsequent transfer.
(d) Mask works prepared by an officer or employee of the United States Government
as part of that person’s official duties are not protected under this chapter, but the United
219

§ 904.

Copyright Act of 1976

States Government is not precluded from receiving and holding exclusive rights in mask
works transferred to the Government under subsection (b).
§ 904.—Duration of protection
(a) The protection provided for a mask work under this chapter shall commence on the
date on which the mask work is registered under section 908, or the date on which the mask
work is first commercially exploited anywhere in the world, whichever occurs first.
(b) Subject to subsection (c) and the provisions of this chapter, the protection provided
under this chapter to a mask work shall end ten years after the date on which such protection commences under subsection (a).
(c) All terms of protection provided in this section shall run to the end of the calendar
year in which they would otherwise expire.
§ 905.—Exclusive rights in mask works
The owner of a mask work provided protection under this chapter has the exclusive
rights to do and to authorize any of the following:
(1) to reproduce the mask work by optical, electronic, or any other means;
(2) to import or distribute a semiconductor chip product in which the mask work is
embodied; and
(3) to induce or knowingly to cause another person to do any of the acts described
in paragraphs (1) and (2).
§ 906.—Limitation on exclusive rights: reverse engineering; first sale
(a) Notwithstanding the provisions of section 905, it is not an infringement of the exclusive rights of the owner of a mask work for—
(1) a person to reproduce the mask work solely for the purpose of teaching, analyzing, or evaluating the concepts or techniques embodied in the mask work or the circuitry, logic flow, or organization of components used in the mask work; or
(2) a person who performs the analysis or evaluation described in paragraph (1) to
incorporate the results of such conduct in an original mask work which is made to be
distributed.
(b) Notwithstanding the provisions of section 905(2), the owner of a particular semiconductor chip product made by the owner of the mask work, or by any person authorized
by the owner of the mask work, may import, distribute, or otherwise dispose of or use,
but not reproduce, that particular semiconductor chip product without the authority of
the owner of the mask work.
§ 907.—Limitation on exclusive rights: innocent infringement
(a) Notwithstanding any other provision of this chapter, an innocent purchaser of an
infringing semiconductor chip product—
(1) shall incur no liability under this chapter with respect to the importation or distribution of units of the infringing semiconductor chip product that occurs before the
innocent purchaser has notice of protection with respect to the mask work embodied
in the semiconductor chip product; and
(2) shall be liable only for a reasonable royalty on each unit of the infringing semiconductor chip product that the innocent purchaser imports or distributes after having
notice of protection with respect to the mask work embodied in the semiconductor chip
product.
220

Copyright Act of 1976

§ 908.

(b) The amount of the royalty referred to in subsection (a)(2) shall be determined by
the court in a civil action for infringement unless the parties resolve the issue by voluntary negotiation, mediation, or binding arbitration.
(c) The immunity of an innocent purchaser from liability referred to in subsection
(a)(1) and the limitation of remedies with respect to an innocent purchaser referred to in
subsection (a)(2) shall extend to any person who directly or indirectly purchases an infringing semiconductor chip product from an innocent purchaser.
(d) The provisions of subsections (a), (b), and (c) apply only with respect to those units
of an infringing semiconductor chip product that an innocent purchaser purchased before
having notice of protection with respect to the mask work embodied in the semiconductor
chip product.
§ 908.—Registration of claims of protection
(a) The owner of a mask work may apply to the Register of Copyrights for registration
of a claim of protection in a mask work. Protection of a mask work under this chapter
shall terminate if application for registration of a claim of protection in the mask work is
not made as provided in this chapter within two years after the date on which the mask
work is first commercially exploited anywhere in the world.
(b) The Register of Copyrights shall be responsible for all administrative functions and
duties under this chapter. Except for section 708, the provisions of chapter 7 of this title
relating to the general responsibilities, organization, regulatory authority, actions, records, and publications of the Copyright Office shall apply to this chapter, except that the
Register of Copyrights may make such changes as may be necessary in applying those
provisions to this chapter.
(c) The application for registration of a mask work shall be made on a form prescribed
by the Register of Copyrights. Such form may require any information regarded by the
Register as bearing upon the preparation or identification of the mask work, the existence
or duration of protection of the mask work under this chapter, or ownership of the mask
work. The application shall be accompanied by the fee set pursuant to subsection (d) and
the identifying material specified pursuant to such subsection.
(d) The Register of Copyrights shall by regulation set reasonable fees for the filing of
applications to register claims of protection in mask works under this chapter, and for
other services relating to the administration of this chapter or the rights under this chapter, taking into consideration the cost of providing those services, the benefits of a public
record, and statutory fee schedules under this title. The Register shall also specify the
identifying material to be deposited in connection with the claim for registration.
(e) If the Register of Copyrights, after examining an application for registration, determines, in accordance with the provisions of this chapter, that the application relates to a
mask work which is entitled to protection under this chapter, then the Register shall register the claim of protection and issue to the applicant a certificate of registration of the
claim of protection under the seal of the Copyright Office. The effective date of registration of a claim of protection shall be the date on which an application, deposit of identifying material, and fee, which are determined by the Register of Copyrights or by a court
of competent jurisdiction to be acceptable for registration of the claim, have all been
received in the Copyright Office.
(f) In any action for infringement under this chapter, the certificate of registration of a
mask work shall constitute prima facie evidence
(1) of the facts stated in the certificate, and
(2) that the applicant issued the certificate has met the requirements of this chapter,
221

§ 909.

Copyright Act of 1976

and the regulations issued under this chapter, with respect to the registration of claims.
(g) Any applicant for registration under this section who is dissatisfied with the refusal
of the Register of Copyrights to issue a certificate of registration under this section may
seek judicial review of that refusal by bringing an action for such review in an appropriate United States district court not later than sixty days after the refusal. The provisions
of chapter 7 of title 5 shall apply to such judicial review. The failure of the Register of
Copyrights to issue a certificate of registration within four months after an application
for registration is filed shall be deemed to be a refusal to issue a certificate of registration
for purposes of this subsection and section 910(b)(2), except that, upon a showing of
good cause, the district court may shorten such four-month period.
§ 909.—Mask work notice
(a) The owner of a mask work provided protection under this chapter may affix notice
to the mask work, and to masks and semiconductor chip products embodying the mask
work, in such manner and location as to give reasonable notice of such protection. The
Register of Copyrights shall prescribe by regulation, as examples, specific methods of
affixation and positions of notice for purposes of this section, but these specifications shall
not be considered exhaustive. The affixation of such notice is not a condition of protection
under this chapter, but shall constitute prima facie evidence of notice of protection.
(b) The notice referred to in subsection (a) shall consist of—
(1) the words “mask work”, the symbol *M*, or the symbol M (the letter M in a
circle); and
(2) the name of the owner or owners of the mask work or an abbreviation by which
the name is recognized or is generally known.
§ 910.—Enforcement of exclusive rights
(a) Except as otherwise provided in this chapter, any person who violates any of the
exclusive rights of the owner of a mask work under this chapter, by conduct in or affecting commerce, shall be liable as an infringer of such rights. As used in this subsection,
the term “any person” includes any State, any instrumentality of a State, and any officer
or employee of a State or instrumentality of a State acting in his or her official capacity.
Any State, and any such instrumentality, officer, or employee, shall be subject to the
provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
(b)(1) The owner of a mask work protected under this chapter, or the exclusive licensee
of all rights under this chapter with respect to the mask work, shall, after a certificate of
registration of a claim of protection in that mask work has been issued under section 908,
be entitled to institute a civil action for any infringement with respect to the mask work
which is committed after the commencement of protection of the mask work under section 904(a).
(2) In any case in which an application for registration of a claim of protection in a
mask work and the required deposit of identifying material and fee have been received
in the Copyright Office in proper form and registration of the mask work has been refused, the applicant is entitled to institute a civil action for infringement under this chapter with respect to the mask work if notice of the action, together with a copy of the
complaint, is served on the Register of Copyrights, in accordance with the Federal Rules
of Civil Procedure. The Register may, at his or her option, become a party to the action
with respect to the issue of whether the claim of protection is eligible for registration by
222

Copyright Act of 1976

§ 911.

entering an appearance within sixty days after such service, but the failure of the Register
to become a party to the action shall not deprive the court of jurisdiction to determine
that issue.
(c)(1) 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
905 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:
(A) 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.
(B) Furnish proof that the mask work involved is protected under this chapter and
that the importation of the articles would infringe the rights in the mask work under
this chapter.
(C) Post a surety bond for any injury that may result if the detention or exclusion
of the articles proves to be unjustified.
(2) Articles imported in violation of the rights set forth in section 905 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.
§ 911.—Civil actions
(a) Any court having jurisdiction of a civil action arising under this chapter may grant
temporary restraining orders, preliminary injunctions, and permanent injunctions on such
terms as the court may deem reasonable to prevent or restrain infringement of the exclusive rights in a mask work under this chapter.
(b) Upon finding an infringer liable, to a person entitled under section 910(b)(1) to institute a civil action, for an infringement of any exclusive right under this chapter, the court
shall award such person actual damages suffered by the person as a result of the infringement. The court shall also award such person the infringer’s profits that are attributable to
the infringement and are not taken into account in computing the award of actual damages.
In establishing the infringer’s profits, such person is required to present proof only of the
infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the mask work.
(c) At any time before final judgment is rendered, a person entitled to institute a civil
action for infringement may elect, instead of actual damages and profits as provided by
subsection (b), an award of statutory damages for all infringements involved in the action, with respect to any one mask work for which any one infringer is liable individually,
or for which any two or more infringers are liable jointly and severally, in an amount not
more than $250,000 as the court considers just.
(d) An action for infringement under this chapter shall be barred unless the action is
commenced within three years after the claim accrues.
(e)(1) At any time while an action for infringement of the exclusive rights in a mask
work under this chapter is pending, the court may order the impounding, on such terms as
it may deem reasonable, of all semiconductor chip products, and any drawings, tapes,
masks, or other products by means of which such products may be reproduced, that are
claimed to have been made, imported, or used in violation of those exclusive rights. Insofar
223

§ 912.

Copyright Act of 1976

as practicable, applications for orders under this paragraph shall be heard and determined
in the same manner as an application for a temporary restraining order or preliminary
injunction.
(2) As part of a final judgment or decree, the court may order the destruction or other
disposition of any infringing semiconductor chip products, and any masks, tapes, or
other articles by means of which such products may be reproduced.
(f) In any civil action arising under this chapter, the court in its discretion may allow
the recovery of full costs, including reasonable attorneys’ fees, to the prevailing party.
(g)(1) Any State, any instrumentality of a State, and any officer or employee of a State
or instrumentality of a State acting in his or her official capacity, shall not be immune,
under the Eleventh Amendment of the Constitution of the United States or under any other
doctrine of sovereign immunity, from suit in Federal court by any person, including any
governmental or nongovernmental entity, for a violation of any of the exclusive rights of
the owner of a mask work under this chapter, or for any other violation under this chapter.
(2) In a suit described in paragraph (1) for a violation described in that paragraph,
remedies (including remedies both at law and in equity) are available for the violation
to the same extent as such remedies are available for such a violation in a suit against
any public or private entity other than a State, instrumentality of a State, or officer or
employee of a State acting in his or her official capacity. Such remedies include actual
damages and profits under subsection (b), statutory damages under subsection (c), impounding and disposition of infringing articles under subsection (e), and costs and attorney’s fees under subsection (f).
§ 912.—Relation to other laws
(a) Nothing in this chapter shall affect any right or remedy held by any person under
chapters 1 through 8 or 10 of this title, or under title 35.
(b) Except as provided in section 908(b) of this title, references to “this title” or “title 17”
in chapters 1 through 8 or 10 of this title shall be deemed not to apply to this chapter.
(c) The provisions of this chapter shall preempt the laws of any State to the extent those
laws provide any rights or remedies with respect to a mask work which are equivalent to
those rights or remedies provided by this chapter, except that such preemption shall be
effective only with respect to actions filed on or after January 1, 1986.
(d) Notwithstanding subsection (c), nothing in this chapter shall detract from any rights
of a mask work owner, whether under Federal law (exclusive of this chapter) or under
the common law or the statutes of a State, heretofore or hereafter declared or enacted,
with respect to any mask work first commercially exploited before July 1, 1983.
§ 913.—Transitional provisions
(a) No application for registration under section 908 may be filed, and no civil action
under section 910 or other enforcement proceeding under this chapter may be instituted,
until sixty days after the date of the enactment of this chapter.
(b) No monetary relief under section 911 may be granted with respect to any conduct
that occurred before the date of the enactment of this chapter, except as provided in subsection (d).
(c) Subject to subsection (a), the provisions of this chapter apply to all mask works that
are first commercially exploited or are registered under this chapter, or both, on or after
the date of the enactment of this chapter.
(d)(1) Subject to subsection (a), protection is available under this chapter to any mask
224

Copyright Act of 1976

§ 914.

work that was first commercially exploited on or after July 1, 1983, and before the date
of the enactment of this chapter, if a claim of protection in the mask work is registered
in the Copyright Office before July 1, 1985, under section 908.
(2) In the case of any mask work described in paragraph (1) that is provided protection under this chapter, infringing semiconductor chip product units manufactured before the date of the enactment of this chapter may, without liability under sections 910
and 911, be imported into or distributed in the United States, or both, until two years
after the date of registration of the mask work under section 908, but only if the importer or distributor, as the case may be, first pays or offers to pay the reasonable royalty referred to in section 907(a)(2) to the mask work owner, on all such units imported
or distributed, or both, after the date of the enactment of this chapter.
(3) In the event that a person imports or distributes infringing semiconductor chip
product units described in paragraph (2) of this subsection without first paying or offering to pay the reasonable royalty specified in such paragraph, or if the person refuses
or fails to make such payment, the mask work owner shall be entitled to the relief
provided in sections 910 and 911.
§ 914.—International transitional provisions
(a) Notwithstanding the conditions set forth in subparagraphs (A) and (C) of section
902(a)(1) with respect to the availability of protection under this chapter to nationals,
domiciliaries, and sovereign authorities of a foreign nation, the Secretary of Commerce
may, upon the petition of any person, or upon the Secretary’s own motion, issue an order
extending protection under this chapter to such foreign nationals, domiciliaries, and sovereign authorities if the Secretary finds—
(1) that the foreign nation is making good faith efforts and reasonable progress
toward—
(A) entering into a treaty described in section 902(a)(1)(A); or
(B) enacting or implementing legislation that would be in compliance with subparagraph (A) or (B) of section 902(a)(2); and
(2) that the nationals, domiciliaries, and sovereign authorities of the foreign nation,
and persons controlled by them, are not engaged in the misappropriation, or unauthorized distribution or commercial exploitation, of mask works; and
(3) that issuing the order would promote the purposes of this chapter and international comity with respect to the protection of mask works.
(b) While an order under subsection (a) is in effect with respect to a foreign nation, no
application for registration of a claim for protection in a mask work under this chapter
may be denied solely because the owner of the mask work is a national, domiciliary, or
sovereign authority of that foreign nation, or solely because the mask work was first
commercially exploited in that foreign nation.
(c) Any order issued by the Secretary of Commerce under subsection (a) shall be effective for such period as the Secretary designates in the order, except that no such order may
be effective after the date on which the authority of the Secretary of Commerce terminates
under subsection (e). The effective date of any such order shall also be designated in the
order. In the case of an order issued upon the petition of a person, such effective date may
be no earlier than the date on which the Secretary receives such petition.
(d)(1) Any order issued under this section shall terminate if—
(A) the Secretary of Commerce finds that any of the conditions set forth in paragraphs (1), (2), and (3) of subsection (a) no longer exist; or
225

§ 1001.

Copyright Act of 1976

(B) mask works of nationals, domiciliaries, and sovereign authorities of that foreign nation or mask works first commercially exploited in that foreign nation become
eligible for protection under subparagraph (A) or (C) of section 902(a)(1).
(2) Upon the termination or expiration of an order issued under this section, registrations of claims of protection in mask works made pursuant to that order shall remain
valid for the period specified in section 904.
(e) The authority of the Secretary of Commerce under this section shall commence on
the date of the enactment of this chapter, and shall terminate on July 1, 1995.
(f)(1) The Secretary of Commerce shall promptly notify the Register of Copyrights
and the Committees on the Judiciary of the Senate and the House of Representatives of
the issuance or termination of any order under this section, together with a statement of
the reasons for such action. The Secretary shall also publish such notification and statement of reasons in the Federal Register.
(2) Two years after the date of the enactment of this chapter, the Secretary of Commerce, in consultation with the Register of Copyrights, shall transmit to the Committees on the Judiciary of the Senate and the House of Representatives a report on the
actions taken under this section and on the current status of international recognition
of mask work protection. The report shall include such recommendations for modifications of the protection accorded under this chapter to mask works owned by nationals, domiciliaries, or sovereign authorities of foreign nations as the Secretary, in
consultation with the Register of Copyrights, considers would promote the purposes
of this chapter and international comity with respect to mask work protection. Not later
than July 1, 1994, the Secretary of Commerce, in consultation with the Register of
Copyrights, shall transmit to the Committees on the Judiciary of the Senate and the
House of Representatives a report updating the matters contained in the report transmitted under the preceding sentence.
Chapter 10—Digital Audio Recording Devices and Media
Subchapter A—Definitions
§ 1001.—Definitions
As used in this chapter, the following terms have the following meanings:
(1) A “digital audio copied recording” is a reproduction in a digital recording format
of a digital musical recording, whether that reproduction is made directly from another
digital musical recording or indirectly from a transmission.
(2) A “digital audio interface device” is any machine or device that is designed specifically to communicate digital audio information and related interface data to a digital audio recording device through a nonprofessional interface.
(3) A “digital audio recording device” is any machine or device of a type commonly
distributed to individuals for use by individuals, whether or not included with or as
part of some other machine or device, the digital recording function of which is designed or marketed for the primary purpose of, and that is capable of, making a digital
audio copied recording for private use, except for—
(A) professional model products, and
(B) dictation machines, answering machines, and other audio recording equipment
that is designed and marketed primarily for the creation of sound recordings resulting
from the fixation of nonmusical sounds.
226

Copyright Act of 1976

§ 1001.

(4)(A) A “digital audio recording medium” is any material object in a form commonly distributed for use by individuals, that is primarily marketed or most commonly
used by consumers for the purpose of making digital audio copied recordings by use
of a digital audio recording device.
(B) Such term does not include any material object—
(i) that embodies a sound recording at the time it is first distributed by the importer or manufacturer; or
(ii) that is primarily marketed and most commonly used by consumers either for
the purpose of making copies of motion pictures or other audiovisual works or for
the purpose of making copies of nonmusical literary works, including computer
programs or data bases.
(5)(A) A “digital musical recording” is a material object—
(i) in which are fixed, in a digital recording format, only sounds, and material,
statements, or instructions incidental to those fixed sounds, if any, and
(ii) from which the sounds and material can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
(B) A “digital musical recording” does not include a material object—
(i) in which the fixed sounds consist entirely of spoken word recordings, or
(ii) in which one or more computer programs are fixed, except that a digital musical recording may contain statements or instructions constituting the fixed
sounds and incidental material, and statements or instructions to be used directly
or indirectly in order to bring about the perception, reproduction, or communication of the fixed sounds and incidental material.
(C) For purposes of this paragraph—
(i) a “spoken word recording” is a sound recording in which are fixed only a
series of spoken words, except that the spoken words may be accompanied by incidental musical or other sounds, and
(ii) the term “incidental” means related to and relatively minor by comparison.
(6) “Distribute” means to sell, lease, or assign a product to consumers in the United
States, or to sell, lease, or assign a product in the United States for ultimate transfer to
consumers in the United States.
(7) An “interested copyright party” is—
(A) the owner of the exclusive right under section 106(1) of this title to reproduce a
sound recording of a musical work that has been embodied in a digital musical recording or analog musical recording lawfully made under this title that has been distributed;
(B) the legal or beneficial owner of, or the person that controls, the right to reproduce in a digital musical recording or analog musical recording a musical work that
has been embodied in a digital musical recording or analog musical recording lawfully made under this title that has been distributed;
(C) a featured recording artist who performs on a sound recording that has been
distributed; or
(D) any association or other organization—
(i) representing persons specified in subparagraph (A), (B), or (C), or
(ii) engaged in licensing rights in musical works to music users on behalf of
writers and publishers.
(8) To “manufacture” means to produce or assemble a product in the United States.
A “manufacturer” is a person who manufactures.
(9) A “music publisher” is a person that is authorized to license the reproduction of
a particular musical work in a sound recording.
227

§ 1002.

Copyright Act of 1976

(10) A “professional model product” is an audio recording device that is designed,
manufactured, marketed, and intended for use by recording professionals in the ordinary course of a lawful business, in accordance with such requirements as the Secretary
of Commerce shall establish by regulation.
(11) The term “serial copying” means the duplication in a digital format of a copyrighted musical work or sound recording from a digital reproduction of a digital musical recording. The term “digital reproduction of a digital musical recording” does not
include a digital musical recording as distributed, by authority of the copyright owner,
for ultimate sale to consumers.
(12) The “transfer price” of a digital audio recording device or a digital audio recording medium—
(A) is, subject to subparagraph (B)—
(i) in the case of an imported product, the actual entered value at United States
Customs (exclusive of any freight, insurance, and applicable duty), and
(ii) in the case of a domestic product, the manufacturer’s transfer price (FOB the
manufacturer, and exclusive of any direct sales taxes or excise taxes incurred in
connection with the sale); and
(B) shall, in a case in which the transferor and transferee are related entities or
within a single entity, not be less than a reasonable arms-length price under the principles of the regulations adopted pursuant to section 482 of the Internal Revenue
Code of 1986, or any successor provision to such section.
(13) A “writer” is the composer or lyricist of a particular musical work.
Subchapter B—Copying Controls
§ 1002.—Incorporation of copying controls
(a) Prohibition on Importation, Manufacture, and Distribution.—No person shall
import, manufacture, or distribute any digital audio recording device or digital audio interface device that does not conform to—
(1) the Serial Copy Management System;
(2) a system that has the same functional characteristics as the Serial Copy Management System and requires that copyright and generation status information be accurately sent, received, and acted upon between devices using the system’s method of
serial copying regulation and devices using the Serial Copy Management System; or
(3) any other system certified by the Secretary of Commerce as prohibiting unauthorized serial copying.
(b) Development of Verification Procedure.—The Secretary of Commerce shall establish a procedure to verify, upon the petition of an interested party, that a system meets
the standards set forth in subsection (a)(2).
(c) Prohibition on Circumvention of the System.—No person shall import, manufacture, or distribute any device, or offer or perform any service, the primary purpose or effect
of which is to avoid, bypass, remove, deactivate, or otherwise circumvent any program or
circuit which implements, in whole or in part, a system described in subsection (a).
(d) Encoding of Information on Digital Musical Recordings.—
(1) Prohibition on encoding inaccurate information.—No person shall encode a
digital musical recording of a sound recording with inaccurate information relating to
the category code, copyright status, or generation status of the source material for the
recording.
(2) Encoding of copyright status not required.—Nothing in this chapter requires
228

Copyright Act of 1976

§ 1004.

any person engaged in the importation or manufacture of digital musical recordings to
encode any such digital musical recording with respect to its copyright status.
(e) Information Accompanying Transmissions in Digital Format.—Any person
who transmits or otherwise communicates to the public any sound recording in digital
format is not required under this chapter to transmit or otherwise communicate the information relating to the copyright status of the sound recording. Any such person who does
transmit or otherwise communicate such copyright status information shall transmit or
communicate such information accurately.
Subchapter C—Royalty Payments
§ 1003.—Obligation to make royalty payments
(a) Prohibition on Importation and Manufacture.—No person shall import into and
distribute, or manufacture and distribute, any digital audio recording device or digital
audio recording medium unless such person records the notice specified by this section
and subsequently deposits the statements of account and applicable royalty payments for
such device or medium specified in section 1004.
(b) Filing of Notice.—The importer or manufacturer of any digital audio recording device or digital audio recording medium, within a product category or utilizing a technology
with respect to which such manufacturer or importer has not previously filed a notice under
this subsection, shall file with the Register of Copyrights a notice with respect to such
device or medium, in such form and content as the Register shall prescribe by regulation.
(c) Filing of Quarterly and Annual Statements of Account.—
(1) Generally.—Any importer or manufacturer that distributes any digital audio recording device or digital audio recording medium that it manufactured or imported
shall file with the Register of Copyrights, in such form and content as the Register
shall prescribe by regulation, such quarterly and annual statements of account with
respect to such distribution as the Register shall prescribe by regulation.
(2) Certification, verification, and confidentiality.—Each such statement shall be
certified as accurate by an authorized officer or principal of the importer or manufacturer. The Register shall issue regulations to provide for the verification and audit of
such statements and to protect the confidentiality of the information contained in such
statements. Such regulations shall provide for the disclosure, in confidence, of such
statements to interested copyright parties.
(3) Royalty payments.—Each such statement shall be accompanied by the royalty
payments specified in section 1004.
§ 1004.—Royalty payments
(a) Digital Audio Recording Devices.—
(1) Amount of payment.—The royalty payment due under section 1003 for each
digital audio recording device imported into and distributed in the United States, or
manufactured and distributed in the United States, shall be 2 percent of the transfer
price. Only the first person to manufacture and distribute or import and distribute such
device shall be required to pay the royalty with respect to such device.
(2) Calculation for devices distributed with other devices.—With respect to a
digital audio recording device first distributed in combination with one or more devices, either as a physically integrated unit or as separate components, the royalty payment shall be calculated as follows:
(A) If the digital audio recording device and such other devices are part of a physically
229

§ 1005.

Copyright Act of 1976

integrated unit, the royalty payment shall be based on the transfer price of the unit, but
shall be reduced by any royalty payment made on any digital audio recording device
included within the unit that was not first distributed in combination with the unit.
(B) If the digital audio recording device is not part of a physically integrated unit
and substantially similar devices have been distributed separately at any time during
the preceding 4 calendar quarters, the royalty payment shall be based on the average
transfer price of such devices during those 4 quarters.
(C) If the digital audio recording device is not part of a physically integrated unit and
substantially similar devices have not been distributed separately at any time during the
preceding 4 calendar quarters, the royalty payment shall be based on a constructed price
reflecting the proportional value of such device to the combination as a whole.
(3) Limits on royalties.—Notwithstanding paragraph (1) or (2), the amount of the
royalty payment for each digital audio recording device shall not be less than $1 nor
more than the royalty maximum. The royalty maximum shall be $8 per device, except
that in the case of a physically integrated unit containing more than 1 digital audio
recording device, the royalty maximum for such unit shall be $12. During the 6th year
after the effective date of this chapter, and not more than once each year thereafter,
any interested copyright party may petition the Copyright Royalty Judges to increase
the royalty maximum and, if more than 20 percent of the royalty payments are at the
relevant royalty maximum, the Copyright Royalty Judges shall prospectively increase
such royalty maximum with the goal of having no more than 10 percent of such payments at the new royalty maximum; however the amount of any such increase as a
percentage of the royalty maximum shall in no event exceed the percentage increase
in the Consumer Price Index during the period under review.
(b) Digital Audio Recording Media.—The royalty payment due under section 1003
for each digital audio recording medium imported into and distributed in the United
States, or manufactured and distributed in the United States, shall be 3 percent of the
transfer price. Only the first person to manufacture and distribute or import and distribute
such medium shall be required to pay the royalty with respect to such medium.
§ 1005.—Deposit of royalty payments and deduction of expenses
The Register of Copyrights shall receive all royalty payments deposited under this
chapter and, after deducting the reasonable costs incurred by the Copyright Office under
this chapter, shall deposit the balance in the Treasury of the United States as offsetting
receipts, in such manner as the Secretary of the Treasury directs. All funds held by the
Secretary of the Treasury shall be invested in interest-bearing United States securities
for later distribution with interest under section 1007. The Register may, in the Register’s
discretion, 4 years after the close of any calendar year, close out the royalty payments
account for that calendar year, and may treat any funds remaining in such account and
any subsequent deposits that would otherwise be attributable to that calendar year as
attributable to the succeeding calendar year.
§ 1006.—Entitlement to royalty payments
(a) Interested Copyright Parties.—The royalty payments deposited pursuant to section 1005 shall, in accordance with the procedures specified in section 1007, be distributed
to any interested copyright party—
(1) whose musical work or sound recording has been—
(A) embodied in a digital musical recording or an analog musical recording lawfully
230

Copyright Act of 1976

§ 1007.

made under this title that has been distributed, and
(B) distributed in the form of digital musical recordings or analog musical recordings or disseminated to the public in transmissions, during the period to which such
payments pertain; and
(2) who has filed a claim under section 1007.
(b) Allocation of Royalty Payments to Groups.—The royalty payments shall be divided into 2 funds as follows:
(1) The Sound Recordings Fund.—66-2/3 percent of the royalty payments shall be
allocated to the Sound Recordings Fund. 2-5/8 percent of the royalty payments allocated to the Sound Recordings Fund shall be placed in an escrow account managed by
an independent administrator jointly appointed by the interested copyright parties described in section 1001(7)(A) and the American Federation of Musicians (or any successor entity) to be distributed to nonfeatured musicians (whether or not members of
the American Federation of Musicians or any successor entity) who have performed
on sound recordings distributed in the United States. 13/8 percent of the royalty payments allocated to the Sound Recordings Fund shall be placed in an escrow account
managed by an independent administrator jointly appointed by the interested copyright
parties described in section 1001(7)(A) and the American Federation of Television and
Radio Artists (or any successor entity) to be distributed to nonfeatured vocalists
(whether or not members of the American Federation of Television and Radio Artists
or any successor entity) who have performed on sound recordings distributed in the
United States. 40 percent of the remaining royalty payments in the Sound Recordings
Fund shall be distributed to the interested copyright parties described in section
1001(7)(C), and 60 percent of such remaining royalty payments shall be distributed to
the interested copyright parties described in section 1001(7)(A).
(2) The Musical Works Fund.—
(A) 33-1/3 percent of the royalty payments shall be allocated to the Musical Works
Fund for distribution to interested copyright parties described in section 1001(7)(B).
(B)(i) Music publishers shall be entitled to 50 percent of the royalty payments allocated to the Musical Works Fund.
(ii) Writers shall be entitled to the other 50 percent of the royalty payments allocated to the Musical Works Fund.
(c) Allocation of Royalty Payments Within Groups.—If all interested copyright parties within a group specified in subsection (b) do not agree on a voluntary proposal for
the distribution of the royalty payments within each group, the Copyright Royalty Judges
shall, pursuant to the procedures specified under section 1007(c), allocate royalty payments under this section based on the extent to which, during the relevant period—
(1) for the Sound Recordings Fund, each sound recording was distributed in the form
of digital musical recordings or analog musical recordings; and
(2) for the Musical Works Fund, each musical work was distributed in the form of
digital musical recordings or analog musical recordings or disseminated to the public
in transmissions.
§ 1007.—Procedures for distributing royalty payments
(a) Filing of Claims and Negotiations.—
(1) Filing of claims.—During the first 2 months of each calendar year, every interested copyright party seeking to receive royalty payments to which such party is entitled under section 1006 shall file with the Copyright Royalty Judges a claim for
231

§ 1008.

Copyright Act of 1976

payments collected during the preceding year in such form and manner as the Copyright Royalty Judges shall prescribe by regulation.
(2) Negotiations.—Notwithstanding any provision of the antitrust laws, for purposes of this section interested copyright parties within each group specified in section
1006(b) may agree among themselves to the proportionate division of royalty payments, may lump their claims together and file them jointly or as a single claim, or
may designate a common agent, including any organization described in section
1001(7)(D), to negotiate or receive payment on their behalf; except that no agreement
under this subsection may modify the allocation of royalties specified in section
1006(b).
(b) Distribution of Payments in the Absence of a Dispute.—After the period established for the filing of claims under subsection (a), in each year, the Copyright Royalty
Judges shall determine whether there exists a controversy concerning the distribution of
royalty payments under section 1006(c). If the Copyright Royalty Judges determine that
no such controversy exists, the Copyright Royalty Judges shall, within 30 days after such
determination, authorize the distribution of the royalty payments as set forth in the agreements regarding the distribution of royalty payments entered into pursuant to subsection
(a). The Librarian of Congress shall, before such royalty payments are distributed, deduct
the reasonable administrative costs incurred under this section.
(c) Resolution of Disputes.—If the Copyright Royalty Judges find the existence of a
controversy, the Copyright Royalty Judges shall, pursuant to chapter 8 of this title, conduct a proceeding to determine the distribution of royalty payments. During the pendency
of such a proceeding, the Copyright Royalty Judges shall withhold from distribution an
amount sufficient to satisfy all claims with respect to which a controversy exists, but
shall, to the extent feasible, authorize the distribution of any amounts that are not in controversy. The Librarian of Congress shall, before such royalty payments are distributed,
deduct the reasonable administrative costs incurred under this section.
Subchapter D—Prohibition on Certain Infringement Actions, Remedies, and
Arbitration
§ 1008.—Prohibition on certain infringement actions
No action may be brought under this title alleging infringement of copyright based on
the manufacture, importation, or distribution of a digital audio recording device, a digital
audio recording medium, an analog recording device, or an analog recording medium, or
based on the noncommercial use by a consumer of such a device or medium for making
digital musical recordings or analog musical recordings.
§ 1009.—Civil remedies
(a) Civil Actions.—Any interested copyright party injured by a violation of section
1002 or 1003 may bring a civil action in an appropriate United States district court
against any person for such violation.
(b) Other Civil Actions.—Any person injured by a violation of this chapter may bring
a civil action in an appropriate United States district court for actual damages incurred
as a result of such violation.
(c) Powers of the Court.—In an action brought under subsection (a), the court—
(1) may grant temporary and permanent injunctions on such terms as it deems reasonable to prevent or restrain such violation;
(2) in the case of a violation of section 1002, or in the case of an injury resulting
232

Copyright Act of 1976

§ 1009.

from a failure to make royalty payments required by section 1003, shall award damages under subsection (d);
(3) in its discretion may allow the recovery of costs by or against any party other
than the United States or an officer thereof; and
(4) in its discretion may award a reasonable attorney’s fee to the prevailing party.
(d) Award of Damages.—
(1) Damages for section 1002 or 1003 violations.—
(A) Actual damages.—
(i) In an action brought under subsection (a), if the court finds that a violation of
section 1002 or 1003 has occurred, the court shall award to the complaining party
its actual damages if the complaining party elects such damages at any time before
final judgment is entered.
(ii) In the case of section 1003, actual damages shall constitute the royalty payments that should have been paid under section 1004 and deposited under section
1005. In such a case, the court, in its discretion, may award an additional amount
of not to exceed 50 percent of the actual damages.
(B) Statutory damages for section 1002 violations.—
(i) Device.—A complaining party may recover an award of statutory damages
for each violation of section 1002(a) or (c) in the sum of not more than $2,500 per
device involved in such violation or per device on which a service prohibited by
section 1002(c) has been performed, as the court considers just.
(ii) Digital musical recording.—A complaining party may recover an award of
statutory damages for each violation of section 1002(d) in the sum of not more
than $25 per digital musical recording involved in such violation, as the court considers just.
(iii) Transmission.—A complaining party may recover an award of damages
for each transmission or communication that violates section 1002(e) in the sum
of not more than $10,000, as the court considers just.
(2) Repeated violations.—In any case in which the court finds that a person has
violated section 1002 or 1003 within 3 years after a final judgment against that person
for another such violation was entered, the court may increase the award of damages
to not more than double the amounts that would otherwise be awarded under paragraph
(1), as the court considers just.
(3) Innocent violations of section 1002.—The court in its discretion may reduce the
total award of damages against a person violating section 1002 to a sum of not less
than $250 in any case in which the court finds that the violator was not aware and had
no reason to believe that its acts constituted a violation of section 1002.
(e) Payment of Damages.—Any award of damages under subsection (d) shall be deposited with the Register pursuant to section 1005 for distribution to interested copyright
parties as though such funds were royalty payments made pursuant to section 1003.
(f) Impounding of Articles.—At any time while an action under subsection (a) is
pending, the court may order the impounding, on such terms as it deems reasonable, of
any digital audio recording device, digital musical recording, or device specified in section 1002(c) that is in the custody or control of the alleged violator and that the court has
reasonable cause to believe does not comply with, or was involved in a violation of,
section 1002.
(g) Remedial Modification and Destruction of Articles.—In an action brought under
subsection (a), the court may, as part of a final judgment or decree finding a violation of
233

§ 1010.

Copyright Act of 1976

section 1002, order the remedial modification or the destruction of any digital audio recording device, digital musical recording, or device specified in section 1002(c) that—
(1) does not comply with, or was involved in a violation of, section 1002, and
(2) is in the custody or control of the violator or has been impounded under subsection (f).
§ 1010.—Determination of certain disputes
(a) Scope of Determination.—Before the date of first distribution in the United States
of a digital audio recording device or a digital audio interface device, any party manufacturing, importing, or distributing such device, and any interested copyright party may
mutually agree to petition the Copyright Royalty Judges to determine whether such device is subject to section 1002, or the basis on which royalty payments for such device
are to be made under section 1003.
(b) Initiation of Proceedings.—The parties under subsection (a) shall file the petition
with the Copyright Royalty Judges requesting the commencement of a proceeding.
Within 2 weeks after receiving such a petition, the Chief Copyright Royalty Judge shall
cause notice to be published in the Federal Register of the initiation of the proceeding.
(c) Stay of Judicial Proceedings.—Any civil action brought under section 1009
against a party to a proceeding under this section shall, on application of one of the parties to the proceeding, be stayed until completion of the proceeding.
(d) Proceeding.—The Copyright Royalty Judges shall conduct a proceeding with respect to the matter concerned, in accordance with such procedures as the Copyright Royalty Judges may adopt. The Copyright Royalty Judges shall act on the basis of a fully
documented written record. Any party to the proceeding may submit relevant information and proposals to the Copyright Royalty Judges. The parties to the proceeding
shall each bear their respective costs of participation.
(e) Judicial Review.—Any determination of the Copyright Royalty Judges under subsection (d) may be appealed, by a party to the proceeding, in accordance with section
803(d) of this title. The pendency of an appeal under this subsection shall not stay the
determination of the Copyright Royalty Judges. If the court modifies the determination
of the Copyright Royalty Judges, the court shall have jurisdiction to enter its own decision in accordance with its final judgment. The court may further vacate the determination of the Copyright Royalty Judges and remand the case for proceedings as provided
in this section.
Chapter 11—Sound Recordings and Music Videos
§ 1101.—Unauthorized fixation and trafficking in sound recordings and music
videos
(a) Unauthorized Acts.—Anyone who, without the consent of the performer or performers involved—
(1) fixes the sounds or sounds and images of a live musical performance in a copy
or phonorecord, or reproduces copies or phonorecords of such a performance from an
unauthorized fixation,
(2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance, or
(3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or
traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of
234

Copyright Act of 1976

§ 1201.

whether the fixations occurred in the United States,
shall be subject to the remedies provided in sections 502 through 505, to the same extent
as an infringer of copyright.
(b) Definition.—In this section, the term “traffic” has the same meaning as in section
2320(e) of title 18.
(c) Applicability.—This section shall apply to any act or acts that occur on or after the
date of the enactment of the Uruguay Round Agreements Act.
(d) State Law Not Preempted.—Nothing in this section may be construed to annul or
limit any rights or remedies under the common law or statutes of any State.
Chapter 12—Copyright Protection and Management Systems
§ 1201.—Circumvention of copyright protection systems
(a) Violations Regarding Circumvention of Technological Measures.—
(1)(A) No person shall circumvent a technological measure that effectively controls
access to a work protected under this title. The prohibition contained in the preceding
sentence shall take effect at the end of the 2-year period beginning on the date of the
enactment of this chapter.
(B) The prohibition contained in subparagraph (A) shall not apply to persons who
are users of a copyrighted work which is in a particular class of works, if such persons are, or are likely to be in the succeeding 3-year period, adversely affected by
virtue of such prohibition in their ability to make noninfringing uses of that particular
class of works under this title, as determined under subparagraph (C).
(C) During the 2-year period described in subparagraph (A), and during each succeeding 3-year period, the Librarian of Congress, upon the recommendation of the
Register of Copyrights, who shall consult with the Assistant Secretary for Communications and Information of the Department of Commerce and report and comment on
his or her views in making such recommendation, shall make the determination in a
rulemaking proceeding for purposes of subparagraph (B) of whether persons who are
users of a copyrighted work are, or are likely to be in the succeeding 3-year period,
adversely affected by the prohibition under subparagraph (A) in their ability to make
noninfringing uses under this title of a particular class of copyrighted works. In conducting such rulemaking, the Librarian shall examine—
(i) the availability for use of copyrighted works;
(ii) the availability for use of works for nonprofit archival, preservation, and educational purposes;
(iii) the impact that the prohibition on the circumvention of technological
measures applied to copyrighted works has on criticism, comment, news reporting,
teaching, scholarship, or research;
(iv) the effect of circumvention of technological measures on the market for or
value of copyrighted works; and
(v) such other factors as the Librarian considers appropriate.
(D) The Librarian shall publish any class of copyrighted works for which the Librarian has determined, pursuant to the rulemaking conducted under subparagraph
(C), that noninfringing uses by persons who are users of a copyrighted work are, or
are likely to be, adversely affected, and the prohibition contained in subparagraph
(A) shall not apply to such users with respect to such class of works for the ensuing
3-year period.
235

§ 1201.

Copyright Act of 1976

(E) Neither the exception under subparagraph (B) from the applicability of the
prohibition contained in subparagraph (A), nor any determination made in a rulemaking conducted under subparagraph (C), may be used as a defense in any action
to enforce any provision of this title other than this paragraph.
(2) No person shall manufacture, import, offer to the public, provide, or otherwise
traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;
(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected
under this title; or
(C) is marketed by that person or another acting in concert with that person with
that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.
(3) As used in this subsection—
(A) to “circumvent a technological measure” means to descramble a scrambled
work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright
owner; and
(B) a technological measure “effectively controls access to a work” if the measure,
in the ordinary course of its operation, requires the application of information, or a
process or a treatment, with the authority of the copyright owner, to gain access to
the work.
(b) Additional Violations.—
(1) No person shall manufacture, import, offer to the public, provide, or otherwise
traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing protection
afforded by a technological measure that effectively protects a right of a copyright
owner under this title in a work or a portion thereof;
(B) has only limited commercially significant purpose or use other than to circumvent protection afforded by a technological measure that effectively protects a right
of a copyright owner under this title in a work or a portion thereof; or
(C) is marketed by that person or another acting in concert with that person with
that person’s knowledge for use in circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title
in a work or a portion thereof.
(2) As used in this subsection—
(A) to “circumvent protection afforded by a technological measure” means avoiding, bypassing, removing, deactivating, or otherwise impairing a technological measure; and
(B) a technological measure “effectively protects a right of a copyright owner under this title” if the measure, in the ordinary course of its operation, prevents, restricts, or otherwise limits the exercise of a right of a copyright owner under this title.
(c) Other Rights, Etc., Not Affected.—(1) Nothing in this section shall affect rights,
remedies, limitations, or defenses to copyright infringement, including fair use, under
this title.
(2) Nothing in this section shall enlarge or diminish vicarious or contributory liability for copyright infringement in connection with any technology, product, service,
device, component, or part thereof.
236

Copyright Act of 1976

§ 1201.

(3) Nothing in this section shall require that the design of, or design and selection of
parts and components for, a consumer electronics, telecommunications, or computing
product provide for a response to any particular technological measure, so long as such
part or component, or the product in which such part or component is integrated, does
not otherwise fall within the prohibitions of subsection (a)(2) or (b)(1).
(4) Nothing in this section shall enlarge or diminish any rights of free speech or the
press for activities using consumer electronics, telecommunications, or computing
products.
(d) Exemption for Nonprofit Libraries, Archives, and Educational Institutions.—
(1) A nonprofit library, archives, or educational institution which gains access to a
commercially exploited copyrighted work solely in order to make a good faith determination of whether to acquire a copy of that work for the sole purpose of engaging in
conduct permitted under this title shall not be in violation of subsection (a)(1)(A). A
copy of a work to which access has been gained under this paragraph—
(A) may not be retained longer than necessary to make such good faith determination; and
(B) may not be used for any other purpose.
(2) The exemption made available under paragraph (1) shall only apply with respect
to a work when an identical copy of that work is not reasonably available in another
form.
(3) A nonprofit library, archives, or educational institution that willfully for the purpose of commercial advantage or financial gain violates paragraph (1)—
(A) shall, for the first offense, be subject to the civil remedies under section 1203;
and
(B) shall, for repeated or subsequent offenses, in addition to the civil remedies
under section 1203, forfeit the exemption provided under paragraph (1).
(4) This subsection may not be used as a defense to a claim under subsection (a)(2)
or (b), nor may this subsection permit a nonprofit library, archives, or educational institution to manufacture, import, offer to the public, provide, or otherwise traffic in any
technology, product, service, component, or part thereof, which circumvents a technological measure.
(5) In order for a library or archives to qualify for the exemption under this subsection, the collections of that library or archives shall be—
(A) open to the public; or
(B) available not only to researchers affiliated with the library or archives or with
the institution of which it is a part, but also to other persons doing research in a
specialized field.
(e) Law Enforcement, Intelligence, and Other Government Activities.—This section
does not prohibit any lawfully authorized investigative, protective, information security, or
intelligence activity of an officer, agent, or employee of the United States, a State, or a political subdivision of a State, or a person acting pursuant to a contract with the United States,
a State, or a political subdivision of a State. For purposes of this subsection, the term “information security” means activities carried out in order to identify and address the vulnerabilities of a government computer, computer system, or computer network.
(f) Reverse Engineering.—
(1) Notwithstanding the provisions of subsection (a)(1)(A), a person who has lawfully
obtained the right to use a copy of a computer program may circumvent a technological
measure that effectively controls access to a particular portion of that program for the sole
purpose of identifying and analyzing those elements of the program that are necessary to
237

§ 1201.

Copyright Act of 1976

achieve interoperability of an independently created computer program with other programs, and that have not previously been readily available to the person engaging in the
circumvention, to the extent any such acts of identification and analysis do not constitute
infringement under this title.
(2) Notwithstanding the provisions of subsections (a)(2) and (b), a person may develop and employ technological means to circumvent a technological measure, or to
circumvent protection afforded by a technological measure, in order to enable the identification and analysis under paragraph (1), or for the purpose of enabling interoperability of an independently created computer program with other programs, if such
means are necessary to achieve such interoperability, to the extent that doing so does
not constitute infringement under this title.
(3) The information acquired through the acts permitted under paragraph (1), and the
means permitted under paragraph (2), may be made available to others if the person referred to in paragraph (1) or (2), as the case may be, provides such information or means
solely for the purpose of enabling interoperability of an independently created computer
program with other programs, and to the extent that doing so does not constitute infringement under this title or violate applicable law other than this section.
(4) For purposes of this subsection, the term “interoperability” means the ability of
computer programs to exchange information, and of such programs mutually to use
the information which has been exchanged.
(g) Encryption Research.—
(1) Definitions.—For purposes of this subsection—
(A) the term “encryption research” means activities necessary to identify and analyze flaws and vulnerabilities of encryption technologies applied to copyrighted works,
if these activities are conducted to advance the state of knowledge in the field of encryption technology or to assist in the development of encryption products; and
(B) the term “encryption technology” means the scrambling and descrambling of
information using mathematical formulas or algorithms.
(2) Permissible acts of encryption research.—Notwithstanding the provisions of
subsection (a)(1)(A), it is not a violation of that subsection for a person to circumvent
a technological measure as applied to a copy, phonorecord, performance, or display of
a published work in the course of an act of good faith encryption research if—
(A) the person lawfully obtained the encrypted copy, phonorecord, performance,
or display of the published work;
(B) such act is necessary to conduct such encryption research;
(C) the person made a good faith effort to obtain authorization before the circumvention; and
(D) such act does not constitute infringement under this title or a violation of applicable law other than this section, including section 1030 of title 18 and those provisions of title 18 amended by the Computer Fraud and Abuse Act of 1986.
(3) Factors in determining exemption.—In determining whether a person qualifies
for the exemption under paragraph (2), the factors to be considered shall include—
(A) whether the information derived from the encryption research was disseminated, and if so, whether it was disseminated in a manner reasonably calculated to
advance the state of knowledge or development of encryption technology, versus
whether it was disseminated in a manner that facilitates infringement under this title
or a violation of applicable law other than this section, including a violation of privacy or breach of security;
(B) whether the person is engaged in a legitimate course of study, is employed, or
238

Copyright Act of 1976

§ 1201.

is appropriately trained or experienced, in the field of encryption technology; and
(C) whether the person provides the copyright owner of the work to which the
technological measure is applied with notice of the findings and documentation of
the research, and the time when such notice is provided.
(4) Use of technological means for research activities.—Notwithstanding the provisions of subsection (a)(2), it is not a violation of that subsection for a person to—
(A) develop and employ technological means to circumvent a technological measure for the sole purpose of that person performing the acts of good faith encryption
research described in paragraph (2); and
(B) provide the technological means to another person with whom he or she is
working collaboratively for the purpose of conducting the acts of good faith encryption research described in paragraph (2) or for the purpose of having that other person
verify his or her acts of good faith encryption research described in paragraph (2).
(5) Report to Congress.—Not later than 1 year after the date of the enactment of
this chapter, the Register of Copyrights and the Assistant Secretary for Communications and Information of the Department of Commerce shall jointly report to the Congress on the effect this subsection has had on—
(A) encryption research and the development of encryption technology;
(B) the adequacy and effectiveness of technological measures designed to protect
copyrighted works; and
(C) protection of copyright owners against the unauthorized access to their encrypted copyrighted works.
The report shall include legislative recommendations, if any.
(h) Exceptions Regarding Minors.—In applying subsection (a) to a component or
part, the court may consider the necessity for its intended and actual incorporation in a
technology, product, service, or device, which—
(1) does not itself violate the provisions of this title; and
(2) has the sole purpose to prevent the access of minors to material on the Internet.
(i) Protection of Personally Identifying Information.—
(1) Circumvention permitted.—Notwithstanding the provisions of subsection
(a)(1)(A), it is not a violation of that subsection for a person to circumvent a technological measure that effectively controls access to a work protected under this title, if—
(A) the technological measure, or the work it protects, contains the capability of
collecting or disseminating personally identifying information reflecting the online
activities of a natural person who seeks to gain access to the work protected;
(B) in the normal course of its operation, the technological measure, or the work it
protects, collects or disseminates personally identifying information about the person
who seeks to gain access to the work protected, without providing conspicuous notice
of such collection or dissemination to such person, and without providing such person
with the capability to prevent or restrict such collection or dissemination;
(C) the act of circumvention has the sole effect of identifying and disabling the
capability described in subparagraph (A), and has no other effect on the ability of
any person to gain access to any work; and
(D) the act of circumvention is carried out solely for the purpose of preventing the
collection or dissemination of personally identifying information about a natural person who seeks to gain access to the work protected, and is not in violation of any
other law.
(2) Inapplicability to certain technological measures.—This subsection does not apply to a technological measure, or a work it protects, that does not collect or disseminate
239

§ 1201.

Copyright Act of 1976

personally identifying information and that is disclosed to a user as not having or using
such capability.
(j) Security Testing.—
(1) Definition.—For purposes of this subsection, the term “security testing” means
accessing a computer, computer system, or computer network, solely for the purpose
of good faith testing, investigating, or correcting, a security flaw or vulnerability, with
the authorization of the owner or operator of such computer, computer system, or computer network.
(2) Permissible acts of security testing.—Notwithstanding the provisions of subsection (a)(1)(A), it is not a violation of that subsection for a person to engage in an act of
security testing, if such act does not constitute infringement under this title or a violation
of applicable law other than this section, including section 1030 of title 18 and those
provisions of title 18 amended by the Computer Fraud and Abuse Act of 1986.
(3) Factors in determining exemption.—In determining whether a person qualifies
for the exemption under paragraph (2), the factors to be considered shall include—
(A) whether the information derived from the security testing was used solely to
promote the security of the owner or operator of such computer, computer system or
computer network, or shared directly with the developer of such computer, computer
system, or computer network; and
(B) whether the information derived from the security testing was used or maintained
in a manner that does not facilitate infringement under this title or a violation of applicable law other than this section, including a violation of privacy or breach of security.
(4) Use of technological means for security testing.—Notwithstanding the provisions of subsection (a)(2), it is not a violation of that subsection for a person to develop,
produce, distribute or employ technological means for the sole purpose of performing
the acts of security testing described in subsection (2), provided such technological
means does not otherwise violate section (a)(2).
(k) Certain Analog Devices and Certain Technological Measures.—
(1) Certain analog devices.—
(A) Effective 18 months after the date of the enactment of this chapter, no person
shall manufacture, import, offer to the public, provide or otherwise traffic in any—
(i) VHS format analog video cassette recorder unless such recorder conforms to
the automatic gain control copy control technology;
(ii) 8mm format analog video cassette camcorder unless such camcorder conforms to the automatic gain control technology;
(iii) Beta format analog video cassette recorder, unless such recorder conforms
to the automatic gain control copy control technology, except that this requirement
shall not apply until there are 1,000 Beta format analog video cassette recorders
sold in the United States in any one calendar year after the date of the enactment
of this chapter;
(iv) 8mm format analog video cassette recorder that is not an analog video cassette camcorder, unless such recorder conforms to the automatic gain control copy
control technology, except that this requirement shall not apply until there are
20,000 such recorders sold in the United States in any one calendar year after the
date of the enactment of this chapter; or
(v) analog video cassette recorder that records using an NTSC format video input and that is not otherwise covered under clauses (i) through (iv), unless such
device conforms to the automatic gain control copy control technology.
(B) Effective on the date of the enactment of this chapter, no person shall
240

Copyright Act of 1976

§ 1201.

manufacture, import, offer to the public, provide or otherwise traffic in—
(i) any VHS format analog video cassette recorder or any 8mm format analog
video cassette recorder if the design of the model of such recorder has been modified after such date of enactment so that a model of recorder that previously conformed to the automatic gain control copy control technology no longer conforms
to such technology; or
(ii) any VHS format analog video cassette recorder, or any 8mm format analog
video cassette recorder that is not an 8mm analog video cassette camcorder, if the
design of the model of such recorder has been modified after such date of enactment so that a model of recorder that previously conformed to the four-line colorstripe copy control technology no longer conforms to such technology.
Manufacturers that have not previously manufactured or sold a VHS format analog
video cassette recorder, or an 8mm format analog cassette recorder, shall be required
to conform to the four-line colorstripe copy control technology in the initial model
of any such recorder manufactured after the date of the enactment of this chapter,
and thereafter to continue conforming to the four-line colorstripe copy control technology. For purposes of this subparagraph, an analog video cassette recorder “conforms to” the four-line colorstripe copy control technology if it records a signal that,
when played back by the playback function of that recorder in the normal viewing
mode, exhibits, on a reference display device, a display containing distracting visible
lines through portions of the viewable picture.
(2) Certain encoding restrictions.—No person shall apply the automatic gain control copy control technology or colorstripe copy control technology to prevent or limit
consumer copying except such copying—
(A) of a single transmission, or specified group of transmissions, of live events or
of audiovisual works for which a member of the public has exercised choice in selecting the transmissions, including the content of the transmissions or the time of
receipt of such transmissions, or both, and as to which such member is charged a
separate fee for each such transmission or specified group of transmissions;
(B) from a copy of a transmission of a live event or an audiovisual work if such
transmission is provided by a channel or service where payment is made by a member of the public for such channel or service in the form of a subscription fee that
entitles the member of the public to receive all of the programming contained in such
channel or service;
(C) from a physical medium containing one or more prerecorded audiovisual
works; or
(D) from a copy of a transmission described in subparagraph (A) or from a copy
made from a physical medium described in subparagraph (C).
In the event that a transmission meets both the conditions set forth in subparagraph
(A) and those set forth in subparagraph (B), the transmission shall be treated as a transmission described in subparagraph (A).
(3) Inapplicability.—This subsection shall not—
(A) require any analog video cassette camcorder to conform to the automatic gain
control copy control technology with respect to any video signal received through a
camera lens;
(B) apply to the manufacture, importation, offer for sale, provision of, or other
trafficking in, any professional analog video cassette recorder; or
(C) apply to the offer for sale or provision of, or other trafficking in, any previously
owned analog video cassette recorder, if such recorder was legally manufactured and
241

§ 1202.

Copyright Act of 1976

sold when new and not subsequently modified in violation of paragraph (1)(B).
(4) Definitions.—For purposes of this subsection:
(A) An “analog video cassette recorder” means a device that records, or a device
that includes a function that records, on electromagnetic tape in an analog format the
electronic impulses produced by the video and audio portions of a television program, motion picture, or other form of audiovisual work.
(B) An “analog video cassette camcorder” means an analog video cassette recorder
that contains a recording function that operates through a camera lens and through a
video input that may be connected with a television or other video playback device.
(C) An analog video cassette recorder “conforms” to the automatic gain control
copy control technology if it—
(i) detects one or more of the elements of such technology and does not record
the motion picture or transmission protected by such technology; or
(ii) records a signal that, when played back, exhibits a meaningfully distorted or
degraded display.
(D) The term “professional analog video cassette recorder” means an analog video
cassette recorder that is designed, manufactured, marketed, and intended for use by
a person who regularly employs such a device for a lawful business or industrial use,
including making, performing, displaying, distributing, or transmitting copies of motion pictures on a commercial scale.
(E) The terms “VHS format”, “8mm format”, “Beta format”, “automatic gain control copy control technology”, “colorstripe copy control technology”, “four-line version of the colorstripe copy control technology”, and “NTSC” have the meanings
that are commonly understood in the consumer electronics and motion picture industries as of the date of the enactment of this chapter.
(5) Violations.—Any violation of paragraph (1) of this subsection shall be treated
as a violation of subsection (b)(1) of this section. Any violation of paragraph (2) of this
subsection shall be deemed an “act of circumvention” for the purposes of section
1203(c)(3)(A) of this chapter.
§ 1202.—Integrity of copyright management information
(a) False Copyright Management Information.—No person shall knowingly and
with the intent to induce, enable, facilitate, or conceal infringement—
(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management information that is false.
(b) Removal or Alteration of Copyright Management Information.—No person
shall, without the authority of the copyright owner or the law—
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing
that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or
phonorecords, knowing that copyright management information has been removed or
altered without authority of the copyright owner or the law,
knowing, or, with respect to civil remedies under section 1203, having reasonable
grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any
right under this title.
(c) Definition.—As used in this section, the term “copyright management information” means any of the following information conveyed in connection with copies or
242

Copyright Act of 1976

§ 1202.

phonorecords of a work or performances or displays of a work, including in digital form,
except that such term does not include any personally identifying information about a
user of a work or of a copy, phonorecord, performance, or display of a work:
(1) The title and other information identifying the work, including the information
set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author of a work.
(3) The name of, and other identifying information about, the copyright owner of the
work, including the information set forth in a notice of copyright.
(4) With the exception of public performances of works by radio and television
broadcast stations, the name of, and other identifying information about, a performer
whose performance is fixed in a work other than an audiovisual work.
(5) With the exception of public performances of works by radio and television broadcast stations, in the case of an audiovisual work, the name of, and other identifying information about, a writer, performer, or director who is credited in the audiovisual work.
(6) Terms and conditions for use of the work.
(7) Identifying numbers or symbols referring to such information or links to such
information.
(8) Such other information as the Register of Copyrights may prescribe by regulation, except that the Register of Copyrights may not require the provision of any information concerning the user of a copyrighted work.
(d) Law Enforcement, Intelligence, and Other Government Activities.—This section
does not prohibit any lawfully authorized investigative, protective, information security, or
intelligence activity of an officer, agent, or employee of the United States, a State, or a
political subdivision of a State, or a person acting pursuant to a contract with the United
States, a State, or a political subdivision of a State. For purposes of this subsection, the
term “information security” means activities carried out in order to identify and address
the vulnerabilities of a government computer, computer system, or computer network.
(e) Limitations on Liability.—
(1) Analog transmissions.—In the case of an analog transmission, a person who is
making transmissions in its capacity as a broadcast station, or as a cable system, or
someone who provides programming to such station or system, shall not be liable for
a violation of subsection (b) if—
(A) avoiding the activity that constitutes such violation is not technically feasible
or would create an undue financial hardship on such person; and
(B) such person did not intend, by engaging in such activity, to induce, enable,
facilitate, or conceal infringement of a right under this title.
(2) Digital transmissions.—
(A) If a digital transmission standard for the placement of copyright management
information for a category of works is set in a voluntary, consensus standard-setting
process involving a representative cross-section of broadcast stations or cable systems and copyright owners of a category of works that are intended for public performance by such stations or systems, a person identified in paragraph (1) shall not
be liable for a violation of subsection (b) with respect to the particular copyright
management information addressed by such standard if—
(i) the placement of such information by someone other than such person is not
in accordance with such standard; and
(ii) the activity that constitutes such violation is not intended to induce, enable,
facilitate, or conceal infringement of a right under this title.
(B) Until a digital transmission standard has been set pursuant to subparagraph (A)
243

§ 1203.

Copyright Act of 1976

with respect to the placement of copyright management information for a category
of works, a person identified in paragraph (1) shall not be liable for a violation of
subsection (b) with respect to such copyright management information, if the activity
that constitutes such violation is not intended to induce, enable, facilitate, or conceal
infringement of a right under this title, and if—
(i) the transmission of such information by such person would result in a perceptible visual or aural degradation of the digital signal; or
(ii) the transmission of such information by such person would conflict with—
(I) an applicable government regulation relating to transmission of information
in a digital signal;
(II) an applicable industry-wide standard relating to the transmission of information in a digital signal that was adopted by a voluntary consensus standards
body prior to the effective date of this chapter; or
(III) an applicable industry-wide standard relating to the transmission of information in a digital signal that was adopted in a voluntary, consensus standardssetting process open to participation by a representative cross-section of broadcast stations or cable systems and copyright owners of a category of works that
are intended for public performance by such stations or systems.
(3) Definitions.—As used in this subsection—
(A) the term “broadcast station” has the meaning given that term in section 3 of
the Communications Act of 1934 (47 U.S.C. 153); and
(B) the term “cable system” has the meaning given that term in section 602 of the
Communications Act of 1934 (47 U.S.C. 522).
§ 1203.—Civil remedies
(a) Civil Actions.—Any person injured by a violation of section 1201 or 1202 may
bring a civil action in an appropriate United States district court for such violation.
(b) Powers of the Court.—In an action brought under subsection (a), the court—
(1) may grant temporary and permanent injunctions on such terms as it deems reasonable to prevent or restrain a violation, but in no event shall impose a prior restraint
on free speech or the press protected under the 1st amendment to the Constitution;
(2) at any time while an action is pending, may order the impounding, on such terms
as it deems reasonable, of any device or product that is in the custody or control of the
alleged violator and that the court has reasonable cause to believe was involved in a
violation;
(3) may award damages under subsection (c);
(4) in its discretion may allow the recovery of costs by or against any party other
than the United States or an officer thereof;
(5) in its discretion may award reasonable attorney’s fees to the prevailing party; and
(6) may, as part of a final judgment or decree finding a violation, order the remedial
modification or the destruction of any device or product involved in the violation that
is in the custody or control of the violator or has been impounded under paragraph (2).
(c) Award of Damages.—
(1) In general.—Except as otherwise provided in this title, a person committing a
violation of section 1201 or 1202 is liable for either—
(A) the actual damages and any additional profits of the violator, as provided in
paragraph (2), or
(B) statutory damages, as provided in paragraph (3).
(2) Actual damages.—The court shall award to the complaining party the actual
244

Copyright Act of 1976

§ 1205.

damages suffered by the party as a result of the violation, and any profits of the violator
that are attributable to the violation and are not taken into account in computing the
actual damages, if the complaining party elects such damages at any time before final
judgment is entered.
(3) Statutory damages.—
(A) At any time before final judgment is entered, a complaining party may elect to
recover an award of statutory damages for each violation of section 1201 in the sum
of not less than $200 or more than $2,500 per act of circumvention, device, product,
component, offer, or performance of service, as the court considers just.
(B) At any time before final judgment is entered, a complaining party may elect to
recover an award of statutory damages for each violation of section 1202 in the sum
of not less than $2,500 or more than $25,000.
(4) Repeated violations.—In any case in which the injured party sustains the burden
of proving, and the court finds, that a person has violated section 1201 or 1202 within
3 years after a final judgment was entered against the person for another such violation,
the court may increase the award of damages up to triple the amount that would otherwise be awarded, as the court considers just.
(5) Innocent violations.—
(A) In general.—The court in its discretion may reduce or remit the total award
of damages in any case in which the violator sustains the burden of proving, and the
court finds, that the violator was not aware and had no reason to believe that its acts
constituted a violation.
(B) Nonprofit library, archives, educational institutions, or public broadcasting entities.—
(i) Definition.—In this subparagraph, the term “public broadcasting entity” has
the meaning given such term under section 118(f).
(ii) In general.—In the case of a nonprofit library, archives, educational institution, or public broadcasting entity, the court shall remit damages in any case in
which the library, archives, educational institution, or public broadcasting entity
sustains the burden of proving, and the court finds, that the library, archives, educational institution, or public broadcasting entity was not aware and had no reason
to believe that its acts constituted a violation.
§ 1204.—Criminal offenses and penalties
(a) In General.—Any person who violates section 1201 or 1202 willfully and for purposes of commercial advantage or private financial gain—
(1) shall be fined not more than $500,000 or imprisoned for not more than 5 years,
or both, for the first offense; and
(2) shall be fined not more than $1,000,000 or imprisoned for not more than 10 years,
or both, for any subsequent offense.
(b) Limitation for Nonprofit Library, Archives, Educational Institution, or Public
Broadcasting Entity.—Subsection (a) shall not apply to a nonprofit library, archives, educational institution, or public broadcasting entity (as defined under section 118(f)).
(c) Statute of Limitations.—No criminal proceeding shall be brought under this section unless such proceeding is commenced within 5 years after the cause of action arose.
§ 1205.—Savings clause
Nothing in this chapter abrogates, diminishes, or weakens the provisions of, nor provides
245

§ 1301.

Copyright Act of 1976

any defense or element of mitigation in a criminal prosecution or civil action under, any
Federal or State law that prevents the violation of the privacy of an individual in connection
with the individual’s use of the Internet.
Chapter 13—Protection of Original Designs
§ 1301.—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 protection provided by this chapter upon complying with
and subject to this chapter.
(2) Vessel features.—The design of a vessel hull, deck, or combination of a hull and
deck, including a plug or mold, is subject to protection under this chapter, notwithstanding section 1302(4).
(3) Exceptions.—Department of Defense rights in a registered design under this
chapter, including the right to build to such registered design, shall be determined
solely by operation of section 2320 of title 10 or by the instrument under which the
design was developed for the United States Government.
(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 distinguishable 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 deck, 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—
(A) that is designed and capable of independently steering a course on or through
water through its own means of propulsion; and
(B) that is designed and capable of carrying and transporting one or more passengers.
(4) A “hull” is the exterior frame or body of a vessel, exclusive of the deck, superstructure, masts, sails, yards, rigging, hardware, fixtures, and other attachments.
(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 intrinsic 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 function that is not
only to portray the appearance of the product or to convey information.
(7) A “deck” is the horizontal surface of a vessel that covers the hull, including exterior cabin and cockpit surfaces, and exclusive of masts, sails, yards, rigging, hardware, fixtures, and other attachments.
§ 1302.—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,
246

Copyright Act of 1976

§ 1306.

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 paragraph (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 2 years before the date of the application
for registration under this chapter.
§ 1303.—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 1302 if
the design is a substantial revision, adaptation, or rearrangement 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 securing any right to subject matter
excluded from protection under this chapter or as extending any subsisting protection
under this chapter.
§ 1304.—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 1313(a) or the date the
design is first made public as defined by section 1310(b).
§ 1305.—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 1304.
(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.
§ 1306.—Design notice
(a) Contents of Design Notice.—
(1) Whenever any design for which protection is sought under this chapter is made
public under section 1310(b), the owner of the design shall, subject to the provisions of
section 1307, mark it or have it marked legibly with a design notice consisting of—
(A) the words “Protected Design”, the abbreviation “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 accepted 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.
(2) After registration, the registration number may be used instead of the elements
247

§ 1307.

Copyright Act of 1976

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 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.
§ 1307.—Effect of omission of notice
(a) Actions With Notice.—Except as provided in subsection (b), the omission of the
notice prescribed in section 1306 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 1306
shall prevent any recovery under section 1323 against a person who began an undertaking leading to infringement under this chapter before receiving written notice of the design protection. No injunction shall be issued under this chapter with respect to such
undertaking unless the owner of the design reimburses that person for any reasonable
expenditure or contractual obligation in connection with such undertaking that was incurred before receiving written notice of the design protection, as the court in its discretion directs. The burden of providing written notice of design protection shall be on the
owner of the design.
§ 1308.—Exclusive rights
The owner of a design protected under this chapter has the exclusive right to—
(1) make, have made, or import, for sale or for use in trade, any useful article embodying that design; and
(2) sell or distribute for sale or for use in trade any useful article embodying that
design.
§ 1309.—Infringement
(a) Acts of Infringement.—Except as provided in subsection (b), it shall be infringement of the exclusive rights in a design protected under this chapter for any person, without the consent of the owner of the design, within the United States and during the term
of such protection, to—
(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 seller 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 person—
(1) induced or acted in collusion with a manufacturer to make, or an importer to
import such article, except that merely purchasing or giving an order to purchase such
article in the ordinary course of business shall not of itself constitute such inducement
or collusion; or
(2) refused or failed, upon the request of the owner of the design, to make a prompt
and full disclosure of that person’s source of such article, and that person orders or
248

Copyright Act of 1976

§ 1310.

reorders such article after receiving 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, import, sell, or distribute, any article embodying a design 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 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 paragraph (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 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 protected design. An infringing article is not an
illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture, or similar medium. 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 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 Analysis.—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, concepts, or techniques embodied in the design, or the function of the useful article
embodying the design.
§ 1310.—Application for registration
(a) Time Limit for Application for Registration.—Protection under this chapter
shall be lost if application for registration of the design is not made within 2 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, 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.—Application for registration may be made by
the owner of the design.
(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 different from the designer;
(3) the specific name of the useful article embodying 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
249

§ 1311.

Copyright Act of 1976

(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.
(e) Sworn Statement.—The application for registration 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 application;
(2) that the design has not previously been registered 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 1306, 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 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 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 authorship of the
design is difficult or impossible to ascribe and the application so states, the name and
address of the employer 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 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 Article.—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 registration shall be required for the design.
(j) Application for More Than One Design.—More than one design may be included
in the same application under such conditions as may be prescribed by the Administrator.
For each design included in an application the fee prescribed for a single design shall be
paid.
§ 1311.—Benefit of earlier filing date in foreign country
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, previously
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 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 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 application was filed.
250

Copyright Act of 1976

§ 1313.

§ 1312.—Oaths and acknowledgments
(a) In General.—Oaths and acknowledgments required 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, before any diplomatic or consular officer of
the 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 document 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 subscribed 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.
§ 1313.—Examination of application and issue or refusal of registration
(a) Determination of Registrability of Design; Registration.—Upon the filing of an
application for registration in proper form under section 1310, and upon payment of the fee
prescribed under section 1316, the Administrator shall determine whether or not the application 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 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 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 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 registration. The Administrator shall also have the authority to establish,
by regulation, conditions under which the opposing 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 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
251

§ 1314.

Copyright Act of 1976

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 applicant and to the
owner of record. Costs of the cancellation procedure under this subsection shall be borne
by the nonprevailing party or parties, and the Administrator shall have the authority to
assess and collect such costs.
§ 1314.—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 application, 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 certificate.
§ 1315.—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 Designs.—The Administrator shall establish and maintain a file of the drawings or other pictorial representations of registered
designs. The file shall be available for use by the public under such conditions as the
Administrator may prescribe.
§ 1316.—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 administration
of this chapter, taking into consideration the cost of providing these services and the
benefit of a public record.
§ 1317.—Regulations
The Administrator may establish regulations for the administration of this chapter.
§ 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 Administrator 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.
252

Copyright Act of 1976

§ 1321.

§ 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 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 Acknowledgment 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 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 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 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 between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until
253

§ 1322.

Copyright Act of 1976

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 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 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 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 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 registration. Any such order shall be certified by the court to the Administrator,
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
254

Copyright Act of 1976

§ 1330.

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.
§ 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 regulations 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 unjustified.
(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—
255

§ 1331.

Copyright Act of 1976

(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.
§ 1331.—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.
§ 1332.—No retroactive effect
Protection under this chapter shall not be available for any design that has been made
public under section 13101(b) before the effective date of this chapter.
Chapter 14 - UNAUTHORIZED USE OF PRE-1972 SOUND RECORDINGS
§ 1401.—Unauthorized use of pre-1972 sound recordings
(a) In General.—
(1) Unauthorized acts.—Anyone who, on or before the last day of the applicable
transition period under paragraph (2), and without the consent of the rights owner,
engages in covered activity with respect to a sound recording fixed before February
15, 1972, shall be subject to the remedies provided in sections 502 through 505 and
1203 to the same extent as an infringer of copyright or a person that engages in unauthorized activity under chapter 12.
(2) Term of prohibition.—
(A) IN GENERAL.—The prohibition under paragraph (1)—
(i) subject to clause (ii), shall apply to a sound recording described in that
paragraph—
(I) through December 31 of the year that is 95 years after the year of first
publication; and
(II) for a further transition period as prescribed under subparagraph (B) of this
paragraph; and
(ii) shall not apply to any sound recording after February 15, 2067.
(B) TRANSITION PERIODS.—
(i) PRE-1923 RECORDINGS.—In the case of a sound recording first published
before January 1, 1923, the transition period described in subparagraph (A)(i)(II)
shall end on December 31 of the year that is 3 years after the date of enactment of
this section.
(ii) 1923–1946 RECORDINGS.—In the case of a sound recording first published
during the period beginning on January 1, 1923, and ending on December 31, 1946,
the transition period described in subparagraph (A)(i)(II) shall end on the date that
is 5 years after the last day of the period described in subparagraph (A)(i)(I).
(iii) 1947–1956 RECORDINGS.—In the case of a sound recording first published
during the period beginning on January 1, 1947, and ending on December 31, 1956,
the transition period described in subparagraph (A)(i)(II) shall end on the date that
is 15 years after the last day of the period described in subparagraph (A)(i)(I).
(iv) POST-1956 RECORDINGS.—In the case of a sound recording fixed before
February 15, 1972, that is not described in clause (i), (ii), or (iii), the transition
period described in subparagraph (A)(i)(II) shall end on February 15, 2067.
256

Copyright Act of 1976

§ 1401.

(3) Rule of construction.—For the purposes of this subsection, the term ‘anyone’
includes any State, any instrumentality of a State, and any officer or employee of a
State or instrumentality of a State acting in the official capacity of the officer or employee, as applicable.
(b) Certain Authorized Transmissions and Reproductions.—A public performance
by means of a digital audio transmission of a sound recording fixed before February 15,
1972, or a reproduction in an ephemeral phonorecord or copy of a sound recording fixed
before February 15, 1972, shall, for purposes of subsection (a), be considered to be authorized and made with the consent of the rights owner if—
(1) the transmission or reproduction would satisfy the requirements for statutory licensing under section 112(e)(1) or section 114(d)(2), or would be exempt under section
114(d)(1), as the case may be, if the sound recording were fixed on or after February
15, 1972; and
(2) the transmitting entity pays the statutory royalty for the transmission or reproduction pursuant to the rates and terms adopted under sections 112(e) and 114(f), and
complies with other obligations, in the same manner as required by regulations adopted
by the Copyright Royalty Judges under sections 112(e) and 114(f) for sound recordings
that are fixed on or after February 15, 1972, except in the case of a transmission that
would be exempt under section 114(d)(1).
(c) Certain Noncommercial Uses of Sound Recordings that Are Not Being Commercially Exploited.—
(1) In general.—Noncommercial use of a sound recording fixed before February
15, 1972, that is not being commercially exploited by or under the authority of the
rights owner shall not violate subsection (a) if—
(A) the person engaging in the noncommercial use, in order to determine whether
the sound recording is being commercially exploited by or under the authority of the
rights owner, makes a good faith, reasonable search for, but does not find, the sound
recording—
(i) in the records of schedules filed in the Copyright Office as described in subsection (f)(5)(A); and
(ii) on services offering a comprehensive set of sound recordings for sale or
streaming;
(B) the person engaging in the noncommercial use files a notice identifying the
sound recording and the nature of the use in the Copyright Office in accordance with
the regulations issued under paragraph (3)(B); and
(C) during the 90-day period beginning on the date on which the notice described
in subparagraph (B) is indexed into the public records of the Copyright Office, the
rights owner of the sound recording does not, in its discretion, opt out of the noncommercial use by filing notice thereof in the Copyright Office in accordance with
the regulations issued under paragraph (5).
(2) Rules of construction.—For purposes of this subsection—
(A) merely recovering costs of production and distribution of a sound recording
resulting from a use otherwise permitted under this subsection does not itself necessarily constitute a commercial use of the sound recording;
(B) the fact that a person engaging in the use of a sound recording also engages in
commercial activities does not itself necessarily render the use commercial; and
(C) the fact that a person files notice of a noncommercial use of a sound recording
in accordance with the regulations issued under paragraph (3)(B) does not itself affect any limitation on the exclusive rights of a copyright owner described in section
257

§ 1401.

Copyright Act of 1976

107, 108, 109, 110, or 112(f) as applied to a claim under subsection (a) of this section
pursuant to subsection (f)(1)(A) of this section.
(3) Notice of covered activity.—Not later than 180 days after the date of enactment
of this section, the Register of Copyrights shall issue regulations that—
(A) provide specific, reasonable steps that, if taken by a filer, are sufficient to constitute a good faith, reasonable search under paragraph (1)(A) to determine whether
a recording is being commercially exploited, including the services that satisfy the
good faith, reasonable search requirement under paragraph (1)(A) for purposes of
the safe harbor described in paragraph (4)(A); and
(B) establish the form, content, and procedures for the filing of notices under paragraph (1)(B).
(4) Safe harbor.—
(A) IN GENERAL.—A person engaging in a noncommercial use of a sound recording otherwise permitted under this subsection who establishes that the person
made a good faith, reasonable search under paragraph (1)(A) without finding commercial exploitation of the sound recording by or under the authority of the rights
owner shall not be found to be in violation of subsection (a).
(B) STEPS SUFFICIENT BUT NOT NECESSARY.—Taking the specific, reasonable steps identified by the Register of Copyrights in the regulations issued under
paragraph (3)(A) shall be sufficient, but not necessary, for a filer to satisfy the requirement to conduct a good faith, reasonable search under paragraph (1)(A) for purposes of subparagraph (A) of this paragraph.
(5) Opting out of covered activity.—
(A) IN GENERAL.—Not later than 180 days after the date of enactment of this
section, the Register of Copyrights shall issue regulations establishing the form, content, and procedures for the rights owner of a sound recording that is the subject of a
notice under paragraph (1)(B) to, in its discretion, file notice opting out of the covered activity described in the notice under paragraph (1)(B) during the 90-day period
beginning on the date on which the notice under paragraph (1)(B) is indexed into the
public records of the Copyright Office.
(B) RULE OF CONSTRUCTION.—The fact that a rights holder opts out of a
noncommercial use of a sound recording by filing notice thereof in the Copyright
Office in accordance with the regulations issued under subparagraph (A) does not
itself enlarge or diminish any limitation on the exclusive rights of a copyright owner
described in section 107, 108, 109, 110, or 112(f) as applied to a claim under subsection (a) of this section pursuant to subsection (f)(1)(A) of this section.
(6) Civil penalties for certain acts.—
(A) FILING OF NOTICES OF NONCOMMERCIAL USE.—Any person who
willfully engages in a pattern or practice of filing a notice of noncommercial use of
a sound recording as described in paragraph (1)(B) fraudulently describing the use
proposed, or knowing that the use proposed is not permitted under this subsection,
shall be assessed a civil penalty in an amount that is not less than $250, and not more
than $1000, for each such notice, in addition to any other remedies that may be available under this title based on the actual use made.
(B) FILING OF OPT-OUT NOTICES.—
(i) IN GENERAL.—Any person who files an opt-out notice as described in paragraph (1)(C), knowing that the person is not the rights owner or authorized to act
on behalf of the rights owner of the sound recording to which the notice pertains,
shall be assessed a civil penalty in an amount not less than $250, and not more
258

Copyright Act of 1976

§ 1401.

than $1,000, for each such notice.
(ii) PATTERN OR PRACTICE.—Any person who engages in a pattern or practice of making filings as described in clause (i) shall be assessed a civil penalty in
an amount not less than $10,000 for each such filing.
(C) DEFINITION.—For purposes of this paragraph, the term ‘knowing’—
(i) does not require specific intent to defraud; and
(ii) with respect to information about ownership of the sound recording in question, means that the person—
(I) has actual knowledge of the information;
(II) acts in deliberate ignorance of the truth or falsity of the information; or
(III) acts in grossly negligent disregard of the truth or falsity of the information.
(d) Payment of Royalties for Transmissions of Performances by Direct Licensing
of Statutory Services.—
(1) In general.—A public performance by means of a digital audio transmission of
a sound recording fixed before February 15, 1972, shall, for purposes of subsection
(a), be considered to be authorized and made with the consent of the rights owner if
the transmission is made pursuant to a license agreement voluntarily negotiated at any
time between the rights owner and the entity performing the sound recording.
(2) Payment of royalties to nonprofit collective under certain license
agreements.—
(A) LICENSES ENTERED INTO ON OR AFTER DATE OF ENACTMENT.—
To the extent that a license agreement described in paragraph (1) entered into on or
after the date of enactment of this section extends to a public performance by means
of a digital audio transmission of a sound recording fixed before February 15, 1972,
that meets the conditions of subsection (b)—
(i) the licensee shall, with respect to such transmission, pay to the collective
designated to distribute receipts from the licensing of transmissions in accordance
with section 114(f), 50 percent of the performance royalties for that transmission
due under the license; and
(ii) the royalties paid under clause (i) shall be fully credited as payments due
under the license.
(B) CERTAIN AGREEMENTS ENTERED INTO BEFORE ENACTMENT.—
To the extent that a license agreement described in paragraph (1), entered into during
the period beginning on January 1 of the year in which this section is enacted and
ending on the day before the date of enactment of this section, or a settlement agreement with a preexisting satellite digital audio radio service (as defined in section
114(j)) entered into during the period beginning on January 1, 2015, and ending on
the day before the date of enactment of this section, extends to a public performance
by means of a digital audio transmission of a sound recording fixed before February
15, 1972, that meets the conditions of subsection (b)—
(i) the rights owner shall, with respect to such transmission, pay to the collective
designated to distribute receipts from the licensing of transmissions in accordance
with section 114(f) an amount that is equal to the difference between—
(I) 50 percent of the difference between—
(aa) the rights owner’s total gross performance royalty fee receipts or settlement monies received for all such transmissions covered under the license or
settlement agreement, as applicable; and
(bb) the rights owner’s total payments for outside legal expenses, including
any payments of third- party claims, that are directly attributable to the license
259

§ 1401.

Copyright Act of 1976

or settlement agreement, as applicable; and
(II) the amount of any royalty receipts or settlement monies under the agreement that are distributed by the rights owner to featured and nonfeatured artists
before the date of enactment of this section; and
(ii) the royalties paid under clause (i) shall be fully credited as payments due
under the license or settlement agreement, as applicable.
(3) Distribution of royalties and settlement monies by collective.—The collective
described in paragraph (2) shall, in accordance with subparagraphs (B) through (D) of
section 114(g)(2), and paragraphs (5) and (6) of section 114(g), distribute the royalties
or settlement monies received under paragraph (2) under a license or settlement described in paragraph (2), which shall be the only payments to which featured and nonfeatured artists are entitled by virtue of the transmissions described in paragraph (2),
except for settlement monies described in paragraph (2) that are distributed by the rights
owner to featured and nonfeatured artists before the date of enactment of this section.
(4) Payment of royalties under license agreements entered before enactment or
not otherwise described in paragraph (2).—
(A) IN GENERAL.—To the extent that a license agreement described in paragraph (1) entered into before the date of enactment of this section, or any other license agreement not as described in paragraph (2), extends to a public performance
by means of a digital audio transmission of a sound recording fixed before February
15, 1972, that meets the conditions of subsection (b), the payments made by the licensee pursuant to the license shall be made in accordance with the agreement.
(B) ADDITIONAL PAYMENTS NOT REQUIRED.—To the extent that a licensee
has made, or will make in the future, payments pursuant to a license as described in
subparagraph (A), the provisions of paragraphs (2) and (3) shall not require any additional payments from, or additional financial obligations on the part of, the licensee.
(C) RULE OF CONSTRUCTION.—Nothing in this subsection may be construed
to prohibit the collective designated to distribute receipts from the licensing of transmissions in accordance with section 114(f) from administering royalty payments under any license not described in paragraph (2).
(e) Preemption with Respect to Certain Past Acts.—
(1) In general.—This section preempts any claim of common law copyright or
equivalent right under the laws of any State arising from a digital audio transmission
or reproduction that is made before the date of enactment of this section of a sound
recording fixed before February 15, 1972, if—
(A) the digital audio transmission would have satisfied the requirements for statutory licensing under section 114(d)(2) or been exempt under section 114(d)(1), or
the reproduction would have satisfied the requirements of section 112(e)(1), as the
case may be, if the sound recording were fixed on or after February 15, 1972; and
(B) either—
(i) except in the case of a transmission that would have been exempt under section 114(d)(1), not later than 270 days after the date of enactment of this section,
the transmitting entity pays statutory royalties and provides notice of the use of the
relevant sound recordings in the same manner as required by regulations adopted
by the Copyright Royalty Judges for sound recordings that are fixed on or after
February 15, 1972, for all the digital audio transmissions and reproductions satisfying the requirements for statutory licensing under sections 112(e)(1) and
114(d)(2) during the 3 years before that date of enactment; or
(ii) an agreement voluntarily negotiated between the rights owner and the entity
260

Copyright Act of 1976

§ 1401.

performing the sound recording (including a litigation settlement agreement entered
into before the date of enactment of this section) authorizes or waives liability for
any such transmission or reproduction and the transmitting entity has paid for and
reported such digital audio transmission under that agreement.
(2) Rule of construction for common law copyright.—For purposes of paragraph
(1), a claim of common law copyright or equivalent right under the laws of any State
includes a claim that characterizes conduct subject to that paragraph as an unlawful
distribution, act of record piracy, or similar violation.
(3) Rule of construction for public performance rights.—Nothing in this section
may be construed to recognize or negate the existence of public performance rights in
sound recordings under the laws of any State.
(f) Limitations on Remedies.
(1) Fair use; uses by libraries, archives, and educational institutions.—
(A) IN GENERAL.—The limitations on the exclusive rights of a copyright owner
described in sections 107, 108, 109, 110, and 112(f) shall apply to a claim under
subsection (a) with respect to a sound recording fixed before February 15, 1972.
(B) RULE OF CONSTRUCTION FOR SECTION 108(H).—With respect to the
application of section 108(h) to a claim under subsection (a) with respect to a sound
recording fixed before February 15, 1972, the phrase ‘during the last 20 years of any
term of copyright of a published work’ in such section 108(h) shall be construed to
mean at any time after the date of enactment of this section.
(2) Actions.—The limitations on actions described in section 507 shall apply to a claim
under subsection (a) with respect to a sound recording fixed before February 15, 1972.
(3) Material online.—Section 512 shall apply to a claim under subsection (a) with
respect to a sound recording fixed before February 15, 1972.
(4) Principles of equity.—Principles of equity apply to remedies for a violation of
this section to the same extent as such principles apply to remedies for infringement of
copyright.
(5) Filing requirement for statutory damages and attorneys’ fees.—
(A) FILING OF INFORMATION ON SOUND RECORDINGS.—
(i) FILING REQUIREMENT.—Except in the case of a transmitting entity that
has filed contact information for that transmitting entity under subparagraph (B),
in any action under this section, an award of statutory damages or of attorneys’
fees under section 504 or 505 may be made with respect to an unauthorized use of
a sound recording under subsection (a) only if—
(I) the rights owner has filed with the Copyright Office a schedule that specifies the title, artist, and rights owner of the sound recording and contains such
other information, as practicable, as the Register of Copyrights prescribes by
regulation; and
(II) the use occurs after the end of the 90-day period beginning on the date on
which the information described in subclause (I) is indexed into the public records of the Copyright Office.
(ii) REGULATIONS.—Not later than 180 days after the date of enactment of
this section, the Register of Copyrights shall issue regulations that—
(I) establish the form, content, and procedures for the filing of schedules under
clause (i);
(II) provide that a person may request that the person receive timely notification of a filing described in subclause (I); and
261

§ 1401.

Copyright Act of 1976

(III) set forth the manner in which a person may make a request under subclause (II).
(B) FILING OF CONTACT INFORMATION FOR TRANSMITTING
ENTITIES.—
(i) FILING REQUIREMENT.—Not later than 30 days after the date of enactment of this section, the Register of Copyrights shall issue regulations establishing
the form, content, and procedures for the filing of contact information by any entity
that, as of the date of enactment of this section, performs a sound recording fixed
before February 15, 1972, by means of a digital audio transmission.
(ii) TIME LIMIT ON FILINGS.—The Register of Copyrights may accept filings
under clause (i) only until the 180th day after the date of enactment of this section.
(iii) LIMITATION ON STATUTORY DAMAGES AND ATTORNEYS’
FEES.—
(I) LIMITATION.—An award of statutory damages or of attorneys’ fees under section 504 or 505 may not be made against an entity that has filed contact
information for that entity under clause (i) with respect to an unauthorized use
by that entity of a sound recording under subsection (a) if the use occurs before
the end of the 90-day period beginning on the date on which the entity receives
a notice that—
(aa) is sent by or on behalf of the rights owner of the sound recording;
(bb) states that the entity is not legally authorized to use that sound recording
under subsection (a); and
(cc) identifies the sound recording in a schedule conforming to the requirements prescribed by the regulations issued under subparagraph (A)(ii).
(II) UNDELIVERABLE NOTICES.—In any case in which a notice under
subclause (I) is sent to an entity by mail or courier service and the notice is returned to the sender because the entity either is no longer located at the address
provided in the contact information filed under clause (i) or has refused to accept
delivery, or the notice is sent by electronic mail and is undeliverable, the 90-day
period under subclause (I) shall begin on the date of the attempted delivery.
(C) SECTION 412.—Section 412 shall not limit an award of statutory damages
under section 504(c) or attorneys’ fees under section 505 with respect to a covered
activity in violation of subsection (a).
(6) Applicability of other provisions.—
(A) IN GENERAL.—Subject to subparagraph (B), no provision of this title shall
apply to or limit the remedies available under this section except as otherwise provided in this section.
(B) APPLICABILITY OF DEFINITIONS.—Any term used in this section that is
defined in section 101 shall have the meaning given that term in section 101.
(g) Application of Section 230 Safe Harbor.—For purposes of section 230 of the
Communications Act of 1934 (47 U.S.C. 230), subsection (a) shall be considered to be a
‘law pertaining to intellectual property’ under subsection (e)(2) of such section 230.
(h) Application to Rights Owners.—
(1) Transfers.—With respect to a rights owner described in subsection (l)(2)(B)—
(A) subsections (d) and (e) of section 201 and section 204 shall apply to a transfer
described in subsection (l)(2)(B) to the same extent as with respect to a transfer of
copyright ownership; and
(B) notwithstanding section 411, that rights owner may institute an action with
respect to a violation of this section to the same extent as the owner of an exclusive
262

Copyright Act of 1976

Appendix

right under a copyright may institute an action under section 501(b).
(2) Application of other provisions.—The following provisions shall apply to a
rights owner under this section to the same extent as any copyright owner:
(A) Section 112(e)(2).
(B) Section 112(e)(7).
(C) Section 114(e).
(D) Section 114(h).
(i) Ephemeral Recordings.—An authorized reproduction made under this section
shall be subject to section 112(g) to the same extent as a reproduction of a sound recording fixed on or after February 15, 1972.
(j) Rule of Construction.—A rights owner of, or featured recording artist who performs on, a sound recording under this chapter shall be deemed to be an interested copyright party, as defined in section 1001, to the same extent as a copyright owner or
featured recording artist under chapter 10.
(k) Treatment of States and State Instrumentalities, Officers, and Employees.—
Any State, and any instrumentality, officer, or employee described in subsection (a)(3),
shall be subject to the provisions of this section in the same manner and to the same
extent as any nongovernmental entity.
(l) Definitions.—In this section:
(1) Covered activity.—The term ‘covered activity’ means any activity that the copyright owner of a sound recording would have the exclusive right to do or authorize
under section 106 or 602, or that would violate section 1201 or 1202, if the sound
recording were fixed on or after February 15, 1972.
(2) Rights owner.—The term ‘rights owner’ means—
(A) the person that has the exclusive right to reproduce a sound recording under
the laws of any State, as of the day before the date of enactment of this section; or
(B) any person to which a right to enforce a violation of this section may be transferred, in whole or in part, after the date of enactment of this section, under—
(i) subsections (d) and (e) of section 201; and
(ii) section 204.
Appendix
Title 28 — Judiciary and Judicial Procedure, U.S. Code
§ 137.—Division of business among district judges
(a) In General.—The business of a court having more than one judge shall be divided
among the judges as provided by the rules and orders of the court.
The chief judge of the district court shall be responsible for the observance of such
rules and orders, and shall divide the business and assign the cases so far as such rules
and orders do not otherwise prescribe.
If the district judges in any district are unable to agree upon the adoption of rules or
orders for that purpose the judicial council of the circuit shall make the necessary orders.
(b) Random Assignment of Rate Court Proceedings.—
(1) In general.—
(A) DEFINITION.—In this paragraph, the term ‘performing rights society’ has
the meaning given the term in section 101 of title 17.
263

Appendix
Copyright Act of 1976

(B) DETERMINATION OF LICENSE FEE.—Except as provided in subparagraph (C), in the case of any performing rights society subject to a consent decree,
any application for the determination of a license fee for the public performance of
music in accordance with the applicable consent decree shall be made in the district
court with jurisdiction over that consent decree and randomly assigned to a judge of
that district court according to the rules of that court for the division of business
among district judges, provided that any such application shall not be assigned to—
(i) a judge to whom continuing jurisdiction over any performing rights society
for any performing rights society consent decree is assigned or has previously been
assigned; or
(ii) a judge to whom another proceeding concerning an application for the determination of a reasonable license fee is assigned at the time of the filing of the
application.
(C) EXCEPTION.—Subparagraph (B) does not apply to an application to determine
reasonable license fees made by individual proprietors under section 513 of title 17.
(2) Rule of construction.—Nothing in paragraph (1) shall modify the rights of any
party to a consent decree or to a proceeding to determine reasonable license fees, to
make an application for the construction of any provision of the applicable consent
decree. Such application shall be referred to the judge to whom continuing jurisdiction
over the applicable consent decree is currently assigned. If any such application is
made in connection with a rate proceeding, such rate proceeding shall be stayed until
the final determination of the construction application. Disputes in connection with a
rate proceeding about whether a licensee is similarly situated to another licensee shall
not be subject to referral to the judge with continuing jurisdiction over the applicable
consent decree.

264

[JB/JJ Note: In 2011, Congress passed the Leahy–Smith America Invents Act (“AIA”). It
contained a variety of amendments to the patent statute, and its main provisions went into
effect on September 16, 2012 and March 16, 2013. (In addition, in 2012, the US signed the
Patent Law Treaties Implementation Act (“PLT”), which would allow applicants to file a
single international design application.) As a result of these changes, US patent law is in a
period of transition; depending on the circumstances of a particular case, either previous
or newly revised patent provisions may apply. To help you navigate this shifting landscape,
we are including the USPTO’s consolidation of earlier and current patent law. Where relevant, a parenthetical after the section heading indicates when that particular provision will
apply. You can also find the PTO’s version of these consolidated patent laws online at
https://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf.]

PATENT ACT OF 1952
(As Amended, with Annotations)
35 U.S. Code
[USPTO Editor Note: Updated January 2014. Incorporates the changes made by the Patent Law Treaty (PLT) as set forth in Title II of the Patent Law Treaties Implementation
Act of 2012 (PLTIA), Public Law 112-211 (Dec. 18, 2012). Where either the current statute
or an earlier version thereof would be applicable under specified conditions, the earlier
version includes applicability information in a parenthetical following the statute number.
Note that for those statutes applicable under conditions specified in the Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284 (Sept.16, 2011), the applicability
information is indicated by the designation “(pre-PLT (AIA))”, “(pre-AIA)”, “(transitional)”, or by the effective date range. Where the AIA sets forth detailed applicability or
effective date provisions, these are paraphrased and indicated by the designation “(note)”
following the statute number at the beginning of the affected chapter or section.]
PART I—UNITED STATES PATENT AND TRADEMARK OFFICE
CHAPTER 1—ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
§1
Establishment.
§2
Powers and duties.
§3
Officers and employees.
§4
Restrictions on officers and employees as to interest in patents.
§5
Patent and Trademark Office Public Advisory Committees.
§6
Patent Trial and Appeal Board.
§ 6 (pre-AIA)
Board of Patent Appeals and Interferences.
§7
Library.
§8
Classification of patents.
§9
Certified copies of records.
§ 10
Publications.
§ 11
Exchange of copies of patents and applications with foreign
countries.
§ 12
Copies of patents and applications for public libraries.
§ 13
Annual report to Congress.
CHAPTER 2—PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE
§ 21
Filing date and day for taking action.
§ 22
Printing of papers filed.
265

Patent Act

§ 23
§ 24
§ 25
§ 26
§ 27

Testimony in Patent and Trademark Office cases.
Subpoenas, witnesses.
Declaration in lieu of oath.
Effect of defective execution.
Revival of applications; reinstatement of reexamination
proceedings.

CHAPTER 3—PRACTICE BEFORE PATENT AND TRADEMARK OFFICE
§ 31
[Repealed]
§ 32
Suspension or exclusion from practice.
§ 33
Unauthorized representation as practitioner.
CHAPTER 4—PATENT FEES; FUNDING; SEARCH SYSTEMS
§ 41
Patent fees; patent and trademark search systems.
§ 42
Patent and Trademark Office funding.
PART II—PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 10—PATENTABILITY OF INVENTIONS
§ 100 (note)
AIA First inventor to file provisions.
§ 100
Definitions
§ 100 (pre-AIA)
Definitions.
§ 101
Inventions patentable.
§ 102
Conditions for patentability; novelty.
§ 102 (pre-AIA)
Conditions for patentability; novelty and loss of right to patent.
§ 103
Conditions for patentability; non-obvious subject matter.
§ 103 (pre-AIA)
Conditions for patentability; non-obvious subject matter.
§ 104
[Repealed]
§ 104 (pre-AIA)
Invention made abroad.
§ 105
Inventions in outer space.
CHAPTER 11—APPLICATION FOR PATENT
§ 111
Application.
§ 111 (pre-PLT (AIA))
Application.
§ 111 (pre-AIA)
Application.
§ 112
Specification.
§ 112 (pre-AIA)
Specification.
§ 113
Drawings.
§ 114
Models, specimens.
§ 115
Inventor’s oath or declaration.
§ 115 (pre-AIA)
Oath of applicant.
§ 116
Inventors.
§ 116 (pre-AIA)
Inventors.
§ 117
Death or incapacity of inventor.
§ 118
Filing by other than inventor.
§ 118 (pre-AIA)
Filing by other than inventor.
§ 119
Benefit of earlier filing date; right of priority.
§ 119 (pre-AIA)
Benefit of earlier filing date; right of priority.
§ 120
Benefit of earlier filing date in the United States.
§ 120 (pre-AIA)
Benefit of earlier filing date in the United States.
§ 121
Divisional applications.
§ 121 (pre-AIA)
Divisional applications.
§ 122
Confidential status of applications; publication of patent
applications.
266

Patent Act

§ 123

Micro entity defined.

CHAPTER 12—EXAMINATION OF APPLICATION
§ 131
Examination of application.
§ 132
Notice of rejection; reexamination.
§ 133
Time for prosecuting application.
§ 134
Appeal to the Patent Trial and Appeal Board.
§ 134 (transitional)
Appeal to the Board of Patent Appeals and Interferences.
§ 134 (pre-AIA)
Appeal to the Board of Patent Appeals and Interferences.
§ 135
Derivation proceedings.
§ 135 (pre-AIA)
Interferences.
CHAPTER 13—REVIEW OF PATENT AND TRADEMARK OFFICE DECISION
§ 141
Appeal to Court of Appeals for the Federal Circuit.
§ 141 (pre-AIA)
Appeal to Court of Appeals for the Federal Circuit.
§ 142
Notice of appeal.
§ 143
Proceedings on appeal.
§ 143 (pre-AIA)
Proceedings on appeal.
§ 144
Decision on appeal.
§ 145
Civil action to obtain patent.
§ 145 (pre-AIA)
Civil action to obtain patent.
§ 146
Civil action in case of derivation proceeding.
§ 146 (pre-AIA)
Civil action in case of interference.
CHAPTER 14—ISSUE OF PATENT
§ 151
Issue of patent.
§ 152
Issue of patent to assignee.
§ 153
How issued.
§ 154
Contents and term of patent; provisional rights.
§ 154 (pre-AIA)
Contents and term of patent; provisional rights.
§ 155
[Repealed.]
§ 155A
[Repealed.]
§ 156
Extension of patent term.
§ 157
[Repealed.]
§ 157 (pre-AIA)
Statutory invention registration.
CHAPTER 15—PLANT PATENTS
§ 161
Patents for plants.
§ 162
Description, claim.
§ 163
Grant.
§ 164
Assistance of the Department of Agriculture.
CHAPTER 16—DESIGNS
§ 171
§ 172
§ 172 (pre-AIA)
§ 173

Patents for designs.
Right of priority.
Right of priority.
Term of design patent.

CHAPTER 17—SECRECY OF CERTAIN INVENTIONS AND FILING
APPLICATIONS IN FOREIGN COUNTRIES
§ 181
Secrecy of certain inventions and withholding of patent.
§ 182
Abandonment of invention for unauthorized disclosure.
§ 183
Right to compensation.
§ 184
Filing of application in foreign country.
267

Patent Act

§ 184 (pre-AIA)
§ 185
§ 185 (pre-AIA)
§ 186
§ 187
§ 188

Filing of application in foreign country.
Patent barred for filing without license.
Patent barred for filing without license.
Penalty.
Nonapplicability to certain persons.
Rules and regulations, delegation of power.

CHAPTER 18—PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL
ASSISTANCE
§ 200
Policy and objective.
§ 201
Definitions.
§ 202
Disposition of rights.
§ 202 (pre-AIA)
Disposition of rights.
§ 203
March-in rights.
§ 204
Preference for United States industry.
§ 205
Confidentiality.
§ 206
Uniform clauses and regulations.
§ 207
Domestic and foreign protection of federally owned inventions.
§ 208
Regulations governing Federal licensing.
§ 209
Licensing federally owned inventions.
§ 210
Precedence of chapter.
§ 211
Relationship to antitrust laws.
§ 212
Disposition of rights in educational awards.
PART III—PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 25—AMENDMENT AND CORRECTION OF PATENTS
§ 251
Reissue of defective patents.
§ 251 (pre-AIA)
Reissue of defective patents.
§ 252
Effect of reissue.
§ 253
Disclaimer.
§ 253 (pre-AIA)
Disclaimer.
§ 254
Certificate of correction of Patent and Trademark Office
mistake.
§ 255
Certificate of correction of applicant’s mistake.
§ 256
Correction of named inventor.
§ 256 (pre-AIA)
Correction of named inventor.
§ 257
Supplemental examinations to consider, reconsider, or correct
information.
CHAPTER 26—OWNERSHIP AND ASSIGNMENT
§ 261
Ownership; assignment.
§ 262
Joint owners.
CHAPTER 27—GOVERNMENT INTERESTS IN PATENTS
§ 266
[Repealed.]
§ 267
Time for taking action in Government applications.
CHAPTER 28—INFRINGEMENT OF PATENTS
§ 271
Infringement of patent.
§ 272
Temporary presence in the United States.
§ 273
Defense to infringement based on prior commercial use.

268

Patent Act

CHAPTER 29—REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER
ACTIONS
§ 281
Remedy for infringement of patent.
§ 282
Presumption of validity; defenses.
§ 283
Injunction.
§ 284
Damages.
§ 285
Attorney fees.
§ 286
Time limitation on damages.
§ 287
Limitation on damages and other remedies; marking and notice.
§ 288
Action for infringement of a patent containing an invalid claim.
§ 288 (pre-AIA)
Action for infringement of a patent containing an invalid claim.
§ 289
Additional remedy for infringement of design patent.
§ 290
Notice of patent suits.
§ 291
Derived patents.
§ 291 (pre-AIA)
Interfering patents.
§ 292
False marking.
§ 293
Nonresident patentee; service and notice.
§ 294
Voluntary arbitration.
§ 295
Presumptions: Product made by patented process.
§ 296
Liability of States, instrumentalities of States, and State officials
for infringement of patents.
§ 297
Improper and deceptive invention promotion.
§ 298
Advice of counsel.
§ 299
Joinder of parties.
CHAPTER 30—PRIOR ART CITATIONS TO OFFICE AND EX PARTE
REEXAMINATION OF PATENTS
§ 301
Citation of prior art and written statements.
§ 302
Request for reexamination.
§ 303
Determination of issue by Director.
§ 304
Reexamination order by Director.
§ 305
Conduct of reexamination proceedings.
§ 305 (pre-AIA)
Conduct of reexamination proceedings.
§ 306
Appeal.
§ 307
Certificate of patentability, unpatentability, and claim
cancellation.
CHAPTER 31—INTER PARTES REVIEW
§ 311 (note)
Inter partes review applicability provisions.
§ 311
Inter partes review.
§ 312
Petitions.
§ 313
Preliminary response to petition.
§ 314
Institution of inter partes review.
§ 315
Relation to other proceedings or actions.
§ 316
Conduct of inter partes review.
§ 317
Settlement.
§ 318
Decision of the Board.
§ 319
Appeal.
CHAPTER 31 (pre-AIA)—OPTIONAL INTER PARTES REEXAMINATION
PROCEDURES
§ 311 (pre-AIA)
§ 312 (transitional)

Request for inter partes reexamination.
Determination of issue by Director.
269

Patent Act

§ 313 (transitional)
§ 314 (pre-AIA)
§ 315 (pre-AIA)
§ 316 (pre-AIA)
§ 317 (pre-AIA)
§ 318 (pre-AIA)

Inter partes reexamination order by Director.
Conduct of inter partes reexamination proceedings.
Appeal.
Certificate of patentability, unpatentability, and claim
cancellation.
Inter partes reexamination prohibited.
Stay of litigation.

CHAPTER 32—POST-GRANT REVIEW
§ 321 (note)
Post-grant review applicability.
§ 321
Post-grant review.
§ 322
Petitions.
§ 323
Preliminary response to petition.
§ 324
Institution of post-grant review.
§ 325
Relation to other proceedings or actions.
§ 326
Conduct of post-grant review.
§ 327
Settlement.
§ 328
Decision of the Board.
§ 329
Appeal.
PART IV—PATENT COOPERATION TREATY
CHAPTER 35—DEFINITIONS
§ 351
Definitions.
CHAPTER 36—INTERNATIONAL STAGE
§ 361
Receiving Office.
§ 362
International Searching Authority and International Preliminary
Examining Authority.
§ 363
International application designating the United States: Effect.
§ 363 (pre-AIA)
International application designating the United States: Effect.
§ 364
International stage: Procedure.
§ 365
Right of priority; benefit of the filing date of a prior application.
§ 366
Withdrawn international application.
§ 367
Actions of other authorities: Review.
§ 368
Secrecy of certain inventions; filing international applications in
foreign countries.
CHAPTER 37—NATIONAL STAGE
§ 371
National stage: Commencement.
§ 372
National stage: Requirements and procedure.
§ 373
[Repealed]
§ 374
Publication of international application: Effect.
§ 374 (pre-AIA)
Publication of international application: Effect.
§ 375
Patent issued on international application: Effect.
§ 375 (pre-AIA)
Patent issued on international application: Effect.
§ 376
Fees.
UNCODIFIED LAW
Select Uncodified AIA Provisions
AIA § 14
AIA § 18
AIA § 33
270

Tax strategies deemed within the prior art.
Transitional program for covered business method patents.
Limitation on issuance of patents.

Patent Act

§2

PART I—UNITED STATES PATENT AND TRADEMARK OFFICE
CHAPTER 1—ESTABLISHMENT, OFFICERS AND EMPLOYEES,
FUNCTIONS
35 U.S.C. 1 Establishment.
(a) Establishment.—The United States Patent and Trademark Office is established as
an agency of the United States, within the Department of Commerce. In carrying out its
functions, the United States Patent and Trademark Office shall be subject to the policy
direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise
independent control of its budget allocations and expenditures, personnel decisions and
processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law. Those operations designed to grant
and issue patents and those operations which are designed to facilitate the registration of
trademarks shall be treated as separate operating units within the Office.
(b) Offices.—The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, D.C., area, for the service of process and
papers and for the purpose of carrying out its functions. The United States Patent and
Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident
of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish
satellite offices in such other places in the United States as it considers necessary and
appropriate in the conduct of its business.
(c) Reference.—For purposes of this title, the United States Patent and Trademark
Office shall also be referred to as the “Office” and the “Patent and Trademark Office”.
35 U.S.C. 2 Powers and duties.
(a) In General.—The United States Patent and Trademark Office, subject to the policy
direction of the Secretary of Commerce—
(1) shall be responsible for the granting and issuing of patents and the registration of
trademarks; and
(2) shall be responsible for disseminating to the public information with respect to
patents and trademarks.
(b) Specific Powers.—The Office—
(1) shall adopt and use a seal of the Office, which shall be judicially noticed and with
which letters patent, certificates of trademark registrations, and papers issued by the
Office shall be authenticated;
(2) may establish regulations, not inconsistent with law, which—
(A) shall govern the conduct of proceedings in the Office;
(B) shall be made in accordance with section 553 of title 5;
(C) shall facilitate and expedite the processing of patent applications, particularly those
which can be filed, stored, processed, searched, and retrieved electronically, subject to
the provisions of section 122 relating to the confidential status of applications;
(D) may govern the recognition and conduct of agents, attorneys, or other persons
representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that
they are of good moral character and reputation and are possessed of the necessary
qualifications to render to applicants or other persons valuable service, advice, and
271

§2

Patent Act

assistance in the presentation or prosecution of their applications or other business
before the Office;
(E) shall recognize the public interest in continuing to safeguard broad access to
the United States patent system through the reduced fee structure for small entities
under section 41(h)(1);
(F) provide for the development of a performance-based process that includes quantitative and qualitative measures and standards for evaluating cost-effectiveness and
is consistent with the principles of impartiality and competitiveness; and
(G) may, subject to any conditions prescribed by the Director and at the request of
the patent applicant, provide for prioritization of examination of applications for
products, processes, or technologies that are important to the national economy or
national competitiveness without recovering the aggregate extra cost of providing
such prioritization, notwithstanding section 41 or any other provision of law;
(3) may acquire, construct, purchase, lease, hold, manage, operate, improve, alter,
and renovate any real, personal, or mixed property, or any interest therein, as it considers necessary to carry out its functions;
(4)(A) may make such purchases, contracts for the construction, or management and
operation of facilities, and contracts for supplies or services, without regard to the provisions of subtitle I and chapter 33 of title 40, division C (except sections 3302,
3501(b), 3509, 3906, 4710, and 4711) of subtitle I of title 41, and the McKinney-Vento
Homeless Assistance Act (42 U.S.C. 11301 et seq.);
(B) may enter into and perform such purchases and contracts for printing services,
including the process of composition, platemaking, presswork, silk screen processes,
binding, microform, and the products of such processes, as it considers necessary to
carry out the functions of the Office, without regard to sections 501 through 517 and
1101 through 1123 of title 44;
(5) may use, with their consent, services, equipment, personnel, and facilities of other
departments, agencies, and instrumentalities of the Federal Government, on a reimbursable basis, and cooperate with such other departments, agencies, and instrumentalities in
the establishment and use of services, equipment, and facilities of the Office;
(6) may, when the Director determines that it is practicable, efficient, and cost-effective to do so, use, with the consent of the United States and the agency, instrumentality, Patent and Trademark Office, or international organization concerned, the
services, records, facilities, or personnel of any State or local government agency or
instrumentality or foreign patent and trademark office or international organization to
perform functions on its behalf;
(7) may retain and use all of its revenues and receipts, including revenues from the
sale, lease, or disposal of any real, personal, or mixed property, or any interest therein,
of the Office;
(8) shall advise the President, through the Secretary of Commerce, on national and
certain international intellectual property policy issues;
(9) shall advise Federal departments and agencies on matters of intellectual property
policy in the United States and intellectual property protection in other countries;
(10) shall provide guidance, as appropriate, with respect to proposals by agencies to
assist foreign governments and international intergovernmental organizations on matters of intellectual property protection;
(11) may conduct programs, studies, or exchanges of items or services regarding domestic and international intellectual property law and the effectiveness of intellectual
property protection domestically and throughout the world, and the Office is authorized
272

Patent Act

§3

to expend funds to cover the subsistence expenses and travel-related expenses, including per diem, lodging costs, and transportation costs, of persons attending such programs who are not Federal employees;
(12)(A) shall advise the Secretary of Commerce on programs and studies relating to
intellectual property policy that are conducted, or authorized to be conducted, cooperatively with foreign intellectual property offices and international intergovernmental
organizations; and
(B) may conduct programs and studies described in subparagraph (A); and
(13)(A) in coordination with the Department of State, may conduct programs and
studies cooperatively with foreign intellectual property offices and international intergovernmental organizations; and
(B) with the concurrence of the Secretary of State, may authorize the transfer of
not to exceed $100,000 in any year to the Department of State for the purpose of
making special payments to international intergovernmental organizations for studies and programs for advancing international cooperation concerning patents, trademarks, and other matters.
(c) Clarification of Specific Powers.—
(1) The special payments under subsection (b)(13)(B) shall be in addition to any
other payments or contributions to international organizations described in subsection
(b)(13)(B) and shall not be subject to any limitations imposed by law on the amounts
of such other payments or contributions by the United States Government.
(2) Nothing in subsection (b) shall derogate from the duties of the Secretary of State
or from the duties of the United States Trade Representative as set forth in section 141
of the Trade Act of 1974 (19 U.S.C. 2171).
(3) Nothing in subsection (b) shall derogate from the duties and functions of the Register of Copyrights or otherwise alter current authorities relating to copyright matters.
(4) In exercising the Director’s powers under paragraphs (3) and (4)(A) of subsection (b), the Director shall consult with the Administrator of General Services.
(5) In exercising the Director’s powers and duties under this section, the Director
shall consult with the Register of Copyrights on all copyright and related matters.
(d) Construction.—Nothing in this section shall be construed to nullify, void, cancel,
or interrupt any pending request-for-proposal let or contract issued by the General Services Administration for the specific purpose of relocating or leasing space to the United
States Patent and Trademark Office.
35 U.S.C. 3 Officers and employees.
(a) Under Secretary and Director.—
(1) In General.—The powers and duties of the United States Patent and Trademark
Office shall be vested in an Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office (in this title referred to as the
“Director”), who shall be a citizen of the United States and who shall be appointed by
the President, by and with the advice and consent of the Senate. The Director shall be a
person who has a professional background and experience in patent or trademark law.
(2) Duties.—
(A) In General.—The Director shall be responsible for providing policy direction
and management supervision for the Office and for the issuance of patents and the
registration of trademarks. The Director shall perform these duties in a fair, impartial,
and equitable manner.
(B) Consulting with the Public Advisory Committees.—The Director shall consult
273

§3

Patent Act

with the Patent Public Advisory Committee established in section 5 on a regular basis
on matters relating to the patent operations of the Office, shall consult with the Trademark Public Advisory Committee established in section 5 on a regular basis on matters
relating to the trademark operations of the Office, and shall consult with the respective
Public Advisory Committee before submitting budgetary proposals to the Office of Management and Budget or changing or proposing to change patent or trademark user fees
or patent or trademark regulations which are subject to the requirement to provide notice
and opportunity for public comment under section 553 of title 5, as the case may be.
(3) Oath.—The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office.
(4) Removal.—The Director may be removed from office by the President. The
President shall provide notification of any such removal to both Houses of Congress.
(b) Officers and Employees of the Office.—
(1) Deputy Under Secretary and Deputy Director.—The Secretary of Commerce,
upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and
Trademark Office who shall be vested with the authority to act in the capacity of the
Director in the event of the absence or incapacity of the Director. The Deputy Director
shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
(2) Commissioners.—
(A) Appointment and Duties.—The Secretary of Commerce shall appoint a Commissioner for Patents and a Commissioner for Trademarks, without regard to chapter
33, 51, or 53 of title 5. The Commissioner for Patents shall be a citizen of the United
States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability
and professional background and experience in trademark law and serve for a term of
5 years. The Commissioner for Patents and the Commissioner for Trademarks shall
serve as the chief operating officers for the operations of the Office relating to patents
and trademarks, respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent
and trademark operations, respectively. The Secretary may reappoint a Commissioner
to subsequent terms of 5 years as long as the performance of the Commissioner as set
forth in the performance agreement in subparagraph (B) is satisfactory.
(B) Salary and Performance Agreement.—The Commissioners shall be paid an
annual rate of basic pay not to exceed the maximum rate of basic pay for the Senior
Executive Service established under section 5382 of title 5, including any applicable
locality-based comparability payment that may be authorized under section
5304(h)(2)(C) of title 5. The compensation of the Commissioners shall be considered,
for purposes of section 207(c)(2)(A) of title 18, to be the equivalent of that described
under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners
may receive a bonus in an amount of up to, but not in excess of, 50 percent of the
Commissioners’ annual rate of basic pay, based upon an evaluation by the Secretary
of Commerce, acting through the Director, of the Commissioners’ performance as
defined in an annual performance agreement between the Commissioners and the
Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus
274

Patent Act

§3

under this subparagraph may be made to the Commissioners only to the extent that
such payment does not cause the Commissioners’ total aggregate compensation in a
calendar year to equal or exceed the amount of the salary of the Vice President under
section 104 of title 3.
(C) Removal.—The Commissioners may be removed from office by the Secretary
for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5. The Secretary
shall provide notification of any such removal to both Houses of Congress.
(3) Other Officers and Employees.—The Director shall—
(A) appoint such officers, employees (including attorneys), and agents of the Office
as the Director considers necessary to carry out the functions of the Office; and
(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.
The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be
taken into account for purposes of applying any such limitation.
(4) Training of Examiners.—The Office shall submit to the Congress a proposal to
provide an incentive program to retain as employees patent and trademark examiners
of the primary examiner grade or higher who are eligible for retirement, for the sole
purpose of training patent and trademark examiners.
(5) National Security Positions.—The Director, in consultation with the Director of
the Office of Personnel Management, shall maintain a program for identifying national
security positions and providing for appropriate security clearances, in order to maintain
the secrecy of certain inventions, as described in section 181, and to prevent disclosure
of sensitive and strategic information in the interest of national security.
(6) Administrative Patent Judges and Administrative Trademark Judges.—
The Director may fix the rate of basic pay for the administrative patent judges appointed pursuant to section 6 and the administrative trademark judges appointed pursuant to section 17 of the Trademark Act of 1946 (15 U.S.C. 1067) at not greater than
the rate of basic pay payable for level III of the Executive Schedule under section 5314
of title 5. The payment of a rate of basic pay under this paragraph shall not be subject
to the pay limitation under section 5306(e) or 5373 of title 5.
(c) Continued Applicability of Title 5.—Officers and employees of the Office shall
be subject to the provisions of title 5, relating to Federal employees.
(d) Adoption of Existing Labor Agreements.—The Office shall adopt all labor
agreements which are in effect, as of the day before the effective date of the Patent and
Trademark Office Efficiency Act, with respect to such Office (as then in effect).
(e) Carryover of Personnel.—
(1) From PTO.—Effective as of the effective date of the Patent and Trademark Office Efficiency Act, all officers and employees of the Patent and Trademark Office on
the day before such effective date shall become officers and employees of the Office,
without a break in service.
(2) Other Personnel.—Any individual who, on the day before the effective date of
the Patent and Trademark Office Efficiency Act, is an officer or employee of the Department of Commerce (other than an officer or employee under paragraph (1)) shall be
transferred to the Office, as necessary to carry out the purposes of that Act, if—
(A) such individual serves in a position for which a major function is the performance of work reimbursed by the Patent and Trademark Office, as determined by
the Secretary of Commerce;
275

§4

Patent Act

(B) such individual serves in a position that performed work in support of the
Patent and Trademark Office during at least half of the incumbent’s work time, as
determined by the Secretary of Commerce; or
(C) such transfer would be in the interest of the Office, as determined by the Secretary of Commerce in consultation with the Director.
Any transfer under this paragraph shall be effective as of the same effective date as
referred to in paragraph (1), and shall be made without a break in service.
(f) Transition Provisions.—
(1) Interim Appointment of Director.—On or after the effective date of the Patent
and Trademark Office Efficiency Act, the President shall appoint an individual to serve
as the Director until the date on which a Director qualifies under subsection (a). The
President shall not make more than one such appointment under this subsection.
(2) Continuation in Office of Certain Officers.—
(A) The individual serving as the Assistant Commissioner for Patents on the day
before the effective date of the Patent and Trademark Office Efficiency Act may
serve as the Commissioner for Patents until the date on which a Commissioner for
Patents is appointed under subsection (b).
(B) The individual serving as the Assistant Commissioner for Trademarks on the
day before the effective date of the Patent and Trademark Office Efficiency Act may
serve as the Commissioner for Trademarks until the date on which a Commissioner
for Trademarks is appointed under subsection (b).
35 U.S.C. 4 Restrictions on officers and employees as to interest in patents.
Officers and employees of the Patent and Trademark Office shall be incapable, during
the period of their appointments and for one year thereafter, of applying for a patent and
of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any
right or interest in any patent, issued or to be issued by the Office. In patents applied for
thereafter they shall not be entitled to any priority date earlier than one year after the
termination of their appointment.
35 U.S.C. 5 Patent and Trademark Office Public Advisory Committees.
(a) Establishment of Public Advisory Committees.—
(1) Appointment.—The United States Patent and Trademark Office shall have a Patent Public Advisory Committee and a Trademark Public Advisory Committee, each of
which shall have nine voting members who shall be appointed by the Secretary of Commerce and serve at the pleasure of the Secretary of Commerce. In each year, 3 members
shall be appointed to each Advisory Committee for 3-year terms that shall begin on December 1 of that year. Any vacancy on an Advisory Committee shall be filled within 90
days after it occurs. A new member who is appointed to fill a vacancy shall be appointed
to serve for the remainder of the predecessor’s term.
(2) Chair.—The Secretary of Commerce, in consultation with the Director, shall
designate a Chair and Vice Chair of each Advisory Committee from among the members appointed under paragraph (1). If the Chair resigns before the completion of his
or her term, or is otherwise unable to exercise the functions of the Chair, the Vice Chair
shall exercise the functions of the Chair.
(b) Basis for Appointments.—Members of each Advisory Committee—
(1) shall be citizens of the United States who shall be chosen so as to represent the
interests of diverse users of the United States Patent and Trademark Office with respect
276

Patent Act

§5

to patents, in the case of the Patent Public Advisory Committee, and with respect to
trademarks, in the case of the Trademark Public Advisory Committee;
(2) shall include members who represent small and large entity applicants located in
the United States in proportion to the number of applications filed by such applicants,
but in no case shall members who represent small entity patent applicants, including
small business concerns, independent inventors, and nonprofit organizations, constitute less than 25 percent of the members of the Patent Public Advisory Committee, and
such members shall include at least one independent inventor; and
(3) shall include individuals with substantial background and achievement in finance, management, labor relations, science, technology, and office automation. In
addition to the voting members, each Advisory Committee shall include a representative of each labor organization recognized by the United States Patent and Trademark
Office. Such representatives shall be nonvoting members of the Advisory Committee
to which they are appointed.
(c) Meetings.—Each Advisory Committee shall meet at the call of the chair to consider an agenda set by the chair.
(d) Duties.—Each Advisory Committee shall—
(1) review the policies, goals, performance, budget, and user fees of the United
States Patent and Trademark Office with respect to patents, in the case of the Patent
Public Advisory Committee, and with respect to Trademarks, in the case of the Trademark Public Advisory Committee, and advise the Director on these matters;
(2) within 60 days after the end of each fiscal year—
(A) prepare an annual report on the matters referred to in paragraph (1);
(B) transmit the report to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives; and
(C) publish the report in the Official Gazette of the United States Patent and Trademark Office.
(e) Compensation.—Each member of each Advisory Committee shall be compensated for each day (including travel time) during which such member is attending meetings or conferences of that Advisory Committee or otherwise engaged in the business of
that Advisory Committee, at the rate which is the daily equivalent of the annual rate of
basic pay in effect for level III of the Executive Schedule under section 5314 of title 5.
While away from such member’s home or regular place of business such member shall
be allowed travel expenses, including per diem in lieu of subsistence, as authorized by
section 5703 of title 5.
(f) Access to Information.—Members of each Advisory Committee shall be provided
access to records and information in the United States Patent and Trademark Office, except for personnel or other privileged information and information concerning patent
applications required to be kept in confidence by section 122.
(g) Applicability of Certain Ethics Laws.—Members of each Advisory Committee
shall be special Government employees within the meaning of section 202 of title 18.
(h) Inapplicability of Federal Advisory Committee Act.—The Federal Advisory
Committee Act (5 U.S.C. App.) shall not apply to each Advisory Committee.
(i) Open Meetings.—The meetings of each Advisory Committee shall be open to the
public, except that each Advisory Committee may by majority vote meet in executive
session when considering personnel, privileged, or other confidential information.
(j) Inapplicability of Patent Prohibition.—Section 4 shall not apply to voting members of the Advisory Committees.
277

§6

Patent Act

35 U.S.C. 6 Patent Trial and Appeal Board.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012.*
See 35 U.S.C. 6 (pre-AIA) for the law otherwise applicable.]
(a) In General.—There shall be in the Office a Patent Trial and Appeal Board. The
Director, the Deputy Director, the Commissioner for Patents, the Commissioner for
Trademarks, and the administrative patent judges shall constitute the Patent Trial and
Appeal Board. The administrative patent judges shall be persons of competent legal
knowledge and scientific ability who are appointed by the Secretary, in consultation with
the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals
and Interferences is deemed to refer to the Patent Trial and Appeal Board.
(b) Duties.—The Patent Trial and Appeal Board shall—
(1) on written appeal of an applicant, review adverse decisions of examiners upon
applications for patents pursuant to section 134(a);
(2) review appeals of reexaminations pursuant to section 134(b);
(3) conduct derivation proceedings pursuant to section 135; and
(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.
(c) 3-Member Panels.—Each appeal, derivation proceeding, post-grant review, and
inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal
Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board
may grant rehearings.
(d) Treatment of Prior Appointments.—The Secretary of Commerce may, in the Secretary’s discretion, deem the appointment of an administrative patent judge who, before
the date of the enactment of this subsection, held office pursuant to an appointment by the
Director to take effect on the date on which the Director initially appointed the administrative patent judge. It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the
Director that the administrative patent judge so appointed was acting as a de facto officer.
*Note: The provisions of this section as in effect on Sept. 15, 2012 (35 U.S.C. 6 (pre-AIA))
apply to interference proceedings that are declared after September 15, 2012 under 35
U.S.C. 135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 6 (pre-AIA) Board of Patent Appeals and Interferences.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012.* See 35 U.S.C. 6 for the law otherwise applicable.]
(a) Establishment and Composition.—There shall be in the United States Patent and
Trademark Office a Board of Patent Appeals and Interferences. The Director, the Deputy
Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Board. The administrative patent judges
shall be persons of competent legal knowledge and scientific ability who are appointed
by the Secretary of Commerce, in consultation with the Director.
(b) Duties.—The Board of Patent Appeals and Interferences shall, on written appeal
of an applicant, review adverse decisions of examiners upon applications for patents and
shall determine priority and patentability of invention in interferences declared under
section 135(a). Each appeal and interference shall be heard by at least three members of
the Board, who shall be designated by the Director. Only the Board of Patent Appeals
and Interferences may grant rehearings.
278

Patent Act

§ 11

(c) Authority of the Secretary.—The Secretary of Commerce may, in his or her discretion, deem the appointment of an administrative patent judge who, before the date of the
enactment of this subsection, held office pursuant to an appointment by the Director to take
effect on the date on which the Director initially appointed the administrative patent judge.
(d) Defense to Challenge of Appointment.—It shall be a defense to a challenge to
the appointment of an administrative patent judge on the basis of the judge’s having been
originally appointed by the Director that the administrative patent judge so appointed
was acting as a de facto officer.
*Note: The provisions of this section as in effect on Sept. 15, 2012 apply to interference
proceedings that are declared after September 15, 2012 under 35 U.S.C. 135 (pre-AIA).
See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 7 Library.
The Director shall maintain a library of scientific and other works and periodicals, both
foreign and domestic, in the Patent and Trademark Office to aid the officers in the discharge of their duties.
35 U.S.C. 8 Classification of patents.
The Director may revise and maintain the classification by subject matter of United
States letters patent, and such other patents and printed publications as may be necessary
or practicable, for the purpose of determining with readiness and accuracy the novelty of
inventions for which applications for patent are filed.
35 U.S.C. 9 Certified copies of records.
The Director may furnish certified copies of specifications and drawings of patents
issued by the Patent and Trademark Office, and of other records available either to the
public or to the person applying therefor.
35 U.S.C. 10 Publications.
(a) The Director may publish in printed, typewritten, or electronic form, the following:
(1) Patents and published applications for patents, including specifications and
drawings, together with copies of the same. The Patent and Trademark Office may
print the headings of the drawings for patents for the purpose of photolithography.
(2) Certificates of trademark registrations, including statements and drawings, together with copies of the same.
(3) The Official Gazette of the United States Patent and Trademark Office.
(4) Annual indexes of patents and patentees, and of trademarks and registrants.
(5) Annual volumes of decisions in patent and trademark
(6) Pamphlet copies of the patent laws and rules of practice, laws and rules relating
to trademarks, and circulars or other publications relating to the business of the Office.
(b) The Director may exchange any of the publications specified in items 3, 4, 5, and
6 of subsection (a) of this section for publications desirable for the use of the Patent and
Trademark Office.
35 U.S.C. 11 Exchange of copies of patents and applications with foreign countries.
The Director may exchange copies of specifications and drawings of United States
patents and published applications for patents for those of foreign countries. The Director
279

§ 12

Patent Act

shall not enter into an agreement to provide such copies of specifications and drawings
of United States patents and applications to a foreign country, other than a NAFTA country or a WTO member country, without the express authorization of the Secretary of
Commerce. For purposes of this section, the terms “NAFTA country” and “WTO member country” have the meanings given those terms in section 104(b).
35 U.S.C. 12 Copies of patents and applications for public libraries.
The Director may supply copies of specifications and drawings of patents and published applications for patents in printed or electronic form to public libraries in the
United States which shall maintain such copies for the use of the public, at the rate for
each year’s issue established for this purpose in section 41(d).
35 U.S.C. 13 Annual report to Congress.
The Director shall report to the Congress, not later than 180 days after the end of each
fiscal year, the moneys received and expended by the Office, the purposes for which the
moneys were spent, the quality and quantity of the work of the Office, the nature of
training provided to examiners, the evaluation of the Commissioner of Patents and the
Commissioner of Trademarks by the Secretary of Commerce, the compensation of the
Commissioners, and other information relating to the Office.
CHAPTER 2—PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE
35 U.S.C. 21 Filing date and day for taking action.
(a) The Director may by rule prescribe that any paper or fee required to be filed in the
Patent and Trademark Office will be considered filed in the Office on the date on which
it was deposited with the United States Postal Service or would have been deposited with
the United States Postal Service but for postal service interruptions or emergencies designated by the Director.
(b) When the day, or the last day, for taking any action or paying any fee in the United
States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day.
35 U.S.C. 22 Printing of papers filed.
The Director may require papers filed in the Patent and Trademark Office to be printed,
typewritten, or on an electronic medium.
35 U.S.C. 23 Testimony in Patent and Trademark Office cases.
The Director may establish rules for taking affidavits and depositions required in cases
in the Patent and Trademark Office. Any officer authorized by law to take depositions to
be used in the courts of the United States, or of the State where he resides, may take such
affidavits and depositions.
35 U.S.C. 24 Subpoenas, witnesses.
The clerk of any United States court for the district wherein testimony is to be taken
for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within
such district, commanding him to appear and testify before an officer in such district
280

Patent Act

§ 32

authorized to take depositions and affidavits, at the time and place stated in the subpoena.
The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in
the Patent and Trademark Office.
Every witness subpoenaed and in attendance shall be allowed the fees and traveling
expenses allowed to witnesses attending the United States district courts.
A judge of a court whose clerk issued a subpoena may enforce obedience to the process
or punish disobedience as in other like cases, on proof that a witness, served with such
subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty
of contempt for disobeying such subpoena unless his fees and traveling expenses in going
to, and returning from, and one day’s attendance at the place of examination, are paid or
tendered him at the time of the service of the subpoena; nor for refusing to disclose any
secret matter except upon appropriate order of the court which issued the subpoena.
35 U.S.C. 25 Declaration in lieu of oath.
(a) The Director may by rule prescribe that any document to be filed in the Patent and
Trademark Office and which is required by any law, rule, or other regulation to be under
oath may be subscribed to by a written declaration in such form as the Director may
prescribe, such declaration to be in lieu of the oath otherwise required.
(b) Whenever such written declaration is used, the document must warn the declarant
that willful false statements and the like are punishable by fine or imprisonment, or both
(18 U.S.C. 1001).
35 U.S.C. 26 Effect of defective execution.
Any document to be filed in the Patent and Trademark Office and which is required
by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.
35 U.S.C. 27 Revival of applications; reinstatement of reexamination proceedings.
The Director may establish procedures, including the requirement for payment of the
fee specified in section 41(a)(7), to revive an unintentionally abandoned application for
patent, accept an unintentionally delayed payment of the fee for issuing each patent, or
accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.
CHAPTER 3—PRACTICE BEFORE PATENT AND TRADEMARK OFFICE
35 U.S.C. 31 [Repealed].
35 U.S.C. 32 Suspension or exclusion from practice.
The Director may, after notice and opportunity for a hearing, suspend or exclude, either
generally or in any particular case, from further practice before the Patent and Trademark
Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty
of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D), or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant,
or other person having immediate or prospective business before the Office. The reasons
281

§ 33

Patent Act

for any such suspension or exclusion shall be duly recorded. The Director shall have the
discretion to designate any attorney who is an officer or employee of the United States
Patent and Trademark Office to conduct the hearing required by this section. A proceeding
under this section shall be commenced not later than the earlier of either the date that is
10 years after the date on which the misconduct forming the basis for the proceeding
occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office as prescribed in the regulations established under section 2(b)(2)(D). The United States District Court for the
Eastern District of Virginia, under such conditions and upon such proceedings as it by its
rules determines, may review the action of the Director upon the petition of the person so
refused recognition or so suspended or excluded.
35 U.S.C. 33 Unauthorized representation as practitioner.
Whoever, not being recognized to practice before the Patent and Trademark Office,
holds himself out or permits himself to be held out as so recognized, or as being qualified
to prepare or prosecute applications for patent, shall be fined not more than $1,000 for
each offense.
CHAPTER 4—PATENT FEES; FUNDING; SEARCH SYSTEMS
35 U.S.C. 41 Patent fees; patent and trademark search systems.
(a) General Fees.—The Director shall charge the following fees:
(1) Filing and Basic National Fees.—
(A) On filing each application for an original patent, except for design, plant, or
provisional applications, $330.
(B) On filing each application for an original design patent, $220.
(C) On filing each application for an original plant patent, $220.
(D) On filing each provisional application for an original patent, $220.
(E) On filing each application for the reissue of a patent, $330.
(F) The basic national fee for each international application filed under the treaty
defined in section 351(a) entering the national stage under section 371, $330.
(G) In addition, excluding any sequence listing or computer program listing filed
in electronic medium as prescribed by the Director, for any application the specification and drawings of which exceed 100 sheets of paper (or equivalent as prescribed
by the Director if filed in an electronic medium), $270 for each additional 50 sheets
of paper (or equivalent as prescribed by the Director if filed in an electronic medium)
or fraction thereof.
(2) Excess Claims Fees.—
(A) In General.—In addition to the fee specified in paragraph (1)—
(i) on filing or on presentation at any other time, $220 for each claim in independent form in excess of 3;
(ii) on filing or on presentation at any other time, $52 for each claim (whether
dependent or independent) in excess of 20; and
(iii) for each application containing a multiple dependent claim, $390.
(B) Multiple Dependent Claims.—For the purpose of computing fees under subparagraph (A), a multiple dependent claim referred to in section 112 or any claim
depending therefrom shall be considered as separate dependent claims in accordance
with the number of claims to which reference is made.
(C) Refunds; Errors in Payment.—The Director may by regulation provide for
282

Patent Act

§ 41

a refund of any part of the fee specified in subparagraph (A) for any claim that is
canceled before an examination on the merits, as prescribed by the Director, has been
made of the application under section 131. Errors in payment of the additional fees
under this paragraph may be rectified in accordance with regulations prescribed by
the Director.
(3) Examination Fees.—
(A) In General.—
(i) For examination of each application for an original patent, except for design,
plant, provisional, or international applications, $220.
(ii) For examination of each application for an original design patent, $140.
(iii) For examination of each application for an original plant patent, $170.
(iv) For examination of the national stage of each international application, $220.
(v) For examination of each application for the reissue of a patent, $650.
(B) Applicability of Other Fee Provisions.—The provisions of paragraphs (3)
and (4) of section 111(a) relating to the payment of the fee for filing the application
shall apply to the payment of the fee specified in subparagraph (A) with respect to
an application filed under section 111(a). The provisions of section 371(d) relating
to the payment of the national fee shall apply to the payment of the fee specified
subparagraph (A) with respect to an international application.
(4) Issue Fees.—
(A) For issuing each original patent, except for design or plant patents, $1,510.
(B) For issuing each original design patent, $860.
(C) For issuing each original plant patent, $1,190.
(D) For issuing each reissue patent, $1,510.
(5) Disclaimer Fee.—On filing each disclaimer, $140.
(6) Appeal Fees.—
(A) On filing an appeal from the examiner to the Patent Trial and Appeal Board,
$540.
(B) In addition, on filing a brief in support of the appeal, $540, and on requesting
an oral hearing in the appeal before the Patent Trial and Appeal Board, $1,080.
(7) Revival Fees.—On filing each petition for the revival of an abandoned application
for a patent, for the delayed payment of the fee for issuing each patent, for the delayed
response by the patent owner in any reexamination proceeding, for the delayed payment
of the fee for maintaining a patent in force, for the delayed submission of a priority or
benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700.00. The Director may refund any part of the fee specified in this paragraph,
in exceptional circumstances as determined by the Director.
(8) Extension Fees.—For petitions for 1-month extensions of time to take actions
required by the Director in an application—
(A) on filing a first petition, $130;
(B) on filing a second petition, $360; and
(C) on filing a third or subsequent petition, $620.
(b) Maintenance Fees.—
(1) In General.—The Director shall charge the following fees for maintaining in
force all patents based on applications filed on or after December 12, 1980:
(A) Three years and 6 months after grant, $980.
(B) Seven years and 6 months after grant, $2,480.
(C) Eleven years and 6 months after grant, $4,110.
(2) Grace Period; Surcharge.—Unless payment of the applicable maintenance fee
283

§ 41

Patent Act

under paragraph (1) is received in the Office on or before the date the fee is due or within
a grace period of 6 months thereafter, the patent shall expire as of the end of such grace
period. The Director may require the payment of a surcharge as a condition of accepting
within such 6-month grace period the payment of an applicable maintenance fee.
(3) No Maintenance Fee for Design or Plant Patent.—No fee may be established
for maintaining a design or plant patent in force.
(c) Delays in Payment of Maintenance Fees.—
(1) Acceptance.—The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the
satisfaction of the Director to have been unintentional. The Director may require the
payment of the fee specified in subsection (a)(7) as a condition of accepting payment
of any maintenance fee after the 6-month grace period. If the Director accepts payment
of a maintenance fee after the 6-month grace period, the patent shall be considered as
not having expired at the end of the grace period.
(2) Effect on Rights of Others.—A patent, the term of which has been maintained as
a result of the acceptance of a payment of a maintenance fee under this subsection, shall
not abridge or affect the right of any person or that person’s successors in business who
made, purchased, offered to sell, or used anything protected by the patent within the
United States, or imported anything protected by the patent into the United States after
the 6-month grace period but prior to the acceptance of a maintenance fee under this
subsection, to continue the use of, to offer for sale, or to sell to others to be used, offered
for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported. The court before which such matter is in question may provide for the continued
manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, or
used within the United States, or imported into the United States, as specified, or for the
manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, and the court may also provide for the continued practice
of any process that is practiced, or for the practice of which substantial preparation was
made, after the 6-month grace period but before the acceptance of a maintenance fee
under this subsection, to the extent and under such terms as the court deems equitable
for the protection of investments made or business commenced after the 6-month grace
period but before the acceptance of a maintenance fee under this subsection.
(d) Patent Search and Other Fees.—
(1) Patent Search Fees.—
(A) In General.—The Director shall charge the fees specified under subparagraph
(B) for the search of each application for a patent, except for provisional applications.
The Director shall adjust the fees charged under this paragraph to ensure that the fees
recover an amount not to exceed the estimated average cost to the Office of searching
applications for patent by Office personnel.
(B) Specific Fees.—The fees referred to in subparagraph (A) are—
(i) $540 for each application for an original patent, except for design, plant, provisional, or international applications;
(ii) $100 for each application for an original design patent;
(iii) $330 for each application for an original plant patent;
(iv) $540 for the national stage of each international application; and
(v) $540 for each application for the reissue of a patent.
(C) Applicability of Other Provisions.—The provisions of paragraphs (3) and
(4) of section 111(a) relating to the payment of the fee for filing the application shall
284

Patent Act

§ 41

apply to the payment of the fee specified in this paragraph with respect to an application filed under section 111(a). The provisions of section 371(d) relating to the
payment of the national fee shall apply to the payment of the fee specified in this
paragraph with respect to an international application.
(D) Refunds.—The Director may by regulation provide for a refund of any part of
the fee specified in this paragraph for any applicant who files a written declaration
of express abandonment as prescribed by the Director before an examination has
been made of the application under section 131.
(2) Other Fees.—
(A) In General.—The Director shall establish fees for all other processing, services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such processing, services, or materials, except
that the Director shall charge the following fees for the following services:
(i) For recording a document affecting title, $40 per property.
(ii) For each photocopy, $.25 per page.
(iii) For each black and white copy of a patent, $3.
(B) Copies for Libraries.—The yearly fee for providing a library specified in section 12 with uncertified printed copies of the specifications and drawings for all patents in that year shall be $50.
(e) Waiver of Fees; Copies Regarding Notice.—The Director may waive the payment of any fee for any service or material related to patents in connection with an occasional or incidental request made by a department or agency of the Government, or any
officer thereof. The Director may provide any applicant issued a notice under section 132
with a copy of the specifications and drawings for all patents referred to in that notice
without charge.
(f) Adjustment of Fees.—The fees established in subsections (a) and (b) of this section
may be adjusted by the Director on October 1, 1992, and every year thereafter, to reflect
any fluctuations occurring during the previous 12 months in the Consumer Price Index, as
determined by the Secretary of Labor. Changes of less than 1 per centum may be ignored.
(g) [Repealed]
(h) Fees for Small Entities.—
(1) Reductions in Fees.—Subject to paragraph (3), fees charged under subsections
(a), (b) and (d)(1) shall be reduced by 50 percent with respect to their application to
any small business concern as defined under section 3 of the Small Business Act, and
to any independent inventor or nonprofit organization as defined in regulations issued
by the Director.
(2) Surcharges and Other Fees.—With respect to its application to any entity described in paragraph (1), any surcharge or fee charged under subsection (c) or (d) shall
not be higher than the surcharge or fee required of any other entity under the same or
substantially similar circumstances.
(3) Reduction for Electronic Filing.—The fee charged under subsection (a)(l)(A)
shall be reduced by 75 percent with respect to its application to any entity to which
paragraph (1) applies, if the application is filed by electronic means as prescribed by
the Director.
(i) Electronic Patent and Trademark Data.—
(1) Maintenance of Collections.—The Director shall maintain, for use by the public,
paper, microform or electronic collections of United States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of information. The Director may not impose fees directly for the use of such
285

§ 42

Patent Act

collections, or for the use of the public patent and trademark search rooms or libraries.
(2) Availability of Automated Search Systems.—The Director shall provide for
the full deployment of the automated search systems of the Patent and Trademark Office so that such systems are available for use by the public, and shall assure full access
by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by
users to mass storage and retrieval systems.
(3) Access Fees.—The Director may establish reasonable fees for access by the public to the automated search systems of the Patent and Trademark Office. If such fees
are established, a limited amount of free access shall be made available to users of the
systems for purposes of education and training. The Director may waive the payment
by an individual of fees authorized by this subsection upon a showing of need or hardship, and if such waiver is in the public interest.
(4) Annual Report to Congress.—The Director shall submit to the Congress an
annual report on the automated search systems of the Patent and Trademark Office and
the access by the public to such systems. The Director shall also publish such report in
the Federal Register. The Director shall provide an opportunity for the submission of
comments by interested persons on each such report.
35 U.S.C. 42 Patent and Trademark Office funding.
(a) All fees for services performed by or materials furnished by the Patent and Trademark Office will be payable to the Director.
(b) All fees paid to the Director and all appropriations for defraying the costs of the
activities of the Patent and Trademark Office will be credited to the Patent and Trademark Office Appropriation Account in the Treasury of the United States.
(c)(1) To the extent and in the amounts provided in advance in appropriations Acts,
fees authorized in this title or any other Act to be charged or established by the Director
shall be collected by and shall, subject to paragraph (3), be available to the Director to
carry out the activities of the Patent and Trademark Office.
(2) There is established in the Treasury a Patent and Trademark Fee Reserve Fund.
If fee collections by the Patent and Trademark Office for a fiscal year exceed the
amount appropriated to the Office for that fiscal year, fees collected in excess of the
appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund.
To the extent and in the amounts provided in appropriations Acts, amounts in the Fund
shall be made available until expended only for obligation and expenditure by the Office in accordance with paragraph (3).
(3)(A) Any fees that are collected under this title, and any surcharges on such fees,
may only be used for expenses of the Office relating to the processing of patent applications and for other activities, services, and materials relating to patents and to cover
a proportionate share of the administrative costs of the Office.
(B) Any fees that are collected under section 31 of the Trademark Act of 1946,
and any surcharges on such fees, may only be used for expenses of the Office relating
to the processing of trademarkregistrations and for other activities, services, and materials relating to trademarks and to cover a proportionate share of the administrative
costs of the Office.
(d) The Director may refund any fee paid by mistake or any amount paid in excess of
that required.
(e) The Secretary of Commerce shall, on the day each year on which the President
submits the annual budget to the Congress, provide to the Committees on the Judiciary
286

Patent Act

§ 100

of the Senate and the House of Representatives:
(1) a list of patent and trademark fee collections by the Patent and Trademark Office
during the preceding fiscal year;
(2) a list of activities of the Patent and Trademark Office during the preceding fiscal
year which were supported by patent fee expenditures, trademark fee expenditures,
and appropriations;
(3) budget plans for significant programs, projects, and activities of the Office, including out-year funding estimates;
(4) any proposed disposition of surplus fees by the Office; and
(5) such other information as the committees consider necessary.
PART II—PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 10—PATENTABILITY OF INVENTIONS
35 U.S.C. 100 (note) AIA First inventor to file provisions.
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA)
apply to any application for patent, and to any patent issuing thereon, that contains or
contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March
16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the
application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is
entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b)
or to the benefit of an earlier filing date under section 120, 121, or 365(c); or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States
Code, to any patent or application that contains or contained at any time such a claim.
35 U.S.C. 100 Definitions.
[Editor Note: 35 U.S.C. 100(e)–(j) as set forth below are only applicable to patent applications and patents subject to the first inventor to file provisions of the AIA (35 U.S.C. 100
(note)). See 35 U.S.C. 100(e) (pre-AIA) for subsection (e) as otherwise applicable.]
When used in this title unless the context otherwise indicates—
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art, or method, and includes a new use of a
known process, machine, manufacture, composition of matter, or material.
(c) The terms “United States” and “this country” mean the United States of America,
its territories and possessions.
(d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 who is not the patent owner.
(f) The term “inventor” means the individual or, if a joint invention, the individuals
collectively who invented or discovered the subject matter of the invention.
(g) The terms “joint inventor” and “coinventor” mean any 1 of the individuals who
invented or discovered the subject matter of a joint invention.
(h) The term “joint research agreement” means a written contract, grant, or cooper287

§ 100 (pre-AIA)

Patent Act

ative agreement entered into by 2 or more persons or entities for the performance of
experimental, developmental, or research work in the field of the claimed invention.
(i)(1) The term “effective filing date” for a claimed invention in a patent or application for patent means—
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the
application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application
is entitled, as to such invention, to a right of priority under section 119, 365(a), or
365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).
(2) The effective filing date for a claimed invention in an application for reissue or
reissued patent shall be determined by deeming the claim to the invention to have
been contained in the patent for which reissue was sought.
(j) The term “claimed invention” means the subject matter defined by a claim in a
patent or an application for a patent.
35 U.S.C. 100 (pre-AIA) Definitions.
[Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is not applicable to any patent
application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100
(note)). See 35 U.S.C. 100(e)-(j) for the law otherwise applicable.]
When used in this title unless the context otherwise indicates—
*****
(e) The term “third-party requester” means a person requesting ex parte reexamination
under section 302 or inter partes reexamination under section 311 who is not the patent
owner.
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
35 U.S.C. 102 Conditions for patentability; novelty.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 102 (pre-AIA) for the law
otherwise applicable.]
(a) Novelty; Prior Art.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of
the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in
an application for patent published or deemed published under section 122(b), in which
the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.—
(1) Disclosures Made 1 Year or Less Before the Effective Filing Date of the
Claimed Invention.—A disclosure made 1 year or less before the effective filing date
of a claimed invention shall not be prior art to the claimed invention under subsection
(a)(1) if—
288

Patent Act

§ 102 (pre-AIA)

(A) the disclosure was made by the inventor or joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the inventor or a
joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures Appearing in Applications and Patents.—A disclosure shall not
be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively
filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) Common Ownership under Joint Research Agreements.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person
or subject to an obligation of assignment to the same person in applying the provisions
of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made
by, or on behalf of, 1 or more parties to a joint research agreement that was in effect
on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the
scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to
disclose the names of the parties to the joint research agreement.
(d) Patents and Published Applications Effective as Prior Art.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under
subsection (a)(2), such patent or application shall be considered to have been effectively
filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the
application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under
section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under
section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent,
as of the filing date of the earliest such application that describes the subject matter.
*Note: The provisions of 35 U.S.C. 102(g), as in effect on March 15, 2013, shall also
apply to each claim of an application for patent, and any patent issued thereon, for which
the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note)), if such
application or patent contains or contained at any time a claim to a claimed invention to
which is not subject to the first inventor to file provisions of the AIA.
35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of
right to patent.
[Editor Note: With the exception of subsection (g)*), not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).
289

§ 103

Patent Act

See 35 U.S.C. 102 for the law otherwise applicable.]
A person shall be entitled to a patent unless—
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof
by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the
date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an
inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the
filing of the application in the United States, or
(e) the invention was described in—(1) an application for patent, published under
section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in
the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States
only if the international application designated the United States and was published
under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section
291, another inventor involved therein establishes, to the extent permitted in section
104, that before such person’s invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or
(2) before such person’s invention thereof, the invention was made in this country
by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only
the respective dates of conception and reduction to practice of the invention, but also
the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
*Note: The provisions of 35 U.S.C. 102(g), as in effect on March 15, 2013, shall apply
to each claim of an application for patent, and any patent issued thereon, for which the
first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note), if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section 100(i)
of title 35, United States Code, that occurs before March 16, 2013; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States
Code, to any patent or application that contains or contained at any time such a claim.
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 (pre-AIA) for the law
otherwise applicable.]
A patent for a claimed invention may not be obtained, notwithstanding that the claimed
290

Patent Act

§ 103 (pre-AIA)

invention is not identically disclosed as set forth in section 102, if the differences between
the claimed invention and the prior art are such that the claimed invention as a whole
would have been obvious before the effective filing date of the claimed invention to a
person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 for the law otherwise applicable.]
(a) A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section 102, if the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for
patent to proceed under this subsection, a biotechnological process using or resulting in
a composition of matter that is novel under section 102 and nonobvious under subsection
(a) of this section shall be considered nonobvious if—
(A) claims to the process and the composition of matter are contained in either the
same application for patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were
owned by the same person or subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)—
(A) shall also contain the claims to the composition of matter used in or made by
that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
(3) For purposes of paragraph (1), the term “biotechnological process” means—
(A) a process of genetically altering or otherwise inducing a single- or multi-celled
organism to—
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide
sequence, or
(iii) express a specific physiological characteristic not naturally associated with
said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such
as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph
(A) or (B), or a combination of subparagraphs (A) and (B).
(c)(1) Subject matter developed by another person, which qualifies as prior art only
under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at
the time the claimed invention was made, owned by the same person or subject to an
obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and
291

§ 104

Patent Act

a claimed invention shall be deemed to have been owned by the same person or subject
to an obligation of assignment to the same person if—
(A) the claimed invention was made by or on behalf of parties to a joint research
agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the
scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to
disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or
entities for the performance of experimental, developmental, or research work in the
field of the claimed invention.
35 U.S.C. 104 [Repealed.]
35 U.S.C. 104 (pre-AIA) Invention made abroad.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). 35 U.S.C. 104 repealed with regard
to such applications).]
(a) In General.—
(1) Proceedings.—In proceedings in the Patent and Trademark Office, in the courts,
and before any other competent authority, an applicant for a patent, or a patentee, may
not establish a date of invention by reference to knowledge or use thereof, or other
activity with respect thereto, in a foreign country other than a NAFTA country or a
WTO member country, except as provided in sections 119 and 365.
(2) Rights.—If an invention was made by a person, civil or military—
(A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
(B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
(C) while domiciled in a WTO member country and serving in another country in
connection with operations by or on behalf of that WTO member country, that person
shall be entitled to the same rights of priority in the United States with respect to
such invention as if such invention had been made in the United States, that NAFTA
country, or that WTO member country, as the case may be.
(3) Use of Information.—To the extent that any information in a NAFTA country
or a WTO member country concerning knowledge, use, or other activity relevant to
proving or disproving a date of invention has not been made available for use in a
proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United
States, the Director, court, or such other authority shall draw appropriate inferences,
or take other action permitted by statute, rule, or regulation, in favor of the party that
requested the information in the proceeding.
(b) Definitions.—As used in this section—
(1) The term “NAFTA country” has the meaning given that term in section 2(4) of
the North American Free Trade Agreement Implementation Act; and
(2) The term “WTO member country” has the meaning given that term in section
2(10) of the Uruguay Round Agreements Act.
292

Patent Act

§ 111

35 U.S.C. 105 Inventions in outer space.
(a) Any invention made, used, or sold in outer space on a space object or component
thereof under the jurisdiction or control of the United States shall be considered to be
made, used or sold within the United States for the purposes of this title, except with
respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party,
or with respect to any space object or component thereof that is carried on the registry of
a foreign state in accordance with the Convention on Registration of Objects Launched
into Outer Space.
(b) Any invention made, used, or sold in outer space on a space object or component
thereof that is carried on the registry of a foreign state in accordance with the Convention
on Registration of Objects Launched into Outer Space, shall be considered to be made,
used, or sold within the United States for the purposes of this title if specifically so agreed
in an international agreement between the United States and the state of registry.
CHAPTER 11—APPLICATION FOR PATENT
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed on or after December 18, 2013.
See 35 U.S.C. 111 (pre-PLT (AIA)) or 35 U.S.C. 111 (pre-AIA) for the law otherwise
applicable.]
(a) In General.—
(1) Written Application.—An application for patent shall be made, or authorized
to be made, by the inventor, except as otherwise provided in this title, in writing to the
Director.
(2) Contents.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) Fee, Oath or Declaration, and Claims.—The application shall be accompanied
by the fee required by law. The fee, oath or declaration, and 1 or more claims may be
submitted after the filing date of the application, within such period and under such
conditions, including the payment of a surcharge, as may be prescribed by the Director.
Upon failure to submit the fee, oath or declaration, and 1 or more claims within such
prescribed period, the application shall be regarded as abandoned.
(4) Filing Date.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark
Office.
(b) Provisional Application.—
(1) Authorization.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing
to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) Claim.—A claim, as required by subsections (b) through (e) of section 112, shall
not be required in a provisional application.
(3) Fee.—The application shall be accompanied by the fee required by law. The fee
may be submitted after the filing date of the application, within such period and under
293

§ 111 (pre-PLT (AIA))

Patent Act

such conditions, including the payment of a surcharge, as may be prescribed by the
Director. Upon failure to submit the fee within such prescribed period, the application
shall be regarded as abandoned.
(4) Filing Date.—The filing date of a provisional application shall be the date on
which a specification, with or without claims, is received in the United States Patent
and Trademark Office.
(5) Abandonment.—Notwithstanding the absence of a claim, upon timely request and
as prescribed by the Director, a provisional application may be treated as an application
filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the
provisional application shall be regarded as abandoned 12 months after the filing date of
such application and shall not be subject to revival after such 12-month period.
(6) Other Basis for Provisional Application.—Subject to all the conditions in this
subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application
for patent.
(7) No Right of Priority or Benefit of Earliest Filing Date.—A provisional application shall not be entitled to the right of priority of any other application under section
119 or 365(a) or to the benefit of an earlier filing date in the United States under section
120, 121, or 365(c).
(8) Applicable Provisions.—The provisions of this title relating to applications for
patent shall apply to provisional applications for patent, except as otherwise provided,
and except that provisional applications for patent shall not be subject to sections 131
and 135.
(c) Prior Filed Application.—Notwithstanding the provisions of subsection (a), the
Director may prescribe the conditions, including the payment of a surcharge, under
which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number
and the intellectual property authority or country in which the application was filed, shall
constitute the specification and any drawings of the subsequent application for purposes
of a filing date. A copy of the specification and any drawings of the previously filed
application shall be submitted within such period and under such conditions as may be
prescribed by the Director. A failure to submit the copy of the specification and any
drawings of the previously filed application within the prescribed period shall result in
the application being regarded as abandoned. Such application shall be treated as having
never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application
are submitted to the Director.
35 U.S.C. 111 (pre-PLT (AIA)) Application.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012,
and before December 18, 2013. See 35 U.S.C. 111 or 35 U.S.C. 111 (pre-AIA) for the
law otherwise applicable.]
(a) In General.—
(1) Written Application.—An application for patent shall be made, or authorized
to be made, by the inventor, except as otherwise provided in this title, in writing to the
Director.
(2) Contents.—Such application shall include—
294

Patent Act

§ 111 (pre-PLT (AIA))

(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) Fee and Oath or Declaration.—The application must be accompanied by the fee
required by law. The fee and oath or declaration may be submitted after the specification
and any required drawing are submitted, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the Director.
(4) Failure to Submit.—Upon failure to submit the fee and oath or declaration within
such prescribed period, the application shall be regarded as abandoned, unless it is shown
to the satisfaction of the Director that the delay in submitting the fee and oath or declaration was unavoidable or unintentional. The filing date of an application shall be the
date on which the specification and any required drawing are received in the Patent and
Trademark Office.
(b) Provisional Application.—
(1) Authorization.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing
to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) Claim.—A claim, as required by subsections (b) through (e) of section 112, shall
not be required in a provisional application.
(3) Fee.—
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are
submitted, within such period and under such conditions, including the payment of
a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application
shall be regarded as abandoned, unless it is shown to the satisfaction of the Director
that the delay in submitting the fee was unavoidable or unintentional.
(4) Filing Date.—The filing date of a provisional application shall be the date on
which the specification and any required drawing are received in the Patent and Trademark Office.
(5) Abandonment.—Notwithstanding the absence of a claim, upon timely request and
as prescribed by the Director, a provisional application may be treated as an application
filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the
provisional application shall be regarded as abandoned 12 months after the filing date of
such application and shall not be subject to revival after such 12-month period.
(6) Other Basis for Provisional Application.—Subject to all the conditions in this
subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application
for patent.
(7) No Right of Priority or Benefit of Earliest Filing Date.—A provisional application shall not be entitled to the right of priority of any other application under section
119 or 365(a) or to the benefit of an earlier filing date in the United States under section
120, 121, or 365(c).
(8) Applicable Provisions.—The provisions of this title relating to applications for
patent shall apply to provisional applications for patent, except as otherwise provided,
and except that provisional applications for patent shall not be subject to sections 131
and 135.
295

§ 111 (pre-AIA)

Patent Act

35 U.S.C. 111 (pre-AIA) Application.
[Editor Note: Not applicable to any patent application filed on or after September
16, 2012. See 35 U.S.C. 111 or 35 U.S.C. 111 (pre-PLT (AIA)) for the law otherwise
applicable.]
(a) In General.—
(1) Written Application.—An application for patent shall be made, or authorized
to be made, by the inventor, except as otherwise provided in this title, in writing to the
Director.
(2) Contents.—Such application shall include—
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.
(3) Fee and Oath.—The application must be accompanied by the fee required by
law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) Failure to Submit.—Upon failure to submit the fee and oath within such prescribed
period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification
and any required drawing are received in the Patent and Trademark Office.
(b) Provisional Application.—
(1) Authorization.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing
to the Director. Such application shall include—
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
(2) Claim.—A claim, as required by the second through fifth paragraphs of section
112, shall not be required in a provisional application.
(3) Fee.—
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are
submitted, within such period and under such conditions, including the payment of
a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application
shall be regarded as abandoned, unless it is shown to the satisfaction of the Director
that the delay in submitting the fee was unavoidable or unintentional.
(4) Filing Date.—The filing date of a provisional application shall be the date on
which the specification and any required drawing are received in the Patent and Trademark Office.
(5) Abandonment.—Notwithstanding the absence of a claim, upon timely request
and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such
request is made, the provisional application shall be regarded as abandoned 12 months
after the filing date of such application and shall not be subject to revival after such
12-month period.
(6) Other Basis for Provisional Application.—Subject to all the conditions in this
296

Patent Act

§ 112 (pre-AIA)

subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application
for patent.
(7) No Right of Priority or Benefit of Earliest Filing Date.—A provisional application shall not be entitled to the right of priority of any other application under section
119 or 365(a) of this title or to the benefit of an earlier filing date in the United States
under section 120, 121, or 365(c) of this title.
(8) Applicable Provisions.—The provisions of this title relating to applications for
patent shall apply to provisional applications for patent, except as otherwise provided,
and except that provisional applications for patent shall not be subject to sections 115,
131, 135, and 157 of this title.
35 U.S.C. 112 Specification.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012.
See 35 U.S.C. 112 (pre-AIA) for the law otherwise applicable.]
(a) In General.—The specification shall contain a written description of the invention,
and of the manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or with which it
is most nearly connected, to make and use the same, and shall set forth the best mode
contemplated by the inventor or joint inventor of carrying out the invention.
(b) Conclusion.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint
inventor regards as the invention.
(c) Form.—A claim may be written in independent or, if the nature of the case admits,
in dependent or multiple dependent form.
(d) Reference in Dependent Forms.—Subject to subsection (e), a claim in dependent
form shall contain a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed. A claim in dependent form shall be construed to
incorporate by reference all the limitations of the claim to which it refers.
(e) Reference in Multiple Dependent Form.—A claim in multiple dependent form
shall contain a reference, in the alternative only, to more than one claim previously set
forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of
the particular claim in relation to which it is being considered.
(f) Element in Claim for a Combination.—An element in a claim for a combination
may be expressed as a means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such claim shall be construed
to cover the corresponding structure, material, or acts described in the specification and
equivalents thereof.
35 U.S.C. 112 (pre-AIA) Specification.
[Editor Note: Not applicable to any patent application filed on or after September 16,
2012. See 35 U.S.C. 112 for the law otherwise applicable.]
The specification shall contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode contemplated by
297

§ 113

Patent Act

the inventor of carrying out his invention.
The specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his invention.
A claim may be written in independent or, if the nature of the case admits, in dependent
or multiple dependent form.
Subject to the following paragraph, a claim in dependent form shall contain a reference
to a claim previously set forth and then specify a further limitation of the subject matter
claimed. A claim in dependent form shall be construed to incorporate by reference all
the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in the alternative only,
to more than one claim previously set forth and then specify a further limitation of the
subject matter claimed. A multiple dependent claim shall not serve as a basis for any
other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is
being considered.
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. 113 Drawings.
The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may
require its submission within a time period of not less than two months from the sending
of a notice thereof. Drawings submitted after the filing date of the application may not be
used (i) to overcome any insufficiency of the specification due to lack of an enabling
disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original
disclosure thereof for the purpose of interpretation of the scope of any claim.
35 U.S.C. 114 Models, specimens.
The Director may require the applicant to furnish a model of convenient size to exhibit
advantageously the several parts of his invention.
When the invention relates to a composition of matter, the Director may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment.
35 U.S.C. 115 Inventor’s oath or declaration.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012.
See 35 U.S.C. 115 (pre-AIA) for the law otherwise applicable.]
(a) Naming the Inventor; Inventor’s Oath or Declaration.—An application for patent that is filed under section 111(a) or commences the national stage under section 371
shall include, or be amended to include, the name of the inventor for any invention
claimed in the application. Except as otherwise provided in this section, each individual
who is the inventor or a joint inventor of a claimed invention in an application for patent
shall execute an oath or declaration in connection with the application.
(b) Required Statements.—An oath or declaration under subsection (a) shall contain
statements that—
(1) the application was made or was authorized to be made by the affiant or declarant;
298

Patent Act

§ 115

and
(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
(c) Additional Requirements.—The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
(d) Substitute Statement.—
(1) In General.—In lieu of executing an oath or declaration under subsection (a),
the applicant for patent may provide a substitute statement under the circumstances
described in paragraph (2) and such additional circumstances that the Director may
specify by regulation.
(2) Permitted Circumstances.—A substitute statement under paragraph (1) is permitted with respect to any individual who—
(A) is unable to file the oath or declaration under subsection (a) because the
individual—
(i) is deceased;
(ii) is under legal incapacity; or
(iii) cannot be found or reached after diligent effort; or
(B) is under an obligation to assign the invention but has refused to make the oath
or declaration required under subsection (a).
(3) Contents.—A substitute statement under this subsection shall—
(A) identify the individual with respect to whom the statement applies;
(B) set forth the circumstances representing the permitted basis for the filing of the
substitute statement in lieu of the oath or declaration under subsection (a); and
(C) contain any additional information, including any showing, required by the
Director.
(e) Making Required Statements in Assignment of Record.—An individual who is
under an obligation of assignment of an application for patent may include the required
statements under subsections (b) and (c) in the assignment executed by the individual, in
lieu of filing such statements separately.
(f) Time for Filing.—The applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the
issue fee is paid.
(g) Earlier-Filed Application Containing Required Statements or Substitute
Statement.—
(1) Exception.—The requirements under this section shall not apply to an individual
with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120, 121, or 365(c) of
the filing of an earlier-filed application, if—
(A) an oath or declaration meeting the requirements of subsection (a) was executed
by the individual and was filed in connection with the earlier-filed application;
(B) a substitute statement meeting the requirements of subsection (d) was filed in
connection with the earlier filed application with respect to the individual; or
(C) an assignment meeting the requirements of subsection (e) was executed with
respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
(2) Copies of Oaths, Declarations, Statements, or Assignments.—Notwithstanding
paragraph (1), the Director may require that a copy of the executed oath or declaration,
299

§ 115 (pre-AIA)

Patent Act

the substitute statement, or the assignment filed in connection with the earlier-filed application be included in the later-filed application.
(h) Supplemental and Corrected Statements; Filing Additional Statements.—
(1) In General.—Any person making a statement required under this section may
withdraw, replace, or otherwise correct the statement at any time. If a change is made
in the naming of the inventor requiring the filing of 1 or more additional statements
under this section, the Director shall establish regulations under which such additional
statements may be filed.
(2) Supplemental Statements Not Required.—If an individual has executed an
oath or declaration meeting the requirements of subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, the
Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection
with the application for patent or any patent issuing thereon.
(3) Savings Clause.—A patent shall not be invalid or unenforceable based upon the
failure to comply with a requirement under this section if the failure is remedied as
provided under paragraph (1).
(i) Acknowledgment of Penalties.—Any declaration or statement filed pursuant to
this section shall contain an acknowledgment that any willful false statement made in
such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
35 U.S.C. 115 (pre-AIA) Oath of applicant.
[Editor Note: Not applicable to any patent application filed on or after September 16,
2012. See 35 U.S.C. 115 for the law otherwise applicable.]
The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement
thereof, for which he solicits a patent; and shall state of what country he is a citizen. Such
oath may be made before any person within the United States authorized by law to administer oaths, or, when made in a foreign country, before any diplomatic or consular
officer of the United States authorized to administer oaths, or before any officer having
an official seal and authorized to administer oaths in the foreign country in which the
applicant may be, whose authority is proved by certificate of a diplomatic or consular
officer of the United States, or apostille of an official designated by a foreign country
which, by treaty or convention, accords like effect to apostilles of designated officials in
the United States. Such oath is valid if it complies with the laws of the state or country
where made. When the application is made as provided in this title by a person other than
the inventor, the oath may be so varied in form that it can be made by him. For purposes
of this section, a consular officer shall include any United States citizen serving overseas,
authorized to perform notarial functions pursuant to section 1750 of the Revised Statutes,
as amended (22 U.S.C. 4221).
35 U.S.C. 116 Inventors.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35
U.S.C. 116 (pre-AIA) for the law otherwise applicable.]
(a) Joint Inventions.—When an invention is made by two or more persons jointly,
they shall apply for patent jointly and each make the required oath, except as otherwise
provided in this title. Inventors may apply for a patent jointly even though (1) they did
300

Patent Act

§ 118

not physically work together or at the same time, (2) each did not make the same type or
amount of contribution, or (3) each did not make a contribution to the subject matter of
every claim of the patent.
(b) Omitted Inventor.—If a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, the application may be made by the
other inventor on behalf of himself and the omitted inventor. The Director, on proof of
the pertinent facts and after such notice to the omitted inventor as he prescribes, may
grant a patent to the inventor making the application, subject to the same rights which
the omitted inventor would have had if he had been joined. The omitted inventor may
subsequently join in the application.
(c) Correction of Errors in Application.—Whenever through error a person is
named in an application for patent as the inventor, or through an error an inventor is not
named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
35 U.S.C. 116 (pre-AIA) Inventors.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012. See 35 U.S.C. 116 for the law otherwise applicable.]
When an invention is made by two or more persons jointly, they shall apply for patent
jointly and each make the required oath, except as otherwise provided in this title. Inventors
may apply for a patent jointly even though (1) they did not physically work together or at
the same time, (2) each did not make the same type or amount of contribution, or (3) each
did not make a contribution to the subject matter of every claim of the patent.
If a joint inventor refuses to join in an application for patent or cannot be found or
reached after diligent effort, the application may be made by the other inventor on behalf
of himself and the omitted inventor. The Director, on proof of the pertinent facts and after
such notice to the omitted inventor as he prescribes, may grant a patent to the inventor
making the application, subject to the same rights which the omitted inventor would have
had if he had been joined. The omitted inventor may subsequently join in the application.
Whenever through error a person is named in an application for patent as the inventor,
or through an error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be
amended accordingly, under such terms as he prescribes.
35 U.S.C. 117 Death or incapacity of inventor.
Legal representatives of deceased inventors and of those under legal incapacity may
make application for patent upon compliance with the requirements and on the same
terms and conditions applicable to the inventor.
35 U.S.C. 118 Filing by other than inventor.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012.
See 35 U.S.C. 118 (pre-AIA) for the law otherwise applicable.]
A person to whom the inventor has assigned or is under an obligation to assign the
invention may make an application for patent. A person who otherwise shows sufficient
proprietary interest in the matter may make an application for patent on behalf of and as
agent for the inventor on proof of the pertinent facts and a showing that such action is
appropriate to preserve the rights of the parties. If the Director grants a patent on an
301

§ 118 (pre-AIA)

Patent Act

application filed under this section by a person other than the inventor, the patent shall
be granted to the real party in interest and upon such notice to the inventor as the Director
considers to be sufficient.
35 U.S.C. 118 (pre-AIA) Filing by other than inventor.
[Editor Note: Not applicable to any patent application filed on or after September 16,
2012. See 35 U.S.C. 118 for the law otherwise applicable.]
Whenever an inventor refuses to execute an application for patent, or cannot be found
or reached after diligent effort, a person to whom the inventor has assigned or agreed in
writing to assign the invention or who otherwise shows sufficient proprietary interest in
the matter justifying such action, may make application for patent on behalf of and as
agent for the inventor on proof of the pertinent facts and a showing that such action is
necessary to preserve the rights of the parties or to prevent irreparable damage; and the
Director may grant a patent to such inventor upon such notice to him as the Director deems
sufficient, and on compliance with such regulations as he prescribes.
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
[Editor Note: 35 U.S.C. 119(a) as set forth below is only applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).
See 35 U.S.C. 119(a) (pre-AIA) for the law otherwise applicable.]
(a) An application for patent for an invention filed in this country by any person who
has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges
in the case of applications filed in the United States or to citizens of the United States, or
in a WTO member country, shall have the same effect as the same application would have
if filed in this country on the date on which the application for patent for the same invention
was first filed in such foreign country, if the application in this country is filed within 12
months from the earliest date on which such foreign application was filed. The Director
may prescribe regulations, including the requirement for payment of the fee specified in
section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be
extended by an additional 2 months if the delay in filing the application in this country
within the 12-month period was unintentional.
(b)(1) No application for patent shall be entitled to this right of priority unless a claim is
filed in the Patent and Trademark Office, identifying the foreign application by specifying
the application number on that foreign application, the intellectual property authority or
country in or for which the application was filed, and the date of filing the application, at
such time during the pendency of the application as required by the Director.
(2) The Director may consider the failure of the applicant to file a timely claim for
priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an
unintentionally delayed claim under this section.
(3) The Director may require a certified copy of the original foreign application,
specification, and drawings upon which it is based, a translation if not in the English
language, and such other information as the Director considers necessary. Any such
certification shall be made by the foreign intellectual property authority in which the
foreign application was filed and show the date of the application and of the filing of
the specification and other papers.
302

Patent Act

§ 119

(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the
same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and
without leaving any rights outstanding, and has not served, nor thereafter shall serve, as
a basis for claiming a right of priority.
(d) Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s
certificate shall be treated in this country in the same manner and have the same effect
for purpose of the right of priority under this section as applications for patents, subject
to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of
the Paris Convention at the time of such filing.
(e)(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to
disclose the best mode) in a provisional application filed under section 111(b), by an
inventor or inventors named in the provisional application, shall have the same effect, as
to such invention, as though filed on the date of the provisional application filed under
section 111(b), if the application for patent filed under section 111(a) or section 363 is
filed not later than 12 months after the date on which the provisional application was
filed and if it contains or is amended to contain a specific reference to the provisional
application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set
forth in this subsection may be extended by an additional 2 months if the delay in filing
the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional
application under this subsection unless an amendment containing the specific reference
to the earlier filed provisional application is submitted at such time during the pendency
of the application as required by the Director. The Director may consider the failure to
submit such an amendment within that time period as a waiver of any benefit under this
subsection. The Director may establish procedures, including the payment of the fee
specified in section 41(a)(7), to accept an unintentionally delayed submission of an
amendment under this subsection.
(2) A provisional application filed under section 111(b) may not be relied upon in
any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls
on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period
of pendency of the provisional application shall be extended to the next succeeding
secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under
the treaty and Regulations as defined in section 351.
(f) Applications for plant breeder’s rights filed in a WTO member country (or in a
foreign UPOV Contracting Party) shall have the same effect for the purpose of the right
of priority under subsections (a) through (c) of this section as applications for patents,
subject to the same conditions and requirements of this section as apply to applications
for patents.
303

§ 119 (pre-AIA)

Patent Act

(g) As used in this section—
(1) the term “WTO member country” has the same meaning as the term is defined
in section 104(b)(2); and
(2) the term “UPOV Contracting Party” means a member of the International Convention for the Protection of New Varieties of Plants.
35 U.S.C. 119 (pre-AIA) Benefit of earlier filing date; right of priority.
[Editor Note: Pre-AIA 35 U.S.C. 119(a) as set forth below is applicable to patent applications not subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100
(note)). See 35 U.S.C. 119(a) for the law otherwise applicable.]
(a) An application for patent for an invention filed in this country by any person who
has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges
in the case of applications filed in the United States or to citizens of the United States, or
in a WTO member country, shall have the same effect as the same application would have
if filed in this country on the date on which the application for patent for the same invention
was first filed in such foreign country, if the application in this country is filed within
twelve months from the earliest date on which such foreign application was filed; but no
patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the
date of the actual filing of the application in this country, or which had been in public use
or on sale in this country more than one year prior to such filing.
*****
35 U.S.C. 120 Benefit of earlier filing date in the United States.
[Editor Note: Applicable to a patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 120 (pre-AIA) for the law
otherwise applicable.]
An application for patent for an invention disclosed in the manner provided by section
112(a) (other than the requirement to disclose the best mode) in an application previously
filed in the United States, or as provided by section 363 which names an inventor or joint
inventor in the previously filed application shall have the same effect, as to such invention,
as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly
entitled to the benefit of the filing date of the first application and if it contains or is amended
to contain a specific reference to the earlier filed application. No application shall be entitled
to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the
pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under
this section. The Director may establish procedures, including the requirement for payment
of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of
an amendment under this section.
35 U.S.C. 120 (pre-AIA) Benefit of earlier filing date in the United States.
[Editor Note: Not applicable to patent applications subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 120 for the law otherwise
applicable.]
304

Patent Act

§ 121 (pre-AIA)

An application for patent for an invention disclosed in the manner provided by section
112(a) (other than the requirement to disclose the best mode) in an application previously
filed in the United States, or as provided by section 363, which is filed by an inventor or
inventors named in the previously filed application shall have the same effect, as to such
invention, as though filed on the date of the prior application, if filed before the patenting
or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it
contains or is amended to contain a specific reference to the earlier filed application. No
application shall be entitled to the benefit of an earlier filed application under this section
unless an amendment containing the specific reference to the earlier filed application is
submitted at such time during the pendency of the application as required by the Director.
The Director may consider the failure to submit such an amendment within that time
period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.
35 U.S.C. 121 Divisional applications.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012.
See 35 U.S.C. 121 (pre-AIA) for the law otherwise applicable.]
If two or more independent and distinct inventions are claimed in one application, the
Director may require the application to be restricted to one of the inventions. If the other
invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction
under this section has been made, or on an application filed as a result of such a requirement,
shall not be used as a reference either in the Patent and Trademark Office or in the courts
against a divisional application or against the original application or any patent issued on
either of them, if the divisional application is filed before the issuance of the patent on the
other application. The validity of a patent shall not be questioned for failure of the Director
to require the application to be restricted to one invention.
35 U.S.C. 121 (pre-AIA) Divisional applications.
[Editor Note: Not applicable to any patent application filed on or after September 16,
2012. See 35 U.S.C. 121 for the law otherwise applicable.]
If two or more independent and distinct inventions are claimed in one application, the
Director may require the application to be restricted to one of the inventions. If the other
invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the
original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result
of such a requirement, shall not be used as a reference either in the Patent and Trademark
Office or in the courts against a divisional application or against the original application
or any patent issued on either of them, if the divisional application is filed before the
issuance of the patent on the other application. If a divisional application is directed
solely to subject matter described and claimed in the original application as filed, the
Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be
restricted to one invention.
305

§ 122

Patent Act

35 U.S.C. 122 Confidential status of applications; publication of patent applications.
(a) Confidentiality.—Except as provided in subsection (b), applications for patents
shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to
carry out the provisions of an Act of Congress or in such special circumstances as may
be determined by the Director.
(b) Publication.—
(1) In General.—
(A) Subject to paragraph (2), each application for a patent shall be published, in
accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought
under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.
(B) No information concerning published patent applications shall be made available to the public except as the Director determines.
(C) Notwithstanding any other provision of law, a determination by the Director
to release or not to release information concerning a published patent application
shall be final and nonreviewable.
(2) Exceptions.—
(A) An application shall not be published if that application is—
(i) no longer pending;
(ii) subject to a secrecy order under section 181 ;
(iii) a provisional application filed under section 111(b); or
(iv) an application for a design patent filed under chapter 16.
(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in
another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published
as provided in paragraph (1).
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently
files, in a foreign country or under a multilateral international agreement specified
in clause (i), an application directed to the invention disclosed in the application
filed in the Patent and Trademark Office, shall notify the Director of such filing
not later than 45 days after the date of the filing of such foreign or international
application. A failure of the applicant to provide such notice within the prescribed
period shall result in the application being regarded as abandoned.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral
international agreement specified in clause (i), the application shall be published
in accordance with the provisions of paragraph (1) on or as soon as is practical
after the date that is specified in clause (i).
(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office
or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in
the Patent and Trademark Office, the applicant may submit a redacted copy of the
application filed in the Patent and Trademark Office eliminating any part or
306

Patent Act

§ 123

description of the invention in such application that is not also contained in any of
the corresponding applications filed in a foreign country. The Director may only
publish the redacted copy of the application unless the redacted copy of the
application is not received within 16 months after the earliest effective filing date
for which a benefit is sought under this title. The provisions of section 154(d) shall
not apply to a claim if the description of the invention published in the redacted
application filed under this clause with respect to the claim does not enable a
person skilled in the art to make and use the subject matter of the claim.
(c) Protest and Pre-Issuance Opposition.—The Director shall establish appropriate
procedures to ensure that no protest or other form of pre-issuance opposition to the grant
of a patent on an application may be initiated after publication of the application without
the express written consent of the applicant.
(d) National Security.—No application for patent shall be published under subsection
(b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate procedures to ensure that such
applications are promptly identified and the secrecy of such inventions is maintained in
accordance with chapter 17.
(e) Preissuance Submissions by Third Parties.—
(1) In General.—Any third party may submit for consideration and inclusion in the
record of a patent application, any patent, published patent application, or other printed
publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—
(i) 6 months after the date on which the application for patent is first published
under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner
during the examination of the application for patent.
(2) Other Requirements.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the
submission was made in compliance with this section.
35 U.S.C. 123 Micro entity defined.
(a) In General.—For purposes of this title, the term “micro entity” means an applicant
who makes a certification that the applicant—
(1) qualifies as a small entity, as defined in regulations issued by the Director;
(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under
section 111(b), or international applications filed under the treaty defined in section
351(a) for which the basic national fee under section 41(a) was not paid;
(3) did not, in the calendar year preceding the calendar year in which the applicable
fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding
calendar year, as most recently reported by the Bureau of the Census; and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract
307

§ 131

Patent Act

or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in
which the applicable fee is being paid, had a gross income, as defined in section 61(a)
of the Internal Revenue Code of 1986, exceeding 3 times the median household income
for that preceding calendar year, as most recently reported by the Bureau of the Census.
(b) Applications Resulting from Prior Employment.—An applicant is not considered
to be named on a previously filed application for purposes of subsection (a)(2) if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership
rights in the application as the result of the applicant’s previous employment.
(c) Foreign Currency Exchange Rate.—If an applicant’s or entity’s gross income in
the preceding calendar year is not in United States dollars, the average currency exchange
rate, as reported by the Internal Revenue Service, during that calendar year shall be used
to determine whether the applicant’s or entity’s gross income exceeds the threshold specified in paragraphs (3) or (4) of subsection (a).
(d) Institutions of Higher Education.—For purposes of this section, a micro entity
shall include an applicant who certifies that—
(1) the applicant’s employer, from which the applicant obtains the majority of the
applicant’s income, is an institution of higher education as defined in section 101(a) of
the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the
particular applications to such an institution of higher education.
(e) Director’s Authority.—In addition to the limits imposed by this section, the Director may, in the Director’s discretion, impose income limits, annual filing limits, or other
limits on who may qualify as a micro entity pursuant to this section if the Director determines that such additional limits are reasonably necessary to avoid an undue impact on
other patent applicants or owners or are otherwise reasonably necessary and appropriate.
At least 3 months before any limits proposed to be imposed pursuant to this subsection
take effect, the Director shall inform the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate of any such proposed limits.
CHAPTER 12—EXAMINATION OF APPLICATION
35 U.S.C. 131 Examination of application.
The Director shall cause an examination to be made of the application and the alleged
new invention; and if on such examination it appears that the applicant is entitled to a
patent under the law, the Director shall issue a patent therefor.
35 U.S.C. 132 Notice of rejection; reexamination.
(a) Whenever, on examination, any claim for a patent is rejected, or any objection or
requirement made, the Director shall notify the applicant thereof, stating the reasons for
such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his
application; and if after receiving such notice, the applicant persists in his claim for a
patent, with or without amendment, the application shall be reexamined. No amendment
shall introduce new matter into the disclosure of the invention.
(b) The Director shall prescribe regulations to provide for the continued examination of
applications for patent at the request of the applicant. The Director may establish appropriate
308

Patent Act

§ 134 (pre-AIA)

fees for such continued examination and shall provide a 50 percent reduction in such fees
for small entities that qualify for reduced fees under section 41(h)(1).
35 U.S.C. 133 Time for prosecuting application.
Upon failure of the applicant to prosecute the application within six months after any
action therein, of which notice has been given or mailed to the applicant, or within such
shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012 and
applicable to any patent application subject to the first inventor to file provisions of the
AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 134 (transitional) for the law applicable to
proceedings commenced on or after September 16, 2012 but not applicable to any patent
application subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 134
(pre-AIA) for the law applicable to proceedings commenced before September 16, 2012.]
(a) Patent Applicant.—An applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the primary examiner to the Patent Trial and
Appeal Board, having once paid the fee for such appeal.
(b) Patent Owner.—A patent owner in a reexamination may appeal from the final
rejection of any claim by the primary examiner to the Patent Trial and Appeal Board,
having once paid the fee for such appeal.
35 U.S.C. 134 (transitional) Appeal to the Board of Patent Appeals and
Interferences.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012, but
not applicable to any patent application subject to the first inventor to file provisions of the
AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 134 for the law applicable to patent applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 134 (preAIA) for the law applicable to proceedings commenced before September 16, 2012.]
(a) Patent Applicant.—An applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for such appeal.
(b) Patent Owner.—A patent owner in a reexamination may appeal from the final
rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
35 U.S.C. 134 (pre-AIA) Appeal to the Board of Patent Appeals and Interferences.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012.
See 35 U.S.C. 134 or 35 U.S.C. 134 (transitional) for the law otherwise applicable.]
(a) Patent Applicant.—An applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for such appeal.
(b) Patent Owner.—A patent owner in any reexamination proceeding may appeal
from the final rejection of any claim by the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for such appeal.
309

§ 135

Patent Act

(c) Third-Party.—A third-party requester in an inter partes proceeding may appeal to
the Board of Patent Appeals and Interferences from the final decision of the primary
examiner favorable to the patentability of any original or proposed amended or new claim
of a patent, having once paid the fee for such appeal.
35 U.S.C. 135 Derivation proceedings.
[Editor Note: Applicable to any patent application subject to the AIA first inventor to
file provisions (see 35 U.S.C. 100 (note)).* See 35 U.S.C. 135 (pre-AIA) for the law otherwise applicable.]
(a) Institution of Proceeding.—
(1) In General.—An applicant for patent may file a petition with respect to an invention to institute a derivation proceeding in the Office. The petition shall set forth
with particularity the basis for finding that an individual named in an earlier application
as the inventor or a joint inventor derived such invention from an individual named in
the petitioner’s application as the inventor or a joint inventor and, without authorization, the earlier application claiming such invention was filed. Whenever the Director
determines that a petition filed under this subsection demonstrates that the standards
for instituting a derivation proceeding are met, the Director may institute a derivation
proceeding.
(2) Time for Filing.—A petition under this section with respect to an invention that is
the same or substantially the same invention as a claim contained in a patent issued on an
earlier application, or contained in an earlier application when published or deemed published under section 122(b), may not be filed unless such petition is filed during the 1year period following the date on which the patent containing such claim was granted or
the earlier application containing such claim was published, whichever is earlier.
(3) Earlier Application.—For purposes of this section, an application shall not be
deemed to be an earlier application with respect to an invention, relative to another application, unless a claim to the invention was or could have been made in such application having an effective filing date that is earlier than the effective filing date of any
claim to the invention that was or could have been made in such other application.
(4) No Appeal.—A determination by the Director whether to institute a derivation
proceeding under paragraph (1) shall be final and not appealable.
(b) Determination by Patent Trial and Appeal Board.—In a derivation proceeding
instituted under subsection (a), the Patent Trial and Appeal Board shall determine
whether an inventor named in the earlier application derived the claimed invention from
an inventor named in the petitioner’s application and, without authorization, the earlier
application claiming such invention was filed. In appropriate circumstances, the Patent
Trial and Appeal Board may correct the naming of the inventor in any application or
patent at issue. The Director shall prescribe regulations setting forth standards for the
conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and rebut a claim of derivation.
(c) Deferral of Decision.—The Patent Trial and Appeal Board may defer action on a
petition for a derivation proceeding until the expiration of the 3-month period beginning
on the date on which the Director issues a patent that includes the claimed invention that
is the subject of the petition. The Patent Trial and Appeal Board also may defer action
on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the
patent of the earlier applicant.
310

Patent Act

§ 135 (pre-AIA)

(d) Effect of Final Decision.—The final decision of the Patent Trial and Appeal Board,
if adverse to claims in an application for patent, shall constitute the final refusal by the
Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse
to claims in a patent, shall, if no appeal or other review of the decision has been or can be
taken or had, constitute cancellation of those claims, and notice of such cancellation shall
be endorsed on copies of the patent distributed after such cancellation.
(e) Settlement.—Parties to a proceeding instituted under subsection (a) may terminate
the proceeding by filing a written statement reflecting the agreement of the parties as to
the correct inventor of the claimed invention in dispute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it
shall take action consistent with the agreement. Any written settlement or understanding
of the parties shall be filed with the Director.
At the request of a party to the proceeding, the agreement or understanding shall be
treated as business confidential information, shall be kept separate from the file of the
involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause.
(f) Arbitration.—Parties to a proceeding instituted under subsection (a) may, within
such time as may be specified by the Director by regulation, determine such contest or
any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of
title 9, to the extent such title is not inconsistent with this section. The parties shall give
notice of any arbitration award to the Director, 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 Director from determining the patentability of the claimed inventions involved in the proceeding.
*Note: The provisions of 35 U.S.C. 135 (pre-AIA), as in effect on March 15, 2013, shall
apply to each claim of an application for patent, and any patent issued thereon, for which
the first inventor to file provisions of the AIA also apply (see35 U.S.C. 100 (note)), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section
100(i), that occurs before March 16, 2013; or
(B) a specific reference under section 120, 121, or 365(c) to any patent or application
that contains or contained at any time such a claim.
35 U.S.C. 135 (pre-AIA) Interferences.
[Editor Note: Except as noted below,*not applicable to any patent application subject
to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C.
135 for the law otherwise applicable.]
(a) Whenever an application is made for a patent which, in the opinion of the Director,
would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and
Interferences shall determine questions of priority of the inventions and may determine
questions of patentability. Any final decision, if adverse to the claim of an applicant,
shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior
inventor. A final judgment adverse to a patentee from which no appeal or other review
has been or can be taken or had shall constitute cancellation of the claims involved in the
311

§ 135 (pre-AIA)

Patent Act

patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.
(b)(1) A claim which is the same as, or for the same or substantially the same subject
matter as, a claim of an issued patent may not be made in any application unless such a
claim is made prior to one year from the date on which the patent was granted.
(2) A claim which is the same as, or for the same or substantially the same subject
matter as, a claim of an application published under section 122(b) may be made in an
application filed after the application is published only if the claim is made before 1
year after the date on which the application is published.
(c) Any agreement or understanding between parties to an interference, including any
collateral agreements referred to therein, made in connection with or in contemplation of
the termination of the interference, shall be in writing and a true copy thereof filed in the
Patent and Trademark Office before the termination of the interference as between the said
parties to the agreement or understanding. If any party filing the same so requests, the copy
shall be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person on a showing of good cause. Failure to
file the copy of such agreement or understanding shall render permanently unenforceable
such agreement or understanding and any patent of such parties involved in the interference
or any patent subsequently issued on any application of such parties so involved. The Director may, however, on a showing of good cause for failure to file within the time prescribed, permit the filing of the agreement or understanding during the six-month period
subsequent to the termination of the interference as between the parties to the agreement
or understanding. The Director shall give notice to the parties or their attorneys of record,
a reasonable time prior to said termination, of the filing requirement of this section. If the
Director gives such notice at a later time, irrespective of the right to file such agreement or
understanding within the six-month period on a showing of good cause, the parties may
file such agreement or understanding within sixty days of the receipt of such notice. Any
discretionary action of the Director under this subsection shall be reviewable under section
10 of the Administrative Procedure Act.
(d) Parties to a patent interference, within such time as may be specified by the Director by regulation, may determine such contest or any aspect thereof by arbitration. Such
arbitration shall be governed by the provisions of title 9 to the extent such title is not
inconsistent with this section. The parties shall give notice of any arbitration award to
the Director, 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 Director from determining
patentability of the invention involved in the interference.
*Note: The provisions of 35 U.S.C. 135 (pre-AIA), as in effect on March 15, 2013, shall
apply to each claim of an application for patent, and any patent issued thereon, for which
the first inventor to file provisions of the AIA also apply (see 35 U.S.C. 100 (note)), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section
100(i), that occurs before March 16, 2013; or
(B) a specific reference under section 120, 121, or 365(c) to any patent or application
that contains or contained at any time such a claim.

312

Patent Act

§ 141 (pre-AIA)

CHAPTER 13—REVIEW OF PATENT AND TRADEMARK OFFICE DECISION
35 U.S.C. 141 Appeal to Court of Appeals for the Federal Circuit.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012.
See 35 U.S.C. 141 (pre-AIA) for the law otherwise applicable.*]
(a) Examinations.—An applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s
decision to the United States Court of Appeals for the Federal Circuit. By filing such an
appeal, the applicant waives his or her right to proceed under section 145.
(b) Reexaminations.—A patent owner who is dissatisfied with the final decision in an
appeal of a reexamination to the Patent Trial and Appeal Board under section 134(a) may
appeal the Board’s decision only to the United States Court of Appeals for the Federal
Circuit.
(c) Post-Grant and Inter Partes Reviews.—A party to an inter partes review or a
post-grant review who is dissatisfied with the final written decision of the Patent Trial
and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the
Board’s decision only to the United States Court of Appeals for the Federal Circuit.
(d) Derivation Proceedings.—A party to a derivation proceeding who is dissatisfied
with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal
the decision to the United States Court of Appeals for the Federal Circuit, but such appeal
shall be dismissed if any adverse party to such derivation proceeding, within 20 days
after the appellant has filed notice of appeal in accordance with section 142, files notice
with the Director that the party elects to have all further proceedings conducted as provided in section 146. If the appellant does not, within 30 days after the filing of such
notice by the adverse party, file a civil action under section 146, the Board’s decision
shall govern the further proceedings in the case.
*Note: The provisions of this section as in effect on Sept. 15, 2012 (35 U.S.C. 141 (preAIA)) apply to interference proceedings that are declared after September 15, 2012 under
35 U.S.C. 135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14,
2013).
35 U.S.C. 141 (pre-AIA) Appeal to the Court of Appeals for the Federal Circuit.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012.* See 35 U.S.C. 141 for the law otherwise applicable.]
An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals
and Interferences under section 134 of this title may appeal the decision to the United
States Court of Appeals for the Federal Circuit. By filing such an appeal the applicant
waives his or her right to proceed under section 145 of this title. A patent owner, or a
third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent
Appeals and Interferences under section 134 may appeal the decision only to the United
States Court of Appeals for the Federal Circuit. A party to an interference dissatisfied with
the decision of the Board of Patent Appeals and Interferences on the interference may
appeal the decision to the United States Court of Appeals for the Federal Circuit, but such
appeal shall be dismissed if any adverse party to such interference, within twenty days
after the appellant has filed notice of appeal in accordance with section 142 of this title,
files notice with the Director that the party elects to have all further proceedings conducted
313

§ 142

Patent Act

as provided in section 146 of this title. If the appellant does not, within thirty days after
filing of such notice by the adverse party, file a civil action under section 146, the decision
appealed from shall govern the further proceedings in the case.
*Note: The provisions of 35 U.S.C. 141 (pre-AIA) as in effect on Sept. 15, 2012 apply
to interference proceedings that are declared after September 15, 2012 under 35 U.S.C.
135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 142 Notice of appeal.
When an appeal is taken to the United States Court of Appeals for the Federal Circuit,
the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal
is taken as the Director prescribes, but in no case less than 60 days after that date.
35 U.S.C. 143 Proceedings on appeal.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35
U.S.C. 143 (pre-AIA) for the law otherwise applicable.]
With respect to an appeal described in section 142, the Director shall transmit to the
United States Court of Appeals for the Federal Circuit a certified list of the documents
comprising the record in the Patent and Trademark Office. The court may request that the
Director forward the original or certified copies of such documents during the pendency of
the appeal. In an ex parte case, the Director shall submit to the court in writing the grounds
for the decision of the Patent and Trademark Office, addressing all of the issues raised in
the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135
or in an inter partes or post-grant review under chapter 31 or 32.
35 U.S.C. 143 (pre-AIA) Proceedings on appeal.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012. See 35 U.S.C. 143 for the law otherwise applicable.]
With respect to an appeal described in section 142 of this title, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the
documents comprising the record in the Patent and Trademark Office. The court may
request that the Director forward the original or certified copies of such documents during the pendency of the appeal. In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and
Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director
and the parties in the appeal.
35 U.S.C. 144 Decision on appeal.
The United States Court of Appeals for the Federal Circuit shall review the decision
from which an appeal is taken on the record before the Patent and Trademark Office.
Upon its determination the court shall issue to the Director its mandate and opinion,
which shall be entered of record in the Patent and Trademark Office and shall govern the
further proceedings in the case.
314

Patent Act

§ 146

35 U.S.C. 145 Civil action to obtain patent.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 145 (pre-AIA) for the law
otherwise applicable.]
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an
appeal under section 134(a) may, unless appeal has been taken to the United States Court
of Appeals for the Federal Circuit, have remedy by civil action against the Director in
the United States District Court for the Eastern District of Virginia if commenced within
such time after such decision, not less than sixty days, as the Director appoints. The court
may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board,
as the facts in the case may appear, and such adjudication shall authorize the Director to
issue such patent on compliance with the requirements of law. All the expenses of the
proceedings shall be paid by the applicant.
35 U.S.C. 145 (pre-AIA) Civil action to obtain patent.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 145 for the law otherwise applicable.]
An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) may, unless appeal has been taken to the United
States Court of Appeals for the Federal Circuit, have remedy by civil action against the
Director in the United States District Court for the Eastern District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director
appoints. The court may adjudge that such applicant is entitled to receive a patent for his
invention, as specified in any of his claims involved in the decision of the Board of Patent
Appeals and Interferences, as the facts in the case may appear, and such adjudication shall
authorize the Director to issue such patent on compliance with the requirements of law.
All the expenses of the proceedings shall be paid by the applicant.
35 U.S.C. 146 Civil action in case of derivation proceeding.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 146 (pre-AIA) for the law
otherwise applicable.]
Any party to a derivation proceeding dissatisfied with the decision of the Patent Trial
and Appeal Board on the derivation proceeding, may have remedy by civil action, if
commenced within such time after such decision, not less than sixty days, as the Director
appoints or as provided in section 141, unless he has appealed to the United States Court
of Appeals for the Federal Circuit, and such appeal is pending or has been decided. In
such suits the record in the Patent and Trademark Office shall be admitted on motion of
either party upon the terms and conditions as to costs, expenses, and the further crossexamination of the witnesses as the court imposes, without prejudice to the right of the
parties to take further testimony. The testimony and exhibits of the record in the Patent
and Trademark Office when admitted shall have the same effect as if originally taken
and produced in the suit.
Such suit may be instituted against the party in interest as shown by the records of the
Patent and Trademark Office at the time of the decision complained of, but any party in
315

§ 146 (pre-AIA)

Patent Act

interest may become a party to the action. If there be adverse parties residing in a plurality
of districts not embraced within the same state, or an adverse party residing in a foreign
country, the United States District Court for the Eastern District of Virginia shall have
jurisdiction and may issue summons against the adverse parties directed to the marshal of
any district in which any adverse party resides. Summons against adverse parties residing
in foreign countries may be served by publication or otherwise as the court directs. The
Director shall not be a necessary party but he shall be notified of the filing of the suit by
the clerk of the court in which it is filed and shall have the right to intervene. Judgment of
the court in favor of the right of an applicant to a patent shall authorize the Director to
issue such patent on the filing in the Patent and Trademark Office of a certified copy of
the judgment and on compliance with the requirements of law.
35 U.S.C. 146 (pre-AIA) Civil action in case of interference.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 146 for the law otherwise applicable.]
Any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference, may have remedy by civil action, if commenced within such time after such decision, not less than sixty days, as the Director
appoints or as provided in section 141, unless he has appealed to the United States Court
of Appeals for the Federal Circuit, and such appeal is pending or has been decided. In
such suits the record in the Patent and Trademark Office shall be admitted on motion of
either party upon the terms and conditions as to costs, expenses, and the further crossexamination of the witnesses as the court imposes, without prejudice to the right of the
parties to take further testimony. The testimony and exhibits of the record in the Patent
and Trademark Office when admitted shall have the same effect as if originally taken
and produced in the suit.
Such suit may be instituted against the party in interest as shown by the records of the
Patent and Trademark Office at the time of the decision complained of, but any party in
interest may become a party to the action. If there be adverse parties residing in a plurality
of districts not embraced within the same state, or an adverse party residing in a foreign
country, the United States District Court for the Eastern District of Virginia shall have
jurisdiction and may issue summons against the adverse parties directed to the marshal of
any district in which any adverse party resides. Summons against adverse parties residing
in foreign countries may be served by publication or otherwise as the court directs. The
Director shall not be a necessary party but he shall be notified of the filing of the suit by
the clerk of the court in which it is filed and shall have the right to intervene. Judgment of
the court in favor of the right of an applicant to a patent shall authorize the Director to issue
such patent on the filing in the Patent and Trademark Office of a certified copy of the
judgment and on compliance with the requirements of law.
CHAPTER 14—ISSUE OF PATENT
35 U.S.C. 151 Issue of patent.
(a) In General.—If it appears that an applicant is entitled to a patent under the law, a
written notice of allowance of the application shall be given or mailed to the applicant.
The notice shall specify a sum, constituting the issue fee and any required publication
fee, which shall be paid within 3 months thereafter.
316

Patent Act

§ 154

(b) Effect of Payment.—Upon payment of this sum the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned.
35 U.S.C. 152 Issue of patent to assignee.
Patents may be granted to the assignee of the inventor of record in the Patent and
Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title.
35 U.S.C. 153 How issued.
Patents shall be issued in the name of the United States of America, under the seal of
the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office.
35 U.S.C. 154 Contents and term of patent; provisional rights.
[Editor Note: 35 U.S.C. 154(b)(1) as set forth below is only applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100
(note)). See 35 U.S.C. 154(b)(1) (pre-AIA) for the law otherwise applicable.]
(a) In General.—
(1) Contents.—Every patent shall contain a short title of the invention and a grant
to the patentee, his heirs or assigns, of the right to exclude others from making, using,
offering for sale, or selling the invention throughout the United States or importing the
invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or
importing into the United States, products made by that process, referring to the specification for the particulars thereof.
(2) Term.—Subject to the payment of fees under this title, such grant shall be for a
term beginning on the date on which the patent issues and ending 20 years from the
date on which the application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed application or applications
under section 120, 121, or 365(c), from the date on which the earliest such application
was filed.
(3) Priority.—Priority under section 119, 365(a), or 365(b) shall not be taken into
account in determining the term of a patent.
(4) Specification and Drawing.—A copy of the specification and drawing shall be
annexed to the patent and be a part of such patent.
(b) Adjustment of Patent Term.—
(1) Patent Term Guarantees.—
(A) Guarantee of Prompt Patent and Trademark Office Responses.—Subject
to the limitations under paragraph (2), if the issue of an original patent is delayed due
to the failure of the Patent and Trademark Office to—
(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after—
(I) the date on which an application was filed under section 111(a); or
(II) the date of commencement of the national stage under section 371 in an
international application;
(ii) respond to a reply under section 132, or to an appeal taken under section 134,
within 4 months after the date on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months after the date of a decision by the
317

§ 154

Patent Act

Patent Trial and Appeal Board under section 134 or 135 or a decision by a Federal
court under section 141, 145, or 146 in a case in which allowable claims remain in
the application; or
(iv) issue a patent within 4 months after the date on which the issue fee was paid
under section 151 and all outstanding requirements were satisfied, the term of the
patent shall be extended 1 day for each day after the end of the period specified in
clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such
clause is taken.
(B) Guarantee of No More than 3-Year Application Pendency.—Subject to the
limitations under paragraph (2), if the issue of an original patent is delayed due to the
failure of the United States Patent and Trademark Office to issue a patent within 3
years after the actual filing date of the application under section 111(a) in the United
States or, in the case of an international application, the date of commencement of the
national stage under section 371 in the international application not including—
(i) any time consumed by continued examination of the application requested by
the applicant under section 132(b);
(ii) any time consumed by a proceeding under section 135(a), any time consumed
by the imposition of an order under section 181, or any time consumed by appellate
review by the Patent Trial and Appeal Board or by a Federal court; or
(iii) any delay in the processing of the application by the United States Patent
and Trademark Office requested by the applicant except as permitted by paragraph
(3)(C), the term of the patent shall be extended 1 day for each day after the end of
that 3-year period until the patent is issued.
(C) Guarantee or Adjustments for Delays Due to Derivation Proceedings, Secrecy Orders, and Appeals.—Subject to the limitations under paragraph (2), if the
issue of an original patent is delayed due to—
(i) a proceeding under section 135(a);
(ii) the imposition of an order under section 181; or
(iii) appellate review by the Patent Trial and Appeal Board or by a Federal court in
a case in which the patent was issued under a decision in the review reversing an
adverse determination of patentability, the term of the patent shall be extended 1 day
for each day of the pendency of the proceeding, order, or review, as the case may be.
(2) Limitations.—
(A) In General.—To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was
delayed.
(B) Disclaimed Term.—No patent the term of which has been disclaimed beyond
a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.
(C) Reduction of Period of Adjustment.—
(i) The period of adjustment of the term of a patent under paragraph (1) shall be
reduced by a period equal to the period of time during which the applicant failed
to engage in reasonable efforts to conclude prosecution of the application.
(ii) With respect to adjustments to patent term made under the authority of paragraph (1)(B), an applicant shall be deemed to have failed to engage in reasonable
efforts to conclude processing or examination of an application for the cumulative
total of any periods of time in excess of 3 months that are taken to respond to a
notice from the Office making any rejection, objection, argument, or other request,
318

Patent Act

§ 154

measuring such 3-month period from the date the notice was given or mailed to
the applicant.
(iii) The Director shall prescribe regulations establishing the circumstances that
constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.
(3) Procedures for Patent Term Adjustment Determination.—
(A) The Director shall prescribe regulations establishing procedures for the application for and determination of patent term adjustments under this subsection.
(B) Under the procedures established under subparagraph (A), the Director shall—
(i) make a determination of the period of any patent term adjustment under this
subsection, and shall transmit a notice of that determination no later than the date
of issuance of the patent; and
(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.
(C) The Director shall reinstate all or part of the cumulative period of time of an
adjustment under paragraph (2)(C) if the applicant, prior to the issuance of the patent,
makes a showing that, in spite of all due care, the applicant was unable to respond
within the 3-month period, but in no case shall more than three additional months
for each such response beyond the original 3-month period be reinstated.
(D) The Director shall proceed to grant the patent after completion of the Director’s determination of a patent term adjustment under the procedures established under this subsection, notwithstanding any appeal taken by the applicant of such
determination.
(4) Appeal of Patent Term Adjustment Determination.—
(A) An applicant dissatisfied with the Director’s decision on the applicant’s request for reconsideration under paragraph (3)(B)(ii) shall have exclusive remedy by
a civil action against the Director filed in the United States District Court for the
Eastern District of Virginia within 180 days after the date of the Director’s decision
on the applicant’s request for reconsideration. Chapter 7 of title 5 shall apply to such
action. Any final judgment resulting in a change to the period of adjustment of the
patent term shall be served on the Director, and the Director shall thereafter alter the
term of the patent to reflect such change.
(B) The determination of a patent term adjustment under this subsection shall not
be subject to appeal or challenge by a third party prior to the grant of the patent.
(c) Continuation.—
(1) Determination.—The term of a patent that is in force on or that results from an
application filed before the date that is 6 months after the date of the enactment of the
Uruguay Round Agreements Act shall be the greater of the 20-year term as provided
in subsection (a), or 17 years from grant, subject to any terminal disclaimers.
(2) Remedies.—The remedies of sections 283, 284, and 285 shall not apply to acts
which—
(A) were commenced or for which substantial investment was made before the
date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act; and
(B) became infringing by reason of paragraph (1).
(3) Remuneration.—The acts referred to in paragraph (2) may be continued only
upon the payment of an equitable remuneration to the patentee that is determined in an
action brought under chapter 28 and chapter 29 (other than those provisions excluded
by paragraph (2)).
319

§ 154 (pre-AIA)

Patent Act

(d) Provisional Rights.—
(1) In General.—In addition to other rights provided by this section, a patent shall
include the right to obtain a reasonable royalty from any person who, during the period
beginning on the date of publication of the application for such patent under section
122(b), or in the case of an international application filed under the treaty defined in
section 351(a) designating the United States under Article 21(2)(a) of such treaty, the
date of publication of the application, and ending on the date the patent is issued—
(A)(i) makes, uses, offers for sale, or sells in the United States the invention as
claimed in the published patent application or imports such an invention into the
United States; or
(ii) if the invention as claimed in the published patent application is a process,
uses, offers for sale, or sells in the United States or imports into the United States
products made by that process as claimed in the published patent application; and
(B) had actual notice of the published patent application and, in a case in which
the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a
translation of the international application into the English language.
(2) Right Based on Substantially Identical Inventions.—The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection
unless the invention as claimed in the patent is substantially identical to the invention
as claimed in the published patent application.
(3) Time Limitation on Obtaining a Reasonable Royalty.—The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not
later than 6 years after the patent is issued. The right under paragraph (1) to obtain a
reasonable royalty shall not be affected by the duration of the period described in paragraph (1).
(4) Requirements for International Applications.—
(A) Effective Date.—The right under paragraph (1) to obtain a reasonable royalty
based upon the publication under the treaty defined in section 351(a) of an international application designating the United States shall commence on the date of publication under the treaty of the international application, or, if the publication under
the treaty of the international application is in a language other than English, on the
date on which the Patent and Trademark Office receives a translation of the publication in the English language.
(B) Copies.—The Director may require the applicant to provide a copy of the international application and a translation thereof.
35 U.S.C. 154 (pre-AIA) Contents and term of patent; provisional rights.
[Editor Note: 35 U.S.C. 154(b)(1)(pre-AIA) as set forth below is not applicable to any
patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C.
100 (note)). See 35 U.S.C. 154(b)(1) for the law otherwise applicable.]
*****
(b) Adjustment of Patent Term.—
(1) Patent Term Guarantees.—
(A) Guarantee of Prompt Patent and Trademark Office Responses.—Subject
to the limitations under paragraph (2), if the issue of an original patent is delayed due
to the failure of the Patent and Trademark Office to—
320

Patent Act

§ 156

(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after—
(I) the date on which an application was filed under section 111(a); or
(II) the date of commencement of the national stage under section 371 in an
international application;
(ii) respond to a reply under section 132, or to an appeal taken under section 134,
within 4 months after the date on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months after the date of a decision by the
Board of Patent Appeals and Interferences under section 134 or 135 or a decision
by a Federal court under section 141, 145, or 146 in a case in which allowable
claims remain in the application; or
(iv) issue a patent within 4 months after the date on which the issue fee was paid
under section 151 and all outstanding requirements were satisfied, the term of the
patent shall be extended 1 day for each day after the end of the period specified in
clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such
clause is taken.
(B) Guarantee of No More than 3-Year Application Pendency.—Subject to the
limitations under paragraph (2), if the issue of an original patent is delayed due to the
failure of the United States Patent and Trademark Office to issue a patent within 3
years after the actual filing date of the application under section 111(a) in the United
States or, in the case of an international application, the date of commencement of the
national stage under section 371 in the international application not including—
(i) any time consumed by continued examination of the application requested by
the applicant under section 132(b);
(ii) any time consumed by a proceeding under section 135(a), any time consumed
by the imposition of an order under section 181, or any time consumed by appellate
review by the Board of Patent Appeals and Interferences or by a Federal court; or
(iii) any delay in the processing of the application by the United States Patent
and Trademark Office requested by the applicant except as permitted by paragraph
(3)(C), the term of the patent shall be extended 1 day for each day after the end of
that 3-year period until the patent is issued.
(C) Guarantee or Adjustments for Delays Due to Interferences, Secrecy Orders, and Appeals.—Subject to the limitations under paragraph (2), if the issue of
an original patent is delayed due to—
(i) a proceeding under section 135(a);
(ii) the imposition of an order under section 181; or
(iii) appellate review by the Board of Patent Appeals and Interferences or by a
Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability, the term of the patent
shall be extended 1 day for each day of the pendency of the proceeding, order, or
review, as the case may be.
*****
35 U.S.C. 155 [Repealed.]
35 U.S.C. 155A [Repealed.]
35 U.S.C. 156 Extension of patent term.
(a) The term of a patent which claims a product, a method of using a product, or a
321

§ 156

Patent Act

method of manufacturing a product shall be extended in accordance with this section
from the original expiration date of the patent, which shall include any patent term adjustment granted under section 154(b) if—
(1) the term of the patent has not expired before an application is submitted under
subsection (d)(1) for its extension;
(2) the term of the patent has never been extended under subsection (e)(1) of this
section;
(3) an application for extension is submitted by the owner of record of the patent or
its agent and in accordance with the requirements of paragraphs (1) through (4) of
subsection (d);
(4) the product has been subject to a regulatory review period before its commercial
marketing or use;
(5)(A) except as provided in subparagraph (B) or (C), the permission for the commercial marketing or use of the product after such regulatory review period is the first
permitted commercial marketing or use of the product under the provision of law under
which such regulatory review period occurred;
(B) in the case of a patent which claims a method of manufacturing the product
which primarily uses recombinant DNA technology in the manufacture of the product, the permission for the commercial marketing or use of the product after such
regulatory period is the first permitted commercial marketing or use of a product
manufactured under the process claimed in the patent; or
(C) for purposes of subparagraph (A), in the case of a patent which—
(i) claims a new animal drug or a veterinary biological product which (I) is not
covered by the claims in any other patent which has been extended, and (II) has
received permission for the commercial marketing or use in non-food-producing
animals and in food-producing animals, and
(ii) was not extended on the basis of the regulatory review period for use in nonfood-producing animals, the permission for the commercial marketing or use of the
drug or product after the regulatory review period for use in food-producing animals
is the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal. The product referred to in paragraphs (4) and
(5) is hereinafter in this section referred to as the “approved product.”
(b) Except as provided in subsection (d)(5)(F), the rights derived from any patent the
term of which is extended under this section shall during the period during which the
term of the patent is extended—
(1) in the case of a patent which claims a product, be limited to any use approved for
the product—
(A) before the expiration of the term of the patent—
(i) under the provision of law under which the applicable regulatory review occurred, or
(ii) under the provision of law under which any regulatory review described in
paragraph (1), (4), or (5) of subsection (g) occurred, and
(B) on or after the expiration of the regulatory review period upon which the extension of the patent was based;
(2) in the case of a patent which claims a method of using a product, be limited to
any use claimed by the patent and approved for the product—
(A) before the expiration of the term of the patent—
(i) under any provision of law under which an applicable regulatory review occurred, and
322

Patent Act

§ 156

(ii) under the provision of law under which any regulatory review described in
paragraph (1), (4), or (5) of subsection (g) occurred, and
(B) on or after the expiration of the regulatory review period upon which the extension of the patent was based; and
(3) in the case of a patent which claims a method of manufacturing a product, be
limited to the method of manufacturing as used to make—
(A) the approved product, or
(B) the product if it has been subject to a regulatory review period described in
paragraph (1), (4), or (5) of subsection (g). As used in this subsection, the term “product” includes an approved product.
(c) The term of a patent eligible for extension under subsection (a) shall be extended by
the time equal to the regulatory review period for the approved product which period occurs after the date the patent is issued, except that—
(1) each period of the regulatory review period shall be reduced by any period determined under subsection (d)(2)(B) during which the applicant for the patent extension
did not act with due diligence during such period of the regulatory review period;
(2) after any reduction required by paragraph (1), the period of extension shall include only one-half of the time remaining in the periods described in paragraphs
(1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and (5)(B)(i) of subsection (g);
(3) if the period remaining in the term of a patent after the date of the approval of
the approved product under the provision of law under which such regulatory review
occurred when added to the regulatory review period as revised under paragraphs (1)
and (2) exceeds fourteen years, the period of extension shall be reduced so that the
total of both such periods does not exceed fourteen years, and
(4) in no event shall more than one patent be extended under subsection (e)(i) for the
same regulatory review period for any product.
(d)(1) To obtain an extension of the term of a patent under this section, the owner of
record of the patent or its agent shall submit an application to the Director. Except as
provided in paragraph (5), such an application may only be submitted within the sixtyday period beginning on the date the product received permission under the provision of
law under which the applicable regulatory review period occurred for commercial marketing or use. The application shall contain—
(A) the identity of the approved product and the Federal statute under which regulatory review occurred;
(B) the identity of the patent for which an extension is being sought and the identity of each claim of such patent which claims the approved product or a method of
using or manufacturing the approved product;
(C) information to enable the Director to determine under subsections (a) and (b)
the eligibility of a patent for extension and the rights that will be derived from the
extension and information to enable the Director and the Secretary of Health and
Human Services or the Secretary of Agriculture to determine the period of the extension under subsection (g);
(D) a brief description of the activities undertaken by the applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities; and
(E) such patent or other information as the Director may require. For purposes of
determining the date on which a product receives permission under the second sentence of this paragraph, if such permission is transmitted after 4:30 P.M., Eastern
Time, on a business day, or is transmitted on a day that is not a business day, the
323

§ 156

Patent Act

product shall be deemed to receive such permission on the next business day. For
purposes of the preceding sentence, the term “business day” means any Monday,
Tuesday, Wednesday, Thursday, or Friday, excluding any legal holiday under section 6103 of title 5.
(2)(A) Within 60 days of the submittal of an application for extension of the term of
a patent under paragraph (1), the Director shall notify—
(i) the Secretary of Agriculture if the patent claims a drug product or a method
of using or manufacturing a drug product and the drug product is subject to the
Virus-Serum-Toxin Act, and
(ii) the Secretary of Health and Human Services if the patent claims any other
drug product, a medical device, or a food additive or color additive or a method of
using or manufacturing such a product, device, or additive and if the product, device, and additive are subject to the Federal Food, Drug and Cosmetic Act, of the
extension application and shall submit to the Secretary who is so notified a copy of
the application. Not later than 30 days after the receipt of an application from the
Director, the Secretary reviewing the application shall review the dates contained
in the application pursuant to paragraph (1)(C) and determine the applicable regulatory review period, shall notify the Director of the determination, and shall publish in the Federal Register a notice of such determination.
(B)(i) If a petition is submitted to the Secretary making the determination under subparagraph (A), not later than 180 days after the publication of the determination under
subparagraph (A), upon which it may reasonably be determined that the applicant did
not act with due diligence during the applicable regulatory review period, the Secretary
making the determination shall, in accordance with regulations promulgated by the
Secretary, determine if the applicant acted with due diligence during the applicable
regulatory review period. The Secretary making the determination shall make such
determination not later than 90 days after the receipt of such a petition. For a drug
product, device, or additive subject to the Federal Food, Drug, and Cosmetic Act or
the Public Health Service Act, the Secretary may not delegate the authority to make
the determination prescribed by this clause to an office below the Office of the Commissioner of Food and Drugs. For a product subject to the Virus-Serum-Toxin Act, the
Secretary of Agriculture may not delegate the authority to make the determination prescribed by this clause to an office below the Office of the Assistant Secretary for Marketing and Inspection Services.
(ii) The Secretary making a determination under clause (i) shall notify the Director of the determination and shall publish in the Federal Register a notice of
such determination together with the factual and legal basis for such determination.
Any interested person may request, within the 60-day period beginning on the publication of a determination, the Secretary making the determination to hold an informal hearing on the determination. If such a request is made within such period,
such Secretary shall hold such hearing not later than 30 days after the date of the
request, or at the request of the person making the request, not later than 60 days
after such date. The Secretary who is holding the hearing shall provide notice of
the hearing to the owner of the patent involved and to any interested person and
provide the owner and any interested person an opportunity to participate in the
hearing. Within 30 days after the completion of the hearing, such Secretary shall
affirm or revise the determination which was the subject of the hearing and notify
the Director of any revision of the determination and shall publish any such revision in the Federal Register.
324

Patent Act

§ 156

(3) For the purposes of paragraph (2)(B), the term “due diligence” means that degree
of attention, continuous directed effort, and timeliness as may reasonably be expected
from, and are ordinarily exercised by, a person during a regulatory review period.
(4) An application for the extension of the term of a patent is subject to the disclosure
requirements prescribed by the Director.
(5)(A) If the owner of record of the patent or its agent reasonably expects that the
applicable regulatory review period described in paragraphs (1)(B)(ii), (2)(B)(ii),
(3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product that is the
subject of such patent may extend beyond the expiration of the patent term in effect,
the owner or its agent may submit an application to the Director for an interim extension during the period beginning 6 months, and ending 15 days before such term is due
to expire. The application shall contain—
(i) the identity of the product subject to regulating review and the Federal statute
under which such review is occurring;
(ii) the identity of the patent for which interim extension is being sought and the
identity of each claim of such patent which claims the product under regulatory
review or a method of using or manufacturing the product;
(iii) information to enable the Director to determine under subsection (a)(1), (2),
and (3) the eligibility of a patent for extension;
(iv) a brief description of the activities undertaken by the applicant during the
applicable regulatory review period to date with respect to the product under review and the significant dates applicable to such activities; and
(v) such patent or other information as the Director may require.
(B) If the Director determines that, except for permission to market or use the
product commercially, the patent would be eligible for an extension of the patent
term under this section, the Director shall publish in the Federal Register a notice of
such determination, including the identity of the product under regulatory review,
and shall issue to the applicant a certificate of interim extension for a period of not
more than 1 year.
(C) The owner of record of a patent, or its agent, for which an interim extension has
been granted under subparagraph (B), may apply for not more than 4 subsequent interim extensions under this paragraph, except that, in the case of a patent subject to
subsection (g)(6)(C), the owner of record of the patent, or its agent, may apply for
only 1 subsequent interim extension under this paragraph. Each such subsequent application shall be made during the period beginning 60 days before, and ending 30
days before, the expiration of the preceding interim extension.
(D) Each certificate of interim extension under this paragraph shall be recorded in
the official file of the patent and shall be considered part of the original patent.
(E) Any interim extension granted under this paragraph shall terminate at the end
of the 60-day period beginning on the day on which the product involved receives
permission for commercial marketing or use, except that, if within that 60-day period, the applicant notifies the Director of such permission and submits any additional information under paragraph (1) of this subsection not previously contained in
the application for interim extension, the patent shall be further extended, in accordance with the provisions of this section—
(i) for not to exceed 5 years from the date of expiration of the original patent
term; or
(ii) if the patent is subject to subsection (g)(6)(C), from the date on which the
product involved receives approval for commercial marketing or use.
325

§ 156

Patent Act

(F) The rights derived from any patent the term of which is extended under this
paragraph shall, during the period of interim extension—
(i) in the case of a patent which claims a product, be limited to any use then
under regulatory review;
(ii) in the case of a patent which claims a method of using a product, be limited
to any use claimed by the patent then under regulatory review; and
(iii) in the case of a patent which claims a method of manufacturing a product,
be limited to the method of manufacturing as used to make the product then under
regulatory review.
(e)(1) A determination that a patent is eligible for extension may be made by the Director solely on the basis of the representations contained in the application for the extension. If the Director determines that a patent is eligible for extension under subsection
(a) and that the requirements of paragraphs (1) through (4) of subsection (d) have been
complied with, the Director shall issue to the applicant for the extension of the term of
the patent a certificate of extension, under seal, for the period prescribed by subsection
(c). Such certificate shall be recorded in the official file of the patent and shall be considered as part of the original patent.
(2) If the term of a patent for which an application has been submitted under subsection (d)(1) would expire before a certificate of extension is issued or denied under
paragraph (1) respecting the application, the Director shall extend, until such determination is made, the term of the patent for periods of up to one year if he determines
that the patent is eligible for extension.
(f) For purposes of this section:
(1) The term “product” means:
(A) A drug product.
(B) Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act.
(2) The term “drug product” means the active ingredient of—
(A) a new drug, antibiotic drug, or human biological product (as those terms are
used in the Federal Food, Drug, and Cosmetic Act and the Public Health Service
Act), or
(B) a new animal drug or veterinary biological product (as those terms are used in
the Federal Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin Act) which
is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques including any salt or ester of the active ingredient, as a single entity or in
combination with another active ingredient.
(3) The term “major health or environmental effects test” means a test which is reasonably related to the evaluation of the health or environmental effects of a product,
which requires at least six months to conduct, and the data from which is submitted to
receive permission for commercial marketing or use. Periods of analysis or evaluation
of test results are not to be included in determining if the conduct of a test required at
least six months.
(4)(A) Any reference to section 351 is a reference to section 351 of the Public Health
Service Act.
(B) Any reference to section 503, 505, 512, or 515 is a reference to section 503,
505, 512, or 515 of the Federal Food, Drug and Cosmetic Act.
(C) Any reference to the Virus-Serum-Toxin Act is a reference to the Act of March
4, 1913 (21 U.S.C. 151 - 158).
326

Patent Act

§ 156

(5) The term “informal hearing” has the meaning prescribed for such term by section
201(y) of the Federal Food, Drug and Cosmetic Act.
(6) The term “patent” means a patent issued by the United States Patent and Trademark Office.
(7) The term “date of enactment” as used in this section means September 24, 1984,
for human drug product, a medical device, food additive, or color additive.
(8) The term “date of enactment” as used in this section means the date of enactment
of the Generic Animal Drug and Patent Term Restoration Act for an animal drug or a
veterinary biological product.
(g) For purposes of this section, the term “regulatory review period” has the following
meanings:
(1)(A) In the case of a product which is a new drug, antibiotic drug, or human biological product, the term means the period described in subparagraph (B) to which the
limitation described in paragraph (6) applies.
(B) The regulatory review period for a new drug, antibiotic drug, or human biological product is the sum of—
(i) the period beginning on the date an exemption under subsection (i) of section
505 or subsection (d) of section 507 became effective for the approved product
and ending on the date an application was initially submitted for such drug product
under section 351, 505, or 507, and
(ii) the period beginning on the date the application was initially submitted for
the approved product under section 351, subsection (b) of section 505, or section
507 and ending on the date such application was approved under such section.
(2)(A) In the case of a product which is a food additive or color additive, the term
means the period described in subparagraph (B) to which the limitation described in
paragraph (6) applies.
(B) The regulatory review period for a food or color additive is the sum of—
(i) the period beginning on the date a major health or environmental effects test
on the additive was initiated and ending on the date a petition was initially submitted with respect to the product under the Federal Food, Drug, and Cosmetic Act
requesting the issuance of a regulation for use of the product, and
(ii) the period beginning on the date a petition was initially submitted with respect to the product under the Federal Food, Drug, and Cosmetic Act requesting
the issuance of a regulation for use of the product, and ending on the date such
regulation became effective or, if objections were filed to such regulation, ending
on the date such objections were resolved and commercial marketing was permitted or, if commercial marketing was permitted and later revoked pending further
proceedings as a result of such objections, ending on the date such proceedings
were finally resolved and commercial marketing was permitted.
(3)(A) In the case of a product which is a medical device, the term means the period
described in subparagraph (B) to which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a medical device is the sum of—
(i) the period beginning on the date a clinical investigation on humans involving
the device was begun and ending on the date an application was initially submitted
with respect to the device under section 515, and
(ii) the period beginning on the date an application was initially submitted with
respect to the device under section 515 and ending on the date such application
was approved under such Act or the period beginning on the date a notice of
327

§ 156

Patent Act

completion of a product development protocol was initially submitted under
section 515(f)(5) and ending on the date the protocol was declared completed
under section 515(f)(6).
(4)(A) In the case of a product which is a new animal drug, the term means the period
described in subparagraph (B) to which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a new animal drug product is the sum of—
(i) the period beginning on the earlier of the date a major health or environmental
effects test on the drug was initiated or the date an exemption under subsection (j)
of section 512 became effective for the approved new animal drug product and
ending on the date an application was initially submitted for such animal drug
product under section 512, and
(ii) the period beginning on the date the application was initially submitted for
the approved animal drug product under subsection (b) of section 512 and ending
on the date such application was approved under such section.
(5)(A) In the case of a product which is a veterinary biological product, the term
means the period described in subparagraph (B) to which the limitation described in
paragraph (6) applies.
(B) The regulatory period for a veterinary biological product is the sum of—
(i) the period beginning on the date the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act became effective and ending
on the date an application for a license was submitted under the Virus-SerumToxin Act, and
(ii) the period beginning on the date an application for a license was initially
submitted for approval under the Virus-Serum-Toxin Act and ending on the date
such license was issued.
(6) A period determined under any of the preceding paragraphs is subject to the following limitations:
(A) If the patent involved was issued after the date of the enactment of this section,
the period of extension determined on the basis of the regulatory review period determined under any such paragraph may not exceed five years.
(B) If the patent involved was issued before the date of the enactment of this section and—
(i) no request for an exemption described in paragraph (1)(B) or (4)(B) was submitted and no request for the authority described in paragraph (5)(B) was submitted,
(ii) no major health or environment effects test described in paragraph (2)(B) or
(4)(B) was initiated and no petition for a regulation or application for registration
described in such paragraph was submitted, or
(iii) no clinical investigation described in paragraph (3) was begun or product
development protocol described in such paragraph was submitted, before such date
for the approved product the period of extension determined on the basis of the
regulatory review period determined under any such paragraph may not exceed
five years.
(C) If the patent involved was issued before the date of the enactment of this section
and if an action described in subparagraph (B) was taken before the date of enactment
of this section with respect to the approved product and the commercial marketing or
use of the product has not been approved before such date, the period of extension
determined on the basis of the regulatory review period determined under such paragraph may not exceed two years or in the case of an approved product which is a new
animal drug or veterinary biological product (as those terms are used in the Federal
328

Patent Act

§ 162

Food, Drug, and Cosmetic Act or the Virus-Serum-Toxin Act), three years.
(h) The Director may establish such fees as the Director determines appropriate to cover
the costs to the Office of receiving and acting upon applications under this section.
35 U.S.C. 157 [Repealed.]
35 U.S.C. 157 (pre-AIA) Statutory invention registration.
[Editor Note: Not applicable to requests for statutory invention registrations filed on or
after March 16, 2013. 35 U.S.C. 157 repealed with regard to such requests.]
(a) Notwithstanding any other provision, the Director is authorized to publish a statutory invention registration containing the specification and drawings of a regularly filed
application for a patent without examination if the applicant—
(1) meets the requirements of section 112;
(2) has complied with the requirements for printing, as set forth in regulations of the
Director;
(3) waives the right to receive a patent on the invention within such period as may
be prescribed by the Director; and
(4) pays application, publication, and other processing fees established by the Director.If an interference is declared with respect to such an application, a statutory invention registration may not be published unless the issue of priority of invention is finally
determined in favor of the applicant.
(b) The waiver under subsection (a)(3) of this section by an applicant shall take effect
upon publication of the statutory invention registration.
(c) A statutory invention registration published pursuant to this section shall have all of
the attributes specified for patents in this title except those specified in section 183 and
sections 271 through 289. A statutory invention registration shall not have any of the attributes specified for patents in any other provision of law other than this title. A statutory
invention registration published pursuant to this section shall give appropriate notice to
the public, pursuant to regulations which the Director shall issue, of the preceding provisions of this subsection. The invention with respect to which a statutory invention certificate is published is not a patented invention for purposes of section 292.
(d) The Director shall report to the Congress annually on the use of statutory invention
registrations. Such report shall include an assessment of the degree to which agencies of
the federal government are making use of the statutory invention registration system, the
degree to which it aids the management of federally developed technology, and an assessment of the cost savings to the Federal Government of the uses of such procedures.
CHAPTER 15—PLANT PATENTS
35 U.S.C. 161 Patents for plants.
Whoever invents or discovers and asexually reproduces any distinct and new variety
of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other
than a tuber propagated plant or a plant found in an uncultivated state, may obtain a
patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for
plants, except as otherwise provided.
35 U.S.C. 162 Description, claim.
No plant patent shall be declared invalid for noncompliance with section 112 if the
329

§ 163

Patent Act

description is as complete as is reasonably possible.
The claim in the specification shall be in formal terms to the plant shown and described.
35 U.S.C. 163 Grant.
In the case of a plant patent, the grant shall include the right to exclude others from
asexually reproducing the plant, and from using, offering for sale, or selling the plant so
reproduced, or any of its parts, throughout the United States, or from importing the plant
so reproduced, or any parts thereof, into the United States.
35 U.S.C. 164 Assistance of the Department of Agriculture.
The President may by Executive order direct the Secretary of Agriculture, in accordance with the requests of the Director, for the purpose of carrying into effect the provisions of this title with respect to plants (1) to furnish available information of the
Department of Agriculture, (2) to conduct through the appropriate bureau or division of
the Department research upon special problems, or (3) to detail to the Director officers
and employees of the Department.
CHAPTER 16—DESIGNS
35 U.S.C. 171 Patents for designs.
(a) In General.—Whoever invents any new, original, and ornamental design for an
article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) Applicability of this Title.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) Filing Date.—The filing date of an application for patent for design shall be the
date on which the specification as prescribed by section 112 and any required drawings
are filed.
35 U.S.C. 172 Right of priority.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 172 (pre-AIA) for the law
otherwise applicable.]
The right of priority provided for by subsections (a) through (d) of section 119 shall
be six months in the case of designs. The right of priority provided for by section 119(e)
shall not apply to designs.
35 U.S.C. 172 (pre-AIA) Right of priority.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 172 for the law otherwise applicable.]
The right of priority provided for by subsections (a) through (d) of section 119 and the
time specified in section 102(d) shall be six months in the case of designs. The right of
priority provided for by section 119(e) shall not apply to designs.
35 U.S.C. 173 Term of design patent.
Patents for designs shall be granted for the term of fourteen years from the date of grant.
330

Patent Act

§ 182

CHAPTER 17—SECRECY OF CERTAIN INVENTIONS AND FILING
APPLICATIONS IN FOREIGN COUNTRIES
35 U.S.C. 181 Secrecy of certain inventions and withholding of patent.
Whenever publication or disclosure by the publication of an application or by the grant
of a patent on an invention in which the Government has a property interest might, in the
opinion of the head of the interested Government agency, be detrimental to the national
security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a
patent therefor under the conditions set forth hereinafter.
Whenever the publication or disclosure of an invention by the publication of an application or by the granting of a patent, in which the Government does not have a property
interest, might, in the opinion of the Commissioner of Patents, be detrimental to the national security, he shall make the application for patent in which such invention is disclosed available for inspection to the Atomic Energy Commission, the Secretary of
Defense, and the chief officer of any other department or agency of the Government
designated by the President as a defense agency of the United States.
Each individual to whom the application is disclosed shall sign a dated acknowledgment
thereof, which acknowledgment shall be entered in the file of the application. If, in the
opinion of the Atomic Energy Commission, the Secretary of a Defense Department, or
the chief officer of another department or agency so designated, the publication or disclosure of the invention by the publication of an application or by the granting of a patent
therefor would be detrimental to the national security, the Atomic Energy Commission,
the Secretary of a Defense Department, or such other chief officer shall notify the Commissioner of Patents and the Commissioner of Patents shall order that the invention be
kept secret and shall withhold the publication of the application or the grant of a patent
for such period as the national interest requires, and notify the applicant thereof. Upon
proper showing by the head of the department or agency who caused the secrecy order to
be issued that the examination of the application might jeopardize the national interest,
the Commissioner of Patents shall thereupon maintain the application in a sealed condition and notify the applicant thereof. The owner of an application which has been placed
under a secrecy order shall have a right to appeal from the order to the Secretary of Commerce under rules prescribed by him.
An invention shall not be ordered kept secret and the publication of an application or the
grant of a patent withheld for a period of more than one year. The Commissioner of Patents
shall renew the order at the end thereof, or at the end of any renewal period, for additional
periods of one year upon notification by the head of the department or the chief officer of
the agency who caused the order to be issued that an affirmative determination has been
made that the national interest continues to so require. An order in effect, or issued, during
a time when the United States is at war, shall remain in effect for the duration of hostilities
and one year following cessation of hostilities. An order in effect, or issued, during a national emergency declared by the President shall remain in effect for the duration of the
national emergency and six months thereafter. The Commissioner of Patents may rescind
any order upon notification by the heads of the departments and the chief officers of the
agencies who caused the order to be issued that the publication or disclosure of the invention
is no longer deemed detrimental to the national security.
35 U.S.C. 182 Abandonment of invention for unauthorized disclosure.
The invention disclosed in an application for patent subject to an order made pursuant
331

§ 183

Patent Act

to section 181 may be held abandoned upon its being established by the Commissioner
of Patents that in violation of said order the invention has been published or disclosed or
that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or
them, without the consent of the Commissioner of Patents. The abandonment shall be
held to have occurred as of the time of violation. The consent of the Commissioner of
Patents shall not be given without the concurrence of the heads of the departments and
the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States
based upon such invention.
35 U.S.C. 183 Right to compensation.
An applicant, his successors, assigns, or legal representatives, whose patent is withheld
as herein provided, shall have the right, beginning at the date the applicant is notified that,
except for such order, his application is otherwise in condition for allowance, or February
1, 1952, whichever is later, and ending six years after a patent is issued thereon, to apply
to the head of any department or agency who caused the order to be issued for compensation for the damage caused by the order of secrecy and/or for the use of the invention by
the Government, resulting from his disclosure. The right to compensation for use shall
begin on the date of the first use of the invention by the Government. The head of the
department or agency is authorized, upon the presentation of a claim, to enter into an agreement with the applicant, his successors, assigns, or legal representatives, in full settlement
for the damage and/or use. This settlement agreement shall be conclusive for all purposes
notwithstanding any other provision of law to the contrary. If full settlement of the claim
cannot be effected, the head of the department or agency may award and pay to such applicant, his successors, assigns, or legal representatives, a sum not exceeding 75 per centum
of the sum which the head of the department or agency considers just compensation for the
damage and/or use. A claimant may bring suit against the United States in the United States
Court of Federal Claims or in the District Court of the United States for the district in which
such claimant is a resident for an amount which when added to the award shall constitute
just compensation for the damage and/or use of the invention by the Government. The
owner of any patent issued upon an application that was subject to a secrecy order issued
pursuant to section 181, who did not apply for compensation as above provided, shall have
the right, after the date of issuance of such patent, to bring suit in the United States Court
of Federal Claims for just compensation for the damage caused by reason of the order of
secrecy and/or use by the Government of the invention resulting from his disclosure. The
right to compensation for use shall begin on the date of the first use of the invention by the
Government. In a suit under the provisions of this section the United States may avail itself
of all defenses it may plead in an action under section 1498 of title 28. This section shall
not confer a right of action on anyone or his successors, assigns, or legal representatives
who, while in the full-time employment or service of the United States, discovered, invented, or developed the invention on which the claim is based.
35 U.S.C. 184 Filing of application in foreign country.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35
U.S.C. 184 (pre-AIA) for the law otherwise applicable.]
(a) Filing in Foreign Country.—Except when authorized by a license obtained from
332

Patent Act

§ 184 (pre-AIA)

the Commissioner of Patents a person shall not file or cause or authorize to be filed in
any foreign country prior to six months after filing in the United States an application for
patent or for the registration of a utility model, industrial design, or model in respect of
an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section
181 without the concurrence of the head of the departments and the chief officers of the
agencies who caused the order to be issued. The license may be granted retroactively
where an application has been filed abroad through error and the application does not
disclose an invention within the scope of section 181.
(b) Application.—The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
(c) Subsequent Modifications, Amendments, and Supplements.—The scope of a
license shall permit subsequent modifications, amendments, and supplements containing
additional subject matter if the application upon which the request for the license is based
is not, or was not, required to be made available for inspection under section 181 and if
such modifications, amendments, and supplements do not change the general nature of
the invention in a manner which would require such application to be made available for
inspection under such section 181. In any case in which a license is not, or was not,
required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application
filed in the foreign country if the United States application was not required to be made
available for inspection under section 181 and if such modifications, amendments, and
supplements do not, or did not, change the general nature of the invention in a manner
which would require the United States application to have been made available for inspection under such section 181.
35 U.S.C. 184 (pre-AIA) Filing of application in foreign country.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012. See 35 U.S.C. 184 for the law otherwise applicable.]
Except when authorized by a license obtained from the Commissioner of Patents a
person shall not file or cause or authorize to be filed in any foreign country prior to six
months after filing in the United States an application for patent or for the registration of
a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued
by the Commissioner of Patents pursuant to section 181 of this title without the concurrence of the head of the departments and the chief officers of the agencies who caused
the order to be issued. The license may be granted retroactively where an application has
been filed abroad through error and without deceptive intent and the application does not
disclose an invention within the scope of section 181 of this title.
The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for
the license is based is not, or was not, required to be made available for inspection under
section 181 of this title and if such modifications, amendments, and supplements do not
change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a
license is not, or was not, required in order to file an application in any foreign country,
333

§ 185

Patent Act

such subsequent modifications, amendments, and supplements may be made, without a
license, to the application filed in the foreign country if the United States application was
not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the
invention in a manner which would require the United States application to have been
made available for inspection under such section 181.
35 U.S.C. 185 Patent barred for filing without license.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35
U.S.C. 185 (pre-AIA) for the law otherwise applicable.]
Notwithstanding any other provisions of law any person, and his successors, assigns,
or legal representatives, shall not receive a United States patent for an invention if that
person, or his successors, assigns, or legal representatives shall, without procuring the
license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model,
industrial design, or model in respect of the invention. A United States patent issued to
such person, his successors, assigns, or legal representatives shall be invalid, unless the
failure to procure such license was through error, and the patent does not disclose subject
matter within the scope of section 181.
35 U.S.C. 185 (pre-AIA) Patent barred for filing without license.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012. See 35 U.S.C. 185 for the law otherwise applicable.]
Notwithstanding any other provisions of law any person, and his successors, assigns,
or legal representatives, shall not receive a United States patent for an invention if that
person, or his successors, assigns, or legal representatives shall, without procuring the
license prescribed in section 184 of this title, have made, or consented to or assisted
another’s making, application in a foreign country for a patent or for the registration of
a utility model, industrial design, or model in respect of the invention. A United States
patent issued to such person, his successors, assigns, or legal representatives shall be
invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section
181 of this title.
35 U.S.C. 186 Penalty.
Whoever, during the period or periods of time an invention has been ordered to be kept
secret and the grant of a patent thereon withheld pursuant to section 181, shall, with
knowledge of such order and without due authorization, willfully publish or disclose or
authorize or cause to be published or disclosed the invention, or material information
with respect thereto, or whoever willfully, in violation of the provisions of section 184,
shall file or cause or authorize to be filed in any foreign country an application for patent
or for the registration of a utility model, industrial design, or model in respect of any
invention made in the United States, shall, upon conviction, be fined not more than
$10,000 or imprisoned for not more than two years, or both.
35 U.S.C. 187 Nonapplicability to certain persons.
The prohibitions and penalties of this chapter shall not apply to any officer or agent of
334

Patent Act

§ 201

the United States acting within the scope of his authority, nor to any person acting upon
his written instructions or permission.
35 U.S.C. 188 Rules and regulations, delegation of power.
The Atomic Energy Commission, the Secretary of a defense department, the chief officer of any other department or agency of the Government designated by the President
as a defense agency of the United States, and the Secretary of Commerce, may separately
issue rules and regulations to enable the respective department or agency to carry out the
provisions of this chapter, and may delegate any power conferred by this chapter.
CHAPTER 18—PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL
ASSISTANCE
35 U.S.C. 200 Policy and objective.
It is the policy and objective of the Congress to use the patent system to promote the
utilization of inventions arising from federally supported research or development; to
encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns
and nonprofit organizations, including universities; to ensure that inventions made by
nonprofit organizations and small business firms are used in a manner to promote free
competition and enterprise without unduly encumbering future research and discovery;
to promote the commercialization and public availability of inventions made in the
United States by United States industry and labor; to ensure that the Government obtains
sufficient rights in federally supported inventions to meet the needs of the Government
and protect the public against nonuse or unreasonable use of inventions; and to minimize
the costs of administering policies in this area.
35 U.S.C. 201 Definitions.
As used in this chapter—
(a) The term “Federal agency” means any executive agency as defined in section 105
of title 5, and the military departments as defined by section 102 of title 5.
(b) The term “funding agreement” means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or
research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into
for the performance of experimental, developmental, or research work under a funding
agreement as herein defined.
(c) The term “contractor” means any person, small business firm, or nonprofit organization that is a party to a funding agreement.
(d) The term “invention” means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may
be protectable under the Plant Variety Protection Act (7 U.S.C. 2321, et seq.).
(e) The term “subject invention” means any invention of the contractor conceived or
first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as
defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d)) must
also occur during the period of contract performance.
335

§ 202

Patent Act

(f) The term “practical application” means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case
of a machine or system; and, in each case, under such conditions as to establish that the
invention is being utilized and that its benefits are to the extent permitted by law or
Government regulations available to the public on reasonable terms.
(g) The term “made” when used in relation to any invention means the conception
or first actual reduction to practice of such invention.
(h) The term “small business firm” means a small business concern as defined at
section 2 of Public Law 85-536 (15 U.S.C. 632) and implementing regulations of the
Administrator of the Small Business Administration.
(i) The term “nonprofit organization” means universities and other institutions of higher education or an organization of the type described in section 501(c)(3) of the Internal
Revenue Code of 1986 (26 U.S.C. 501(c)) and exempt from taxation under section
501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or
educational organization qualified under a State nonprofit organization statute.
35 U.S.C. 202 Disposition of rights.
[Editor Note: 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are applicable only to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100
(note)). See 35 U.S.C. 202(c)(2) and (c)(3) (pre-AIA) for the law otherwise applicable.]
(a) Each nonprofit organization or small business firm may, within a reasonable time
after disclosure as required by paragraph (c)(1) of this section, elect to retain title to any
subject invention: Provided, however, That a funding agreement may provide otherwise
(i) when the contractor is not located in the United States or does not have a place of
business located in the United States or is subject to the control of a foreign government,
(ii) in exceptional circumstances when it is determined by the agency that restriction or
elimination of the right to retain title to any subject invention will better promote the policy and objectives of this chapter, (iii) when it is determined by a Government authority
which is authorized by statute or Executive order to conduct foreign intelligence or counterintelligence activities that the restriction or elimination of the right to retain title to any
subject invention is necessary to protect the security of such activities, or (iv) when the
funding agreement includes the operation of a Government-owned, contractor-operated
facility of the Department of Energy primarily dedicated to that Department’s naval nuclear propulsion or weapons related programs and all funding agreement limitations under
this subparagraph on the contractor’s right to elect title to a subject invention are limited
to inventions occurring under the above two programs of the Department of Energy. The
rights of the nonprofit organization or small business firm shall be subject to the provisions of paragraph (c) of this section and the other provisions of this chapter.
(b)(1) The rights of the Government under subsection (a) shall not be exercised by a
Federal agency unless it first determines that at least one of the conditions identified in
clauses (i) through (iii) of subsection (a) exists. Except in the case of subsection (a)(iii),
the agency shall file with the Secretary of Commerce, within thirty days after the award
of the applicable funding agreement, a copy of such determination. In the case of a determination under subsection (a)(ii), the statement shall include an analysis justifying the
determination. In the case of determinations applicable to funding agreements with small
business firms, copies shall also be sent to the Chief Counsel for Advocacy of the Small
Business Administration. If the Secretary of Commerce believes that any individual determination or pattern of determinations is contrary to the policies and objectives of this
chapter or otherwise not in conformance with this chapter, the Secretary shall so advise
336

Patent Act

§ 202

the head of the agency concerned and the Administrator of the Office of Federal Procurement Policy, and recommend corrective actions.
(2) Whenever the Administrator of the Office of Federal Procurement Policy has determined that one or more Federal agencies are utilizing the authority of clause (i) or (ii) of
subsection (a) of this section in a manner that is contrary to the policies and objectives of
this chapter the Administrator is authorized to issue regulations describing classes of situations in which agencies may not exercise the authorities of those clauses.
(3) If the contractor believes that a determination is contrary to the policies and objectives of this chapter or constitutes an abuse of discretion by the agency, the determination shall be subject to section 203(b).
(c) Each funding agreement with a small business firm or nonprofit organization shall
contain appropriate provisions to effectuate the following:
(1) That the contractor disclose each subject invention to the Federal agency within
a reasonable time after it becomes known to contractor personnel responsible for the
administration of patent matters, and that the Federal Government may receive title to
any subject invention not disclosed to it within such time.
(2) That the contractor make a written election within two years after disclosure to
the Federal agency (or such additional time as may be approved by the Federal agency)
whether the contractor will retain title to a subject invention: Provided, That in any case
where the 1-year period referred to in section 102(b) would end before the end of that
2-year period, the period for election may be shortened by the Federal agency to a date
that is not more than sixty days before the end of that 1-year period: And provided
further, That the Federal Government may receive title to any subject invention in which
the contractor does not elect to retain rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to the expiration of the 1-year period referred to in section 102(b), and shall
thereafter file corresponding patent applications in other countries in which it wishes to
retain title within reasonable times, and that the Federal Government may receive title to
any subject inventions in the United States or other countries in which the contractor has
not filed patent applications on the subject invention within such times.
(4) With respect to any invention in which the contractor elects rights, the Federal
agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced for or on behalf of the United States any subject invention
throughout the world: Provided, That the funding agreement may provide for such
additional rights, including the right to assign or have assigned foreign patent rights in
the subject invention, as are determined by the agency as necessary for meeting the
obligations of the United States under any treaty, international agreement, arrangement
of cooperation, memorandum of understanding, or similar arrangement, including military agreements relating to weapons development and production.
(5) The right of the Federal agency to require periodic reporting on the utilization or
efforts at obtaining utilization that are being made by the contractor or his licensees or
assignees: Provided, That any such information, as well as any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section
203 of this chapter shall be treated by the Federal agency as commercial and financial
information obtained from a person and privileged and confidential and not subject to
disclosure under section 552 of title 5.
(6) An obligation on the part of the contractor, in the event a United States patent
application is filed by or on its behalf or by any assignee of the contractor, to include
within the specification of such application and any patent issuing thereon, a statement
337

§ 202

Patent Act

specifying that the invention was made with Government support and that the Government has certain rights in the invention.
(7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of
rights to a subject invention in the United States without the approval of the Federal
agency, except where such assignment is made to an organization which has as one of
its primary functions the management of inventions (provided that such assignee shall
be subject to the same provisions as the contractor); (B) a requirement that the contractor share royalties with the inventor; (C) except with respect to a funding agreement for
the operation of a Government-owned-contractor-operated facility, a requirement that
the balance of any royalties or income earned by the contractor with respect to subject
inventions, after payment of expenses (including payments to inventors) incidental to
the administration of subject inventions, be utilized for the support of scientific research, or education; (D) a requirement that, except where it is determined to be infeasible following a reasonable inquiry, a preference in the licensing of subject inventions
shall be given to small business firms; and (E) with respect to a funding agreement for
the operation of a Government-owned-contractor-operator facility, requirements (i) that
after payment of patenting costs, licensing costs, payments to inventors, and other expenses incidental to the administration of subject inventions, 100 percent of the balance
of any royalties or income earned and retained by the contractor during any fiscal year,
up to an amount equal to 5 percent of the annual budget of the facility, shall be used by
the contractor for scientific research, development, and education consistent with the
research and development mission and objectives of the facility, including activities
that increase the licensing potential of other inventions of the facility provided that if
said balance exceeds 5 percent of the annual budget of the facility, that 15 percent of
such excess shall be paid to the Treasury of the United States and the remaining 85
percent shall be used for the same purposes described above in this clause; and (ii) that,
to the extent it provides the most effective technology transfer, the licensing of subject
inventions shall be administered by contractor employees on location at the facility.
(8) The requirements of sections 203 and 204 of this chapter.
(d) If a contractor does not elect to retain title to a subject invention in cases subject to
this section, the Federal agency may consider and after consultation with the contractor
grant requests for retention of rights by the inventor subject to the provisions of this Act
and regulations promulgated hereunder.
(e) In any case when a Federal employee is a coinventor of any invention made with a
nonprofit organization, a small business firm, or a non-Federal inventor, the Federal
agency employing such coinventor may, for the purpose of consolidating rights in the
invention and if it finds that it would expedite the development of the invention—
(1) license or assign whatever rights it may acquire in the subject invention to the
nonprofit organization, small business firm, or non-Federal inventor in accordance
with the provisions of this chapter; or
(2) acquire any rights in the subject invention from the nonprofit organization, small
business firm, or non-Federal inventor, but only to the extent the party from whom the
rights are acquired voluntarily enters into the transaction and no other transaction under this chapter is conditioned on such acquisition.
(f)(1) No funding agreement with a small business firm or nonprofit organization shall
contain a provision allowing a Federal agency to require the licensing to third parties of
inventions owned by the contractor that are not subject inventions unless such provision
has been approved by the head of the agency and a written justification has been signed
by the head of the agency. Any such provision shall clearly state whether the licensing
338

Patent Act

§ 203

may be required in connection with the practice of a subject invention, a specifically identified work object, or both. The head of the agency may not delegate the authority to approve provisions or sign justifications required by this paragraph.
(2) A Federal agency shall not require the licensing of third parties under any such
provision unless the head of the agency determines that the use of the invention by
others is necessary for the practice of a subject invention or for the use of a work object
of the funding agreement and that such action is necessary to achieve the practical
application of the subject invention or work object. Any such determination shall be
on the record after an opportunity for an agency hearing. Any action commenced for
judicial review of such determination shall be brought within sixty days after notification of such determination.
35 U.S.C. 202 (pre-AIA) Disposition of rights.
[Editor Note: Pre-AIA 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are not applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35
U.S.C. 100 (note)). See 35 U.S.C. 202(c)(2) and (c)(3) for the law otherwise applicable.]
*****
(c) Each funding agreement with a small business firm or nonprofit organization shall
contain appropriate provisions to effectuate the following:
***
(2) That the contractor make a written election within two years after disclosure to
the Federal agency (or such additional time as may be approved by the Federal agency)
whether the contractor will retain title to a subject invention: Provided, That in any case
where publication, on sale, or public use, has initiated the one year statutory period in
which valid patent protection can still be obtained in the United States, the period for
election may be shortened by the Federal agency to a date that is not more than sixty
days prior to the end of the statutory period: And provided further, That the Federal
Government may receive title to any subject invention in which the contractor does not
elect to retain rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and shall thereafter file corresponding patent applications
in other countries in which it wishes to retain title within reasonable times, and that the
Federal Government may receive title to any subject inventions in the United States or
other countries in which the contractor has not filed patent applications on the subject
invention within such times.
***
*****
35 U.S.C. 203 March-in rights.
(a) With respect to any subject invention in which a small business firm or nonprofit
organization has acquired title under this chapter, the Federal agency under whose funding agreement the subject invention was made shall have the right, in accordance with
such procedures as are provided in regulations promulgated hereunder, to require the
contractor, an assignee, or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant
or applicants, upon terms that are reasonable under the circumstances, and if the
contractor, assignee, or exclusive licensee refuses such request, to grant such a license
339

§ 204

Patent Act

itself, if the Federal agency determines that such—
(1) action is necessary because the contractor or assignee has not taken, or is not
expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;
(2) action is necessary to alleviate health or safety needs which are not reasonably
satisfied by the contractor, assignee, or their licensees;
(3) action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the contractor, assignee,
or licensees; or
(4) action is necessary because the agreement required by section 204 has not been
obtained or waived or because a licensee of the exclusive right to use or sell any subject
invention in the United States is in breach of its agreement obtained pursuant to section
204.
(b) A determination pursuant to this section or section 202(b)(4) shall not be subject to
chapter 71 of title 41. An administrative appeals procedure shall be established by regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee adversely affected by a determination under this
section may, at any time within sixty days after the determination is issued, file a petition
in the United States Court of Federal Claims, which shall have jurisdiction to determine
the appeal on the record and to affirm, reverse, remand or modify, as appropriate, the
determination of the Federal agency. In cases described in paragraphs (1) and (3) of subsection (a), the agency’s determination shall be held in abeyance pending the exhaustion
of appeals or petitions filed under the preceding sentence.
35 U.S.C. 204 Preference for United States industry.
Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization which receives title to any subject invention and no assignee of any
such small business firm or nonprofit organization shall grant to any person the exclusive
right to use or sell any subject invention in the United States unless such person agrees
that any products embodying the subject invention or produced through the use of the
subject invention will be manufactured substantially in the United States. However, in
individual cases, the requirement for such an agreement may be waived by the Federal
agency under whose funding agreement the invention was made upon a showing by the
small business firm, nonprofit organization, or assignee that reasonable but unsuccessful
efforts have been made to grant licenses on similar terms to potential licensees that would
be likely to manufacture substantially in the United States or that under the circumstances
domestic manufacture is not commercially feasible.
35 U.S.C. 205 Confidentiality.
Federal agencies are authorized to withhold from disclosure to the public information
disclosing any invention in which the Federal Government owns or may own a right,
title, or interest (including a nonexclusive license) for a reasonable time in order for a
patent application to be filed. Furthermore, Federal agencies shall not be required to release copies of any document which is part of an application for patent filed with the
United States Patent and Trademark Office or with any foreign patent office.
35 U.S.C. 206 Uniform clauses and regulations.
The Secretary of Commerce may issue regulations which may be made applicable to
340

Patent Act

§ 209

Federal agencies implementing the provisions of sections 202 through 204 of this chapter
and shall establish standard funding agreement provisions required under this chapter.
The regulations and the standard funding agreement shall be subject to public comment
before their issuance.
35 U.S.C. 207 Domestic and foreign protection of federally owned inventions.
(a) Each Federal agency is authorized to—
(1) apply for, obtain, and maintain patents or other forms of protection in the United
States and in foreign countries on inventions in which the Federal Government owns
a right, title, or interest;
(2) grant nonexclusive, exclusive, or partially exclusive licenses under federally owned
inventions, royalty-free or for royalties or other consideration, and on such terms and conditions, including the grant to the licensee of the right of enforcement pursuant to the
provisions of chapter 29 as determined appropriate in the public interest;
(3) undertake all other suitable and necessary steps to protect and administer rights
to federally owned inventions on behalf of the Federal Government either directly or
through contract, including acquiring rights for and administering royalties to the Federal Government in any invention, but only to the extent the party from whom the
rights are acquired voluntarily enters into the transaction, to facilitate the licensing of
a federally owned invention; and
(4) transfer custody and administration, in whole or in part, to another Federal
agency, of the right, title, or interest in any federally owned invention.
(b) For the purpose of assuring the effective management of Government-owned inventions, the Secretary of Commerce authorized to—
(1) assist Federal agency efforts to promote the licensing and utilization of Government-owned inventions;
(2) assist Federal agencies in seeking protection and maintaining inventions in foreign countries, including the payment of fees and costs connected therewith; and
(3) consult with and advise Federal agencies as to areas of science and technology
research and development with potential for commercial utilization.
35 U.S.C. 208 Regulations governing Federal licensing.
The Secretary of Commerce is authorized to promulgate regulations specifying the
terms and conditions upon which any federally owned invention, other than inventions
owned by the Tennessee Valley Authority, may be licensed on a nonexclusive, partially
exclusive, or exclusive basis.
35 U.S.C. 209 Licensing federally owned inventions.
(a) Authority.—A Federal agency may grant an exclusive or partially exclusive license on a federally owned invention under section 207(a)(2) only if—
(1) granting the license is a reasonable and necessary incentive to—
(A) call forth the investment capital and expenditures needed to bring the invention
to practical application; or
(B) otherwise promote the invention’s utilization by the public;
(2) the Federal agency finds that the public will be served by the granting of the license,
as indicated by the applicant’s intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention’s utilization by the public, and that
the proposed scope of exclusivity is not greater than reasonably necessary to provide the
341

§ 209

Patent Act

incentive for bringing the invention to practical application, as proposed by the applicant,
or otherwise to promote the invention’s utilization by the public;
(3) the applicant makes a commitment to achieve practical application of the invention within a reasonable time, which time may be extended by the agency upon the
applicant’s request and the applicant’s demonstration that the refusal of such extension
would be unreasonable;
(4) granting the license will not tend to substantially lessen competition or create or
maintain a violation of the Federal antitrust laws; and
(5) in the case of an invention covered by a foreign patent application or patent, the
interests of the Federal Government or United States industry in foreign commerce
will be enhanced.
(b) Manufacture in United States.—A Federal agency shall normally grant a license
under section 207(a)(2) to use or sell any federally owned invention in the United States
only to a licensee who agrees that any products embodying the invention or produced
through the use of the invention will be manufactured substantially in the United States.
(c) Small Business.—First preference for the granting of any exclusive or partially
exclusive licenses under section 207(a)(2) shall be given to small business firms having
equal or greater likelihood as other applicants to bring the invention to practical application within a reasonable time.
(d) Terms and Conditions.—Any licenses granted under section 207(a)(2) shall contain such terms and conditions as the granting agency considers appropriate, and shall
include provisions—
(1) retaining a nontransferable, irrevocable, paid-up license for any Federal agency
to practice the invention or have the invention practiced throughout the world by or on
behalf of the Government of the United States;
(2) requiring periodic reporting on utilization of the invention, and utilization efforts,
by the licensee, but only to the extent necessary to enable the Federal agency to determine whether the terms of the license are being complied with, except that any such
report shall be treated by the Federal agency as commercial and financial information
obtained from a person and privileged and confidential and not subject to disclosure
under section 552 of title 5; and
(3) empowering the Federal agency to terminate the license in whole or in part if the
agency determines that—
(A) the licensee is not executing its commitment to achieve practical application of
the invention, including commitments contained in any plan submitted in support of
its request for a license, and the licensee cannot otherwise demonstrate to the satisfaction of the Federal agency that it has taken, or can be expected to take within a
reasonable time, effective steps to achieve practical application of the invention;
(B) the licensee is in breach of an agreement described in subsection (b);
(C) termination is necessary to meet requirements for public use specified by Federal regulations issued after the date of the license, and such requirements are not
reasonably satisfied by the licensee; or
(D) the licensee has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under the license
agreement.
(e) Public Notice.—No exclusive or partially exclusive license may be granted under
section 207(a)(2) unless public notice of the intention to grant an exclusive or partially
exclusive license on a federally owned invention has been provided in an appropriate
manner at least 15 days before the license is granted, and the Federal agency has
342

Patent Act

§ 210

considered all comments received before the end of the comment period in response to
that public notice. This subsection shall not apply to the licensing of inventions made
under a cooperative research and development agreement entered into under section 12
of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a).
(f) Plan.—No Federal agency shall grant any license under a patent or patent application on a federally owned invention unless the person requesting the license has supplied
the agency with a plan for development or marketing of the invention, except that any
such plan shall be treated by the Federal agency as commercial and financial information
obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5.
35 U.S.C. 210 Precedence of chapter.
(a) This chapter shall take precedence over any other Act which would require a disposition of rights in subject inventions of small business firms or nonprofit organizations
contractors in a manner that is inconsistent with this chapter, including but not necessarily limited to the following:
(1) section 10(a) of the Act of June 29, 1935, as added by title I of the Act of August
14, 1946 (7 U.S.C. 427i(a); 60 Stat. 1085);
(2) section 205(a) of the Act of August 14, 1946 (7 U.S.C. 1624(a); 60 Stat. 1090);
(3) section 501(c) of the Federal Mine Safety and Health Act of 1977 (30 U.S.C.
951(c); 83 Stat. 742);
(4) section 30168(e) of title 49;
(5) section 12 of the National Science Foundation Act of 1950 (42 U.S.C. 1871(a);
82 Stat. 360);
(6) section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182; 68 Stat. 943);
(7) section 20135 of title 51;
(8) section 6 of the Coal Research and Development Act of 1960 (30 U.S.C. 666; 74
Stat. 337);
(9) section 4 of the Helium Act Amendments of 1960 (50 U.S.C. 167b; 74 Stat. 920);
(10) section 32 of the Arms Control and Disarmament Act of 1961 (22 U.S.C. 2572;
75 Stat. 634);
(11) section 9 of the Federal Nonnuclear Energy Research and Development Act of
1974 (42 U.S.C. 5908; 88 Stat. 1878);
(12) section 5(d) of the Consumer Product Safety Act (15 U.S.C. 2054(d); 86 Stat.
1211);
(13) section 3 of the Act of April 5, 1944 (30 U.S.C. 323; 58 Stat. 191);
(14) section 8001(c)(3) of the Solid Waste Disposal Act (42 U.S.C. 6981(c); 90 Stat.
2829);
(15) section 219 of the Foreign Assistance Act of 1961 (22 U.S.C. 2179; 83 Stat.
806);
(16) section 427(b) of the Federal Mine Health and Safety Act of 1977 (30 U.S.C.
937(b); 86 Stat. 155);
(17) section 306(d) of the Surface Mining and Reclamation Act of 1977 (30 U.S.C.
1226(d); 91 Stat. 455);
(18) section 21(d) of the Federal Fire Prevention and Control Act of 1974 (15 U.S.C.
2218(d); 88 Stat. 1548);
(19) section 6(b) of the Solar Photovoltaic Energy Research Development and
Demonstration Act of 1978 (42 U.S.C. 5585(b); 92 Stat. 2516);
(20) section 12 of the Native Latex Commercialization and Economic Development
343

§ 211

Patent Act

Act of 1978 (7 U.S.C. 178j; 92 Stat. 2533); and
(21) section 408 of the Water Resources and Development Act of 1978 (42 U.S.C.
7879; 92 Stat. 1360). The Act creating this chapter shall be construed to take precedence over any future Act unless that Act specifically cites this Act and provides that
it shall take precedence over this Act.
(b) Nothing in this chapter is intended to alter the effect of the laws cited in paragraph
(a) of this section or any other laws with respect to the disposition of rights in inventions
made in the performance of funding agreements with persons other than nonprofit organizations or small business firms.
(c) Nothing in this chapter is intended to limit the authority of agencies to agree to the
disposition of rights in inventions made in the performance of work under funding agreements with persons other than nonprofit organizations or small business firms in accordance with the Statement of Government Patent Policy issued on February 18, 1983,
agency regulations, or other applicable regulations or to otherwise limit the authority of
agencies to allow such persons to retain ownership of inventions, except that all funding
agreements, including those with other than small business firms and nonprofit organizations, shall include the requirements established in section 202(c)(4) and section 203.
Any disposition of rights in inventions made in accordance with the Statement or implementing regulations, including any disposition occurring before enactment of this section, are hereby authorized.
(d) Nothing in this chapter shall be construed to require the disclosure of intelligence
sources or methods or to otherwise affect the authority granted to the Director of Central
Intelligence by statute or Executive order for the protection of intelligence sources or
methods.
(e) The provisions of the Stevenson-Wydler Technology Innovation Act of 1980 shall
take precedence over the provisions of this chapter to the extent that they permit or require
a disposition of rights in subject inventions which is inconsistent with this chapter.
35 U.S.C. 211 Relationship to antitrust laws.
Nothing in this chapter shall be deemed to convey to any person immunity from civil
or criminal liability, or to create any defenses to actions, under any antitrust law.
35 U.S.C. 212 Disposition of rights in educational awards.
No scholarship, fellowship, training grant, or other funding agreement made by a Federal agency primarily to an awardee for educational purposes will contain any provision
giving the Federal agency any rights to inventions made by the awardee.
PART III—PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 25—AMENDMENT AND CORRECTION OF PATENTS
35 U.S.C. 251 Reissue of defective patents.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012.
See 35 U.S.C. 251 (pre-AIA) for the law otherwise applicable.]
(a) In General.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of
the patentee claiming more or less than he had a right to claim in the patent, the Director
shall, on the surrender of such patent and the payment of the fee required by law, reissue
344

Patent Act

§ 252

the patent for the invention disclosed in the original patent, and in accordance with a new
and amended application, for the unexpired part of the term of the original patent. No
new matter shall be introduced into the application for reissue.
(b) Multiple Reissued Patents.—The Director may issue several reissued patents for
distinct and separate parts of the thing patented, upon demand of the applicant, and upon
payment of the required fee for a reissue for each of such reissued patents.
(c) Applicability of this Title.—The provisions of this title relating to applications for
patent shall be applicable to applications for reissue of a patent, except that application
for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) Reissue Patent Enlarging Scope of Claims.—No reissued patent shall be granted
enlarging the scope of the claims of the original patent unless applied for within two
years from the grant of the original patent.
35 U.S.C. 251 (pre-AIA) Reissue of defective patents.
[Editor Note: Not applicable to any patent application filed on or after September 16,
2012. See 35 U.S.C. 251 for the law otherwise applicable.]
Whenever any patent is, through error without any deceptive intention, deemed wholly
or partly inoperative or invalid, by reason of a defective specification or drawing, or by
reason of the patentee claiming more or less than he had a right to claim in the patent, the
Director shall, on the surrender of such patent and the payment of the fee required by law,
reissue the patent for the invention disclosed in the original patent, and in accordance with
a new and amended application, for the unexpired part of the term of the original patent.
No new matter shall be introduced into the application for reissue.
The Director may issue several reissued patents for distinct and separate parts of the
thing patented, upon demand of the applicant, and upon payment of the required fee for
a reissue for each of such reissued patents.
The provisions of this title relating to applications for patent shall be applicable to
applications for reissue of a patent, except that application for reissue may be made and
sworn to by the assignee of the entire interest if the application does not seek to enlarge
the scope of the claims of the original patent.
No reissued patent shall be granted enlarging the scope of the claims of the original
patent unless applied for within two years from the grant of the original patent.
35 U.S.C. 252 Effect of reissue.
The surrender of the original patent shall take effect upon the issue of the reissued
patent, and every reissued patent shall have the same effect and operation in law, on the
trial of actions for causes thereafter arising, as if the same had been originally granted in
such amended form, but in so far as the claims of the original and reissued patents are
substantially identical, such surrender shall not affect any action then pending nor abate
any cause of action then existing, and the reissued patent, to the extent that its claims are
substantially identical with the original patent, shall constitute a continuation thereof and
have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any person or that person’s
successors in business who, prior to the grant of a reissue, made, purchased, offered to
sell, or used within the United States, or imported into the United States, anything patented
by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used,
345

§ 253

Patent Act

offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or
imported unless the making, using, offering for sale, or selling of such thing infringes a
valid claim of the reissued patent which was in the original patent. The court before which
such matter is in question may provide for the continued manufacture, use, offer for sale,
or sale of the thing made, purchased, offered for sale, used, or imported as specified, or
for the manufacture, use, offer for sale, or sale in the United States of which substantial
preparation was made before the grant of the reissue, and the court may also provide for
the continued practice of any process patented by the reissue that is practiced, or for the
practice of which substantial preparation was made, before the grant of the reissue, to the
extent and under such terms as the court deems equitable for the protection of investments
made or business commenced before the grant of the reissue.
35 U.S.C. 253 Disclaimer.
[Editor Note: Applicable to all proceedings commenced on or after September 16, 2012.
See 35 U.S.C. 253 (pre-AIA) for the law otherwise applicable.]
(a) In General.—Whenever a claim of a patent is invalid the remaining claims shall
not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete
claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in
writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
(b) Additional Disclaimer or Dedication.—In the manner set forth in subsection (a),
any patentee or applicant may disclaim or dedicate to the public the entire term, or any
terminal part of the term, of the patent granted or to be granted.
35 U.S.C. 253 (pre-AIA) Disclaimer.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012. See 35 U.S.C. 253 for the law otherwise applicable.]
Whenever, without any deceptive intention, a claim of a patent is invalid the remaining
claims shall not thereby be rendered invalid. A patentee, whether of the whole or any
sectional interest therein, may, on payment of the fee required by law, make disclaimer
of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall
thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
In like manner any patentee or applicant may disclaim or dedicate to the public the
entire term, or any terminal part of the term, of the patent granted or to be granted.
35 U.S.C. 254 Certificate of correction of Patent and Trademark Office mistake.
Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark
Office, is clearly disclosed by the records of the Office, the Director may issue a certificate
of correction stating the fact and nature of such mistake, under seal, without charge, to be
recorded in the records of patents. A printed copy thereof shall be attached to each printed
copy of the patent, and such certificate shall be considered as part of the original patent.
Every such patent, together with such certificate, shall have the same effect and operation
in law on the trial of actions for causes thereafter arising as if the same had been originally
issued in such corrected form. The Director may issue a corrected patent without charge in
346

Patent Act

§ 257

lieu of and with like effect as a certificate of correction.
35 U.S.C. 255 Certificate of correction of applicant’s mistake.
Whenever a mistake of a clerical or typographical nature, or of minor character, which
was not the fault of the Patent and Trademark Office, appears in a patent and a showing
has been made that such mistake occurred in good faith, the Director may, upon payment
of the required fee, issue a certificate of correction, if the correction does not involve
such changes in the patent as would constitute new matter or would require reexamination. Such patent, together with the certificate, shall have the same effect and operation
in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.
35 U.S.C. 256 Correction of named inventor.
[Editor Note: Applicable to proceedings commenced on or after September 16, 2012.
See 35 U.S.C. 256 (pre-AIA) for the law otherwise applicable.]
(a) Correction.—Whenever through error a person is named in an issued patent as the
inventor, or through error an inventor is not named in an issued patent, the Director may,
on application of all the parties and assignees, with proof of the facts and such other
requirements as may be imposed, issue a certificate correcting such error.
(b) Patent Valid if Error Corrected.—The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if
it can be corrected as provided in this section. The court before which such matter is
called in question may order correction of the patent on notice and hearing of all parties
concerned and the Director shall issue a certificate accordingly.
35 U.S.C. 256 (pre-AIA) Correction of named inventor.
[Editor Note: Not applicable to proceedings commenced on or after September 16,
2012. See 35 U.S.C. 256 for the law otherwise applicable.]
Whenever through error a person is named in an issued patent as the inventor, or
through error an inventor is not named in an issued patent and such error arose without
any deceptive intention on his part, the Director may, on application of all the parties and
assignees, with proof of the facts and such other requirements as may be imposed, issue
a certificate correcting such error.
The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this
section. The court before which such matter is called in question may order correction of
the patent on notice and hearing of all parties concerned and the Director shall issue a
certificate accordingly.
35 U.S.C. 257 Supplemental examinations to consider, reconsider, or correct
information.
(a) Request for Supplemental Examination.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the
Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct
the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new
347

§ 257

Patent Act

question of patentability.
(b) Reexamination Ordered.—If the certificate issued under subsection (a) indicates
that a substantial new question of patentability is raised by 1 or more items of information
in the request, the Director shall order reexamination of the patent. The reexamination
shall be conducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the
reexamination, the Director shall address each substantial new question of patentability
identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter.
(c) Effect.—
(1) In General.—A patent shall not be held unenforceable on the basis of conduct
relating to information that had not been considered, was inadequately considered, or
was incorrect in a prior examination of the patent if the information was considered,
reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to
enforceability of the patent under section 282.
(2) Exceptions.—
(A) Prior Allegations.—Paragraph (1) shall not apply to an allegation pled with
particularity in a civil action, or set forth with particularity in a notice received by
the patent owner under section 505(j) (2)(B)(iv)(II) of the Federal Food, Drug, and
Cosmetic Act (21 U.S.C. 355(j) (2)(B)(iv)(II)), before the date of a supplemental
examination request under subsection (a) to consider, reconsider, or correct information forming the basis for the allegation.
(B) Patent Enforcement Actions.—In an action brought under section 337(a) of
the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281, paragraph (1) shall not
apply to any defense raised in the action that is based upon information that was
considered, reconsidered, or corrected pursuant to a supplemental examination request under subsection (a), unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the
action is brought.
(d) Fees and Regulations.—
(1) Fees.—The Director shall, by regulation, establish fees for the submission of a
request for supplemental examination of a patent, and to consider each item of information submitted in the request. If reexamination is ordered under subsection (b), fees
established and applicable to ex parte reexamination proceedings under chapter 30
shall be paid, in addition to fees applicable to supplemental examination.
(2) Regulations.—The Director shall issue regulations governing the form, content,
and other requirements of requests for supplemental examination, and establishing procedures for reviewing information submitted in such requests.
(e) Fraud.—If the Director becomes aware, during the course of a supplemental examination or reexamination proceeding ordered under this section, that a material fraud on the
Office may have been committed in connection with the patent that is the subject of the
supplemental examination, then in addition to any other actions the Director is authorized
to take, including the cancellation of any claims found to be invalid under section 307 as a
result of a reexamination ordered under this section, the Director shall also refer the matter
to the Attorney General for such further action as the Attorney General may deem appropriate. Any such referral shall be treated as confidential, shall not be included in the file of
the patent, and shall not be disclosed to the public unless the United States charges a person
with a criminal offense in connection with such referral.
348

Patent Act

§ 267

(f) Rule of Construction.—Nothing in this section shall be construed—
(1) to preclude the imposition of sanctions based upon criminal or antitrust laws (including section 1001(a) of title 18, the first section of the Clayton Act, and section 5
of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition);
(2) to limit the authority of the Director to investigate issues of possible misconduct
and impose sanctions for misconduct in connection with matters or proceedings before
the Office; or
(3) to limit the authority of the Director to issue regulations under chapter 3 relating
to sanctions for misconduct by representatives practicing before the Office.
CHAPTER 26—OWNERSHIP AND ASSIGNMENT
35 U.S.C. 261 Ownership; assignment.
Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents
and applications for patents and shall record any document related thereto upon request,
and may require a fee therefor.
Applications for patent, patents, or any interest therein, shall be assignable in law by
an instrument in writing. The applicant, patentee, or his assigns or legal representatives
may in like manner grant and convey an exclusive right under his application for patent,
or patents, to the whole or any specified part of the United States.
A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic
or consular officer of the United States or an officer authorized to administer oaths whose
authority is proved by a certificate of a diplomatic or consular officer of the United
States, or apostille of an official designated by a foreign country which, by treaty or
convention, accords like effect to apostilles of designated officials in the United States,
shall be prima facie evidence of the execution of an assignment, grant, or conveyance of
a patent or application for patent.
An interest that constitutes an assignment, grant, or conveyance shall be void as against
any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date
or prior to the date of such subsequent purchase or mortgage.
35 U.S.C. 262 Joint owners.
In the absence of any agreement to the contrary, each of the joint owners of a patent
may make, use, offer to sell, or sell the patented invention within the United States, or
import the patented invention into the United States, without the consent of and without
accounting to the other owners.
CHAPTER 27—GOVERNMENT INTERESTS IN PATENTS
35 U.S.C. 266 [Repealed.]
35 U.S.C. 267 Time for taking action in Government applications.
Notwithstanding the provisions of sections 133 and 151, the Director may extend the
time for taking any action to three years, when an application has become the property
349

§ 271

Patent Act

of the United States and the head of the appropriate department or agency of the Government has certified to the Director that the invention disclosed therein is important to
the armament or defense of the United States.
CHAPTER 28—INFRINGEMENT OF PATENTS
35 U.S.C. 271 Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses,
offers to sell, or sells any patented invention, within the United States, or imports into the
United States any patented invention during the term of the patent therefor, infringes the
patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United
States a component of a patented machine, manufacture, combination, or composition, or
a material or apparatus for use in practicing a patented process, constituting a material part
of the invention, knowing the same to be especially made or especially adapted for use in
an infringement of such patent, and not a staple article or commodity of commerce suitable
for substantial noninfringing use, shall be liable as a contributory infringer.
(d) No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1)
derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory
infringement of the patent; (3) sought to enforce his patent rights against infringement or
contributory infringement; (4) refused to license or use any rights to the patent; or (5)
conditioned the license of any rights to the patent or the sale of the patented product on
the acquisition of a license to rights in another patent or purchase of a separate product,
unless, in view of the circumstances, the patent owner has market power in the relevant
market for the patent or patented product on which the license or sale is conditioned.
(e)(1) It shall not be an act of infringement to make, use, offer to sell, or sell within the
United States or import into the United States a patented invention (other than a new animal
drug or veterinary biological product (as those terms are used in the Federal Food, Drug,
and Cosmetic Act and the Act of March 4, 1913) which is primarily manufactured using
recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques) solely for uses reasonably related to the
development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.
(2) It shall be an act of infringement to submit—
(A) an application under section 505(j) of the Federal Food, Drug, and Cosmetic
Act or described in section 505(b)(2) of such Act for a drug claimed in a patent or
the use of which is claimed in a patent,
(B) an application under section 512 of such Act or under the Act of March 4, 1913
(21 U.S.C. 151 - 158) for a drug or veterinary biological product which is not primarily
manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or
other processes involving site specific genetic manipulation techniques and which is
claimed in a patent or the use of which is claimed in a patent, or
(C)(i) with respect to a patent that is identified in the list of patents described in section 351(l)(3) of the Public Health Service Act (including as provided under section
350

Patent Act

§ 271

351(l)(7) of such Act), an application seeking approval of a biological product, or
(ii) if the applicant for the application fails to provide the application and information required under section 351(l)(2)(A) of such Act, an application seeking approval of a biological product for a patent that could be identified pursuant to
section 351(l)(3)(A)(i) of such Act, if the purpose of such submission is to obtain
approval under such Act to engage in the commercial manufacture, use, or sale of
a drug, veterinary biological product, or biological product claimed in a patent or
the use of which is claimed in a patent before the expiration of such patent.
(3) In any action for patent infringement brought under this section, no injunctive or
other relief may be granted which would prohibit the making, using, offering to sell,
or selling within the United States or importing into the United States of a patented
invention under paragraph (1).
(4) For an act of infringement described in paragraph (2)—
(A) the court shall order the effective date of any approval of the drug or veterinary
biological product involved in the infringement to be a date which is not earlier than
the date of the expiration of the patent which has been infringed,
(B) injunctive relief may be granted against an infringer to prevent the commercial
manufacture, use, offer to sell, or sale within the United States or importation into the
United States of an approved drug, veterinary biological product, or biological product,
(C) damages or other monetary relief may be awarded against an infringer only if
there has been commercial manufacture, use, offer to sell, or sale within the United
States or importation into the United States of an approved drug, veterinary biological product, or biological product, and
(D) the court shall order a permanent injunction prohibiting any infringement of
the patent by the biological product involved in the infringement until a date which
is not earlier than the date of the expiration of the patent that has been infringed under
paragraph (2)(C), provided the patent is the subject of a final court decision, as defined in section 351(k)(6) of the Public Health Service Act, in an action for infringement of the patent under section 351(l)(6) of such Act, and the biological product
has not yet been approved because of section 351(k)(7) of such Act. The remedies
prescribed by subparagraphs (A), (B), (C), and (D) are the only remedies which may
be granted by a court for an act of infringement described in paragraph (2), except
that a court may award attorney fees under section 285.
(5) Where a person has filed an application described in paragraph (2) that includes
a certification under subsection (b)(2)(A)(iv) or (j) (2)(A)(vii)(IV) of section 505 of
the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355), and neither the owner of
the patent that is the subject of the certification nor the holder of the approved application under subsection (b) of such section for the drug that is claimed by the patent or
a use of which is claimed by the patent brought an action for infringement of such
patent before the expiration of 45 days after the date on which the notice given under
subsection (b)(3) or (j) (2)(B) of such section was received, the courts of the United
States shall, to the extent consistent with the Constitution, have subject matter jurisdiction in any action brought by such person under section 2201 of title 28 for a declaratory judgment that such patent is invalid or not infringed.
(6)(A) Subparagraph (B) applies, in lieu of paragraph (4), in the case of a patent—
(i) that is identified, as applicable, in the list of patents described in section
351(l)(4) of the Public Health Service Act or the lists of patents described in section 351(l)(5)(B) of such Act with respect to a biological product; and
(ii) for which an action for infringement of the patent with respect to the
351

§ 271

Patent Act

biological product—
(I) was brought after the expiration of the 30-day period described in subparagraph (A) or (B), as applicable, of section 351(l)(6) of such Act; or
(II) was brought before the expiration of the 30-day period described in subclause (I), but which was dismissed without prejudice or was not prosecuted to
judgment in good faith.
(B) In an action for infringement of a patent described in subparagraph (A), the
sole and exclusive remedy that may be granted by a court, upon a finding that the
making, using, offering to sell, selling, or importation into the United States of the
biological product that is the subject of the action infringed the patent, shall be a
reasonable royalty.
(C) The owner of a patent that should have been included in the list described in
section 351(l)(3)(A) of the Public Health Service Act, including as provided under
section 351(l)(7) of such Act for a biological product, but was not timely included in
such list, may not bring an action under this section for infringement of the patent
with respect to the biological product.
(f)(1) Whoever without authority supplies or causes to be supplied in or from the
United States all or a substantial portion of the components of a patented invention,
where such components are uncombined in whole or in part, in such manner as to actively
induce the combination of such components outside of the United States in a manner that
would infringe the patent if such combination occurred within the United States, shall be
liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from the
United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined
in whole or in part, knowing that such component is so made or adapted and intending
that such component will be combined outside of the United States in a manner that
would infringe the patent if such combination occurred within the United States, shall
be liable as an infringer.
(g) Whoever without authority imports into the United States or offers to sell, sells, or
uses within the United States a product which is made by a process patented in the United
States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the
product occurs during the term of such process patent. In an action for infringement of a
process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title
for infringement on account of the importation or other use, offer to sell, or sale of that
product. A product which is made by a patented process will, for purposes of this title,
not be considered to be so made after—
(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product.
(h) As used in this section, the term “whoever” includes any State, any instrumentality
of a State, any officer or employee of a State or instrumentality of a State acting in his
official capacity. Any State, and any such instrumentality, officer, or employee, shall be
subject to the provisions of this title in the same manner and to the same extent as any
nongovernmental entity.
(i) As used in this section, an “offer for sale” or an “offer to sell” by a person other
than the patentee or any assignee of the patentee, is that in which the sale will occur
before the expiration of the term of the patent.
352

Patent Act

§ 273

35 U.S.C. 272 Temporary presence in the United States.
The use of any invention in any vessel, aircraft or vehicle of any country which affords
similar privileges to vessels, aircraft, or vehicles of the United States, entering the United
States temporarily or accidentally, shall not constitute infringement of any patent, if the
invention is used exclusively for the needs of the vessel, aircraft, or vehicle and is not
offered for sale or sold in or used for the manufacture of anything to be sold in or exported from the United States.
35 U.S.C. 273 Defense to infringement based on prior commercial use.
(a) In General.—A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or
composition of matter used in a manufacturing or other commercial process, that would
otherwise infringe a claimed invention being asserted against the person if—
(1) such person, acting in good faith, commercially used the subject matter in the
United States, either in connection with an internal commercial use or an actual arm’s
length sale or other arm’s length commercial transfer of a useful end result of such
commercial use; and
(2) such commercial use occurred at least 1 year before the earlier of either—
(A) the effective filing date of the claimed invention; or
(B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b).
(b) Burden of Proof.—A person asserting a defense under this section shall have the
burden of establishing the defense by clear and convincing evidence.
(c) Additional Commercial Uses.—
(1) Premarketing Regulatory Review.—Subject matter for which commercial
marketing or use is subject to a premarketing regulatory review period during which
the safety or efficacy of the subject matter is established, including any period specified in section 156(g), shall be deemed to be commercially used for purposes of subsection (a)(1) during such regulatory review period.
(2) Nonprofit Laboratory Use.—A use of subject matter by a nonprofit research
laboratory or other nonprofit entity, such as a university or hospital, for which the public is the intended beneficiary, shall be deemed to be a commercial use for purposes of
subsection (a)(1), except that a defense under this section may be asserted pursuant to
this paragraph only for continued and noncommercial use by and in the laboratory or
other nonprofit entity.
(d) Exhaustion of Rights.—Notwithstanding subsection (e)(1), the sale or other disposition of a useful end result by a person entitled to assert a defense under this section
in connection with a patent with respect to that useful end result shall exhaust the patent
owner’s rights under the patent to the extent that such rights would have been exhausted
had such sale or other disposition been made by the patent owner.
(e) Limitations and Exceptions.—
(1) Personal Defense.—
(A) In General.—A defense under this section may be asserted only by the person
who performed or directed the performance of the commercial use described in subsection (a), or by an entity that controls, is controlled by, or is under common control
with such person.
(B) Transfer of Right.—Except for any transfer to the patent owner, the right to
assert a defense under this section shall not be licensed or assigned or transferred to
353

§ 281

Patent Act

another person except as an ancillary and subordinate part of a good-faith assignment
or transfer for other reasons of the entire enterprise or line of business to which the
defense relates.
(C) Restriction on Sites.—A defense under this section, when acquired by a person
as part of an assignment or transfer described in subparagraph (B), may only be asserted for uses at sites where the subject matter that would otherwise infringe a claimed
invention is in use before the later of the effective filing date of the claimed invention
or the date of the assignment or transfer of such enterprise or line of business.
(2) Derivation.—A person may not assert a defense under this section if the subject
matter on which the defense is based was derived from the patentee or persons in privity with the patentee.
(3) Not a General License.—The defense asserted by a person under this section is
not a general license under all claims of the patent at issue, but extends only to the
specific subject matter for which it has been established that a commercial use that
qualifies under this section occurred, except that the defense shall also extend to variations in the quantity or volume of use of the claimed subject matter, and to improvements in the claimed subject matter that do not infringe additional specifically claimed
subject matter of the patent.
(4) Abandonment of Use.—A person who has abandoned commercial use (that
qualifies under this section) of subject matter may not rely on activities performed
before the date of such abandonment in establishing a defense under this section with
respect to actions taken on or after the date of such abandonment.
(5) University Exception.—
(A) In General.—A person commercially using subject matter to which subsection (a) applies may not assert a defense under this section if the claimed invention
with respect to which the defense is asserted was, at the time the invention was made,
owned or subject to an obligation of assignment to either an institution of higher
education (as defined in section 101(a) of the Higher Education Act of 1965 (20
U.S.C. 1001(a)), or a technology transfer organization whose primary purpose is to
facilitate the commercialization of technologies developed by one or more such institutions of higher education.
(B) Exception.—Subparagraph (A) shall not apply if any of the activities required
to reduce to practice the subject matter of the claimed invention could not have been
under taken using funds provided by the Federal Government.
(f) Unreasonable Assertion of Defense.—If the defense under this section is pleaded
by a person who is found to infringe the patent and who subsequently fails to demonstrate
a reasonable basis for asserting the defense, the court shall find the case exceptional for
the purpose of awarding attorney fees under section 35 U.S.C. 285.
(g) Invalidity.—A patent shall not be deemed to be invalid under section 102 or 103
solely because a defense is raised or established under this section.
CHAPTER 29—REMEDIES FOR INFRINGEMENT OF PATENT, AND
OTHER ACTIONS
35 U.S.C. 281 Remedy for infringement of patent.
A patentee shall have remedy by civil action for infringement of his patent.

354

Patent Act

§ 284

35 U.S.C. 282 Presumption of validity; defenses.
(a) In General.—A patent shall be presumed valid. Each claim of a patent (whether in
independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be
presumed valid even though dependent upon an invalid claim. The burden of establishing
invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.
(b) Defenses.—The following shall be defenses in any action involving the validity or
infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement, or unenforceability.
(2) Invalidity of the patent or any claim in suit on any ground specified in part II as
a condition for patentability.
(3) Invalidity of the patent or any claim in suit for failure to comply with—
(A) any requirement of section 112, except that the failure to disclose the best
mode shall not be a basis on which any claim of a patent may be canceled or held
invalid or otherwise unenforceable; or
(B) any requirement of section 251.
(4) Any other fact or act made a defense by this title.
(c) Notice of Actions; Actions During Extension of Patent Term.—In an action involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party
at least thirty days before the trial, of the country, number, date, and name of the patentee
of any patent, the title, date, and page numbers of any publication to be relied upon as
anticipation of the patent in suit or, except in actions in the United States Court of Federal
Claims, as showing the state of the art, and the name and address of any person who may
be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such
notice proof of the said matters may not be made at the trial except on such terms as the
court requires.Invalidity of the extension of a patent term or any portion thereof under
section 154(b) or 156 because of the material failure—
(1) by the applicant for the extension, or
(2) by the Director, to comply with the requirements of such section shall be a defense in any action involving the infringement of a patent during the period of the
extension of its term and shall be pleaded. A due diligence determination under section
156(d)(2) is not subject to review in such an action.
35 U.S.C. 283 Injunction.
The several courts having jurisdiction of cases under this title may grant injunctions in
accordance with the principles of equity to prevent the violation of any right secured by
patent, on such terms as the court deems reasonable.
35 U.S.C. 284 Damages.
Upon finding for the claimant the court shall award the claimant damages adequate to
compensate for the infringement but in no event less than a reasonable royalty for the use
made of the invention by the infringer, together with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess them. In either event
the court may increase the damages up to three times the amount found or assessed.
Increased damages under this paragraph shall not apply to provisional rights under section 154(d).
355

§ 285

Patent Act

The court may receive expert testimony as an aid to the determination of damages or
of what royalty would be reasonable under the circumstances.
35 U.S.C. 285 Attorney fees.
The court in exceptional cases may award reasonable attorney fees to the prevailing party.
35 U.S.C. 286 Time limitation on damages.
Except as otherwise provided by law, no recovery shall be had for any infringement
committed more than six years prior to the filing of the complaint or counterclaim for
infringement in the action.
In the case of claims against the United States Government for use of a patented invention, the period before bringing suit, up to six years, between the date of receipt of a
written claim for compensation by the department or agency of the Government having
authority to settle such claim, and the date of mailing by the Government of a notice to
the claimant that his claim has been denied shall not be counted as a part of the period
referred to in the preceding paragraph.
35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.
(a) Patentees, and persons making, offering for sale, or selling within the United States
any patented article for or under them, or importing any patented article into the United
States, may give notice to the public that the same is patented, either by fixing thereon
the word “patent” or the abbreviation “pat.”, together with the number of the patent, or
by fixing thereon the word “patent” or the abbreviation “pat.” together with an address
of a posting on the Internet, accessible to the public without charge for accessing the
address, that associates the patented article with the number of the patent, or when, from
the character of the article, this cannot be done, by fixing to it, or to the package wherein
one or more of them is contained, a label containing a like notice. In the event of failure
so to mark, no damages shall be recovered by the patentee in any action for infringement,
except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
(b) (1) An infringer under section 271(g) shall be subject to all the provisions of this title
relating to damages and injunctions except to the extent those remedies are modified by this
subsection or section 9006 of the Process Patent Amendments Act of 1988. The modifications of remedies provided in this subsection shall not be available to any person who—
(A) practiced the patented process;
(B) owns or controls, or is owned or controlled by, the person who practiced the
patented process; or
(C) had knowledge before the infringement that a patented process was used to
make the product the importation, use, offer for sale, or sale of which constitutes the
infringement.
(2) No remedies for infringement under section 271(g) shall be available with respect to any product in the possession of, or in transit to, the person subject to liability
under such section before that person had notice of infringement with respect to that
product. The person subject to liability shall bear the burden of proving any such possession or transit.
(3)(A) In making a determination with respect to the remedy in an action brought for
infringement under section 271(g), the court shall consider—
356

Patent Act

§ 287

(i) the good faith demonstrated by the defendant with respect to a request for
disclosure;
(ii) the good faith demonstrated by the plaintiff with respect to a request for disclosure, and
(iii) the need to restore the exclusive rights secured by the patent.
(B) For purposes of subparagraph (A), the following are evidence of good faith:
(i) a request for disclosure made by the defendant;
(ii) a response within a reasonable time by the person receiving the request for
disclosure; and
(iii) the submission of the response by the defendant to the manufacturer, or if the
manufacturer is not known, to the supplier, of the product to be purchased by the
defendant, together with a request for a written statement that the process claimed
in any patent disclosed in the response is not used to produce such product. The
failure to perform any acts described in the preceding sentence is evidence of absence of good faith unless there are mitigating circumstances. Mitigating circumstances include the case in which, due to the nature of the product, the number of
sources for the product, or like commercial circumstances, a request for disclosure
is not necessary or practicable to avoid infringement.
(4)(A) For purposes of this subsection, a “request for disclosure” means a written
request made to a person then engaged in the manufacture of a product to identify all
process patents owned by or licensed to that person, as of the time of the request, that
the person then reasonably believes could be asserted to be infringed under section
271(g) if that product were imported into, or sold, offered for sale, or used in, the
United States by an unauthorized person. A request for disclosure is further limited to
a request—
(i) which is made by a person regularly engaged in the United States in the sale
of the type of products as those manufactured by the person to whom the request
is directed, or which includes facts showing that the person making the request
plans to engage in the sale of such products in the United States;
(ii) which is made by such person before the person’s first importation, use, offer
for sale, or sale of units of the product produced by an infringing process and before the person had notice of infringement with respect to the product; and
(iii) which includes a representation by the person making the request that such
person will promptly submit the patents identified pursuant to the request to the
manufacturer, or if the manufacturer is not known, to the supplier, of the product
to be purchased by the person making the request, and will request from that manufacturer or supplier a written statement that none of the processes claimed in those
patents is used in the manufacture of the product.
(B) In the case of a request for disclosure received by a person to whom a patent
is licensed, that person shall either identify the patent or promptly notify the licensor
of the request for disclosure.
(C) A person who has marked, in the manner prescribed by subsection (a), the
number of the process patent on all products made by the patented process which
have been offered for sale or sold by that person in the United States, or imported by
the person into the United States, before a request for disclosure is received is not
required to respond to the request for disclosure. For purposes of the preceding sentence, the term “all products” does not include products made before the effective
date of the Process Patent Amendments Act of 1988.
(5)(A) For purposes of this subsection, notice of infringement means actual
357

§ 287

Patent Act

knowledge, or receipt by a person of a written notification, or a combination thereof,
of information sufficient to persuade a reasonable person that it is likely that a product
was made by a process patented in the United States.
(B) A written notification from the patent holder charging a person with infringement shall specify the patented process alleged to have been used and the reasons for
a good faith belief that such process was used. The patent holder shall include in the
notification such information as is reasonably necessary to explain fairly the patent
holder’s belief, except that the patent holder is not required to disclose any trade
secret information.
(C) A person who receives a written notification described in subparagraph (B) or a
written response to a request for disclosure described in paragraph (4) shall be deemed
to have notice of infringement with respect to any patent referred to in such written
notification or response unless that person, absent mitigating circumstances—
(i) promptly transmits the written notification or response to the manufacturer
or, if the manufacturer is not known, to the supplier, of the product purchased or
to be purchased by that person; and
(ii) receives a written statement from the manufacturer or supplier which on its
face sets forth a well grounded factual basis for a belief that the identified patents
are not infringed.
(D) For purposes of this subsection, a person who obtains a product made by a
process patented in the United States in a quantity which is abnormally large in relation to the volume of business of such person or an efficient inventory level shall
be rebuttably presumed to have actual knowledge that the product was made by such
patented process.
(6) A person who receives a response to a request for disclosure under this subsection shall pay to the person to whom the request was made a reasonable fee to cover
actual costs incurred in complying with the request, which may not exceed the cost of
a commercially available automated patent search of the matter involved, but in no
case more than $500.
(c)(1) With respect to a medical practitioner’s performance of a medical activity that
constitutes an infringement under section 271(a) or (b), the provisions of sections 281,
283, 284, and 285 shall not apply against the medical practitioner or against a related
health care entity with respect to such medical activity.
(2) For the purposes of this subsection:
(A) the term “medical activity” means the performance of a medical or surgical
procedure on a body, but shall not include (i) the use of a patented machine, manufacture, or composition of matter in violation of such patent, (ii) the practice of a
patented use of a composition of matter in violation of such patent, or (iii) the practice of a process in violation of a biotechnology patent.
(B) the term “medical practitioner” means any natural person who is licensed by a
State to provide the medical activity described in subsection (c)(1) or who is acting
under the direction of such person in the performance of the medical activity.
(C) the term “related health care entity” shall mean an entity with which a medical
practitioner has a professional affiliation under which the medical practitioner performs the medical activity, including but not limited to a nursing home, hospital,
university, medical school, health maintenance organization, group medical practice,
or a medical clinic.
(D) the term “professional affiliation” shall mean staff privileges, medical staff
membership, employment or contractual relationship, partnership or ownership
358

Patent Act

§ 289

interest, academic appointment, or other affiliation under which a medical practitioner
provides the medical activity on behalf of, or in association with, the health care entity.
(E) the term “body” shall mean a human body, organ or cadaver, or a nonhuman
animal used in medical research or instruction directly relating to the treatment of
humans.
(F) the term “patented use of a composition of matter” does not include a claim for
a method of performing a medical or surgical procedure on a body that recites the
use of a composition of matter where the use of that composition of matter does not
directly contribute to achievement of the objective of the claimed method.
(G) the term “State” shall mean any State or territory of the United States, the District of Columbia, and the Commonwealth of Puerto Rico.
(3) This subsection does not apply to the activities of any person, or employee or
agent of such person (regardless of whether such person is a tax exempt organization
under section 501(c) of the Internal Revenue Code), who is engaged in the commercial
development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory services provided in a physician’s office), where
such activities are:
(A) directly related to the commercial development, manufacture, sale, importation, or distribution of a machine, manufacture, or composition of matter or the provision of pharmacy or clinical laboratory services (other than clinical laboratory
services provided in a physician’s office), and
(B) regulated under the Federal Food, Drug, and Cosmetic Act, the Public Health
Service Act, or the Clinical Laboratories Improvement Act.
(4) This subsection shall not apply to any patent issued based on an application
which has an effective filing date before September 30, 1996.
35 U.S.C. 288 Action for infringement of a patent containing an invalid claim.
[Editor Note: Applicable to all proceedings commenced on or after September 16, 2012.
See 35 U.S.C. 288 (pre-AIA) for the law otherwise applicable.]
Whenever a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs
unless a disclaimer of the invalid claim has been entered at the Patent and Trademark
Office before the commencement of the suit.
35 U.S.C. 288 (pre-AIA) Action for infringement of a patent containing an invalid
claim.
[Editor Note: Not applicable to to proceedings commenced on or after September 16,
2012. See 35 U.S.C. 288 for the law otherwise applicable.]
Whenever, without deceptive intention, a claim of a patent is invalid, an action may be
maintained for the infringement of a claim of the patent which may be valid. The patentee
shall recover no costs unless a disclaimer of the invalid claim has been entered at the
Patent and Trademark Office before the commencement of the suit.
35 U.S.C. 289 Additional remedy for infringement of design patent.
Whoever during the term of a patent for a design, without license of the owner, (1)
applies the patented design, or any colorable imitation thereof, to any article of
359

§ 290

Patent Act

manufacture for the purpose of sale, or (2) sells or exposes for sale any article of
manufacture to which such design or colorable imitation has been applied shall be liable
to the owner to the extent of his total profit, but not less than $250, recoverable in any
United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any other remedy which an
owner of an infringed patent has under the provisions of this title, but he shall not twice
recover the profit made from the infringement.
35 U.S.C. 290 Notice of patent suits.
The clerks of the courts of the United States, within one month after the filing of an
action under this title, shall give notice thereof in writing to the Director, setting forth so
far as known the names and addresses of the parties, name of the inventor, and the designating number of the patent upon which the action has been brought. If any other patent
is subsequently included in the action he shall give like notice thereof. Within one month
after the decision is rendered or a judgment issued the clerk of the court shall give notice
thereof to the Director. The Director shall, on receipt of such notices, enter the same in
the file of such patent.
35 U.S.C. 291 Derived Patents.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note))*. See 35 U.S.C. 291 (pre-AIA) for the
law otherwise applicable.]
(a) In General.—The owner of a patent may have relief by civil action against the
owner of another patent that claims the same invention and has an earlier effective filing
date, if the invention claimed in such other patent was derived from the inventor of the
invention claimed in the patent owned by the person seeking relief under this section.
(b) Filing Limitation.—An action under this section may be filed only before the end
of the 1-year period beginning on the date of the issuance of the first patent containing a
claim to the allegedly derived invention and naming an individual alleged to have derived
such invention as the inventor or joint inventor.
*Note: The provisions of 35 U.S.C. 291 (pre-AIA), as in effect on March 15, 2013, shall
also apply to each claim of an application for patent, and any patent issued thereon, for
which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note)), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in 35 U.S.C.
100(i), that occurs before March 16, 2013; or
(B) a specific reference under 35 U.S.C. 120, 121, or 365(c), to any patent or application that contains or contained at any time such a claim.
35 U.S.C. 291 (pre-AIA) Interfering patents.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)).* See 35 U.S.C. 291 for the law
otherwise applicable.*]
The owner of an interfering patent may have relief against the owner of another by
civil action, and the court may adjudge the question of validity of any of the interfering
patents, in whole or in part. The provisions of the second paragraph of section 146 shall
apply to actions brought under this section.
360

Patent Act

§ 294

*Note: The provisions of 35 U.S.C. 291 (pre-AIA), as in effect on March 15, 2013, shall
also apply to each claim of an application for patent, and any patent issued thereon, for
which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note)), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in 35 U.S.C.
100(i), that occurs before March 16, 2013; or
(B) a specific reference under 35 U.S.C. 120, 121, or 365(c), to any patent or application that contains or contained at any time such a claim.
35 U.S.C. 292 False marking.
(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in
advertising in connection with anything made, used, offered for sale, or sold by such
person within the United States, or imported by the person into the United States, the
name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of
the patentee, or of deceiving the public and inducing them to believe that the thing was
made, offered for sale, sold, or imported into the United States by or with the consent of
the patentee; or
Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for
the purpose of deceiving the public; or
Whoever marks upon, or affixes to, or uses in advertising in connection with any article
the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made,
is not pending, for the purpose of deceiving the public—Shall be fined not more than
$500 for every such offense. Only the United States may sue for the penalty authorized
by this subsection.
(b) A person who has suffered a competitive injury as a result of a violation of this
section may file a civil action in a district court of the United States for recovery of
damages adequate to compensate for the injury.
(c) The marking of a product, in a manner described in subsection (a), with matter relating
to a patent that covered that product but has expired is not a violation of this section.
35 U.S.C. 293 Nonresident patentee; service and notice.
Every patentee not residing in the United States may file in the Patent and Trademark
Office a written designation stating the name and address of a person residing within the
United States on whom may be served process or notice of proceedings affecting the
patent or rights thereunder. If the person designated cannot be found at the address given
in the last designation, or if no person has been designated, the United States District
Court for the Eastern District of Virginia shall have jurisdiction and summons shall be
served by publication or otherwise as the court directs. The court shall have the same
jurisdiction to take any action respecting the patent or rights thereunder that it would
have if the patentee were personally within the jurisdiction of the court.
35 U.S.C. 294 Voluntary arbitration.
(a) A contract involving a patent or any right under a patent may contain a provision
requiring arbitration of any dispute relating to patent validity or infringement arising under
the contract. In the absence of such a provision, the parties to an existing patent validity or
361

§ 295

Patent Act

infringement dispute may agree in writing to settle such dispute by arbitration. Any such
provision or agreement shall be valid, irrevocable, and enforceable, except for any grounds
that exist at law or in equity for revocation of a contract.
(b) Arbitration of such disputes, awards by arbitrators, and confirmation of awards
shall be governed by title 9, to the extent such title is not inconsistent with this section.
In any such arbitration proceeding, the defenses provided for under section 282 shall be
considered by the arbitrator if raised by any party to the proceeding.
(c) An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person. The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is
subsequently determined to be invalid or unenforceable in a judgment rendered by a court
of competent jurisdiction from which no appeal can or has been taken, such award may
be modified by any court of competent jurisdiction upon application by any party to the
arbitration. Any such modification shall govern the rights and obligations between such
parties from the date of such modification.
(d) When an award is made by an arbitrator, the patentee, his assignee or licensee shall
give notice thereof in writing to the Director. There shall be a separate notice prepared for
each patent involved in such proceeding. Such notice shall set forth the names and addresses of the parties, the name of the inventor, and the name of the patent owner, shall
designate the number of the patent, and shall contain a copy of the award. If an award is
modified by a court, the party requesting such modification shall give notice of such modification to the Director. The Director shall, upon receipt of either notice, enter the same in
the record of the prosecution of such patent. If the required notice is not filed with the
Director, any party to the proceeding may provide such notice to the Director.
(e) The award shall be unenforceable until the notice required by subsection (d) is received by the Director.
35 U.S.C. 295 Presumption: Product made by patented process.
In actions alleging infringement of a process patent based on the importation, sale,
offered for sale, or use of a product which is made from a process patented in the United
States, if the court finds—
(1) that a substantial likelihood exists that the product was made by the patented
process, and
(2) that the plaintiff has made a reasonable effort to determine the process actually
used in the production of the product and was unable so to determine, the product shall
be presumed to have been so made, and the burden of establishing that the product was
not made by the process shall be on the party asserting that it was not so made.
35 U.S.C. 296 Liability of States, instrumentalities of States, and State officials for
infringement of patents.
(a) In General.—Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State, acting in his official capacity, shall not be
immune, under the eleventh amendment of the Constitution of the United States or under
any other doctrine of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity, for infringement of a patent under
section 271, or for any other violation under this title.
(b) Remedies.—In a suit described in subsection (a) for a violation described in that
subsection, remedies (including remedies both at law and in equity) are available for the
362

Patent Act

§ 297

violation to the same extent as such remedies are available for such a violation in a suit
against any private entity. Such remedies include damages, interest, costs, and treble
damages under section 284, attorney fees under section 285, and the additional remedy
for infringement of design patents under section 289.
35 U.S.C. 297 Improper and deceptive invention promotion.
(a) In General.—An invention promoter shall have a duty to disclose the following
information to a customer in writing, prior to entering into a contract for invention promotion services:
(1) the total number of inventions evaluated by the invention promoter for commercial
potential in the past 5 years, as well as the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations;
(2) the total number of customers who have contracted with the invention promoter
in the past 5 years, not including customers who have purchased trade show services,
research, advertising, or other nonmarketing services from the invention promoter, or
who have defaulted in their payment to the invention promoter;
(3) the total number of customers known by the invention promoter to have received
a net financial profit as a direct result of the invention promotion services provided by
such invention promoter;
(4) the total number of customers known by the invention promoter to have received
license agreements for their inventions as a direct result of the invention promotion
services provided by such invention promoter; and
(5) the names and addresses of all previous invention promotion companies with
which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.
(b) Civil Action.—
(1) Any customer who enters into a contract with an invention promoter and who is
found by a court to have been injured by any material false or fraudulent statement or
representation, or any omission of material fact, by that invention promoter (or any
agent, employee, director, officer, partner, or independent contractor of such invention
promoter), or by the failure of that invention promoter to disclose such information as
required under subsection (a), may recover in a civil action against the invention promoter (or the officers, directors, or partners of such invention promoter), in addition to
reasonable costs and attorneys’ fees—
(A) the amount of actual damages incurred by the customer; or
(B) at the election of the customer at any time before final judgment is rendered,
statutory damages in a sum of not more than $5,000, as the court considers just.
(2) Notwithstanding paragraph (1), in a case where the customer sustains the burden
of proof, and the court finds, that the invention promoter intentionally misrepresented
or omitted a material fact to such customer, or willfully failed to disclose such information as required under subsection (a), with the purpose of deceiving that customer,
the court may increase damages to not more than three times the amount awarded, taking into account past complaints made against the invention promoter that resulted in
regulatory sanctions or other corrective actions based on those records compiled by the
Commissioner of Patents under subsection (d).
(c) Definitions.—For purposes of this section—
(1) a “contract for invention promotion services” means a contract by which an invention promoter undertakes invention promotion services for a customer;
(2) a “customer” is any individual who enters into a contract with an invention
363

§ 298

Patent Act

promoter for invention promotion services;
(3) the term “invention promoter” means any person, firm, partnership, corporation,
or other entity who offers to perform or performs invention promotion services for, or
on behalf of, a customer, and who holds itself out through advertising in any mass
media as providing such services, but does not include—
(A) any department or agency of the Federal Government or of a State or local
government;
(B) any nonprofit, charitable, scientific, or educational organization, qualified under applicable State law or described under section 170(b)(1)(A) of the Internal Revenue Code of 1986;
(C) any person or entity involved in the evaluation to determine commercial potential of, or offering to license or sell, a utility patent or a previously filed nonprovisional utility patent application;
(D) any party participating in a transaction involving the sale of the stock or assets
of a business; or
(E) any party who directly engages in the business of retail sales of products or the
distribution of products; and
(4) the term “invention promotion services” means the procurement or attempted
procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer.
(d) Records of Complaints.—
(1) Release of Complaints.—The Commissioner of Patents shall make all complaints received by the Patent and Trademark Office involving invention promoters
publicly available, together with any response of the invention promoters. The Commissioner of Patents shall notify the invention promoter of a complaint and provide a
reasonable opportunity to reply prior to making such complaint publicly available.
(2) Request for Complaints.—The Commissioner of Patents may request complaints relating to invention promotion services from any Federal or State agency and
include such complaints in the records maintained under paragraph (1), together with
any response of the invention promoters.
35 U.S.C. 298 Advice of counsel.
The failure of an infringer to obtain the advice of counsel with respect to any allegedly
infringed patent, or the failure of the infringer to present such advice to the court or jury,
may not be used to prove that the accused infringer willfully infringed the patent or that
the infringer intended to induce infringement of the patent.
35 U.S.C. 299 Joinder of parties.
(a) Joinder of Accused Infringers.—With respect to any civil action arising under
any Act of Congress relating to patents, other than an action or trial in which an act of
infringement under section 271(e)(2) has been pled, parties that are accused infringers
may be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, only if—
(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of
transactions or occurrences relating to the making, using, importing into the United
States, offering for sale, or selling of the same accused product or process; and
(2) questions of fact common to all defendants or counterclaim defendants will arise
in the action.
364

Patent Act

§ 303

(b) Allegations Insufficient for Joinder.—For purposes of this subsection, accused
infringers may not be joined in one action as defendants or counterclaim defendants, or
have their actions consolidated for trial,based solely on allegations that they each have
infringed the patent or patents in suit.
(c) Waiver.—A party that is an accused infringer may waive the limitations set forth
in this section with respect to that party.
CHAPTER 30—PRIOR ART CITATIONS TO OFFICE AND EX PARTE
REEXAMINATION OF PATENTS
35 U.S.C. 301 Citation of prior art and written statements.
(a) In General.—Any person at any time may cite to the Office in writing—
(1) prior art consisting of patents or printed publications which that person believes
to have a bearing on the patentability of any claim of a particular patent; or
(2) statements of the patent owner filed in a proceeding before a Federal court or the
Office in which the patent owner took a position on the scope of any claim of a particular patent.
(b) Official File.—If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written
statements to at least 1 claim of the patent, the citation of the prior art or written statements
and the explanation thereof shall become a part of the official file of the patent.
(c) Additional Information.—A party that submits a written statement pursuant to
subsection (a)(2) shall include any other documents, pleadings, or evidence from the
proceeding in which the statement was filed that addresses the written statement.
(d) Limitations.—A written statement submitted pursuant to subsection (a)(2), and
additional information submitted pursuant to subsection (c), shall not be considered by
the Office for any purpose other than to determine the proper meaning of a patent claim
in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any
such written statement or additional information is subject to an applicable protective
order, such statement or information shall be redacted to exclude information that is subject to that order.
(e) Confidentiality.—Upon the written request of the person citing prior art or written
statements pursuant to subsection (a), that person’s identity shall be excluded from the
patent file and kept confidential.
35 U.S.C. 302 Request for reexamination.
Any person at any time may file a request for reexamination by the Office of any claim
of a patent on the basis of any prior art cited under the provisions of section 301. The
request must be in writing and must be accompanied by payment of a reexamination fee
established by the Director pursuant to the provisions of section 41. The request must set
forth the pertinency and manner of applying cited prior art to every claim for which
reexamination is requested. Unless the requesting person is the owner of the patent, the
Director promptly will send a copy of the request to the owner of record of the patent.
35 U.S.C. 303 Determination of issue by Director.
(a) Within three months following the filing of a request for reexamination under the
provisions of section 302, the Director will determine whether a substantial new question
of patentability affecting any claim of the patent concerned is raised by the request, with
365

§ 304

Patent Act

or without consideration of other patents or printed publications. On his own initiative,
and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. The existence of a substantial new question of patentability
is not precluded by the fact that a patent or printed publication was previously cited by
or to the Office or considered by the Office.
(b) A record of the Director’s determination under subsection (a) of this section will
be placed in the official file of the patent, and a copy promptly will be given or mailed
to the owner of record of the patent and to the person requesting reexamination, if any.
(c) A determination by the Director pursuant to subsection (a) of this section that no
substantial new question of patentability has been raised will be final and nonappealable.
Upon such a determination, the Director may refund a portion of the reexamination fee
required under section 302.
35 U.S.C. 304 Reexamination order by Director.
If, in a determination made under the provisions of subsection 303(a), the Director
finds that a substantial new question of patentability affecting any claim of a patent is
raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than
two months from the date a copy of the determination is given or mailed to him, within
which he may file a statement on such question, including any amendment to his patent
and new claim or claims he may wish to propose, for consideration in the reexamination.
If the patent owner files such a statement, he promptly will serve a copy of it on the
person who has requested reexamination under the provisions of section 302. Within a
period of two months from the date of service, that person may file and have considered
in the reexamination a reply to any statement filed by the patent owner. That person
promptly will serve on the patent owner a copy of any reply filed.
35 U.S.C. 305 Conduct of reexamination proceedings.
[Editor Note: Applicable to any patent issuing from an application subject to the first
inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 305 (preAIA) for the law otherwise applicable.]
After the times for filing the statement and reply provided for by section 304 have
expired, reexamination will be conducted according to the procedures established for
initial examination under the provisions of sections 132 and 133. In any reexamination
proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention
as claimed from the prior art cited under the provisions of section 301, or in response to
a decision adverse to the patentability of a claim of a patent. No proposed amended or
new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section,
including any appeal to the Patent Trial and Appeal Board, will be conducted with special
dispatch within the Office.
35 U.S.C. 305 (pre-AIA) Conduct of reexamination proceedings.
[Editor Note: Not applicable to any patent issuing from an application subject to the
first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 305
for the law otherwise applicable.]
366

Patent Act

§ 311 (note)

After the times for filing the statement and reply provided for by section 304 have
expired, reexamination will be conducted according to the procedures established for
initial examination under the provisions of sections 132 and 133. In any reexamination
proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention
as claimed from the prior art cited under the provisions of section 301, or in response to
a decision adverse to the patentability of a claim of a patent. No proposed amended or
new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section,
including any appeal to the Board of Patent Appeals and Interferences, will be conducted
with special dispatch within the Office.
35 U.S.C. 306 Appeal.
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions
of sections 141 to 144, with respect to any decision adverse to the patentability of any
original or proposed amended or new claim of the patent.
35 U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.
(a) In a reexamination proceeding under this chapter, when the time for appeal has
expired or any appeal proceeding has terminated, the Director will issue and publish a
certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the
patent any proposed amended or new claim determined to be patentable.
(b) Any proposed amended or new claim determined to be patentable and incorporated
into a patent following a reexamination proceeding will have the same effect as that
specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything
patented by such proposed amended or new claim, or who made substantial preparation
for the same, prior to issuance of a certificate under the provisions of subsection (a) of
this section.
CHAPTER 31—INTER PARTES REVIEW
35 U.S.C. 311 (note) Inter partes review applicability provisions.
The post-grant review provisions of the Leahy-Smith America Invents Act (AIA) apply only to proceedings commenced on or after Sept. 16, 2012, except that—
(1) the extension of jurisdiction to the United States Court of Appeals for the Federal
Circuit to entertain appeals of decisions of the Patent Trial and Appeal Board in reexaminations under the amendment made by subsection (c)(2) of the AIA shall be
deemed to take effect on Sept. 16, 2011 and shall extend to any decision of the Board
of Patent Appeals and Interferences with respect to a reexamination that is entered
before, on, or after Sept. 16, 2011;
(2) the provisions of 35 U.S.C. 6 (pre-AIA), 134 (pre-AIA), and 141 (pre-AIA) as in
effect on Sept. 15, 2012 shall continue to apply to inter partes reexaminations that are
requested under 35 U.S.C. 311 (pre-AIA) before Sept. 16, 2012;
(3) the Patent Trial and Appeal Board may be deemed to be the Board of Patent
Appeals and Interferences for purposes of appeals of inter partes reexaminations that
367

§ 311

Patent Act

are requested under 35 U.S.C. 311 (pre-AIA) before Sept. 16, 2012; and
(4) the Director’s right under the fourth sentence of 35 U.S.C. 143, to intervene in
an appeal from a decision entered by the Patent Trial and Appeal Board shall be
deemed to extend to inter partes reexaminations that are requested under 35 U.S.C.
311 before Sept. 16, 2012.
35 U.S.C. 311 Inter partes review.
(a) In General.—Subject to the provisions of this chapter, a person who is not the
owner of a patent may file with the Office a petition to institute an inter partes review of
the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review.
(b) Scope.—A petitioner in an inter partes review may request to cancel as unpatentable
1 or more claims of a patent only on a ground that could be raised under section 102 or
103 and only on the basis of prior art consisting of patents or printed publications.
(c) Filing Deadline.*—A petition for inter partes review shall be filed after the later
of either—
(1) the date that is 9 months after the grant of a patent; or
(2) if a post-grant review is instituted under chapter 32, the date of the termination
of such post-grant review.
*Note: Pursuant to Public Law 112-274, sec. 1(d), 126 Stat. 2456, Jan. 14, 2013, the
filing deadlines of subsection (c) do not apply to patents not subject to the first inventor
to file provisions of the AIA (35 U.S.C. 100 (note)).
35 U.S.C. 312 Petitions.
(a) Requirements of Petition.—A petition filed under section 311 may be considered
only if—
(1) the petition is accompanied by payment of the fee established by the Director
under section 311;
(2) the petition identifies all real parties in interest;
(3) the petition identifies, in writing and with particularity, each claim challenged,
the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including—
(A) copies of patents and printed publications that the petitioner relies upon in
support of the petition; and
(B) affidavits or declarations of supporting evidence and opinions, if the petitioner
relies on expert opinions;
(4) the petition provides such other information as the Director may require by regulation; and
(5) the petitioner provides copies of any of the documents required under paragraphs
(2), (3), and (4) to the patent owner or, if applicable, the designated representative of
the patent owner.
(b) Public Availability.—As soon as practicable after the receipt of a petition under
section 311, the Director shall make the petition available to the public.
35 U.S.C. 313 Preliminary response to petition.
If an inter partes review petition is filed under section 311, the patent owner shall have
the right to file a preliminary response to the petition, within a time period set by the
368

Patent Act

§ 315

Director, that sets forth reasons why no inter partes review should be instituted based
upon the failure of the petition to meet any requirement of this chapter.
35 U.S.C. 314 Institution of inter partes review.
(a) Threshold.—The Director may not authorize an inter partes review to be instituted
unless the Director determines that the information presented in the petition filed under
section 311 and any response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.
(b) Timing.—The Director shall determine whether to institute an inter partes review
under this chapter pursuant to a petition filed under section 311 within 3 months after—
(1) receiving a preliminary response to the petition under section 313; or
(2) if no such preliminary response is filed, the last date on which such response may
be filed.
(c) Notice.—The Director shall notify the petitioner and patent owner, in writing, of
the Director’s determination under subsection (a), and shall make such notice available
to the public as soon as is practicable. Such notice shall include the date on which the
review shall commence.
(d) No Appeal.—The determination by the Director whether to institute an inter partes
review under this section shall be final and nonappealable.
35 U.S.C. 315 Relation to other proceedings or actions.
(a) Infringer’s Civil Action.—
(1) Inter Partes Review Barred by Civil Action.—An inter partes review may not
be instituted if, before the date on which the petition for such a review is filed, the
petitioner or real party in interest filed a civil action challenging the validity of a claim
of the patent.
(2) Stay of Civil Action.—If the petitioner or real party in interest files a civil action
challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be
automatically stayed until either—
(A) the patent owner moves the court to lift the stay;
(B) the patent owner files a civil action or counterclaim alleging that the petitioner
or real party in interest has infringed the patent; or
(C) the petitioner or real party in interest moves the court to dismiss the civil action.
(3) Treatment of Counterclaim.—A counterclaim challenging the validity of a
claim of a patent does not constitute a civil action challenging the validity of a claim
of a patent for purposes of this subsection.
(b) Patent Owner’s Action.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging
infringement of the patent. The time limitation set forth in the preceding sentence shall
not apply to a request for joinder under subsection (c).
(c) Joinder.—If the Director institutes an inter partes review, the Director, in his or
her discretion, may join as a party to that inter partes review any person who properly
files a petition under section 311 that the Director, after receiving a preliminary response
under section 313 or the expiration of the time for filing such a response, determines
warrants the institution of an inter partes review under section 314.
369

§ 316

Patent Act

(d) Multiple Proceedings.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which
the inter partes review or other proceeding or matter may proceed, including providing for
stay, transfer, consolidation, or termination of any such matter or proceeding.
(e) Estoppel.—
(1) Proceedings before the Office.—The petitioner in an inter partes review of a
claim in a patent under this chapter that results in a final written decision under section
318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the
petitioner raised or reasonably could have raised during that inter partes review.
(2) Civil Actions and Other Proceedings.—The petitioner in an inter partes review
of a claim in a patent under this chapter that results in a final written decision under
section 318(a), or the real party in interest or privy of the petitioner, may not assert
either in a civil action arising in whole or in part under section 1338 of title 28 or in a
proceeding before the International Trade Commission under section 337 of the Tariff
Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
35 U.S.C. 316 Conduct of inter partes review.
(a) Regulations.—The Director shall prescribe regulations—
(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be
sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;
(2) setting forth the standards for the showing of sufficient grounds to institute a
review under section 314(a);
(3) establishing procedures for the submission of supplemental information after the
petition is filed;
(4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;
(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—
(A) the deposition of witnesses submitting affidavits or declarations; and
(B) what is otherwise necessary in the interest of justice;
(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an
unnecessary increase in the cost of the proceeding;
(7) providing for protective orders governing the exchange and submission of confidential information;
(8) providing for the filing by the patent owner of a response to the petition under
section 313 after an inter partes review has been instituted, and requiring that the patent
owner file with such response, through affidavits or declarations, any additional factual
evidence and expert opinions on which the patent owner relies in support of the response;
(9) setting forth standards and procedures for allowing the patent owner to move to
amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by
the patent owner in support of any amendment entered under subsection (d) is made
370

Patent Act

§ 317

available to the public as part of the prosecution history of the patent;
(10) providing either party with the right to an oral hearing as part of the proceeding;
(11) requiring that the final determination in an inter partes review be issued not later
than 1 year after the date on which the Director notices the institution of a review under
this chapter, except that the Director may, for good cause shown, extend the 1-year
period by not more than 6 months, and may adjust the time periods in this paragraph
in the case of joinder under section 315(c) ;
(12) setting a time period for requesting joinder under section 315(c) ; and
(13) providing the petitioner with at least 1 opportunity to file written comments
within a time period established by the Director.
(b) Considerations.—In prescribing regulations under this section, the Director shall
consider the effect of any such regulation on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of the Office to timely
complete proceedings instituted under this chapter.
(c) Patent Trial and Appeal Board.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter.
(d) Amendment of the Patent.—
(1) In General.—During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:
(A) Cancel any challenged patent claim.
(B) For each challenged claim, propose a reasonable number of substitute claims.
(2) Additional Motions.—Additional motions to amend may be permitted upon the
joint request of the petitioner and the patent owner to materially advance the settlement
of a proceeding under section 317, or as permitted by regulations prescribed by the
Director.
(3) Scope of Claims.—An amendment under this subsection may not enlarge the
scope of the claims of the patent or introduce new matter.
(e) Evidentiary Standards.—In an inter partes review instituted under this chapter,
the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.
35 U.S.C. 317 Settlement.
(a) In General.—An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent
owner, unless the Office has decided the merits of the proceeding before the request for
termination is filed. If the inter partes review is terminated with respect to a petitioner
under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the
real party in interest or privy of the petitioner, on the basis of that petitioner’s institution
of that inter partes review. If no petitioner remains in the inter partes review, the Office
may terminate the review or proceed to a final written decision under section 318(a).
(b) Agreements in Writing.—Any agreement or understanding between the patent
owner and a petitioner, including any collateral agreements referred to in such agreement
or understanding, made in connection with, or in contemplation of, the termination of an
inter partes review under this section shall be in writing and a true copy of such agreement
or understanding shall be filed in the Office before the termination of the inter partes
review as between the parties. At the request of a party to the proceeding, the agreement
or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal
Government agencies on written request, or to any person on a showing of good cause.
371

§ 318

Patent Act

35 U.S.C. 318 Decision of the Board.
(a) Final Written Decision.—If an inter partes review is instituted and not dismissed
under this chapter, the Patent Trial and Appeal Board shall issue a final written decision
with respect to the patentability of any patent claim challenged by the petitioner and any
new claim added under section 316(d).
(b) Certificate.—If the Patent Trial and Appeal Board issues a final written decision
under subsection (a) and the time for appeal has expired or any appeal has terminated,
the Director shall issue and publish a certificate canceling any claim of the patent finally
determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or
amended claim determined to be patentable.
(c) Intervening Rights.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter
shall have the same effect as that specified in section 252 for reissued patents on the right
of any person who made, purchased, or used within the United States, or imported into
the United States, anything patented by such proposed amended or new claim, or who
made substantial preparation therefor, before the issuance of a certificate under subsection (b).
(d) Data on Length of Review.—The Office shall make available to the public data
describing the length of time between the institution of, and the issuance of a final written
decision under subsection (a) for, each inter partes review.
35 U.S.C. 319 Appeal.
A party dissatisfied with the final written decision of the Patent Trial and Appeal Board
under section 318(a) may appeal the decision pursuant to sections 141 through 144. Any
party to the inter partes review shall have the right to be a party to the appeal.
CHAPTER 31 (pre-AIA)—OPTIONAL INTER PARTES REEXAMINATION
PROCEDURES
35 U.S.C. 311 (pre-AIA) Request for inter partes reexamination.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to
September 16, 2012.]
(a) In General.—Any third-party requester at any time may file a request for inter
partes reexamination by the Office of a patent on the basis of any prior art cited under
the provisions of section 301.
(b) Requirements.—The request shall—
(1) be in writing, include the identity of the real party in interest, and be accompanied
by payment of an inter partes reexamination fee established by the Director under section 41; and
(2) set forth the pertinency and manner of applying cited prior art to every claim for
which reexamination is requested.
(c) Copy.—The Director promptly shall send a copy of the request to the owner of
record of the patent.
35 U.S.C. 312 (transitional) Determination of issue by Director.
[Editor Note: Applicable to requests for inter partes reexamination filed on or after
372

Patent Act

§ 314 (pre-AIA)

Sept. 16, 2011, but before Sept. 16, 2012.]
(a) Reexamination.—Not later than 3 months after the filing of a request for inter
partes reexamination under section 311, the Director shall determine whether the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request,
with or without consideration of other patents or printed publications. A showing that
there is a reasonable likelihood that the requester would prevail with respect to at least 1
of the claims challenged in the request is not precluded by the fact that a patent or printed
publication was previously cited by or to the Office or considered by the Office.
(b) Record.—A record of the Director’s determination under subsection (a) shall be
placed in the official file of the patent, and a copy shall be promptly given or mailed to
the owner of record of the patent and to the third-party requester.
(c) Final Decision.—A determination by the Director under subsection (a) shall be
final and non-appealable. Upon a determination that the showing required by subsection
(a) has not been made, the Director may refund a portion of the inter partes reexamination
fee required under section 311.
35 U.S.C. 313 (transitional) Inter partes reexamination order by Director.
[Editor Note: Applicable to requests for inter partes reexamination filed on or after
Sept. 16, 2011, but before Sept. 16, 2012.]
If, in a determination made under section 312(a), the Director finds that it has been
shown that there is a reasonable likelihood that the requester would prevail with respect
to at least 1 of the claims challenged in the request, the determination shall include an
order for inter partes reexamination of the patent for resolution of the question. The order
may be accompanied by the initial action of the Patent and Trademark Office on the
merits of the inter partes reexamination conducted in accordance with section 314.
35 U.S.C. 314 (pre-AIA) Conduct of inter partes reexamination proceedings.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to
September 16, 2012.]
(a) In General.—Except as otherwise provided in this section, reexamination shall be
conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination proceeding under this
chapter, the patent owner shall be permitted to propose any amendment to the patent and
a new claim or claims, except that no proposed amended or new claim enlarging the
scope of the claims of the patent shall be permitted.
(b) Response.—
(1) With the exception of the inter partes reexamination request, any document filed
by either the patent owner or the third-party requester shall be served on the other
party. In addition, the Office shall send to the third-party requester a copy of any communication sent by the Office to the patent owner concerning the patent subject to the
inter partes reexamination proceeding.
(2) Each time that the patent owner files a response to an action on the merits from
the Patent and Trademark Office, the third-party requester shall have one opportunity
to file written comments addressing issues raised by the action of the Office or the
patent owner’s response thereto, if those written comments are received by the Office
within 30 days after the date of service of the patent owner’s response.
373

§ 315 (pre-AIA)

Patent Act

(c) Special Dispatch.—Unless otherwise provided by the Director for good cause, all
inter partes reexamination proceedings under this section, including any appeal to the
Board of Patent Appeals and Interferences, shall be conducted with special dispatch
within the Office.
35 U.S.C. 315 (pre-AIA) Appeal.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to
September 16, 2012.]
(a) Patent Owner.—The patent owner involved in an inter partes reexamination proceeding under this chapter—
(1) may appeal under the provisions of section 134 and may appeal under the provisions of sections 141 through 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent; and
(2) may be a party to any appeal taken by a third-party requester under subsection (b).
(b) Third-Party Requester.—A third-party requester—
(1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the
patentability of any original or proposed amended or new claim of the patent; and
(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner
under the provisions of section 134 or sections 141 through 144.
(c) Civil Action.—A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in
any civil action arising in whole or in part under section 1338 of title 28, the invalidity
of any claim finally determined to be valid and patentable on any ground which the thirdparty requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark
Office at the time of the inter partes reexamination proceedings.
35 U.S.C. 316 (pre-AIA) Certificate of patentability, unpatentability and claim
cancellation.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to
September 16, 2012.]
(a) In General.—In an inter partes reexamination proceeding under this chapter, when
the time for appeal has expired or any appeal proceeding has terminated, the Director shall
issue and publish a certificate canceling any claim of the patent finally determined to be
unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
(b) Amended or New Claim.—Any proposed amended or new claim determined to
be patentable and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued
patents on the right of any person who made, purchased, or used within the United States,
or imported into the United States, anything patented by such proposed amended or new
claim, or who made substantial preparation therefor, prior to issuance of a certificate
under the provisions of subsection (a) of this section.

374

Patent Act

§ 321 (note)

35 U.S.C. 317 (pre-AIA) Inter partes reexamination prohibited.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to
September 16, 2012.]
(a) Order for Reexamination.—Notwithstanding any provision of this chapter, once
an order for inter partes reexamination of a patent has been issued under section 313,
neither the third-party requester nor its privies may file a subsequent request for inter
partes reexamination of the patent until an inter partes reexamination certificate is issued
and published under section 316, unless authorized by the Director.
(b) Final Decision.—Once a final decision has been entered against a party in a civil
action arising in whole or in part under section 1338 of title 28, that the party has not
sustained its burden of proving the invalidity of any patent claim in suit or if a final
decision in an inter partes reexamination proceeding instituted by a third-party requester
is favorable to the patentability of any original or proposed amended or new claim of the
patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies
raised or could have raised in such civil action or inter partes reexamination proceeding,
and an inter partes reexamination requested by that party or its privies on the basis of
such issues may not thereafter be maintained by the Office, notwithstanding any other
provision of this chapter. This subsection does not prevent the assertion of invalidity
based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.
35 U.S.C. 318 (pre-AIA) Stay of litigation.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to
September 16, 2012.]
Once an order for inter partes reexamination of a patent has been issued under section
313, the patent owner may obtain a stay of any pending litigation which involves an issue
of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that
a stay would not serve the interests of justice.
CHAPTER 32—POST-GRANT REVIEW
35 U.S.C. 321 (note) Post-grant review applicability.
(1) Applicability.—
(A) The post-grant review provisions of the Leahy-Smith America Invents Act
(AIA) apply only to patents suject to the first inventor to file provisions of the AIA
(see 35 U.S.C. 100 (note)), except as provided in AIA § 18 and paragraph 2 below.
(B) Limitation.—The Director may impose a limit on the number of post-grant reviews that may be instituted under chapter 32 of title 35, United States Code, during
each of the first 4 1-year periods in which the these provisions are in effect.
(2) Pending Interferences.—
(A) Procedures in General.—The Director shall determine, and include in the regulations issued under paragraph (1), the procedures under which an interference commenced before the effective date set forth in paragraph (2)(A) is to proceed, including
whether such interference—
(i) is to be dismissed without prejudice to the filing of a petition for a post-grant
375

§ 321

Patent Act

review under chapter 32 of title 35, United States Code; or
(ii) is to proceed as if the AIA had not been enacted.
(B) Proceedings by Patent Trial and Appeal Board.—For purposes of an interference that is commenced before the effective date set forth in paragraph (2)(A), the
Director may deem the Patent Trial and Appeal Board to be the Board of Patent Appeals and Interferences, and may allow the Patent Trial and Appeal Board to conduct
any further proceedings in that interference.
(C) Appeals.—The authorization to appeal or have remedy from derivation proceedings in sections 141(d) and 146 of title 35, United States Code, as amended by this Act,
and the jurisdiction to entertain appeals from derivation proceedings in section
1295(a)(4)(A) of title 28, United States Code, as amended by this Act, shall be deemed
to extend to any final decision in an interference that is commenced before the effective
date set forth in paragraph (2)(A) of this subsection and that is not dismissed pursuant
to this paragraph.
35 U.S.C. 321 Post-grant review.
(a) In General.—Subject to the provisions of this chapter, a person who is not the
owner of a patent may file with the Office a petition to institute a post-grant review of
the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the post-grant review.
(b) Scope.—A petitioner in a post-grant review may request to cancel as unpatentable
1 or more claims of a patent on any ground that could be raised under paragraph (2) or
(3) of section 282(b) (relating to invalidity of the patent or any claim).
(c) Filing Deadline.—A petition for a post-grant review may only be filed not later
than the date that is 9 months after the date of the grant of the patent or of the issuance
of a reissue patent (as the case may be).
35 U.S.C. 322 Petitions.
(a) Requirements of Petition.—A petition filed under section 321 may be considered
only if—
(1) the petition is accompanied by payment of the fee established by the Director
under section 321;
(2) the petition identifies all real parties in interest;
(3) the petition identifies, in writing and with particularity, each claim challenged,
the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including—
(A) copies of patents and printed publications that the petitioner relies upon in
support of the petition; and
(B) affidavits or declarations of supporting evidence and opinions, if the petitioner
relies on other factual evidence or on expert opinions;
(4) the petition provides such other information as the Director may require by regulation; and
(5) the petitioner provides copies of any of the documents required under paragraphs
(2), (3), and (4) to the patent owner or, if applicable, the designated representative of
the patent owner.
(b) Public Availability.—As soon as practicable after the receipt of a petition under
section 321, the Director shall make the petition available to the public.
376

Patent Act

§ 325

35 U.S.C. 323 Preliminary response to petition.
If a post-grant review petition is filed under section 321, the patent owner shall have
the right to file a preliminary response to the petition, within a time period set by the
Director, that sets forth reasons why no post-grant review should be instituted based upon
the failure of the petition to meet any requirement of this chapter.
35 U.S.C. 324 Institution of post-grant review.
(a) Threshold.—The Director may not authorize a post-grant review to be instituted
unless the Director determines that the information presented in the petition filed under
section 321, if such information is not rebutted, would demonstrate that it is more likely
than not that at least 1 of the claims challenged in the petition is unpatentable.
(b) Additional Grounds.—The determination required under subsection (a) may also
be satisfied by a showing that the petition raises a novel or unsettled legal question that
is important to other patents or patent applications.
(c) Timing.—The Director shall determine whether to institute a post-grant review under this chapter pursuant to a petition filed under section 321 within 3 months after—
(1) receiving a preliminary response to the petition under section 323; or
(2) if no such preliminary response is filed, the last date on which such response may
be filed.
(d) Notice.—The Director shall notify the petitioner and patent owner, in writing, of
the Director’s determination under subsection (a) or (b), and shall make such notice
available to the public as soon as is practicable. Such notice shall include the date on
which the review shall commence.
(e) No Appeal.—The determination by the Director whether to institute a post-grant
review under this section shall be final and nonappealable.
35 U.S.C. 325 Relation to other proceedings or actions.
(a) Infringer’s Civil Action.—
(1) Post-Grant Review Barred by Civil Action.—A post-grant review may not be
instituted under this chapter if, before the date on which the petition for such a review
is filed, the petitioner or real party in interest filed a civil action challenging the validity
of a claim of the patent.
(2) Stay of Civil Action.—If the petitioner or real party in interest files a civil action
challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for post-grant review of the patent, that civil action shall be automatically stayed until either—
(A) the patent owner moves the court to lift the stay;
(B) the patent owner files a civil action or counterclaim alleging that the petitioner
or real party in interest has infringed the patent; or
(C) the petitioner or real party in interest moves the court to dismiss the civil action.
(3) Treatment of Counterclaim.—A counterclaim challenging the validity of a
claim of a patent does not constitute a civil action challenging the validity of a claim
of a patent for purposes of this subsection.
(b) Preliminary Injunctions.—If a civil action alleging infringement of a patent is filed
within 3 months after the date on which the patent is granted, the court may not stay its
consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed under
this chapter or that such a post-grant review has been instituted under this chapter.
377

§ 326

Patent Act

(c) Joinder.—If more than 1 petition for a post-grant review under this chapter is
properly filed against the same patent and the Director determines that more than 1 of
these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.
(d) Multiple Proceedings.—Notwithstanding sections 135(a), 251, and 252, and
chapter 30, during the pendency of any post-grant review under this chapter, if another
proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such
matter or proceeding. In determining whether to institute or order a proceeding under
this chapter, chapter 30, or chapter 31, the Director may take into account whether, and
reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.
(e) Estoppel.—
(1) Proceedings before the Office.—The petitioner in a post-grant review of a claim
in a patent under this chapter that results in a final written decision under section
328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the
petitioner raised or reasonably could have raised during that post-grant review.
(2) Civil Actions and Other Proceedings.—The petitioner in a post-grant review
of a claim in a patent under this chapter that results in a final written decision under
section 328(a), or the real party in interest or privy of the petitioner, may not assert
either in a civil action arising in whole or in part under section 1338 of title 28 or in a
proceeding before the International Trade Commission under section 337 of the Tariff
Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
(f) Reissue Patents.—A post-grant review may not be instituted under this chapter if
the petition requests cancellation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and
the time limitations in section 321(c) would bar filing a petition for a post-grant review
for such original patent.
35 U.S.C. 326 Conduct of post-grant review.
(a) Regulations.—The Director shall prescribe regulations—
(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be
sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;
(2) setting forth the standards for the showing of sufficient grounds to institute a
review under subsections (a) and (b) of section 324;
(3) establishing procedures for the submission of supplemental information after the
petition is filed;
(4) establishing and governing a post-grant review under this chapter and the relationship of such review to other proceedings under this title;
(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions
advanced by either party in the proceeding;
(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an
378

Patent Act

§ 327

unnecessary increase in the cost of the proceeding;
(7) providing for protective orders governing the exchange and submission of confidential information;
(8) providing for the filing by the patent owner of a response to the petition under
section 323 after a post-grant review has been instituted, and requiring that the patent
owner file with such response, through affidavits or declarations, any additional factual
evidence and expert opinions on which the patent owner relies in support of the response;
(9) setting forth standards and procedures for allowing the patent owner to move to
amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by
the patent owner in support of any amendment entered under subsection (d) is made
available to the public as part of the prosecution history of the patent;
(10) providing either party with the right to an oral hearing as part of the proceeding;
(11) requiring that the final determination in any post-grant review be issued not
later than 1 year after the date on which the Director notices the institution of a proceeding under this chapter, except that the Director may, for good cause shown, extend
the 1-year period by not more than 6 months, and may adjust the time periods in this
paragraph in the case of joinder under section 325(c); and
(12) providing the petitioner with at least 1 opportunity to file written comments
within a time period established by the Director.
(b) Considerations.—In prescribing regulations under this section, the Director shall
consider the effect of any such regulation on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of the Office to timely
complete proceedings instituted under this chapter.
(c) Patent Trial and Appeal Board.—The Patent Trial and Appeal Board shall, in
accordance with section 6, conduct each post-grant review instituted under this chapter.
(d) Amendment of the Patent.—
(1) In General.—During a post-grant review instituted under this chapter, the patent
owner may file 1 motion to amend the patent in 1 or more of the following ways:
(A) Cancel any challenged patent claim.
(B) For each challenged claim, propose a reasonable number of substitute claims.
(2) Additional Motions.—Additional motions to amend may be permitted upon the
joint request of the petitioner and the patent owner to materially advance the settlement
of a proceeding under section 327, or upon the request of the patent owner for good
cause shown.
(3) Scope of Claims.—An amendment under this subsection may not enlarge the
scope of the claims of the patent or introduce new matter.
(e) Evidentiary Standards.—In a post-grant review instituted under this chapter, the
petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.
35 U.S.C. 327 Settlement.
(a) In General.—A post-grant review instituted under this chapter shall be terminated
with respect to any petitioner upon the joint request of the petitioner and the patent
owner, unless the Office has decided the merits of the proceeding before the request for
termination is filed. If the post-grant review is termi nated with respect to a petitioner
under this section, no estoppel under section 325(e) shall attach to the petitioner, or to
the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that post-grant review. If no petitioner remains in the post-grant review, the
379

§ 328

Patent Act

Office may terminate the post-grant review or proceed to a final written decision under
section 328(a).
(b) Agreements in Writing.—Any agreement or understanding between the patent
owner and a petitioner, including any collateral agreements referred to in such agreement
or understanding, made in connection with, or in contemplation of, the termination of a
post-grant review under this section shall be in writing, and a true copy of such agreement
or understanding shall be filed in the Office before the termination of the post-grant review as between the parties. At the request of a party to the proceeding, the agreement
or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal
Government agencies on written request, or to any person on a showing of good cause.
35 U.S.C. 328 Decision of the Board.
(a) Final Written Decision.—If a post-grant review is instituted and not dismissed
under this chapter, the Patent Trial and Appeal Board shall issue a final written decision
with respect to the patentability of any patent claim challenged by the petitioner and any
new claim added under section 326(d).
(b) Certificate.—If the Patent Trial and Appeal Board issues a final written decision
under subsection (a) and the time for appeal has expired or any appeal has terminated,
the Director shall issue and publish a certificate canceling any claim of the patent finally
determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or
amended claim determined to be patentable.
(c) Intervening Rights.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following a post-grant review under this chapter
shall have the same effect as that specified in section 252 for reissued patents on the right
of any person who made, purchased, or used within the United States, or imported into the
United States, anything patented by such proposed amended or new claim, or who made
substantial preparation therefor, before the issuance of a certificate under subsection (b).
(d) Data on Length of Review.—The Office shall make available to the public data
describing the length of time between the institution of, and the issuance of a final written
decision under subsection (a) for, each post-grant review.
35 U.S.C. 329 Appeal.
A party dissatisfied with the final written decision of the Patent Trial and Appeal Board
under section 328(a) may appeal the decision pursuant to sections 141 through 144. Any
party to the post-grant review shall have the right to be a party to the appeal.
PART IV—PATENT COOPERATION TREATY
CHAPTER 35—DEFINITIONS
35 U.S.C. 351 Definitions.
When used in this part unless the context otherwise indicates—
(a) The term “treaty” means the Patent Cooperation Treaty done at Washington, on
June 19, 1970.
(b) The term “Regulations,” when capitalized, means the Regulations under the treaty,
done at Washington on the same date as the treaty. The term “regulations,” when not
380

Patent Act

§ 362

capitalized, means the regulations established by the Director under this title.
(c) The term “international application” means an application filed under the treaty.
(d) The term “international application originating in the United States” means an
international application filed in the Patent and Trademark Office when it is acting as
a Receiving Office under the treaty, irrespective of whether or not the United States
has been designated in that international application.
(e) The term “international application designating the United States” means an international application specifying the United States as a country in which a patent is
sought, regardless where such international application is filed.
(f) The term “Receiving Office” means a national patent office or intergovernmental
organization which receives and processes international applications as prescribed by
the treaty and the Regulations.
(g) The terms “International Searching Authority” and “International Preliminary
Examining Authority” mean a national patent office or intergovernmental organization
as appointed under the treaty which processes international applications as prescribed
by the treaty and the Regulations.
(h) The term “International Bureau” means the international intergovernmental organization which is recognized as the coordinating body under the treaty and the Regulations.
(i) Terms and expressions not defined in this part are to be taken in the sense indicated by the treaty and the Regulations.
CHAPTER 36—INTERNATIONAL STAGE
35 U.S.C. 361 Receiving Office.
(a) The Patent and Trademark Office shall act as a Receiving Office for international
applications filed by nationals or residents of the United States. In accordance with any
agreement made between the United States and another country, the Patent and Trademark Office may also act as a Receiving Office for international applications filed by
residents or nationals of such country who are entitled to file international applications.
(b) The Patent and Trademark Office shall perform all acts connected with the discharge of duties required of a Receiving Office, including the collection of international
fees and their transmittal to the International Bureau.
(c) International applications filed in the Patent and Trademark Office shall be filed in
the English language, or an English translation shall be filed within such later time as
may be fixed by the Director.
(d) The international fee, and the transmittal and search fees prescribed under section
376(a) of this part, shall either be paid on filing of an international application or within
such later time as may be fixed by the Director.
35 U.S.C. 362 International Searching Authority and International Preliminary
Examining Authority.
(a) The Patent and Trademark Office may act as an International Searching Authority
and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such
Authorities, including the collection of handling fees and their transmittal to the International Bureau.
381

§ 363

Patent Act

(b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by
the Director.
35 U.S.C. 363 International application designating the United States: Effect.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 363 (pre-AIA) for the law
otherwise applicable.]
An international application designating the United States shall have the effect, from
its international filing date under article 11 of the treaty, of a national application for
patent regularly filed in the Patent and Trademark Office.
35 U.S.C. 363 (pre-AIA) International application designating the United States:
Effect.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 363 for the law otherwise applicable.]
An international application designating the United States shall have the effect, from
its international filing date under article 11 of the treaty, of a national application for
patent regularly filed in the Patent and Trademark Office except as otherwise provided
in section 102(e).
35 U.S.C. 364 International stage: Procedure.
(a) International applications shall be processed by the Patent and Trademark Office
when acting as a Receiving Office, International Searching Authority, or International
Preliminary Examining Authority, in accordance with the applicable provisions of the
treaty, the Regulations, and this title.
(b) An applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international application may be excused as provided in the
treaty and the Regulations.
35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application.
(a) In accordance with the conditions and requirements of subsections (a) through (d)
of section 119, a national application shall be entitled to the right of priority based on a
prior filed international application which designated at least one country other than the
United States.
(b) In accordance with the conditions and requirements of section 119(a) and the treaty
and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international
application designating at least one country other than the United States. The Director may
establish procedures, including the requirement for payment of the fee specified in section
41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the
Regulations, and to accept a priority claim that pertains to an application that was not filed
within the priority period specified in the treaty and Regulations, but was filed within the
additional 2-month period specified under section 119(a) or the treaty and Regulations.
(c) In accordance with the conditions and requirements of section 120, an international
application designating the United States shall be entitled to the benefit of the filing date
382

Patent Act

§ 368

of a prior national application or a prior international application designating the United
States, and a national application shall be entitled to the benefit of the filing date of a
prior international application designating the United States. If any claim for the benefit
of an earlier filing date is based on a prior international application which designated but
did not originate in the United States, the Director may require the filing in the Patent
and Trademark Office of a certified copy of such application together with a translation
thereof into the English language, if it was filed in another language.
35 U.S.C. 366 Withdrawn international application.
Subject to section 367 of this part, if an international application designating the United
States is withdrawn or considered withdrawn, either generally or as to the United States,
under the conditions of the treaty and the Regulations, before the applicant has complied
with the applicable requirements prescribed by section 371(c) of this part, the designation
of the United States shall have no effect after the date of withdrawal and shall be considered as not having been made, unless a claim for benefit of a prior filing date under section
365(c) of this section was made in a national application, or an international application
designating the United States, filed before the date of such withdrawal. However, such
withdrawn international application may serve as the basis for a claim of priority under
section 365 (a) and (b) of this part, if it designated a country other than the United States.
35 U.S.C. 367 Actions of other authorities: Review.
(a) Where a Receiving Office other than the Patent and Trademark Office has refused
to accord an international filing date to an international application designating the
United States or where it has held such application to be withdrawn either generally or
as to the United States, the applicant may request review of the matter by the Director,
on compliance with the requirements of and within the time limits specified by the treaty
and the Regulations. Such review may result in a determination that such application be
considered as pending in the national stage.
(b) The review under subsection (a) of this section, subject to the same requirements
and conditions, may also be requested in those instances where an international application designating the United States is considered withdrawn due to a finding by the International Bureau under article 12 (3) of the treaty.
35 U.S.C. 368 Secrecy of certain inventions; filing international applications in
foreign countries.
(a) International applications filed in the Patent and Trademark Office shall be subject
to the provisions of chapter 17.
(b) In accordance with article 27 (8) of the treaty, the filing of an international application in a country other than the United States on the invention made in this country
shall be considered to constitute the filing of an application in a foreign country within
the meaning of chapter 17, whether or not the United States is designated in that international application.
(c) If a license to file in a foreign country is refused or if an international application
is ordered to be kept secret and a permit refused, the Patent and Trademark Office when
acting as a Receiving Office, International Searching Authority, or International Preliminary Examining Authority, may not disclose the contents of such application to anyone
not authorized to receive such disclosure.
383

§ 371

Patent Act

CHAPTER 37—NATIONAL STAGE
35 U.S.C. 371 National stage: Commencement.
(a) Receipt from the International Bureau of copies of international applications with
any amendments to the claims, international search reports, and international preliminary
examination reports including any annexes thereto may be required in the case of international applications designating or electing the United States.
(b) Subject to subsection (f) of this section, the national stage shall commence with the
expiration of the applicable time limit under article 22 (1) or (2), or under article 39 (1)(a)
of the treaty.
(c) The applicant shall file in the Patent and Trademark Office—
(1) the national fee provided in section 41(a);
(2) a copy of the international application, unless not required under subsection (a)
of this section or already communicated by the International Bureau, and a translation
into the English language of the international application, if it was filed in another
language;
(3) amendments, if any, to the claims in the international application, made under
article 19 of the treaty, unless such amendments have been communicated to the Patent
and Trademark Office by the International Bureau, and a translation into the English
language if such amendments were made in another language;
(4) an oath or declaration of the inventor (or other person authorized under chapter
11) complying with the requirements of section 115 and with regulations prescribed
for oaths or declarations of applicants;
(5) a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.
(d) The requirement with respect to the national fee referred to in subsection (c)(1), the
translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of
the national stage or by such later time as may be fixed by the Director. The copy of the
international application referred to in subsection (c)(2) shall be submitted by the date of
the commencement of the national stage. Failure to comply with these requirements shall
be regarded as abandonment of the application by the parties thereof. The payment of a
surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if
these requirements are not met by the date of the commencement of the national stage.
The requirements of subsection (c)(3) of this section shall be complied with by the date
of the commencement of the national stage, and failure to do so shall be regarded as a
cancellation of the amendments to the claims in the international application made under
article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at
such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34 (2)(b) of the treaty.
(e) After an international application has entered the national stage, no patent may be
granted or refused thereon before the expiration of the applicable time limit under article
28 or article 41 of the treaty, except with the express consent of the applicant. The applicant may present amendments to the specification, claims, and drawings of the application after the national stage has commenced.
(f) At the express request of the applicant, the national stage of processing may be
commenced at any time at which the application is in order for such purpose and the
applicable requirements of subsection (c) of this section have been complied with.
384

Patent Act

§ 375

35 U.S.C. 372 National stage: Requirements and procedure.
(a) All questions of substance and, within the scope of the requirements of the treaty
and Regulations, procedure in an international application designating the United States
shall be determined as in the case of national applications regularly filed in the Patent
and Trademark Office.
(b) In case of international applications designating but not originating in, the United
States—
(1) the Director may cause to be reexamined questions relating to form and contents
of the application in accordance with the requirements of the treaty and the Regulations;
(2) the Director may cause the question of unity of invention to be reexamined under
section 121, within the scope of the requirements of the treaty and the Regulations;
and
(3) the Director may require a verification of the translation of the international application or any other document pertaining to the application if the application or other
document was filed in a language other than English.
35 U.S.C. 373 [Repealed]
35 U.S.C. 374 Publication of international application.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 374 (pre-AIA) for the law
otherwise applicable.]
The publication under the treaty defined in section 351(a), of an international application designating the United States shall be deemed a publication under section 122(b),
except as provided in section 154(d).
35 U.S.C. 374 (pre-AIA) Publication of international application.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 374 for the law otherwise applicable.]
The publication under the treaty defined in section 351(a), of an international application designating the United States shall be deemed a publication under section 122(b),
except as provided in sections 102(e) and 154(d).
35 U.S.C. 375 Patent issued on international application: Effect.
[Editor Note: Applicable to any patent application subject to the first inventor to file
provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 375 (pre-AIA) for the law
otherwise applicable.]
(a) A patent may be issued by the Director based on an international application designating the United States, in accordance with the provisions of this title. Such patent
shall have the force and effect of a patent issued on a national application filed under the
provisions of chapter 11.
(b) Where due to an incorrect translation the scope of a patent granted on an
international application designating the United States, which was not originally filed in
the English language, exceeds the scope of the international application in its original
385

§ 375 (pre-AIA)

Patent Act

language, a court of competent jurisdiction may retroactively limit the scope of the patent, by declaring it unenforceable to the extent that it exceeds the scope of the international application in its original language.
35 U.S.C. 375 (pre-AIA) Patent issued on international application: Effect.
[Editor Note: Not applicable to any patent application subject to the first inventor to
file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 375 for the law otherwise applicable.]
(a) A patent may be issued by the Director based on an international application designating the United States, in accordance with the provisions of this title. Subject to section 102(e), such patent shall have the force and effect of a patent issued on a national
application filed under the provisions of chapter 11.
(b) Where due to an incorrect translation the scope of a patent granted on an international application designating the United States, which was not originally filed in the
English language, exceeds the scope of the international application in its original language, a court of competent jurisdiction may retroactively limit the scope of the patent,
by declaring it unenforceable to the extent that it exceeds the scope of the international
application in its original language.
35 U.S.C. 376 Fees.
(a) The required payment of the international fee and the handling fee, which amounts
are specified in the Regulations, shall be paid in United States currency. The Patent and
Trademark Office shall charge a national fee as provided in section 41(a), and may also
charge the following fees:
(1) A transmittal fee (see section 361(d)).
(2) A search fee (see section 361(d)).
(3) A supplemental search fee (to be paid when required).
(4) A preliminary examination fee and any additional fees (see section 362(b)).
(5) Such other fees as established by the Director.
(b) The amounts of fees specified in subsection (a) of this section, except the international fee and the handling fee, shall be prescribed by the Director. He may refund any
sum paid by mistake or in excess of the fees so specified, or if required under the treaty
and the Regulations. The Director may also refund any part of the search fee, the national
fee, the preliminary examination fee and any additional fees, where he determines such
refund to be warranted.
UNCODIFIED LAW
AIA § 14 (Related to 35 U.S.C. 102, 103) Tax strategies deemed within the prior art.
(a) In General.—For purposes of evaluating an invention under section 102 or 103 of
title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability,
whether known or unknown at the time of the invention or application for patent, shall be
deemed insufficient to differentiate a claimed invention from the prior art.
(b) Definition.—For purposes of this section, the term ‘‘tax liability’’ refers to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction,
including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such
tax liability.
386

Patent Act

AIA § 18 (Related to 35 U.S.C. 321)

(c) Exclusions.—This section does not apply to that part of an invention that—
(1) is a method, apparatus, technology, computer program product, or system, that
is used solely for preparing a tax or information return or other tax filing, including
one that records, transmits, transfers, or organizes data related to such filing; or
(2) is a method, apparatus, technology, computer program product, or system used
solely for financial management, to the extent that it is severable from any tax strategy
or does not limit the use of any tax strategy by any taxpayer or tax advisor.
(d) Rule of Construction.—Nothing in this section shall be construed to imply that
other business methods are patentable or that other business method patents are valid.
(e) Effective Date; Applicability.—This section shall take effect on [Sept. 16, 2011]
and shall apply to any patent application that is pending on, or filed on or after, that date,
and to any patent that is issued on or after that date.
AIA § 18 (Related to 35 U.S.C. 321) Transitional program for covered business
method patents.
(a) Transitional Program.—
(1) Establishment.—Not later than Sept. 16, 2012, the Director shall issue regulations establishing and implementing a transitional post-grant review proceeding for
review of the validity of covered business method patents. The transitional proceeding
implemented pursuant to this subsection shall be regarded as, and shall employ the
standards and procedures of, a post-grant review under chapter 32 of title 35, United
States Code, subject to the following:
(A) 35 U.S.C. 321(c) and 35 U.S.C. 325(b), (e)(2), and (f), shall not apply to a
transitional proceeding.
(B) A person may not file a petition for a transitional proceeding with respect to a
covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with
infringement under that patent.
(C) A petitioner in a transitional proceeding who challenges the validity of 1 or
more claims in a covered business method patent on a ground raised under 35 U.S.C.
102 or 103 as in effect on March 15, 2013 (pre-AIA 35 U.S.C. 102 or 103), may
support such ground only on the basis of—
(i) prior art that is described by pre-AIA 35 U.S.C. 102(a); or
(ii) prior art that—
(I) discloses the invention more than 1 year before the date of the application
for patent in the United States; and
(II) would be described by pre-AIA 35 U.S.C. 102(a) if the disclosure had been
made by another before the invention thereof by the applicant for patent.
(D) The petitioner in a transitional proceeding that results in a final written decision under 35 U.S.C. 328(a), with respect to a claim in a covered business method
patent, or the petitioner’s real party in interest, may not assert, either in a civil action
arising in whole or in part under section 1338 of title 28, United States Code, or in a
proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the
petitioner raised during that transitional proceeding.
(E) The Director may institute a transitional proceeding only for a patent that is a
covered business method patent.
(b) Request for Stay.—
(1) In General.—If a party seeks a stay of a civil action alleging infringement of a
387

AIA § 33 (Related to 35 U.S.C. 101)

Patent Act

patent under section 281 of title 35, United States Code, relating to a transitional proceeding for that patent, the court shall decide whether to enter a stay based on—
(A) whether a stay, or the denial thereof, will simplify the issues in question and
streamline the trial;
(B) whether discovery is complete and whether a trial date has been set;
(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving
party or present a clear tactical advantage for the moving party; and
(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the
parties and on the court.
(2) Review.—A party may take an immediate interlocutory appeal from a district
court’s decision under paragraph (1). The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure consistent application of
established precedent, and such review may be de novo.
(c) ATM Exemption for Venue Purposes.—In an action for infringement under section 281 of title 35, United States Code, of a covered business method patent, an automated teller machine shall not be deemed to be a regular and established place of business
for purposes of section 1400(b) of title 28, United States Code.
(d) Definition.—
(1) In General.—For purposes of this section, the term ‘‘covered business method
patent’’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents
for technological inventions.
(2) Regulations.—To assist in implementing the transitional proceeding authorized
by this section, the Director shall issue regulations for determining whether a patent is
for a technological invention.
(e) Rule of Construction.—Nothing in this section shall be construed as amending or
interpreting categories of patent-eligible subject matter set forth under 35 U.S.C. 101.
AIA § 33 (Related to 35 U.S.C. 101)—Limitation on issuance of patents.
(a) Limitation.—Notwithstanding any other provision of law, no patent may issue on
a claim directed to or encompassing a human organism.
(b) Effective Date.—
(1) In General.—Subsection (a) shall apply to any application for patent that is
pending on, or filed on or after, the date of the enactment of this Act [Sept. 16, 2011].
(2) Prior Applications.—Subsection (a) shall not affect the validity of any patent
issued on an application to which paragraph (1) does not apply.

388

[JJ/JB Note: Until 2016, trade secrets were largely governed by state law. Then in May
2016, Congress passed the Defend Trade Secrets Act (“DTSA”), which created a new
Federal civil trade secrecy cause of action. The DTSA amended the Economic Espionage
Act of 1996 (“EEA”), the federal criminal statute that dealt with economic espionage
benefiting foreign governments, as well as the theft of trade secrets relating to products
sold in interstate or foreign commerce. Immediately below are the Defend Trade Secrets
Act of 2016, and the Economic Espionage Act as amended by the DTSA.
Since the DTSA does not preempt state trade secrecy protections, these resources are
followed by selected sources of state trade state secret law. Historically, states were guided
by the trade secret provisions in the Restatement of Torts. (The subject of trade secrets was
later moved to the Restatement (Third) of Unfair Competition.) In 1979, the Uniform Trade
Secrets Act (“UTSA”) was approved in an effort to codify the common law and preserve
the distinctions between trade secret and patent law. Most states, along with the District of
Columbia, Puerto Rico, and the U.S. Virgin Islands, have adopted their own variations of
the UTSA. Its full text is at https://www.wipo.int/edocs/lexdocs/laws/en/us/us034en.pdf.
Below the DTSA and EEA, we have included section 757 and comment b from the Restatement of Torts (1939), which provide key principles and definitions underlying state
trade secret law, and California’s Uniform Trade Secrets Act as an example of state adoptions of the UTSA, with notes indicating some of the significant variations from the UTSA
(as amended in 1985).]

DEFEND TRADE SECRETS ACT OF 2016
Public Law 114-153
An Act
To amend chapter 90 of title 18, United States Code, to provide Federal jurisdiction for
the theft of trade secrets, and for other purposes.
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,
SEC. 1. SHORT TITLE.
This Act may be cited as the “Defend Trade Secrets Act of 2016”.
SEC. 2. FEDERAL JURISDICTION FOR THEFT OF TRADE SECRETS.
(a) In General.—Section 1836 of title 18, United States Code, is amended by striking
subsection (b) and inserting the following:
“(b) Private Civil Actions.—
“(1) In general.—An owner of a trade secret that is misappropriated may bring a
civil action under this subsection if the trade secret is related to a product or service
used in, or intended for use in, interstate or foreign commerce.
“(2) Civil seizure.—
“(A) In general.—
“(i) Application.—Based on an affidavit or verified complaint satisfying the
requirements of this paragraph, the court may, upon ex parte application but only
in extraordinary circumstances, issue an order providing for the seizure of property necessary to prevent the propagation or dissemination of the trade secret that
is the subject of the action.
“(ii) Requirements for issuing order.—The court may not grant an application
389

SEC. 2

Defend Trade Secrets Act of 2016

under clause (i) unless the court finds that it clearly appears from specific facts
that—
“(I) an order issued pursuant to Rule 65 of the Federal Rules of Civil Procedure or another form of equitable relief would be inadequate to achieve the
purpose of this paragraph because the party to which the order would be issued
would evade, avoid, or otherwise not comply with such an order;
“(II) an immediate and irreparable injury will occur if such seizure is not
ordered;
“(III) the harm to the applicant of denying the application outweighs the
harm to the legitimate interests of the person against whom seizure would be
ordered of granting the application and substantially outweighs the harm to
any third parties who may be harmed by such seizure;
“(IV) the applicant is likely to succeed in showing that—
“(aa) the information is a trade secret; and
“(bb) the person against whom seizure would be ordered—
“(AA) misappropriated the trade secret of the applicant by improper
means; or
“(BB) conspired to use improper means to misappropriate the trade secret of the applicant;
“(V) the person against whom seizure would be ordered has actual possession of—
“(aa) the trade secret; and
“(bb) any property to be seized;
“(VI) the application describes with reasonable particularity the matter to be
seized and, to the extent reasonable under the circumstances, identifies the location where the matter is to be seized;
“(VII) the person against whom seizure would be ordered, or persons acting
in concert with such person, would destroy, move, hide, or otherwise make
such matter inaccessible to the court, if the applicant were to proceed on notice
to such person; and
“(VIII) the applicant has not publicized the requested seizure.
“(B) Elements of order.—If an order is issued under subparagraph (A), it shall—
“(i) set forth findings of fact and conclusions of law required for the order;
“(ii) provide for the narrowest seizure of property necessary to achieve the
purpose of this paragraph and direct that the seizure be conducted in a manner
that minimizes any interruption of the business operations of third parties and,
to the extent possible, does not interrupt the legitimate business operations of the
person accused of misappropriating the trade secret;
“(iii)(I) be accompanied by an order protecting the seized property from disclosure by prohibiting access by the applicant or the person against whom the
order is directed, and prohibiting any copies, in whole or in part, of the seized
property, to prevent undue damage to the party against whom the order has issued or others, until such parties have an opportunity to be heard in court; and
“(II) provide that if access is granted by the court to the applicant or the
person against whom the order is directed, the access shall be consistent with
subparagraph (D);
“(iv) provide guidance to the law enforcement officials executing the seizure
that clearly delineates the scope of the authority of the officials, including—
“(I) the hours during which the seizure may be executed; and
390

Defend Trade Secrets Act of 2016

SEC. 2

“(II) whether force may be used to access locked areas;
“(v) set a date for a hearing described in subparagraph (F) at the earliest possible time, and not later than 7 days after the order has issued, unless the party
against whom the order is directed and others harmed by the order consent to
another date for the hearing, except that a party against whom the order has issued or any person harmed by the order may move the court at any time to dissolve or modify the order after giving notice to the applicant who obtained the
order; and
“(vi) require the person obtaining the order to provide the security determined
adequate by the court for the payment of the damages that any person may be
entitled to recover as a result of a wrongful or excessive seizure or wrongful or
excessive attempted seizure under this paragraph.
“(C) Protection from publicity.—The court shall take appropriate action to protect the person against whom an order under this paragraph is directed from publicity, by or at the behest of the person obtaining the order, about such order and
any seizure under such order.
“(D) Materials in custody of court.—
“(i) In general.—Any materials seized under this paragraph shall be taken into
the custody of the court. The court shall secure the seized material from physical
and electronic access during the seizure and while in the custody of the court.
“(ii) Storage medium.—If the seized material includes a storage medium, or if
the seized material is stored on a storage medium, the court shall prohibit the
medium from being connected to a network or the Internet without the consent
of both parties, until the hearing required under subparagraph (B)(v) and described in subparagraph (F).
“(iii) Protection of confidentiality.—The court shall take appropriate measures
to protect the confidentiality of seized materials that are unrelated to the trade
secret information ordered seized pursuant to this paragraph unless the person
against whom the order is entered consents to disclosure of the material.
“(iv) Appointment of special master.—The court may appoint a special master
to locate and isolate all misappropriated trade secret information and to facilitate
the return of unrelated property and data to the person from whom the property
was seized. The special master appointed by the court shall agree to be bound by
a non-disclosure agreement approved by the court.
“(E) Service of order.—The court shall order that service of a copy of the order
under this paragraph, and the submissions of the applicant to obtain the order, shall
be made by a Federal law enforcement officer who, upon making service, shall
carry out the seizure under the order. The court may allow State or local law enforcement officials to participate, but may not permit the applicant or any agent of
the applicant to participate in the seizure. At the request of law enforcement officials, the court may allow a technical expert who is unaffiliated with the applicant
and who is bound by a court-approved non-disclosure agreement to participate in
the seizure if the court determines that the participation of the expert will aid the
efficient execution of and minimize the burden of the seizure.
“(F) Seizure hearing.—
“(i) Date.—A court that issues a seizure order shall hold a hearing on the date
set by the court under subparagraph (B)(v).
“(ii) Burden of proof.—At a hearing held under this subparagraph, the party
who obtained the order under subparagraph (A) shall have the burden to prove
391

SEC. 2

Defend Trade Secrets Act of 2016

the facts supporting the findings of fact and conclusions of law necessary to support the order. If the party fails to meet that burden, the seizure order shall be
dissolved or modified appropriately.
“(iii) Dissolution or modification of order.—A party against whom the order has
been issued or any person harmed by the order may move the court at any time to
dissolve or modify the order after giving notice to the party who obtained the order.
“(iv) Discovery time limits.—The court may make such orders modifying the
time limits for discovery under the Federal Rules of Civil Procedure as may be
necessary to prevent the frustration of the purposes of a hearing under this subparagraph.
“(G) Action for damage caused by wrongful seizure.—A person who suffers
damage by reason of a wrongful or excessive seizure under this paragraph has a
cause of action against the applicant for the order under which such seizure was
made, and shall be entitled to the same relief as is provided under section 34(d)(11)
of the Trademark Act of 1946 (15 U.S.C. 1116(d)(11)). The security posted with
the court under subparagraph (B)(vi) shall not limit the recovery of third parties
for damages.
“(H) Motion for encryption.—A party or a person who claims to have an interest
in the subject matter seized may make a motion at any time, which may be heard
ex parte, to encrypt any material seized or to be seized under this paragraph that is
stored on a storage medium. The motion shall include, when possible, the desired
encryption method.
“(3) Remedies.—In a civil action brought under this subsection with respect to the
misappropriation of a trade secret, a court may—
“(A) grant an injunction—
“(i) to prevent any actual or threatened misappropriation described in paragraph
(1) on such terms as the court deems reasonable, provided the order does not—
“(I) prevent a person from entering into an employment relationship, and
that conditions placed on such employment shall be based on evidence of
threatened misappropriation and not merely on the information the person
knows; or
“(II) otherwise conflict with an applicable State law prohibiting restraints on
the practice of a lawful profession, trade, or business;
“(ii) if determined appropriate by the court, requiring affirmative actions to be
taken to protect the trade secret; and
“(iii) in exceptional circumstances that render an injunction inequitable, that
conditions future use of the trade secret upon payment of a reasonable royalty for
no longer than the period of time for which such use could have been prohibited;
“(B) award—
“(i)(I) damages for actual loss caused by the misappropriation of the trade secret; and
“(II) damages for any unjust enrichment caused by the misappropriation of
the trade secret that is not addressed in computing damages for actual loss; or
“(ii) in lieu of damages measured by any other methods, the damages caused
by the misappropriation measured by imposition of liability for a reasonable royalty for the misappropriator’s unauthorized disclosure or use of the trade secret;
“(C) if the trade secret is willfully and maliciously misappropriated, award exemplary damages in an amount not more than 2 times the amount of the damages
awarded under subparagraph (B); and
392

Defend Trade Secrets Act of 2016

SEC. 2

“(D) if a claim of the misappropriation is made in bad faith, which may be established by circumstantial evidence, a motion to terminate an injunction is made
or opposed in bad faith, or the trade secret was willfully and maliciously misappropriated, award reasonable attorney’s fees to the prevailing party.
“(c) Jurisdiction.—The district courts of the United States shall have original jurisdiction of civil actions brought under this section.
“(d) Period of Limitations.—A civil action under subsection (b) may not be commenced later than 3 years after the date on which the misappropriation with respect to
which the action would relate is discovered or by the exercise of reasonable diligence
should have been discovered. For purposes of this subsection, a continuing misappropriation constitutes a single claim of misappropriation.”.
(b) Definitions.—Section 1839 of title 18, United States Code, is amended—
(1) in paragraph (3)—
(A) in subparagraph (B), by striking “the public” and inserting “another person
who can obtain economic value from the disclosure or use of the information”; and
(B) by striking “and” at the end;
(2) in paragraph (4), by striking the period at the end and inserting a semicolon; and
(3) by adding at the end the following:
“(5) the term ‘misappropriation’ means—
“(A) acquisition of a trade secret of another by a person who knows or has reason
to know that the trade secret was acquired by improper means; or
“(B) disclosure or use of a trade secret of another without express or implied
consent by a person who—
“(i) used improper means to acquire knowledge of the trade secret;
“(ii) at the time of disclosure or use, knew or had reason to know that the
knowledge of the trade secret was—
“(I) derived from or through a person who had used improper means to acquire the trade secret;
“(II) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or
“(III) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade
secret; or
“(iii) before a material change of the position of the person, knew or had reason
to know that—
“(I) the trade secret was a trade secret; and
“(II) knowledge of the trade secret had been acquired by accident or mistake;
“(6) the term ‘improper means’—
“(A) includes theft, bribery, misrepresentation, breach or inducement of a breach
of a duty to maintain secrecy, or espionage through electronic or other means; and
“(B) does not include reverse engineering, independent derivation, or any other
lawful means of acquisition; and
“(7) the term ‘Trademark Act of 1946’ means the Act entitled ‘An Act to provide
for the registration and protection of trademarks used in commerce, to carry out the
provisions of certain international conventions, and for other purposes, approved
July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the “Trademark Act
of 1946” or the “Lanham Act”)’.”.
(c) Exceptions to Prohibition.—Section 1833 of title 18, United States Code, is
393

SEC. 3

Defend Trade Secrets Act of 2016

amended, in the matter preceding paragraph (1), by inserting “or create a private right of
action for” after “prohibit”.
(d) Conforming Amendments.—
(1) The section heading for section 1836 of title 18, United States Code, is amended
to read as follows:
“Sec. 1836. Civil proceedings”.
(2) The table of sections for chapter 90 of title 18, United States Code, is amended
by striking the item relating to section 1836 and inserting the following:
“1836. Civil proceedings.”.
(e) Effective Date.—The amendments made by this section shall apply with respect to
any misappropriation of a trade secret (as defined in section 1839 of title 18, United
States Code, as amended by this section) for which any act occurs on or after the date of
the enactment of this Act.
(f) Rule of Construction.—Nothing in the amendments made by this section shall be
construed to modify the rule of construction under section 1838 of title 18, United States
Code, or to preempt any other provision of law.
(g) Applicability to Other Laws.—This section and the amendments made by this section shall not be construed to be a law pertaining to intellectual property for purposes of
any other Act of Congress.
SEC. 3. TRADE SECRET THEFT ENFORCEMENT.
(a) In General.—Chapter 90 of title 18, United States Code, is amended—
(1) in section 1832(b), by striking “$5,000,000” and inserting “the greater of
$5,000,000 or 3 times the value of the stolen trade secret to the organization, including
expenses for research and design and other costs of reproducing the trade secret that
the organization has thereby avoided”; and
(2) in section 1835—
(A) by striking “In any prosecution” and inserting the following:
“(a) In General.—In any prosecution”; and
(B) by adding at the end the following:
“(b) Rights of Trade Secret Owners.—The court may not authorize or direct the
disclosure of any information the owner asserts to be a trade secret unless the court
allows the owner the opportunity to file a submission under seal that describes the
interest of the owner in keeping the information confidential. No submission under
seal made under this subsection may be used in a prosecution under this chapter for
any purpose other than those set forth in this section, or otherwise required by law.
The provision of information relating to a trade secret to the United States or the court
in connection with a prosecution under this chapter shall not constitute a waiver of
trade secret protection, and the disclosure of information relating to a trade secret in
connection with a prosecution under this chapter shall not constitute a waiver of trade
secret protection unless the trade secret owner expressly consents to such waiver.”.
(b) RICO Predicate Offenses.—Section 1961(1) of title 18, United States Code, is
amended by inserting “sections 1831 and 1832 (relating to economic espionage and theft
of trade secrets),” before “section 1951”.

394

Defend Trade Secrets Act of 2016

SEC. 4

SEC. 4. REPORT ON THEFT OF TRADE SECRETS OCCURRING ABROAD.
(a) Definitions.—In this section:
(1) Director.—The term “Director” means the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and Trademark Office.
(2) Foreign instrumentality, etc.—The terms “foreign instrumentality”, “foreign
agent”, and “trade secret” have the meanings given those terms in section 1839 of title
18, United States Code.
(3) State.—The term “State” includes the District of Columbia and any commonwealth, territory, or possession of the United States.
(4) United states company.—The term “United States company” means an organization organized under the laws of the United States or a State or political subdivision
thereof.
(b) Reports.—Not later than 1 year after the date of enactment of this Act, and biannually thereafter, the Attorney General, in consultation with the Intellectual Property Enforcement Coordinator, the Director, and the heads of other appropriate agencies, shall
submit to the Committees on the Judiciary of the House of Representatives and the Senate, and make publicly available on the Web site of the Department of Justice and disseminate to the public through such other means as the Attorney General may identify,
a report on the following:
(1) The scope and breadth of the theft of the trade secrets of United States companies
occurring outside of the United States.
(2) The extent to which theft of trade secrets occurring outside of the United States
is sponsored by foreign governments, foreign instrumentalities, or foreign agents.
(3) The threat posed by theft of trade secrets occurring outside of the United States.
(4) The ability and limitations of trade secret owners to prevent the misappropriation of
trade secrets outside of the United States, to enforce any judgment against foreign entities
for theft of trade secrets, and to prevent imports based on theft of trade secrets overseas.
(5) A breakdown of the trade secret protections afforded United States companies
by each country that is a trading partner of the United States and enforcement efforts
available and undertaken in each such country, including a list identifying specific
countries where trade secret theft, laws, or enforcement is a significant problem for
United States companies.
(6) Instances of the Federal Government working with foreign countries to investigate, arrest, and prosecute entities and individuals involved in the theft of trade secrets
outside of the United States.
(7) Specific progress made under trade agreements and treaties, including any new
remedies enacted by foreign countries, to protect against theft of trade secrets of United
States companies outside of the United States.
(8) Recommendations of legislative and executive branch actions that may be undertaken to—
(A) reduce the threat of and economic impact caused by the theft of the trade secrets of United States companies occurring outside of the United States;
(B) educate United States companies regarding the threats to their trade secrets
when taken outside of the United States;
(C) provide assistance to United States companies to reduce the risk of loss of their
trade secrets when taken outside of the United States; and
(D) provide a mechanism for United States companies to confidentially or anonymously report the theft of trade secrets occurring outside of the United States.
395

SEC. 5

Defend Trade Secrets Act of 2016

SEC. 5. SENSE OF CONGRESS.
It is the sense of Congress that—
(1) trade secret theft occurs in the United States and around the world;
(2) trade secret theft, wherever it occurs, harms the companies that own the trade
secrets and the employees of the companies;
(3) chapter 90 of title 18, United States Code (commonly known as the “Economic
Espionage Act of 1996”), applies broadly to protect trade secrets from theft; and
(4) it is important when seizing information to balance the need to prevent or remedy
misappropriation with the need to avoid interrupting the—
(A) business of third parties; and
(B) legitimate interests of the party accused of wrongdoing.
SEC. 6. BEST PRACTICES.
(a) In General.—Not later than 2 years after the date of enactment of this Act, the
Federal Judicial Center, using existing resources, shall develop recommended best practices for—
(1) the seizure of information and media storing the information; and
(2) the securing of the information and media once seized.
(b) Updates.—The Federal Judicial Center shall update the recommended best practices developed under subsection (a) from time to time.
(c) Congressional Submissions.—The Federal Judicial Center shall provide a copy of
the recommendations developed under subsection (a), and any updates made under subsection (b), to the—
(1) Committee on the Judiciary of the Senate; and
(2) Committee on the Judiciary of the House of Representatives.
SEC. 7. IMMUNITY FROM LIABILITY FOR CONFIDENTIAL DISCLOSURE
OF A TRADE SECRET TO THE GOVERNMENT OR IN A COURT FILING.
(a) Amendment.—Section 1833 of title 18, United States Code, is amended—
(1) by striking “This chapter” and inserting “(a) In General.—This chapter”;
(2) in subsection (a)(2), as designated by paragraph (1), by striking “the reporting of
a suspected violation of law to any governmental entity of the United States, a State,
or a political subdivision of a State, if such entity has lawful authority with respect to
that violation” and inserting “the disclosure of a trade secret in accordance with subsection (b)”; and
(3) by adding at the end the following:
“(b) Immunity From Liability for Confidential Disclosure of a Trade Secret to the
Government or in a Court Filing.—
“(1) Immunity.—An individual shall not be held criminally or civilly liable under
any Federal or State trade secret law for the disclosure of a trade secret that—
“(A) is made—
“(i) in confidence to a Federal, State, or local government official, either directly
or indirectly, or to an attorney; and
“(ii) solely for the purpose of reporting or investigating a suspected violation of
law; or
“(B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.
396

Defend Trade Secrets Act of 2016

SEC. 7

“(2) Use of trade secret information in anti-retaliation lawsuit.—An individual who
files a lawsuit for retaliation by an employer for reporting a suspected violation of law
may disclose the trade secret to the attorney of the individual and use the trade secret
information in the court proceeding, if the individual—
“(A) files any document containing the trade secret under seal; and
“(B) does not disclose the trade secret, except pursuant to court order.
“(3) Notice.—
“(A) In general.—An employer shall provide notice of the immunity set forth in
this subsection in any contract or agreement with an employee that governs the use
of a trade secret or other confidential information.
“(B) Policy document.—An employer shall be considered to be in compliance with
the notice requirement in subparagraph (A) if the employer provides a cross-reference to a policy document provided to the employee that sets forth the employer’s
reporting policy for a suspected violation of law.
“(C) Non-compliance.—If an employer does not comply with the notice requirement in subparagraph (A), the employer may not be awarded exemplary damages or
attorney fees under subparagraph (C) or (D) of section 1836(b)(3) in an action
against an employee to whom notice was not provided.
“(D) Applicability.—This paragraph shall apply to contracts and agreements that
are entered into or updated after the date of enactment of this subsection.
“(4) Employee defined.—For purposes of this subsection, the term ‘employee’ includes any individual performing work as a contractor or consultant for an employer.
“(5) Rule of construction.—Except as expressly provided for under this subsection,
nothing in this subsection shall be construed to authorize, or limit liability for, an act
that is otherwise prohibited by law, such as the unlawful access of material by unauthorized means.”.
(b) Technical and Conforming Amendment.—Section 1838 of title 18, United States
Code, is amended by striking “This chapter” and inserting “Except as provided in section
1833(b), this chapter”.

ECONOMIC ESPIONAGE ACT OF 1996
(As amended by the Defend Trade Secrets Act of 2016)
Sec. 1831. Economic espionage
(a) IN GENERAL.—Whoever, intending or knowing that the offense will benefit any
foreign government, foreign instrumentality, or foreign agent, knowingly—
(1) steals, or without authorization appropriates, takes, carries away, or conceals, or
by fraud, artifice, or deception obtains a trade secret;
(2) without authorization copies, duplicates, sketches, draws, photographs, downloads, uploads, alters, destroys, photocopies, replicates, transmits, delivers, sends,
mails, communicates, or conveys a trade secret;
(3) receives, buys, or possesses a trade secret, knowing the same to have been stolen
or appropriated, obtained, or converted without authorization;
(4) attempts to commit any offense described in any of paragraphs (1) through (3);
or
(5) conspires with one or more other persons to commit any offense described in any
of paragraphs (1) through (3), and one or more of such persons do any act to effect the
object of the conspiracy,
397

Restatement (First) of Torts

shall, except as provided in subsection (b), be fined not more than $5,000,000 or imprisoned not more than 15 years, or both.
(b) ORGANIZATIONS.—
Any organization that commits any offense described in subsection (a) shall be fined
not more than the greater of $10,000,000 or 3 times the value of the stolen trade secret
to the organization, including expenses for research and design and other costs of reproducing the trade secret that the organization has thereby avoided.
Sec. 1832. Theft of trade secrets
(a) Whoever, with intent to convert a trade secret, that is related to a product or service
used in or intended for use in interstate or foreign commerce, to the economic benefit of
anyone other than the owner thereof, and intending or knowing that the offense will,
injure any owner of that trade secret, knowingly—
(1) steals, or without authorization appropriates, takes, carries away, or conceals, or
by fraud, artifice, or deception obtains such information;
(2) without authorization copies, duplicates, sketches, draws, photographs, downloads, uploads, alters, destroys, photocopies, replicates, transmits, delivers, sends,
mails, communicates, or conveys such information;
(3) receives, buys, or possesses such information, knowing the same to have been
stolen or appropriated, obtained, or converted without authorization;
(4) attempts to commit any offense described in paragraphs (1) through (3); or
(5) conspires with one or more other persons to commit any offense described in
paragraphs (1) through (3), and one or more of such persons do any act to effect the
object of the conspiracy,
shall, except as provided in subsection (b), be fined under this title or imprisoned not
more than 10 years, or both.
(b) Any organization that commits any offense described in subsection (a) shall be
fined not more than the greater of $5,000,000 or 3 times the value of the stolen trade
secret to the organization, including expenses for research and design and other costs of
reproducing the trade secret that the organization has thereby avoided.
Sec. 1833. Exceptions to prohibitions
(a) IN GENERAL.—This chapter does not prohibit or create a private right of action for—
(1) any otherwise lawful activity conducted by a governmental entity of the United
States, a State, or a political subdivision of a State; or
(2) the disclosure of a trade secret in accordance with subsection (b).
(b) IMMUNITY FROM LIABILITY FOR CONFIDENTIAL DISCLOSURE OF A TRADE
SECRET TO THE GOVERNMENT OR IN A COURT FILING.—
(1) IMMUNITY.—An individual shall not be held criminally or civilly liable under
any Federal or State trade secret law for the disclosure of a trade secret that—
(A) is made—
(i) in confidence to a Federal, State, or local government official, either directly
or indirectly, or to an attorney; and
(ii) solely for the purpose of reporting or investigating a suspected violation of
law; or
(B) is made in a complaint or other document filed in a lawsuit or other proceeding,
if such filing is made under seal.
(2) USE OF TRADE SECRET INFORMATION IN ANTI-RETALIATION LAWSUIT.—An
398

Economic Espionage Act of 1996

Sec. 1835.

individual who files a lawsuit for retaliation by an employer for reporting a suspected
violation of law may disclose the trade secret to the attorney of the individual and use
the trade secret information in the court proceeding, if the individual—
(A) files any document containing the trade secret under seal; and
(B) does not disclose the trade secret, except pursuant to court order.
(3) NOTICE.—
(A) In general.—
An employer shall provide notice of the immunity set forth in this subsection in
any contract or agreement with an employee that governs the use of a trade secret
or other confidential information.
(B) Policy document.—
An employer shall be considered to be in compliance with the notice requirement
in subparagraph (A) if the employer provides a cross-reference to a policy document provided to the employee that sets forth the employer’s reporting policy for
a suspected violation of law.
(C) Non-compliance.—
If an employer does not comply with the notice requirement in subparagraph
(A), the employer may not be awarded exemplary damages or attorney fees under
subparagraph (C) or (D) of section 1836(b)(3) in an action against an employee to
whom notice was not provided.
(D) Applicability.—
This paragraph shall apply to contracts and agreements that are entered into or
updated after the date of enactment of this subsection.
(4) EMPLOYEE DEFINED.—
For purposes of this subsection, the term “employee” includes any individual performing work as a contractor or consultant for an employer.
(5) RULE OF CONSTRUCTION.—
Except as expressly provided for under this subsection, nothing in this subsection
shall be construed to authorize, or limit liability for, an act that is otherwise prohibited by law, such as the unlawful access of material by unauthorized means.
Sec. 1834. Criminal forfeiture
Forfeiture, destruction, and restitution relating to this chapter shall be subject to section
2323 [18 U.S.C. § 2323], to the extent provided in that section, in addition to any other
similar remedies provided by law.
Sec. 1835. Orders to preserve confidentiality
(a) IN GENERAL.—
In any prosecution or other proceeding under this chapter, the court shall enter such
orders and take such other action as may be necessary and appropriate to preserve the
confidentiality of trade secrets, consistent with the requirements of the Federal Rules
of Criminal and Civil Procedure, the Federal Rules of Evidence, and all other applicable laws. An interlocutory appeal by the United States shall lie from a decision or order
of a district court authorizing or directing the disclosure of any trade secret.
(b) RIGHTS OF TRADE SECRET OWNERS.—
The court may not authorize or direct the disclosure of any information the owner
asserts to be a trade secret unless the court allows the owner the opportunity to file a
submission under seal that describes the interest of the owner in keeping the information
399

Restatement (First) of Torts

confidential. No submission under seal made under this subsection may be used in a
prosecution under this chapter for any purpose other than those set forth in this section,
or otherwise required by law. The provision of information relating to a trade secret to
the United States or the court in connection with a prosecution under this chapter shall
not constitute a waiver of trade secret protection, and the disclosure of information relating to a trade secret in connection with a prosecution under this chapter shall not
constitute a waiver of trade secret protection unless the trade secret owner expressly
consents to such waiver.
Sec. 1836. Civil proceedings to enjoin violations
(a) The Attorney General may, in a civil action, obtain appropriate injunctive relief
against any violation of this chapter.
(b) PRIVATE CIVIL ACTIONS.—
(1) IN GENERAL.—
An owner of a trade secret that is misappropriated may bring a civil action under
this subsection if the trade secret is related to a product or service used in, or intended
for use in, interstate or foreign commerce.
(2) CIVIL SEIZURE.—
(A) In general.—
(i) Application.—
Based on an affidavit or verified complaint satisfying the requirements of this
paragraph, the court may, upon ex parte application but only in extraordinary
circumstances, issue an order providing for the seizure of property necessary to
prevent the propagation or dissemination of the trade secret that is the subject of
the action.
(ii) Requirements for issuing order.—The court may not grant an application
under clause (i) unless the court finds that it clearly appears from specific facts that—
(I) an order issued pursuant to Rule 65 of the Federal Rules of Civil Procedure
or another form of equitable relief would be inadequate to achieve the purpose
of this paragraph because the party to which the order would be issued would
evade, avoid, or otherwise not comply with such an order;
(II) an immediate and irreparable injury will occur if such seizure is not ordered;
(III) the harm to the applicant of denying the application outweighs the harm
to the legitimate interests of the person against whom seizure would be ordered
of granting the application and substantially outweighs the harm to any third
parties who may be harmed by such seizure;
(IV) the applicant is likely to succeed in showing that—
(aa) the information is a trade secret; and
(bb) the person against whom seizure would be ordered—
(AA) misappropriated the trade secret of the applicant by improper means; or
(BB) conspired to use improper means to misappropriate the trade secret
of the applicant;
(V) the person against whom seizure would be ordered has actual possession of—
(aa) the trade secret; and
(bb) any property to be seized;
(VI) the application describes with reasonable particularity the matter to be
seized and, to the extent reasonable under the circumstances, identifies the location
400

Economic Espionage Act of 1996

Sec. 1836.

where the matter is to be seized;
(VII) the person against whom seizure would be ordered, or persons acting in
concert with such person, would destroy, move, hide, or otherwise make such
matter inaccessible to the court, if the applicant were to proceed on notice to
such person; and
(VIII) the applicant has not publicized the requested seizure.
(B) Elements of order.—If an order is issued under subparagraph (A), it shall—
(i) set forth findings of fact and conclusions of law required for the order;
(ii) provide for the narrowest seizure of property necessary to achieve the purpose of this paragraph and direct that the seizure be conducted in a manner that
minimizes any interruption of the business operations of third parties and, to the
extent possible, does not interrupt the legitimate business operations of the person
accused of misappropriating the trade secret;
(iii)(I) be accompanied by an order protecting the seized property from disclosure by prohibiting access by the applicant or the person against whom the order
is directed, and prohibiting any copies, in whole or in part, of the seized property,
to prevent undue damage to the party against whom the order has issued or others,
until such parties have an opportunity to be heard in court; and
(II) provide that if access is granted by the court to the applicant or the person
against whom the order is directed, the access shall be consistent with subparagraph (D);
(iv) provide guidance to the law enforcement officials executing the seizure that
clearly delineates the scope of the authority of the officials, including—
(I) the hours during which the seizure may be executed; and
(II) whether force may be used to access locked areas;
(v) set a date for a hearing described in subparagraph (F) at the earliest possible
time, and not later than 7 days after the order has issued, unless the party against
whom the order is directed and others harmed by the order consent to another date
for the hearing, except that a party against whom the order has issued or any person
harmed by the order may move the court at any time to dissolve or modify the
order after giving notice to the applicant who obtained the order; and
(vi) require the person obtaining the order to provide the security determined
adequate by the court for the payment of the damages that any person may be
entitled to recover as a result of a wrongful or excessive seizure or wrongful or
excessive attempted seizure under this paragraph.
(C) Protection from publicity.—
The court shall take appropriate action to protect the person against whom an
order under this paragraph is directed from publicity, by or at the behest of the
person obtaining the order, about such order and any seizure under such order.
(D) Materials in custody of court.—
(i) In general.—
Any materials seized under this paragraph shall be taken into the custody of
the court. The court shall secure the seized material from physical and electronic
access during the seizure and while in the custody of the court.
(ii) Storage medium.—
If the seized material includes a storage medium, or if the seized material is
stored on a storage medium, the court shall prohibit the medium from being connected to a network or the Internet without the consent of both parties, until the
hearing required under subparagraph (B)(v) and described in subparagraph (F).
401

Restatement (First) of Torts

(iii) Protection of confidentiality.—
The court shall take appropriate measures to protect the confidentiality of
seized materials that are unrelated to the trade secret information ordered seized
pursuant to this paragraph unless the person against whom the order is entered
consents to disclosure of the material.
(iv) Appointment of special master.—
The court may appoint a special master to locate and isolate all misappropriated trade secret information and to facilitate the return of unrelated property and
data to the person from whom the property was seized. The special master appointed by the court shall agree to be bound by a non-disclosure agreement approved by the court.
(E) Service of order.—
The court shall order that service of a copy of the order under this paragraph,
and the submissions of the applicant to obtain the order, shall be made by a Federal
law enforcement officer who, upon making service, shall carry out the seizure under the order. The court may allow State or local law enforcement officials to participate, but may not permit the applicant or any agent of the applicant to
participate in the seizure. At the request of law enforcement officials, the court
may allow a technical expert who is unaffiliated with the applicant and who is
bound by a court-approved non-disclosure agreement to participate in the seizure
if the court determines that the participation of the expert will aid the efficient
execution of and minimize the burden of the seizure.
(F) Seizure hearing.—
(i) Date.—
A court that issues a seizure order shall hold a hearing on the date set by the
court under subparagraph (B)(v).
(ii) Burden of proof.—
At a hearing held under this subparagraph, the party who obtained the order
under subparagraph (A) shall have the burden to prove the facts supporting the
findings of fact and conclusions of law necessary to support the order. If the
party fails to meet that burden, the seizure order shall be dissolved or modified
appropriately.
(iii) Dissolution or modification of order.—
A party against whom the order has been issued or any person harmed by the
order may move the court at any time to dissolve or modify the order after giving
notice to the party who obtained the order.
(iv) Discovery time limits.—
The court may make such orders modifying the time limits for discovery under
the Federal Rules of Civil Procedure as may be necessary to prevent the frustration of the purposes of a hearing under this subparagraph.
(G) Action for damage caused by wrongful seizure.—
A person who suffers damage by reason of a wrongful or excessive seizure under
this paragraph has a cause of action against the applicant for the order under which
such seizure was made, and shall be entitled to the same relief as is provided under
section 34(d)(11) of the Trademark Act of 1946 (15 U.S.C. 1116(d)(11)). The security posted with the court under subparagraph (B)(vi) shall not limit the recovery
of third parties for damages.
(H) Motion for encryption.—
A party or a person who claims to have an interest in the subject matter seized
402

Economic Espionage Act of 1996

Sec. 1837.

may make a motion at any time, which may be heard ex parte, to encrypt any
material seized or to be seized under this paragraph that is stored on a storage
medium. The motion shall include, when possible, the desired encryption method.
(3) REMEDIES.—In a civil action brought under this subsection with respect to the
misappropriation of a trade secret, a court may—
(A) grant an injunction—
(i) to prevent any actual or threatened misappropriation described in paragraph
(1) on such terms as the court deems reasonable, provided the order does not—
(I) prevent a person from entering into an employment relationship, and that
conditions placed on such employment shall be based on evidence of threatened
misappropriation and not merely on the information the person knows; or
(II) otherwise conflict with an applicable State law prohibiting restraints on
the practice of a lawful profession, trade, or business;
(ii) if determined appropriate by the court, requiring affirmative actions to be
taken to protect the trade secret; and
(iii) in exceptional circumstances that render an injunction inequitable, that conditions future use of the trade secret upon payment of a reasonable royalty for no
longer than the period of time for which such use could have been prohibited;
(B) award—
(i)(I) damages for actual loss caused by the misappropriation of the trade secret;
and
(II) damages for any unjust enrichment caused by the misappropriation of the
trade secret that is not addressed in computing damages for actual loss; or
(ii) in lieu of damages measured by any other methods, the damages caused by
the misappropriation measured by imposition of liability for a reasonable royalty
for the misappropriator’s unauthorized disclosure or use of the trade secret;
(C) if the trade secret is willfully and maliciously misappropriated, award exemplary damages in an amount not more than 2 times the amount of the damages
awarded under subparagraph (B); and
(D) if a claim of the misappropriation is made in bad faith, which may be established by circumstantial evidence, a motion to terminate an injunction is made or
opposed in bad faith, or the trade secret was willfully and maliciously misappropriated, award reasonable attorney’s fees to the prevailing party.
(c) JURISDICTION.—
The district courts of the United States shall have original jurisdiction of civil actions
brought under this section.
(d) PERIOD OF LIMITATIONS.—
A civil action under subsection (b) may not be commenced later than 3 years after
the date on which the misappropriation with respect to which the action would relate
is discovered or by the exercise of reasonable diligence should have been discovered.
For purposes of this subsection, a continuing misappropriation constitutes a single
claim of misappropriation.
Sec. 1837. Applicability to conduct outside the United States
This chapter also applies to conduct occurring outside the United States if—
(1) the offender is a natural person who is a citizen or permanent resident alien of
the United States, or an organization organized under the laws of the United States or
a State or political subdivision thereof; or
403

Restatement (First) of Torts

(2) an act in furtherance of the offense was committed in the United States.
Sec. 1838. Construction with other laws
Except as provided in section 1833(b), this chapter shall not be construed to preempt or
displace any other remedies, whether civil or criminal, provided by United States Federal,
State, commonwealth, possession, or territory law for the misappropriation of a trade secret, or to affect the otherwise lawful disclosure of information by any Government employee under section 552 of title 5 (commonly known as the Freedom of Information Act).
Sec. 1839. Definitions
As used in this chapter—
(1) the term “foreign instrumentality” means any agency, bureau, ministry, component, institution, association, or any legal, commercial, or business organization, corporation, firm, or entity that is substantially owned, controlled, sponsored,
commanded, managed, or dominated by a foreign government;
(2) the term “foreign agent” means any officer, employee, proxy, servant, delegate,
or representative of a foreign government;
(3) the term “trade secret” means all forms and types of financial, business, scientific,
technical, economic, or engineering information, including patterns, plans, compilations,
program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored,
compiled, or memorialized physically, electronically, graphically, photographically, or
in writing if—
(A) the owner thereof has taken reasonable measures to keep such information
secret; and
(B) the information derives independent economic value, actual or potential, from
not being generally known to, and not being readily ascertainable through proper
means by, another person who can obtain economic value from the disclosure or use
of the information;
(4) the term “owner”, with respect to a trade secret, means the person or entity in whom
or in which rightful legal or equitable title to, or license in, the trade secret is reposed;
(5) the term “misappropriation” means—
(A) acquisition of a trade secret of another by a person who knows or has reason
to know that the trade secret was acquired by improper means; or
(B) disclosure or use of a trade secret of another without express or implied consent
by a person who—
(i) used improper means to acquire knowledge of the trade secret;
(ii) at the time of disclosure or use, knew or had reason to know that the
knowledge of the trade secret was—
(I) derived from or through a person who had used improper means to acquire
the trade secret;
(II) acquired under circumstances giving rise to a duty to maintain the secrecy
of the trade secret or limit the use of the trade secret; or
(III) derived from or through a person who owed a duty to the person seeking
relief to maintain the secrecy of the trade secret or limit the use of the trade
secret; or
(iii) before a material change of the position of the person, knew or had reason
to know that—
404

Economic Espionage Act of 1996

Sec. 1839.

(I) the trade secret was a trade secret; and
(II) knowledge of the trade secret had been acquired by accident or mistake;
(6) the term “improper means”—
(A) includes theft, bribery, misrepresentation, breach or inducement of a breach of
a duty to maintain secrecy, or espionage through electronic or other means; and
(B) does not include reverse engineering, independent derivation, or any other lawful means of acquisition; and
(7) the term “Trademark Act of 1946” means the Act entitled “An Act to provide for
the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes,” approved July 5,
1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the ‘Trademark Act of 1946’
or the ‘Lanham Act’).

RESTATEMENT (FIRST) OF TORTS (1939)
§ 757. LIABILITY FOR DISCLOSURE OR USE OF ANOTHER’S TRADE
SECRET—GENERAL PRINCIPLE.
One who discloses or uses another’s trade secret, without a privilege to do so, is liable
to the other if
(a) he discovered the secret by improper means, or
(b) his disclosure or use constitutes a breach of confidence reposed in him by the
other in disclosing the secret to him, or
(c) he learned the secret from a third person with notice of the facts that it was a
secret and that the third person discovered it by improper means or that the third person’s disclosure of it was otherwise a breach of his duty to the other, or
(d) he learned the secret with notice of the facts that it was a secret and that its disclosure was made to him by mistake.
[…]
Comment b. Definition of trade secret. A trade secret may consist of any formula, pattern,
device or compilation of information which is used in one’s business, and which gives him
an opportunity to obtain an advantage over competitors who do not know or use it. It may
be a formula for a chemical compound, a process of manufacturing, treating or preserving
materials, a pattern for a machine or other device, or a list of customers. It differs from
other secret information in a business (see § 759) in that it is not simply information as to
single or ephemeral events in the conduct of the business, as, for example, the amount or
other terms of a secret bid for a contract or the salary of certain employees, or the security
investments made or contemplated, or the date fixed for the announcement of a new policy
or for bringing out a new model or the like. A trade secret is a process or device for continuous use in the operation of the business. Generally it relates to the production of goods,
as, for example, a machine or formula for the production of an article. It may, however,
relate to the sale of goods or to other operations in the business, such as a code for determining discounts, rebates or other concessions in a price list or catalogue, or a list of specialized customers, or a method of bookkeeping or other office management.
Secrecy. The subject matter of a trade secret must be secret. Matters of public knowledge
or of general knowledge in an industry cannot be appropriated by one as his secret. Matters which are completely disclosed by the goods which one markets cannot be his secret.
Substantially, a trade secret is known only in the particular business in which it is used.
405

Restatement (First) of Torts

It is not requisite that only the proprietor of the business know it. He may, without losing
his protection, communicate it to employees involved in its use. He may likewise communicate it to others pledged to secrecy. Others may also know of it independently, as,
for example, when they have discovered the process or formula by independent invention
and are keeping it secret. Nevertheless, a substantial element of secrecy must exist, so
that, except by the use of improper means, there would be difficulty in acquiring the
information. An exact definition of a trade secret is not possible. Some factors to be
considered in determining whether given information is one’s trade secret are:
(1) the extent to which the information is known outside of his business;
(2) the extent to which it is known by employees and others involved in his business;
(3) the extent of measures taken by him to guard the secrecy of the information;
(4) the value of the information to him and to his competitors;
(5) the amount of effort or money expended by him in developing the information;
(6) the ease or difficulty with which the information could be properly acquired or
duplicated by others.

CALIFORNIA’S UNIFORM TRADE SECRETS ACT
3426. This title may be cited as the Uniform Trade Secrets Act.
3426.1. As used in this title, unless the context requires otherwise:
(a) “Improper means” includes theft, bribery, misrepresentation, breach or inducement
of a breach of a duty to maintain secrecy, or espionage through electronic or other means.
Reverse engineering or independent derivation alone shall not be considered improper
means.1
(b) “Misappropriation” means:
(1) Acquisition of a trade secret of another by a person who knows or has reason to
know that the trade secret was acquired by improper means; or
(2) Disclosure or use of a trade secret of another without express or implied consent
by a person who:
(A) Used improper means to acquire knowledge of the trade secret; or
(B) At the time of disclosure or use, knew or had reason to know that his or her
knowledge of the trade secret was:
(i) Derived from or through a person who had utilized improper means to acquire
it;
(ii) Acquired under circumstances giving rise to a duty to maintain its secrecy or
limit its use; or
(iii) Derived from or through a person who owed a duty to the person seeking
relief to maintain its secrecy or limit its use; or (C) Before a material change of his
or her position, knew or had reason to know that it was a trade secret and that
knowledge of it had been acquired by accident or mistake.
(c) “Person” means a natural person, corporation, business trust, estate, trust, partnership, limited liability company, association, joint venture, government, governmental
1 The UTSA’s definition of “improper means” does not include this second sentence specifically excluding

reverse engineering and independent derivation from the list of improper means. However, both the Comments to the UTSA and trade secret case law have made clear that reverse engineering and independent
derivation are not misappropriations of a trade secret; thus the actual difference between the two provisions
may be minimal.
406

California’s Uniform Trade Secrets Act

3426.7.

subdivision or agency, or any other legal or commercial entity.
(d) “Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:
(1) Derives independent economic value, actual or potential, from not being generally known to the public or to other persons2 who can obtain economic value from its
disclosure or use; and (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
3426.2.3 (a) Actual or threatened misappropriation may be enjoined. Upon application
to the court, an injunction shall be terminated when the trade secret has ceased to exist,
but the injunction may be continued for an additional period of time in order to eliminate
commercial advantage that otherwise would be derived from the misappropriation.
(b) If the court determines that it would be unreasonable to prohibit future use, an
injunction may condition future use upon payment of a reasonable royalty for no longer
than the period of time the use could have been prohibited.
(c) In appropriate circumstances, affirmative acts to protect a trade secret may be compelled by court order.
3426.3. (a) A complainant may recover damages for the actual loss caused by misappropriation. A complainant also may recover for the unjust enrichment caused by misappropriation that is not taken into account in computing damages for actual loss.
(b) If neither damages nor unjust enrichment caused by misappropriation are provable,
the court may order payment of a reasonable royalty for no longer than the period of time
the use could have been prohibited.
(c) If willful and malicious misappropriation exists, the court may award exemplary
damages in an amount not exceeding twice any award made under subdivision (a) or (b).
3426.4. If a claim of misappropriation is made in bad faith, a motion to terminate an
injunction is made or resisted in bad faith, or willful and malicious misappropriation
exists, the court may award reasonable attorney’s fees and costs to the prevailing party.
Recoverable costs hereunder shall include a reasonable sum to cover the services of expert witnesses, who are not regular employees of any party, actually incurred and reasonably necessary in either, or both, preparation for trial or arbitration, or during trial or
arbitration, of the case by the prevailing party.
3426.5. In an action under this title, a court shall preserve the secrecy of an alleged
trade secret by reasonable means, which may include granting protective orders in connection with discovery proceedings, holding in-camera hearings, sealing the records of
the action, and ordering any person involved in the litigation not to disclose an alleged
trade secret without prior court approval.
3426.6. An action for misappropriation must be brought within three years after the
misappropriation is discovered or by the exercise of reasonable diligence should have
been discovered. For the purposes of this section, a continuing misappropriation constitutes a single claim.
3426.7. (a) Except as otherwise expressly provided, this title does not supersede any
statute relating to misappropriation of a trade secret, or any statute otherwise regulating
2 This clause departs from the UTSA’s definition, which reads “not being generally known to, and not being

readily ascertainable by proper means by, other persons…” (emphasis added).
3 California’s law modifies the UTSA’s provisions on injunctions, damages, and attorney’s fees.

407

3426.8.

California’s Uniform Trade Secrets Act

trade secrets.4
(b) This title does not affect (1) contractual remedies, whether or not based upon misappropriation of a trade secret, (2) other civil remedies that are not based upon misappropriation of a trade secret, or (3) criminal remedies, whether or not based upon
misappropriation of a trade secret.
(c) This title does not affect the disclosure of a record by a state or local agency under
the California Public Records Act (Chapter 3.5 (commencing with Section 6250) of Division 7 of Title 1 of the Government Code). Any determination as to whether the disclosure of a record under the California Public Records Act constitutes a
misappropriation of a trade secret and the rights and remedies with respect thereto shall
be made pursuant to the law in effect before the operative date of this title.
3426.8. This title shall be applied and construed to effectuate its general purpose to
make uniform the law with respect to the subject of this title among states enacting it.
3426.9. If any provision of this title or its application to any person or circumstances
is held invalid, the invalidity does not affect other provisions or applications of the title
which can be given effect without the invalid provision or application, and to this end
the provisions of this title are severable.
3426.10. This title does not apply to misappropriation occurring prior to January 1,
1985. If a continuing misappropriation otherwise covered by this title began before January 1, 1985, this title does not apply to the part of the misappropriation occurring before
that date. This title does apply to the part of the misappropriation occurring on or after
that date unless the appropriation was not a misappropriation under the law in effect
before the operative date of this title.
3426.11. Notwithstanding subdivision (b) of Section 47, in any legislative or judicial
proceeding, or in any other official proceeding authorized by law, or in the initiation or
course of any other proceeding authorized by law and reviewable pursuant to Chapter 2
(commencing with Section 1084) of Title 1 of Part 3 of the Code of Civil Procedure, the
voluntary, intentional disclosure of trade secret information, unauthorized by its owner,
to a competitor or potential competitor of the owner of the trade secret information or the
agent or representative of such a competitor or potential competitor is not privileged and
is not a privileged communication for purposes of Part 2 (commencing with Section 43)
of Division 1.
This section does not in any manner limit, restrict, impair, or otherwise modify either
the application of the other subdivisions of Section 47 to the conduct to which this section
applies or the court’s authority to control, order, or permit access to evidence in any case
before it.
Nothing in this section shall be construed to limit, restrict, or otherwise impair, the
capacity of persons employed by public entities to report improper government activity,
as defined in Section 10542 of the Government Code, or the capacity of private persons
to report improper activities of a private business.

4 This provision is different from the UTSA’s version, which reads: “…this [Act] displaces conflicting tort,

restitutionary, and other law of this State providing civil remedies for misappropriation of a trade secret.”
408

[JB/JJ Note: For the following international treaties, the useful editorial table of contents and
notes provided by the WIPO editors have been retained and are gratefully acknowledged.]

Berne Convention for the
Protection of Literary and Artistic Works
of September 9, 1886, completed at Paris on May 4, 1896,
revised at Berlin on November 13, 1908, completed at Berne on March 20, 1914,
revised at Rome on June 2, 1928, at Brussels on June 26, 1948,
at Stockholm on July 14, 1967, and at Paris on July 24, 1971,
and amended on September 28, 1979
TABLE OF CONTENTS1
Article 1:
Establishment of a Union
Article 2:
Protected Works: 1. ”Literary and artistic works”; 2. Possible requirement
of fixation; 3. Derivative works; 4. Official texts; 5. Collections; 6. Obligation to protect; beneficiaries of protection; 7. Works of applied art and industrial designs; 8. News
Article 2bis: Possible Limitation of Protection of Certain Works: 1. Certain speeches;
2. Certain uses of lectures and addresses; 3. Right to make collections of
such works
Article 3:
Criteria of Eligibility for Protection: 1. Nationality of author; place of publication of work; 2. Residence of author; 3. ”Published” works; 4. ”Simultaneously published” works
Article 4:
Criteria of Eligibility for Protection of Cinematographic Works, Works of
Architecture and Certain Artistic Works
Article 5:
Rights Guaranteed: 1. and 2. Outside the country of origin; 3. In the country
of origin; 4. ”Country of origin”
Article 6:
Possible Restriction of Protection in Respect of Certain Works of Nationals
of Certain Countries Outside the Union: 1. In the country of the first publication and in other countries; 2. No retroactivity; 3. Notice
Article 6bis: Moral Rights: 1. To claim authorship; to object to certain modifications and
other derogatory actions; 2. After the author’s death; 3. Means of redress
Article 7:
Term of Protection: 1. Generally; 2. For cinematographic works; 3. For
anonymous and pseudonymous works; 4. For photographic works and
works of applied art; 5. Starting date of computation; 6. Longer terms;
7. Shorter terms; 8. Applicable law; “comparison” of terms
Article 7bis: Term of Protection for Works of Joint Authorship
Article 8:
Right of Translation
Article 9:
Right of Reproduction: 1. Generally; 2. Possible exceptions; 3. Sound and
visual recordings
Article 10:
Certain Free Uses of Works: 1. Quotations; 2. Illustrations for teaching;
3. Indication of source and author
Article 10bis: Further Possible Free Uses of Works: 1. Of certain articles and broadcast
works; 2. Of works seen or heard in connection with current events
Article 11:
Certain Rights in Dramatic and Musical Works: 1. Right of public performance and of communication to the public of a performance; 2. In respect
of translations
Article 11bis: Broadcasting and Related Rights: 1. Broadcasting and other wireless communications, public communication of broadcast by wire or rebroadcast,
1 This Table of Contents is added for the convenience of the reader. It does not appear in the original (English)

text of the Convention.
409

Berne Convention for the

public communication of broadcast by loudspeaker or analogous instruments; 2. Compulsory licenses; 3. Recording; ephemeral recordings
Article 11ter: Certain Rights in Literary Works: 1. Right of public recitation and of communication to the public of a recitation; 2. In respect of translations
Article 12:
Right of Adaptation, Arrangement and Other Alteration
Article 13:
Possible Limitation of the Right of Recording of Musical Works and Any
Words Pertaining Thereto: 1. Compulsory licenses; 2. Transitory measures;
3. Seizure on importation of copies made without the author’s permission
Article 14:
Cinematographic and Related Rights: 1. Cinematographic adaptation and
reproduction; distribution; public performance and public communication
by wire of works thus adapted or reproduced; 2. Adaptation of cinematographic productions; 3. No compulsory licenses
Article 14bis: Special Provisions Concerning Cinematographic Works: 1. Assimilation to
“original” works; 2. Ownership; limitation of certain rights of certain contributors; 3. Certain other contributors
Article 14ter: “Droit de suite” in Works of Art and Manuscripts: 1. Right to an interest in
resales; 2. Applicable law; 3. Procedure
Article 15:
Right to Enforce Protected Rights: 1. Where author’s name is indicated or
where pseudonym leaves no doubt as to author’s identity; 2. In the case of
cinematographic works; 3. In the case of anonymous or pseudonymous
works; 4. In the case of certain unpublished works of unknown authorship
Article 16:
Infringing Copies: 1. Seizure; 2. Seizure on importation; 3. Applicable law
Article 17:
Possibility of Control of Circulation, Presentation and Exhibition of Works
Article 18:
Works Existing on Convention’s Entry Into Force: 1. Protectable where
protection not yet expired in country of origin; 2. Non-protectable where
protection already expired in country where it is claimed; 3. Application of
these principles; 4. Special cases
Article 19:
Protection Greater than Resulting from Convention
Article 20:
Special Agreements Among Countries of the Union
Article 21:
Special Provisions Regarding Developing Countries: 1. Reference to Appendix; 2. Appendix part of Act
Article 22:
Assembly: 1. Constitution and composition; 2. Tasks; 3. Quorum, voting,
observers; 4. Convocation; 5. Rules of procedure
Article 23:
Executive Committee: 1. Constitution; 2. Composition; 3. Number of members; 4. Geographical distribution; special agreements; 5. Term, limits of reeligibility, rules of election; 6. Tasks; 7. Convocation; 8. Quorum, voting;
9. Observers; 10. Rules of procedure
Article 24:
International Bureau: 1. Tasks in general, Director General; 2. General information; 3. Periodical; 4. Information to countries; 5. Studies and services; 6. Participation in meetings; 7. Conferences of revision; 8. Other
tasks
Article 25:
Finances: 1. Budget; 2. Coordination with other Unions; 3. Resources;
4. Contributions; possible extension of previous budget; 5. Fees and
charges; 6. Working capital fund; 7. Advances by host Government; 8. Auditing of accounts
Article 26:
Amendments: 1. Provisions susceptible of amendment by the Assembly;
proposals 2. Adoption; 3. Entry into force
Article 27:
Revision: 1. Objective; 2. Conferences; 3. Adoption
Article 28:
Acceptance and Entry Into Force of Act for Countries of the Union: 1. Ratification, accession; possibility of excluding certain provisions; withdrawal
of exclusion; 2. Entry into force of Articles 1 to 21 and Appendix; 3. Entry
into force of Articles 22 to 38
Article 29:
Acceptance and Entry Into Force for Countries Outside the Union: 1. Accession; 2. Entry into force
410

Protection of Literary and Artistic Works

Article 29bis: Effect of Acceptance of Act for the Purposes of Article 14(2) of the WIPO
Convention
Article 30:
Reservations: 1. Limits of possibility of making reservations; 2. Earlier
reservations; reservation as to the right of translation; withdrawal of
reservation
Article 31:
Applicability to Certain Territories: 1. Declaration; 2. Withdrawal of declaration; 3. Effective date; 4. Acceptance of factual situations not implied
Article 32:
Applicability of this Act and of Earlier Acts: 1. As between countries already members of the Union; 2. As between a country becoming a member
of the Union and other countries members of the Union; 3. Applicability of
the Appendix in Certain Relations
Article 33:
Disputes: 1. Jurisdiction of the International Court of Justice; 2. Reservation
as to such jurisdiction; 3. Withdrawal of reservation
Article 34:
Closing of Certain Earlier Provisions: 1. Of earlier Acts; 2. Of the Protocol
to the Stockholm Act
Article 35:
Duration of the Convention; Denunciation: 1. Unlimited duration; 2. Possibility of denunciation; 3. Effective date of denunciation; 4. Moratorium on
denunciation
Article 36:
Application of the Convention: 1. Obligation to adopt the necessary
measures; 2. Time from which obligation exists
Article 37:
Final Clauses: 1. Languages of the Act; 2. Signature; 3. Certified copies;
4. Registration; 5. Notifications
Article 38:
Transitory Provisions: 1. Exercise of the “five-year privilege”; 2. Bureau of
the Union, Director of the Bureau; 3. Succession of Bureau of the Union
APPENDIX
SPECIAL PROVISIONS REGARDING DEVELOPING COUNTRIES
Article I:
Faculties Open to Developing Countries:
1. Availability of certain faculties; declaration; 2. Duration of effect of declaration; 3. Cessation of developing country status; 4. Existing stocks of copies; 5. Declarations concerning certain territories; 6. Limits of reciprocity
Article II:
Limitations on the Right of Translation:
1. Licenses grantable by competent authority; 2 to 4. Conditions allowing
the grant of such licenses; 5. Purposes for which licenses may be granted;
6. Termination of licenses; 7. Works composed mainly of illustrations;
8. Works withdrawn from circulation; 9. Licenses for broadcasting
organizations
Article III:
Limitation on the Right of Reproduction:
1. Licenses grantable by competent authority; 2 to 5. Conditions allowing
the grant of such licenses; 6. Termination of licenses; 7. Works to which
this Article applies
Article IV:
Provisions Common to Licenses Under Articles II and III:
1 and 2. Procedure; 3. Indication of author and title of work; 4. Exportation
of copies; 5. Notice; 6. Compensation
Article V:
Alternative Possibility for Limitation of the Rights of Translation:
1. Regime provided for under the 1886 and 1896 Acts; 2. No possibility of
change to regime under Article II; 3. Time limit for choosing the alternative
possibility
Article VI:
Possibilities of applying, or admitting the application of, certain provisions
of the Appendix before becoming bound by it:
1. Declaration; Depository and effective date of declaration

411

Article 1

Berne Convention for the

The countries of the Union, being equally animated by the desire to protect, in as effective
and uniform a manner as possible, the rights of authors in their literary and artistic works,
Recognizing the importance of the work of the Revision Conference held at Stockholm
in 1967,
Have resolved to revise the Act adopted by the Stockholm Conference, while maintaining without change Articles 1 to 20 and 22 to 26 of that Act.
Consequently, the undersigned Plenipotentiaries, having presented their full powers,
recognized as in good and due form, have agreed as follows:
Article 1
Establishment of a Union2
The countries to which this Convention applies constitute a Union for the protection
of the rights of authors in their literary and artistic works.
Article 2
Protected Works:
1. ”Literary and artistic works”; 2. Possible requirement of fixation; 3. Derivative
works; 4. Official texts; 5. Collections; 6. Obligation to protect; beneficiaries of
protection; 7. Works of applied art and industrial designs; 8. News
(1) The expression “literary and artistic works” shall include every production in the
literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other
works of the same nature; dramatic or dramatico-musical works; choreographic works
and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to
cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process
analogous to photography; works of applied art; illustrations, maps, plans, sketches and
three-dimensional works relative to geography, topography, architecture or science.
(2) It shall, however, be a matter for legislation in the countries of the Union to prescribe that works in general or any specified categories of works shall not be protected
unless they have been fixed in some material form.
(3) Translations, adaptations, arrangements of music and other alterations of a literary
or artistic work shall be protected as original works without prejudice to the copyright in
the original work.
(4) It shall be a matter for legislation in the countries of the Union to determine the
protection to be granted to official texts of a legislative, administrative and legal nature,
and to official translations of such texts.
(5) Collections of literary or artistic works such as encyclopaedias and anthologies
which, by reason of the selection and arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to the copyright in each of the
works forming part of such collections.
(6) The works mentioned in this Article shall enjoy protection in all countries of the Union. This protection shall operate for the benefit of the author and his successors in title.
(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for
2

Each Article and the Appendix have been given titles to facilitate their identification. There are no titles in
the signed (English) text.
412

Protection of Literary and Artistic Works

Article 3

legislation in the countries of the Union to determine the extent of the application of their
laws to works of applied art and industrial designs and models, as well as the conditions
under which such works, designs and models shall be protected. Works protected in the
country of origin solely as designs and models shall be entitled in another country of the
Union only to such special protection as is granted in that country to designs and models;
however, if no such special protection is granted in that country, such works shall be
protected as artistic works.
(8) The protection of this Convention shall not apply to news of the day or to miscellaneous facts having the character of mere items of press information.
Article 2bis
Possible Limitation of Protection of Certain Works:
1. Certain speeches; 2. Certain uses of lectures and addresses;
3. Right to make collections of such works
(1) It shall be a matter for legislation in the countries of the Union to exclude, wholly
or in part, from the protection provided by the preceding Article political speeches and
speeches delivered in the course of legal proceedings.
(2) It shall also be a matter for legislation in the countries of the Union to determine the
conditions under which lectures, addresses and other works of the same nature which are
delivered in public may be reproduced by the press, broadcast, communicated to the public by wire and made the subject of public communication as envisaged in Article 11bis(1)
of this Convention, when such use is justified by the informatory purpose.
(3) Nevertheless, the author shall enjoy the exclusive right of making a collection of
his works mentioned in the preceding paragraphs.
Article 3
Criteria of Eligibility for Protection:
1. Nationality of author; place of publication of work; 2. Residence of author;
3. ”Published” works; 4. ”Simultaneously published” works
(1) The protection of this Convention shall apply to:
(a) authors who are nationals of one of the countries of the Union, for their works,
whether published or not;
(b) authors who are not nationals of one of the countries of the Union, for their works
first published in one of those countries, or simultaneously in a country outside the
Union and in a country of the Union.
(2) Authors who are not nationals of one of the countries of the Union but who have
their habitual residence in one of them shall, for the purposes of this Convention, be
assimilated to nationals of that country.
(3) The expression “published works” means works published with the consent of their
authors, whatever may be the means of manufacture of the copies, provided that the availability of such copies has been such as to satisfy the reasonable requirements of the public,
having regard to the nature of the work. The performance of a dramatic, dramatico-musical,
cinematographic or musical work, the public recitation of a literary work, the communication by wire or the broadcasting of literary or artistic works, the exhibition of a work of art
and the construction of a work of architecture shall not constitute publication.
(4) A work shall be considered as having been published simultaneously in several
countries if it has been published in two or more countries within thirty days of its first
publication.
413

Article 4

Berne Convention for the

Article 4
Criteria of Eligibility for Protection of Cinematographic
Works, Works of Architecture and Certain Artistic Works
The protection of this Convention shall apply, even if the conditions of Article 3 are
not fulfilled, to:
(a) authors of cinematographic works the maker of which has his headquarters or
habitual residence in one of the countries of the Union;
(b) authors of works of architecture erected in a country of the Union or of other artistic
works incorporated in a building or other structure located in a country of the Union.
Article 5
Rights Guaranteed:
1. and 2. Outside the country of origin;
3. In the country of origin; 4. ”Country of origin”
(1) Authors shall enjoy, in respect of works for which they are protected under this
Convention, in countries of the Union other than the country of origin, the rights which
their respective laws do now or may hereafter grant to their nationals, as well as the rights
specially granted by this Convention.
(2) The enjoyment and the exercise of these rights shall not be subject to any formality;
such enjoyment and such exercise shall be independent of the existence of protection in
the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author
to protect his rights, shall be governed exclusively by the laws of the country where
protection is claimed.
(3) Protection in the country of origin is governed by domestic law. However, when the
author is not a national of the country of origin of the work for which he is protected under
this Convention, he shall enjoy in that country the same rights as national authors.
(4) The country of origin shall be considered to be:
(a) in the case of works first published in a country of the Union, that country; in the
case of works published simultaneously in several countries of the Union which grant
different terms of protection, the country whose legislation grants the shortest term of
protection;
(b) in the case of works published simultaneously in a country outside the Union and
in a country of the Union, the latter country;
(c) in the case of unpublished works or of works first published in a country outside
the Union, without simultaneous publication in a country of the Union, the country of
the Union of which the author is a national, provided that:
(i) when these are cinematographic works the maker of which has his headquarters
or his habitual residence in a country of the Union, the country of origin shall be that
country, and
(ii) when these are works of architecture erected in a country of the Union or other
artistic works incorporated in a building or other structure located in a country of the
Union, the country of origin shall be that country.

414

Protection of Literary and Artistic Works

Article 7

Article 6
Possible Restriction of Protection in Respect of Certain
Works of Nationals of Certain Countries Outside the Union:
1. In the country of the first publication and in other countries;
2. No retroactivity; 3. Notice
(1) Where any country outside the Union fails to protect in an adequate manner the works
of authors who are nationals of one of the countries of the Union, the latter country may
restrict the protection given to the works of authors who are, at the date of the first publication thereof, nationals of the other country and are not habitually resident in one of the
countries of the Union. If the country of first publication avails itself of this right, the other
countries of the Union shall not be required to grant to works thus subjected to special
treatment a wider protection than that granted to them in the country of first publication.
(2) No restrictions introduced by virtue of the preceding paragraph shall affect the
rights which an author may have acquired in respect of a work published in a country of
the Union before such restrictions were put into force.
(3) The countries of the Union which restrict the grant of copyright in accordance with
this Article shall give notice thereof to the Director General of the World Intellectual Property Organization (hereinafter designated as “the Director General”) by a written declaration specifying the countries in regard to which protection is restricted, and the restrictions
to which rights of authors who are nationals of those countries are subjected. The Director
General shall immediately communicate this declaration to all the countries of the Union.
Article 6bis
Moral Rights:
1. To claim authorship; to object to certain modifications and other
derogatory actions; 2. After the author’s death; 3. Means of redress
(1) Independently of the author’s economic rights, and even after the transfer of the
said rights, the author shall have the right to claim authorship of the work and to object
to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.
(2) The rights granted to the author in accordance with the preceding paragraph shall,
after his death, be maintained, at least until the expiry of the economic rights, and shall
be exercisable by the persons or institutions authorized by the legislation of the country
where protection is claimed. However, those countries whose legislation, at the moment
of their ratification of or accession to this Act, does not provide for the protection after
the death of the author of all the rights set out in the preceding paragraph may provide
that some of these rights may, after his death, cease to be maintained.
(3) The means of redress for safeguarding the rights granted by this Article shall be
governed by the legislation of the country where protection is claimed.
Article 7
Term of Protection:
1. Generally; 2. For cinematographic works; 3. For anonymous and
pseudonymous works; 4. For photographic works and works of applied art;
5. Starting date of computation; 6. Longer terms; 7. Shorter terms;
8. Applicable law; “comparison” of terms
(1) The term of protection granted by this Convention shall be the life of the author
and fifty years after his death.
415

Article 7bis

Berne Convention for the

(2) However, in the case of cinematographic works, the countries of the Union may
provide that the term of protection shall expire fifty years after the work has been made
available to the public with the consent of the author, or, failing such an event within
fifty years from the making of such a work, fifty years after the making.
(3) In the case of anonymous or pseudonymous works, the term of protection granted
by this Convention shall expire fifty years after the work has been lawfully made available to the public. However, when the pseudonym adopted by the author leaves no doubt
as to his identity, the term of protection shall be that provided in paragraph (1). If the
author of an anonymous or pseudonymous work discloses his identity during the abovementioned period, the term of protection applicable shall be that provided in paragraph
(1). The countries of the Union shall not be required to protect anonymous or pseudonymous works in respect of which it is reasonable to presume that their author has been
dead for fifty years.
(4) It shall be a matter for legislation in the countries of the Union to determine the
term of protection of photographic works and that of works of applied art in so far as
they are protected as artistic works; however, this term shall last at least until the end of
a period of twenty-five years from the making of such a work.
(5) The term of protection subsequent to the death of the author and the terms provided
by paragraphs (2), (3) and (4) shall run from the date of death or of the event referred to
in those paragraphs, but such terms shall always be deemed to begin on the first of January of the year following the death or such event.
(6) The countries of the Union may grant a term of protection in excess of those provided by the preceding paragraphs.
(7) Those countries of the Union bound by the Rome Act of this Convention which
grant, in their national legislation in force at the time of signature of the present Act,
shorter terms of protection than those provided for in the preceding paragraphs shall have
the right to maintain such terms when ratifying or acceding to the present Act.
(8) In any case, the term shall be governed by the legislation of the country where
protection is claimed; however, unless the legislation of that country otherwise provides,
the term shall not exceed the term fixed in the country of origin of the work.
Article 7bis
Term of Protection for Works of Joint Authorship
The provisions of the preceding Article shall also apply in the case of a work of joint
authorship, provided that the terms measured from the death of the author shall be calculated from the death of the last surviving author.
Article 8
Right of Translation
Authors of literary and artistic works protected by this Convention shall enjoy the exclusive right of making and of authorizing the translation of their works throughout the
term of protection of their rights in the original works.
Article 9
Right of Reproduction:
1. Generally; 2. Possible exceptions; 3. Sound and visual recordings
(1) Authors of literary and artistic works protected by this Convention shall have the
exclusive right of authorizing the reproduction of these works, in any manner or form.
416

Protection of Literary and Artistic Works

Article 11

(2) It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not
conflict with a normal exploitation of the work and does not unreasonably prejudice the
legitimate interests of the author.
(3) Any sound or visual recording shall be considered as a reproduction for the purposes of this Convention.
Article 10
Certain Free Uses of Works:
1. Quotations; 2. Illustrations for teaching; 3. Indication of source and author
(1) It shall be permissible to make quotations from a work which has already been
lawfully made available to the public, provided that their making is compatible with fair
practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.
(2) It shall be a matter for legislation in the countries of the Union, and for special
agreements existing or to be concluded between them, to permit the utilization, to the
extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization
is compatible with fair practice.
(3) Where use is made of works in accordance with the preceding paragraphs of this Article, mention shall be made of the source, and of the name of the author if it appears thereon.
Article 10bis
Further Possible Free Uses of Works:
1. Of certain articles and broadcast works; 2. Of works seen or
heard in connection with current events
(1) It shall be a matter for legislation in the countries of the Union to permit the reproduction by the press, the broadcasting or the communication to the public by wire of
articles published in newspapers or periodicals on current economic, political or religious
topics, and of broadcast works of the same character, in cases in which the reproduction,
broadcasting or such communication thereof is not expressly reserved. Nevertheless, the
source must always be clearly indicated; the legal consequences of a breach of this obligation shall be determined by the legislation of the country where protection is claimed.
(2) It shall also be a matter for legislation in the countries of the Union to determine
the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire, literary
or artistic works seen or heard in the course of the event may, to the extent justified by
the informatory purpose, be reproduced and made available to the public.
Article 11
Certain Rights in Dramatic and Musical Works:
1. Right of public performance and of communication to
the public of a performance; 2. In respect of translations
(1) Authors of dramatic, dramatico-musical and musical works shall enjoy the exclusive right of authorizing:
(i) the public performance of their works, including such public performance by
any means or process;
(ii) any communication to the public of the performance of their works.
417

Article 11bis

Berne Convention for the

(2) Authors of dramatic or dramatico-musical works shall enjoy, during the full term
of their rights in the original works, the same rights with respect to translations thereof.
Article 11bis
Broadcasting and Related Rights:
1. Broadcasting and other wireless communications, public communication of broadcast by wire or rebroadcast, public communication of broadcast by loudspeaker or
analogous instruments; 2. Compulsory licenses; 3. Recording; ephemeral recordings
(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing:
(i) the broadcasting of their works or the communication thereof to the public by
any other means of wireless diffusion of signs, sounds or images;
(ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than
the original one;
(iii) the public communication by loudspeaker or any other analogous instrument
transmitting, by signs, sounds or images, the broadcast of the work.
(2) It shall be a matter for legislation in the countries of the Union to determine the
conditions under which the rights mentioned in the preceding paragraph may be exercised, but these conditions shall apply only in the countries where they have been prescribed. They shall not in any circumstances be prejudicial to the moral rights of the
author, nor to his right to obtain equitable remuneration which, in the absence of agreement, shall be fixed by competent authority.
(3) In the absence of any contrary stipulation, permission granted in accordance with
paragraph (1) of this Article shall not imply permission to record, by means of instruments
recording sounds or images, the work broadcast. It shall, however, be a matter for legislation in the countries of the Union to determine the regulations for ephemeral recordings
made by a broadcasting organization by means of its own facilities and used for its own
broadcasts. The preservation of these recordings in official archives may, on the ground of
their exceptional documentary character, be authorized by such legislation.
Article 11ter
Certain Rights in Literary Works:
1. Right of public recitation and of communication to
the public of a recitation; 2. In respect of translations
(1) Authors of literary works shall enjoy the exclusive right of authorizing:
(i) the public recitation of their works, including such public recitation by any
means or process;
(ii) any communication to the public of the recitation of their works.
(2) Authors of literary works shall enjoy, during the full term of their rights in the
original works, the same rights with respect to translations thereof.
Article 12
Right of Adaptation, Arrangement and Other Alteration
Authors of literary or artistic works shall enjoy the exclusive right of authorizing adaptations, arrangements and other alterations of their works.

418

Protection of Literary and Artistic Works

Article 14bis

Article 13
Possible Limitation of the Right of Recording of
Musical Works and Any Words Pertaining Thereto:
1. Compulsory licenses; 2. Transitory measures; 3. Seizure on
importation of copies made without the author’s permission
(1) Each country of the Union may impose for itself reservations and conditions on the
exclusive right granted to the author of a musical work and to the author of any words,
the recording of which together with the musical work has already been authorized by
the latter, to authorize the sound recording of that musical work, together with such
words, if any; but all such reservations and conditions shall apply only in the countries
which have imposed them and shall not, in any circumstances, be prejudicial to the rights
of these authors to obtain equitable remuneration which, in the absence of agreement,
shall be fixed by competent authority.
(2) Recordings of musical works made in a country of the Union in accordance with
Article 13(3) of the Conventions signed at Rome on June 2, 1928, and at Brussels on June
26, 1948, may be reproduced in that country without the permission of the author of the
musical work until a date two years after that country becomes bound by this Act.
(3) Recordings made in accordance with paragraphs (1) and (2) of this Article and
imported without permission from the parties concerned into a country where they are
treated as infringing recordings shall be liable to seizure.
Article 14
Cinematographic and Related Rights:
1. Cinematographic adaptation and reproduction; distribution; public performance
and public communication by wire of works thus adapted or reproduced;
2. Adaptation of cinematographic productions; 3. No compulsory licenses
(1) Authors of literary or artistic works shall have the exclusive right of authorizing:
(i) the cinematographic adaptation and reproduction of these works, and the distribution of the works thus adapted or reproduced;
(ii) the public performance and communication to the public by wire of the works
thus adapted or reproduced.
(2) The adaptation into any other artistic form of a cinematographic production derived
from literary or artistic works shall, without prejudice to the authorization of the author
of the cinematographic production, remain subject to the authorization of the authors of
the original works.
(3) The provisions of Article 13(1) shall not apply.
Article 14bis
Special Provisions Concerning Cinematographic Works:
1. Assimilation to “original” works; 2. Ownership; limitation of
certain rights of certain contributors; 3. Certain other contributors
(1) Without prejudice to the copyright in any work which may have been adapted or
reproduced, a cinematographic work shall be protected as an original work. The owner
of copyright in a cinematographic work shall enjoy the same rights as the author of an
original work, including the rights referred to in the preceding Article.
(2)(a) Ownership of copyright in a cinematographic work shall be a matter for legislation in the country where protection is claimed.
(b) However, in the countries of the Union which, by legislation, include among the
419

Article 14ter

Berne Convention for the

owners of copyright in a cinematographic work authors who have brought contributions to the making of the work, such authors, if they have undertaken to bring such
contributions, may not, in the absence of any contrary or special stipulation, object to
the reproduction, distribution, public performance, communication to the public by
wire, broadcasting or any other communication to the public, or to the subtitling or
dubbing of texts, of the work.
(c) The question whether or not the form of the undertaking referred to above should,
for the application of the preceding subparagraph (b), be in a written agreement or a
written act of the same effect shall be a matter for the legislation of the country where
the maker of the cinematographic work has his headquarters or habitual residence.
However, it shall be a matter for the legislation of the country of the Union where protection is claimed to provide that the said undertaking shall be in a written agreement
or a written act of the same effect. The countries whose legislation so provides shall
notify the Director General by means of a written declaration, which will be immediately communicated by him to all the other countries of the Union.
(d) By “contrary or special stipulation” is meant any restrictive condition which is
relevant to the aforesaid undertaking.
(3) Unless the national legislation provides to the contrary, the provisions of paragraph
(2)(b) above shall not be applicable to authors of scenarios, dialogues and musical works
created for the making of the cinematographic work, or to the principal director thereof.
However, those countries of the Union whose legislation does not contain rules providing
for the application of the said paragraph (2)(b) to such director shall notify the Director
General by means of a written declaration, which will be immediately communicated by
him to all the other countries of the Union.
Article 14ter
“Droit de suite” in Works of Art and Manuscripts:
1. Right to an interest in resales; 2. Applicable law; 3. Procedure
(1) The author, or after his death the persons or institutions authorized by national
legislation, shall, with respect to original works of art and original manuscripts of writers
and composers, enjoy the inalienable right to an interest in any sale of the work subsequent to the first transfer by the author of the work.
(2) The protection provided by the preceding paragraph may be claimed in a country
of the Union only if legislation in the country to which the author belongs so permits,
and to the extent permitted by the country where this protection is claimed.
(3) The procedure for collection and the amounts shall be matters for determination by
national legislation.
Article 15
Right to Enforce Protected Rights:
1. Where author’s name is indicated or where pseudonym leaves no doubt as to author’s identity; 2. In the case of cinematographic works; 3. In the case of anonymous
or pseudonymous works; 4. In the case of certain unpublished works of unknown
authorship
(1) In order that the author of a literary or artistic work protected by this Convention
shall, in the absence of proof to the contrary, be regarded as such, and consequently be
entitled to institute infringement proceedings in the countries of the Union, it shall be
sufficient for his name to appear on the work in the usual manner. This paragraph shall
420

Protection of Literary and Artistic Works

Article 18

be applicable even if this name is a pseudonym, where the pseudonym adopted by the
author leaves no doubt as to his identity.
(2) The person or body corporate whose name appears on a cinematographic work in
the usual manner shall, in the absence of proof to the contrary, be presumed to be the
maker of the said work.
(3) In the case of anonymous and pseudonymous works, other than those referred to in
paragraph (1) above, the publisher whose name appears on the work shall, in the absence
of proof to the contrary, be deemed to represent the author, and in this capacity he shall
be entitled to protect and enforce the author’s rights. The provisions of this paragraph
shall cease to apply when the author reveals his identity and establishes his claim to
authorship of the work.
(4)(a) In the case of unpublished works where the identity of the author is unknown,
but where there is every ground to presume that he is a national of a country of the Union,
it shall be a matter for legislation in that country to designate the competent authority
which shall represent the author and shall be entitled to protect and enforce his rights in
the countries of the Union.
(b) Countries of the Union which make such designation under the terms of this
provision shall notify the Director General by means of a written declaration giving
full information concerning the authority thus designated. The Director General shall
at once communicate this declaration to all other countries of the Union.
Article 16
Infringing Copies:
1. Seizure; 2. Seizure on importation; 3. Applicable law
(1) Infringing copies of a work shall be liable to seizure in any country of the Union
where the work enjoys legal protection.
(2) The provisions of the preceding paragraph shall also apply to reproductions coming
from a country where the work is not protected, or has ceased to be protected.
(3) The seizure shall take place in accordance with the legislation of each country.
Article 17
Possibility of Control of Circulation, Presentation and Exhibition of Works
The provisions of this Convention cannot in any way affect the right of the Government of each country of the Union to permit, to control, or to prohibit, by legislation or
regulation, the circulation, presentation, or exhibition of any work or production in regard to which the competent authority may find it necessary to exercise that right.
Article 18
Works Existing on Convention’s Entry Into Force:
1. Protectable where protection not yet expired in country of origin;
2. Non-protectable where protection already expired in country where it is claimed;
3. Application of these principles; 4. Special cases
(1) This Convention shall apply to all works which, at the moment of its coming into
force, have not yet fallen into the public domain in the country of origin through the
expiry of the term of protection.
(2) If, however, through the expiry of the term of protection which was previously
granted, a work has fallen into the public domain of the country where protection is
claimed, that work shall not be protected anew.
421

Article 19

Berne Convention for the

(3) The application of this principle shall be subject to any provisions contained in
special conventions to that effect existing or to be concluded between countries of the
Union. In the absence of such provisions, the respective countries shall determine, each
in so far as it is concerned, the conditions of application of this principle.
(4) The preceding provisions shall also apply in the case of new accessions to the Union and to cases in which protection is extended by the application of Article 7 or by the
abandonment of reservations.
Article 19
Protection Greater than Resulting from Convention
The provisions of this Convention shall not preclude the making of a claim to the benefit of any greater protection which may be granted by legislation in a country of the
Union.
Article 20
Special Agreements Among Countries of the Union
The Governments of the countries of the Union reserve the right to enter into special
agreements among themselves, in so far as such agreements grant to authors more extensive rights than those granted by the Convention, or contain other provisions not contrary
to this Convention. The provisions of existing agreements which satisfy these conditions
shall remain applicable.
Article 21
Special Provisions Regarding Developing Countries:
1. Reference to Appendix; 2. Appendix part of Act
(1) Special provisions regarding developing countries are included in the Appendix.
(2) Subject to the provisions of Article 28(1)(b), the Appendix forms an integral part
of this Act.
Article 22
Assembly:
1. Constitution and composition; 2. Tasks; 3. Quorum,
voting, observers; 4. Convocation; 5. Rules of procedure
(1)(a) The Union shall have an Assembly consisting of those countries of the Union
which are bound by Articles 22 to 26.
(b) The Government of each country shall be represented by one delegate, who may
be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be borne by the Government which has
appointed it.
(2)(a) The Assembly shall:
(i) deal with all matters concerning the maintenance and development of the Union
and the implementation of this Convention;
(ii) give directions concerning the preparation for conferences of revision to the
International Bureau of Intellectual Property (hereinafter designated as “the International Bureau”) referred to in the Convention Establishing the World Intellectual
Property Organization (hereinafter designated as “the Organization”), due account
being taken of any comments made by those countries of the Union which are not
bound by Articles 22 to 26;
422

Protection of Literary and Artistic Works

Article 22

(iii) review and approve the reports and activities of the Director General of the
Organization concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;
(iv) elect the members of the Executive Committee of the Assembly;
(v) review and approve the reports and activities of its Executive Committee, and
give instructions to such Committee;
(vi) determine the program and adopt the biennial budget of the Union, and approve its final accounts;
(vii) adopt the financial regulations of the Union;
(viii) establish such committees of experts and working groups as may be necessary for the work of the Union;
(ix) determine which countries not members of the Union and which intergovernmental and international non-governmental organizations shall be admitted to its
meetings as observers;
(x) adopt amendments to Articles 22 to 26;
(xi) take any other appropriate action designed to further the objectives of the Union;
(xii) exercise such other functions as are appropriate under this Convention;
(xiii) subject to its acceptance, exercise such rights as are given to it in the Convention establishing the Organization.
(b) With respect to matters which are of interest also to other Unions administered
by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(3)(a) Each country member of the Assembly shall have one vote.
(b) One-half of the countries members of the Assembly shall constitute a quorum.
(c) Notwithstanding the provisions of subparagraph (b), if, in any session, the number of countries represented is less than one-half but equal to or more than one-third
of the countries members of the Assembly, the Assembly may make decisions but,
with the exception of decisions concerning its own procedure, all such decisions shall
take effect only if the following conditions are fulfilled. The International Bureau shall
communicate the said decisions to the countries members of the Assembly which were
not represented and shall invite them to express in writing their vote or abstention
within a period of three months from the date of the communication. If, at the expiration of this period, the number of countries having thus expressed their vote or abstention attains the number of countries which was lacking for attaining the quorum in the
session itself, such decisions shall take effect provided that at the same time the required majority still obtains.
(d) Subject to the provisions of Article 26(2), the decisions of the Assembly shall
require two-thirds of the votes cast.
(e) Abstentions shall not be considered as votes.
(f) A delegate may represent, and vote in the name of, one country only.
(g) Countries of the Union not members of the Assembly shall be admitted to its
meetings as observers.
(4)(a) The Assembly shall meet once in every second calendar year in ordinary session
upon convocation by the Director General and, in the absence of exceptional circumstances,
during the same period and at the same place as the General Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon convocation by the Director General, at the request of the Executive Committee or at the request of onefourth of the countries members of the Assembly.
(5) The Assembly shall adopt its own rules of procedure.
423

Article 23

Berne Convention for the

Article 23
Executive Committee:
1. Constitution; 2. Composition; 3. Number of members; 4. Geographical distribution;
special agreements; 5. Term, limits of re-eligibility, rules of election; 6. Tasks;
7. Convocation; 8. Quorum, voting; 9. Observers; 10. Rules of procedure
(1) The Assembly shall have an Executive Committee.
(2)(a) The Executive Committee shall consist of countries elected by the Assembly
from among countries members of the Assembly. Furthermore, the country on whose
territory the Organization has its headquarters shall, subject to the provisions of Article
25(7)(b), have an ex officio seat on the Committee.
(b) The Government of each country member of the Executive Committee shall be
represented by one delegate, who may be assisted by alternate delegates, advisors, and
experts.
(c) The expenses of each delegation shall be borne by the Government which has
appointed it.
(3) The number of countries members of the Executive Committee shall correspond to
one-fourth of the number of countries members of the Assembly. In establishing the
number of seats to be filled, remainders after division by four shall be disregarded.
(4) In electing the members of the Executive Committee, the Assembly shall have due
regard to an equitable geographical distribution and to the need for countries party to the
Special Agreements which might be established in relation with the Union to be among
the countries constituting the Executive Committee.
(5)(a) Each member of the Executive Committee shall serve from the close of the session
of the Assembly which elected it to the close of the next ordinary session of the Assembly.
(b) Members of the Executive Committee may be re-elected, but not more than twothirds of them.
(c) The Assembly shall establish the details of the rules governing the election and
possible re-election of the members of the Executive Committee.
(6)(a) The Executive Committee shall:
(i) prepare the draft agenda of the Assembly;
(ii) submit proposals to the Assembly respecting the draft program and biennial
budget of the Union prepared by the Director General;
(iii) [deleted]
(iv) submit, with appropriate comments, to the Assembly the periodical reports of
the Director General and the yearly audit reports on the accounts;
(v) in accordance with the decisions of the Assembly and having regard to circumstances arising between two ordinary sessions of the Assembly, take all necessary
measures to ensure the execution of the program of the Union by the Director General;
(vi) perform such other functions as are allocated to it under this Convention.
(b) With respect to matters which are of interest also to other Unions administered
by the Organization, the Executive Committee shall make its decisions after having
heard the advice of the Coordination Committee of the Organization.
(7)(a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same
place as the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon convocation
by the Director General, either on his own initiative, or at the request of its Chairman
or one-fourth of its members.
(8)(a) Each country member of the Executive Committee shall have one vote.
424

Protection of Literary and Artistic Works

Article 25

(b) One-half of the members of the Executive Committee shall constitute a quorum.
(c) Decisions shall be made by a simple majority of the votes cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one country only.
(9) Countries of the Union not members of the Executive Committee shall be admitted
to its meetings as observers.
(10) The Executive Committee shall adopt its own rules of procedure.
Article 24
International Bureau:
1. Tasks in general, Director General; 2. General information;
3. Periodical; 4. Information to countries; 5. Studies and services;
6. Participation in meetings; 7. Conferences of revision; 8. Other tasks
(1)(a) The administrative tasks with respect to the Union shall be performed by the
International Bureau, which is a continuation of the Bureau of the Union united with the
Bureau of the Union established by the International Convention for the Protection of
Industrial Property.
(b) In particular, the International Bureau shall provide the secretariat of the various
organs of the Union.
(c) The Director General of the Organization shall be the chief executive of the Union and shall represent the Union.
(2) The International Bureau shall assemble and publish information concerning the protection of copyright. Each country of the Union shall promptly communicate to the International Bureau all new laws and official texts concerning the protection of copyright.
(3) The International Bureau shall publish a monthly periodical.
(4) The International Bureau shall, on request, furnish information to any country of
the Union on matters concerning the protection of copyright.
(5) The International Bureau shall conduct studies, and shall provide services, designed
to facilitate the protection of copyright.
(6) The Director General and any staff member designated by him shall participate,
without the right to vote, in all meetings of the Assembly, the Executive Committee and
any other committee of experts or working group. The Director General, or a staff member designated by him, shall be ex officio secretary of these bodies.
(7)(a) The International Bureau shall, in accordance with the directions of the Assembly
and in cooperation with the Executive Committee, make the preparations for the conferences of revision of the provisions of the Convention other than Articles 22 to 26.
(b) The International Bureau may consult with intergovernmental and international
non-governmental organizations concerning preparations for conferences of revision.
(c) The Director General and persons designated by him shall take part, without the
right to vote, in the discussions at these conferences.
(8) The International Bureau shall carry out any other tasks assigned to it.
Article 25
Finances:
1. Budget; 2. Coordination with other Unions; 3. Resources;
4. Contributions; possible extension of previous budget; 5. Fees and charges;
6. Working capital fund; 7. Advances by host Government; 8. Auditing of accounts
(1)(a) The Union shall have a budget.
425

Article 25

Berne Convention for the

(b) The budget of the Union shall include the income and expenses proper to the Union, its contribution to the budget of expenses common to the Unions, and, where applicable, the sum made available to the budget of the Conference of the Organization.
(c) Expenses not attributable exclusively to the Union but also to one or more other
Unions administered by the Organization shall be considered as expenses common to
the Unions. The share of the Union in such common expenses shall be in proportion
to the interest the Union has in them.
(2) The budget of the Union shall be established with due regard to the requirements
of coordination with the budgets of the other Unions administered by the Organization.
(3) The budget of the Union shall be financed from the following sources:
(i) contributions of the countries of the Union;
(ii) fees and charges due for services performed by the International Bureau in
relation to the Union;
(iii) sale of, or royalties on, the publications of the International Bureau concerning
the Union;
(iv) gifts, bequests, and subventions;
(v) rents, interests, and other miscellaneous income.
(4)(a) For the purpose of establishing its contribution towards the budget, each country
of the Union shall belong to a class, and shall pay its annual contributions on the basis
of a number of units fixed as follows:
Class I ...................... 25
Class II ..................... 20
Class III .................... 15
Class IV .................... 10
Class V ....................... 5
Class VI ...................... 3
Class VII ..................... 1
(b) Unless it has already done so, each country shall indicate, concurrently with depositing its instrument of ratification or accession, the class to which it wishes to belong. Any country may change class. If it chooses a lower class, the country must
announce it to the Assembly at one of its ordinary sessions. Any such change shall take
effect at the beginning of the calendar year following the session.
(c) The annual contribution of each country shall be an amount in the same proportion to the total sum to be contributed to the annual budget of the Union by all countries
as the number of its units is to the total of the units of all contributing countries.
(d) Contributions shall become due on the first of January of each year.
(e) A country which is in arrears in the payment of its contributions shall have no
vote in any of the organs of the Union of which it is a member if the amount of its
arrears equals or exceeds the amount of the contributions due from it for the preceding
two full years. However, any organ of the Union may allow such a country to continue
to exercise its vote in that organ if, and as long as, it is satisfied that the delay in payment is due to exceptional and unavoidable circumstances.
(f) If the budget is not adopted before the beginning of a new financial period, it shall
be at the same level as the budget of the previous year, in accordance with the financial
regulations.
(5) The amount of the fees and charges due for services rendered by the International
Bureau in relation to the Union shall be established, and shall be reported to the Assembly and the Executive Committee, by the Director General.
(6)(a) The Union shall have a working capital fund which shall be constituted by a
426

Protection of Literary and Artistic Works

Article 27

single payment made by each country of the Union. If the fund becomes insufficient, an
increase shall be decided by the Assembly.
(b) The amount of the initial payment of each country to the said fund or of its participation in the increase thereof shall be a proportion of the contribution of that country for the year in which the fund is established or the increase decided.
(c) The proportion and the terms of payment shall be fixed by the Assembly on the
proposal of the Director General and after it has heard the advice of the Coordination
Committee of the Organization.
(7)(a) In the headquarters agreement concluded with the country on the territory of
which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insufficient, such country shall grant advances. The amount of these
advances and the conditions on which they are granted shall be the subject of separate
agreements, in each case, between such country and the Organization. As long as it remains under the obligation to grant advances, such country shall have an ex officio seat
on the Executive Committee.
(b) The country referred to in subparagraph (a) and the Organization shall each have
the right to denounce the obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.
(8) The auditing of the accounts shall be effected by one or more of the countries of
the Union or by external auditors, as provided in the financial regulations. They shall be
designated, with their agreement, by the Assembly.
Article 26
Amendments:
1. Provisions susceptible of amendment by the Assembly; proposals
2. Adoption; 3. Entry into force
(1) Proposals for the amendment of Articles 22, 23, 24, 25, and the present Article,
may be initiated by any country member of the Assembly, by the Executive Committee,
or by the Director General. Such proposals shall be communicated by the Director General to the member countries of the Assembly at least six months in advance of their
consideration by the Assembly.
(2) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly. Adoption shall require three-fourths of the votes cast, provided that any amendment of Article 22, and of the present paragraph, shall require four-fifths of the votes cast.
(3) Any amendment to the Articles referred to in paragraph (1) shall enter into force
one month after written notifications of acceptance, effected in accordance with their
respective constitutional processes, have been received by the Director General from
three-fourths of the countries members of the Assembly at the time it adopted the amendment. Any amendment to the said Articles thus accepted shall bind all the countries
which are members of the Assembly at the time the amendment enters into force, or
which become members thereof at a subsequent date, provided that any amendment increasing the financial obligations of countries of the Union shall bind only those countries which have notified their acceptance of such amendment.
Article 27
Revision:
1. Objective; 2. Conferences; 3. Adoption
(1) This Convention shall be submitted to revision with a view to the introduction of
427

Article 28

Berne Convention for the

amendments designed to improve the system of the Union.
(2) For this purpose, conferences shall be held successively in one of the countries of
the Union among the delegates of the said countries.
(3) Subject to the provisions of Article 26 which apply to the amendment of Articles
22 to 26, any revision of this Act, including the Appendix, shall require the unanimity of
the votes cast.
Article 28
Acceptance and Entry Into Force of Act for Countries of the Union:
1. Ratification, accession; possibility of excluding certain provisions; withdrawal
of exclusion; 2. Entry into force of Articles 1 to 21 and Appendix; 3. Entry into force of Articles 22 to 38
(1)(a) Any country of the Union which has signed this Act may ratify it, and, if it has
not signed it, may accede to it. Instruments of ratification or accession shall be deposited
with the Director General.
(b) Any country of the Union may declare in its instrument of ratification or accession that its ratification or accession shall not apply to Articles 1 to 21 and the Appendix, provided that, if such country has previously made a declaration under Article
VI(1) of the Appendix, then it may declare in the said instrument only that its ratification or accession shall not apply to Articles 1 to 20.
(c) Any country of the Union which, in accordance with subparagraph (b), has excluded provisions therein referred to from the effects of its ratification or accession
may at any later time declare that it extends the effects of its ratification or accession
to those provisions. Such declaration shall be deposited with the Director General.
(2)(a) Articles 1 to 21 and the Appendix shall enter into force three months after both
of the following two conditions are fulfilled:
(i) at least five countries of the Union have ratified or acceded to this Act without
making a declaration under paragraph (1)(b),
(ii) France, Spain, the United Kingdom of Great Britain and Northern Ireland, and
the United States of America, have become bound by the Universal Copyright Convention as revised at Paris on July 24, 1971.
(b) The entry into force referred to in subparagraph (a) shall apply to those countries of
the Union which, at least three months before the said entry into force, have deposited
instruments of ratification or accession not containing a declaration under paragraph (1)(b).
(c) With respect to any country of the Union not covered by subparagraph (b) and
which ratifies or accedes to this Act without making a declaration under paragraph
(1)(b), Articles 1 to 21 and the Appendix shall enter into force three months after the
date on which the Director General has notified the deposit of the relevant instrument
of ratification or accession, unless a subsequent date has been indicated in the instrument deposited. In the latter case, Articles 1 to 21 and the Appendix shall enter into
force with respect to that country on the date thus indicated.
(d) The provisions of subparagraphs (a) to (c) do not affect the application of Article
VI of the Appendix.
(3) With respect to any country of the Union which ratifies or accedes to this Act with
or without a declaration made under paragraph (1)(b), Articles 22 to 38 shall enter into
force three months after the date on which the Director General has notified the deposit
of the relevant instrument of ratification or accession, unless a subsequent date has been
indicated in the instrument deposited. In the latter case, Articles 22 to 38 shall enter into
force with respect to that country on the date thus indicated.
428

Protection of Literary and Artistic Works

Article 30

Article 29
Acceptance and Entry Into Force for Countries Outside the Union:
1. Accession; 2. Entry into force
(1) Any country outside the Union may accede to this Act and thereby become party
to this Convention and a member of the Union. Instruments of accession shall be deposited with the Director General.
(2)(a) Subject to subparagraph (b), this Convention shall enter into force with respect
to any country outside the Union three months after the date on which the Director General has notified the deposit of its instrument of accession, unless a subsequent date has
been indicated in the instrument deposited. In the latter case, this Convention shall enter
into force with respect to that country on the date thus indicated.
(b) If the entry into force according to subparagraph (a) precedes the entry into force
of Articles 1 to 21 and the Appendix according to Article 28(2)(a), the said country
shall, in the meantime, be bound, instead of by Articles 1 to 21 and the Appendix, by
Articles 1 to 20 of the Brussels Act of this Convention.
Article 29bis
Effect of Acceptance of Act for the Purposes of Article 14(2)
of the WIPO Convention
Ratification of or accession to this Act by any country not bound by Articles 22 to of
the Stockholm Act of this Convention shall, for the sole purposes of Article 14(2) of the
Convention establishing the Organization, amount to ratification of or accession to the
said Stockholm Act with the limitation set forth in Article 28(1)(b)(i) thereof.
Article 30
Reservations:
1. Limits of possibility of making reservations; 2. Earlier reservations;
reservation as to the right of translation; withdrawal of reservation
(1) Subject to the exceptions permitted by paragraph (2) of this Article, by Article
28(1)(b), by Article 33(2), and by the Appendix, ratification or accession shall automatically entail acceptance of all the provisions and admission to all the advantages of this
Convention.
(2)(a) Any country of the Union ratifying or acceding to this Act may, subject to Article
V(2) of the Appendix, retain the benefit of the reservations it has previously formulated
on condition that it makes a declaration to that effect at the time of the deposit of its
instrument of ratification or accession.
(b) Any country outside the Union may declare, in acceding to this Convention and
subject to Article V(2) of the Appendix, that it intends to substitute, temporarily at
least, for Article 8 of this Act concerning the right of translation, the provisions of
Article 5 of the Union Convention of 1886, as completed at Paris in 1896, on the clear
understanding that the said provisions are applicable only to translations into a language in general use in the said country. Subject to Article I(6)(b) of the Appendix,
any country has the right to apply, in relation to the right of translation of works whose
country of origin is a country availing itself of such a reservation, a protection which
is equivalent to the protection granted by the latter country.
(c) Any country may withdraw such reservations at any time by notification addressed to the Director General.
429

Article 31

Berne Convention for the

Article 31
Applicability to Certain Territories:
1. Declaration; 2. Withdrawal of declaration; 3. Effective date;
4. Acceptance of factual situations not implied
(1) Any country may declare in its instrument of ratification or accession, or may inform the Director General by written notification at any time thereafter, that this Convention shall be applicable to all or part of those territories, designated in the declaration
or notification, for the external relations of which it is responsible.
(2) Any country which has made such a declaration or given such a notification may,
at any time, notify the Director General that this Convention shall cease to be applicable
to all or part of such territories.
(3)(a) Any declaration made under paragraph (1) shall take effect on the same date as
the ratification or accession in which it was included, and any notification given under
that paragraph shall take effect three months after its notification by the Director General.
(b) Any notification given under paragraph (2) shall take effect twelve months after
its receipt by the Director General.
(4) This Article shall in no way be understood as implying the recognition or tacit
acceptance by a country of the Union of the factual situation concerning a territory to
which this Convention is made applicable by another country of the Union by virtue of
a declaration under paragraph (1).
Article 32
Applicability of this Act and of Earlier Acts:
1. As between countries already members of the Union; 2. As between a country
becoming a member of the Union and other countries members of the Union;
3. Applicability of the Appendix in Certain Relations
(1) This Act shall, as regards relations between the countries of the Union, and to the
extent that it applies, replace the Berne Convention of September 9, 1886, and the subsequent Acts of revision. The Acts previously in force shall continue to be applicable,
in their entirety or to the extent that this Act does not replace them by virtue of the preceding sentence, in relations with countries of the Union which do not ratify or accede
to this Act.
(2) Countries outside the Union which become party to this Act shall, subject to paragraph (3), apply it with respect to any country of the Union not bound by this Act or
which, although bound by this Act, has made a declaration pursuant to Article 28(1)(b).
Such countries recognize that the said country of the Union, in its relations with them:
(i) may apply the provisions of the most recent Act by which it is bound, and
(ii) subject to Article I(6) of the Appendix, has the right to adapt the protection to
the level provided for by this Act.
(3) Any country which has availed itself of any of the faculties provided for in the
Appendix may apply the provisions of the Appendix relating to the faculty or faculties
of which it has availed itself in its relations with any other country of the Union which is
not bound by this Act, provided that the latter country has accepted the application of the
said provisions.

430

Protection of Literary and Artistic Works

Article 36

Article 33
Disputes:
1. Jurisdiction of the International Court of Justice;
2. Reservation as to such jurisdiction; 3. Withdrawal of reservation
(1) Any dispute between two or more countries of the Union concerning the interpretation or application of this Convention, not settled by negotiation, may, by any one of
the countries concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the countries concerned agree on
some other method of settlement. The country bringing the dispute before the Court shall
inform the International Bureau; the International Bureau shall bring the matter to the
attention of the other countries of the Union.
(2) Each country may, at the time it signs this Act or deposits its instrument of ratification or accession, declare that it does not consider itself bound by the provisions of
paragraph (1). With regard to any dispute between such country and any other country
of the Union, the provisions of paragraph (1) shall not apply.
(3) Any country having made a declaration in accordance with the provisions of paragraph (2) may, at any time, withdraw its declaration by notification addressed to the
Director General.
Article 34
Closing of Certain Earlier Provisions:
1. Of earlier Acts; 2. Of the Protocol to the Stockholm Act
(1) Subject to Article 29bis, no country may ratify or accede to earlier Acts of this
Convention once Articles 1 to 21 and the Appendix have entered into force.
(2) Once Articles 1 to 21 and the Appendix have entered into force, no country may
make a declaration under Article 5 of the Protocol Regarding Developing Countries attached to the Stockholm Act.
Article 35
Duration of the Convention; Denunciation:
1. Unlimited duration; 2. Possibility of denunciation;
3. Effective date of denunciation; 4. Moratorium on denunciation
(1) This Convention shall remain in force without limitation as to time.
(2) Any country may denounce this Act by notification addressed to the Director General. Such denunciation shall constitute also denunciation of all earlier Acts and shall
affect only the country making it, the Convention remaining in full force and effect as
regards the other countries of the Union.
(3) Denunciation shall take effect one year after the day on which the Director General
has received the notification.
(4) The right of denunciation provided by this Article shall not be exercised by any
country before the expiration of five years from the date upon which it becomes a member of the Union.
Article 36
Application of the Convention:
1. Obligation to adopt the necessary measures; 2. Time from which obligation exists
(1) Any country party to this Convention undertakes to adopt, in accordance with its
constitution, the measures necessary to ensure the application of this Convention.
431

Article 37

Berne Convention for the

(2) It is understood that, at the time a country becomes bound by this Convention, it will
be in a position under its domestic law to give effect to the provisions of this Convention.
Article 37
Final Clauses:
1. Languages of the Act; 2. Signature; 3. Certified copies;
4. Registration; 5. Notifications
(1)(a) This Act shall be signed in a single copy in the French and English languages
and, subject to paragraph (2), shall be deposited with the Director General.
(b) Official texts shall be established by the Director General, after consultation with
the interested Governments, in the Arabic, German, Italian, Portuguese and Spanish
languages, and such other languages as the Assembly may designate.
(c) In case of differences of opinion on the interpretation of the various texts, the
French text shall prevail.
(2) This Act shall remain open for signature until January 31, 1972. Until that date, the
copy referred to in paragraph (1)(a) shall be deposited with the Government of the French
Republic.
(3) The Director General shall certify and transmit two copies of the signed text of this
Act to the Governments of all countries of the Union and, on request, to the Government
of any other country.
(4) The Director General shall register this Act with the Secretariat of the United Nations.
(5) The Director General shall notify the Governments of all countries of the Union of
signatures, deposits of instruments of ratification or accession and any declarations included in such instruments or made pursuant to Articles 28(1)(c), 30(2)(a) and (b), and
33(2), entry into force of any provisions of this Act, notifications of denunciation, and
notifications pursuant to Articles 30(2)(c), 31(1) and (2), 33(3), and 38(1), as well as the
Appendix.
Article 38
Transitory Provisions:
1. Exercise of the “five-year privilege”; 2. Bureau of the Union,
Director of the Bureau; 3. Succession of Bureau of the Union
(1) Countries of the Union which have not ratified or acceded to this Act and which
are not bound by Articles 22 to 26 of the Stockholm Act of this Convention may, until
April 26, 1975, exercise, if they so desire, the rights provided under the said Articles as
if they were bound by them. Any country desiring to exercise such rights shall give written notification to this effect to the Director General; this notification shall be effective
on the date of its receipt. Such countries shall be deemed to be members of the Assembly
until the said date.
(2) As long as all the countries of the Union have not become Members of the Organization, the International Bureau of the Organization shall also function as the Bureau of
the Union, and the Director General as the Director of the said Bureau.
(3) Once all the countries of the Union have become Members of the Organization, the
rights, obligations, and property, of the Bureau of the Union shall devolve on the International Bureau of the Organization.

432

Protection of Literary and Artistic Works

APPENDIX

APPENDIX
SPECIAL PROVISIONS REGARDING DEVELOPING COUNTRIES
Article I
Faculties Open to Developing Countries:
1. Availability of certain faculties; declaration; 2. Duration of effect of declaration;
3. Cessation of developing country status; 4. Existing stocks of copies;
5. Declarations concerning certain territories; 6. Limits of reciprocity
(1) Any country regarded as a developing country in conformity with the established
practice of the General Assembly of the United Nations which ratifies or accedes to this
Act, of which this Appendix forms an integral part, and which, having regard to its economic situation and its social or cultural needs, does not consider itself immediately in a
position to make provision for the protection of all the rights as provided for in this Act,
may, by a notification deposited with the Director General at the time of depositing its
instrument of ratification or accession or, subject to Article V(1)(c), at any time thereafter,
declare that it will avail itself of the faculty provided for in Article II, or of the faculty
provided for in Article III, or of both of those faculties. It may, instead of availing itself of
the faculty provided for in Article II, make a declaration according to Article V(1)(a).
(2)(a) Any declaration under paragraph (1) notified before the expiration of the period
of ten years from the entry into force of Articles 1 to 21 and this Appendix according to
Article 28(2) shall be effective until the expiration of the said period. Any such declaration may be renewed in whole or in part for periods of ten years each by a notification
deposited with the Director General not more than fifteen months and not less than three
months before the expiration of the ten-year period then running.
(b) Any declaration under paragraph (1) notified after the expiration of the period of
ten years from the entry into force of Articles 1 to 21 and this Appendix according to
Article 28(2) shall be effective until the expiration of the ten-year period then running.
Any such declaration may be renewed as provided for in the second sentence of subparagraph (a).
(3) Any country of the Union which has ceased to be regarded as a developing country
as referred to in paragraph (1) shall no longer be entitled to renew its declaration as provided in paragraph (2), and, whether or not it formally withdraws its declaration, such
country shall be precluded from availing itself of the faculties referred to in paragraph
(1) from the expiration of the ten-year period then running or from the expiration of a
period of three years after it has ceased to be regarded as a developing country, whichever
period expires later.
(4) Where, at the time when the declaration made under paragraph (1) or (2) ceases to be
effective, there are copies in stock which were made under a license granted by virtue of
this Appendix, such copies may continue to be distributed until their stock is exhausted.
(5) Any country which is bound by the provisions of this Act and which has deposited a
declaration or a notification in accordance with Article 31(1) with respect to the application
of this Act to a particular territory, the situation of which can be regarded as analogous to
that of the countries referred to in paragraph (1), may, in respect of such territory, make the
declaration referred to in paragraph (1) and the notification of renewal referred to in paragraph (2). As long as such declaration or notification remains in effect, the provisions of
this Appendix shall be applicable to the territory in respect of which it was made.
(6)(a) The fact that a country avails itself of any of the faculties referred to in paragraph
(1) does not permit another country to give less protection to works of which the country
433

APPENDIX

Berne Convention for the

of origin is the former country than it is obliged to grant under Articles 1 to 20.
(b) The right to apply reciprocal treatment provided for in Article 30(2)(b), second
sentence, shall not, until the date on which the period applicable under Article I(3)
expires, be exercised in respect of works the country of origin of which is a country
which has made a declaration according to Article V(1)(a).
Article II
Limitations on the Right of Translation:
1. Licenses grantable by competent authority; 2 to 4. Conditions allowing the grant
of such licenses; 5. Purposes for which licenses may be granted; 6. Termination of
licenses; 7. Works composed mainly of illustrations; 8. Works withdrawn from circulation; 9. Licenses for broadcasting organizations
(1) Any country which has declared that it will avail itself of the faculty provided for
in this Article shall be entitled, so far as works published in printed or analogous forms
of reproduction are concerned, to substitute for the exclusive right of translation provided
for in Article 8 a system of non-exclusive and non-transferable licenses, granted by the
competent authority under the following conditions and subject to Article IV.
(2)(a) Subject to paragraph (3), if, after the expiration of a period of three years, or of
any longer period determined by the national legislation of the said country, commencing
on the date of the first publication of the work, a translation of such work has not been
published in a language in general use in that country by the owner of the right of translation, or with his authorization, any national of such country may obtain a license to
make a translation of the work in the said language and publish the translation in printed
or analogous forms of reproduction.
(b) A license under the conditions provided for in this Article may also be granted if
all the editions of the translation published in the language concerned are out of print.
(3)(a) In the case of translations into a language which is not in general use in one or
more developed countries which are members of the Union, a period of one year shall be
substituted for the period of three years referred to in paragraph (2)(a).
(b) Any country referred to in paragraph (1) may, with the unanimous agreement of
the developed countries which are members of the Union and in which the same language is in general use, substitute, in the case of translations into that language, for the
period of three years referred to in paragraph (2)(a) a shorter period as determined by
such agreement but not less than one year. However, the provisions of the foregoing
sentence shall not apply where the language in question is English, French or Spanish.
The Director General shall be notified of any such agreement by the Governments
which have concluded it.
(4)(a) No license obtainable after three years shall be granted under this Article until a
further period of six months has elapsed, and no license obtainable after one year shall
be granted under this Article until a further period of nine months has elapsed
(i) from the date on which the applicant complies with the requirements mentioned
in Article IV(1), or
(ii) where the identity or the address of the owner of the right of translation is unknown, from the date on which the applicant sends, as provided for in Article IV(2),
copies of his application submitted to the authority competent to grant the license.
(b) If, during the said period of six or nine months, a translation in the language in
respect of which the application was made is published by the owner of the right of
translation or with his authorization, no license under this Article shall be granted.
(5) Any license under this Article shall be granted only for the purpose of teaching,
434

Protection of Literary and Artistic Works

APPENDIX

scholarship or research.
(6) If a translation of a work is published by the owner of the right of translation or
with his authorization at a price reasonably related to that normally charged in the country for comparable works, any license granted under this Article shall terminate if such
translation is in the same language and with substantially the same content as the translation published under the license. Any copies already made before the license terminates
may continue to be distributed until their stock is exhausted.
(7) For works which are composed mainly of illustrations, a license to make and publish
a translation of the text and to reproduce and publish the illustrations may be granted only
if the conditions of Article III are also fulfilled.
(8) No license shall be granted under this Article when the author has withdrawn from
circulation all copies of his work.
(9)(a) A license to make a translation of a work which has been published in printed
or analogous forms of reproduction may also be granted to any broadcasting organization
having its headquarters in a country referred to in paragraph (1), upon an application
made to the competent authority of that country by the said organization, provided that
all of the following conditions are met:
(i) the translation is made from a copy made and acquired in accordance with the
laws of the said country;
(ii) the translation is only for use in broadcasts intended exclusively for teaching
or for the dissemination of the results of specialized technical or scientific research
to experts in a particular profession;
(iii) the translation is used exclusively for the purposes referred to in condition (ii)
through broadcasts made lawfully and intended for recipients on the territory of the
said country, including broadcasts made through the medium of sound or visual recordings lawfully and exclusively made for the purpose of such broadcasts;
(iv) all uses made of the translation are without any commercial purpose.
(b) Sound or visual recordings of a translation which was made by a broadcasting
organization under a license granted by virtue of this paragraph may, for the purposes
and subject to the conditions referred to in subparagraph (a) and with the agreement of
that organization, also be used by any other broadcasting organization having its headquarters in the country whose competent authority granted the license in question.
(c) Provided that all of the criteria and conditions set out in subparagraph (a) are met,
a license may also be granted to a broadcasting organization to translate any text incorporated in an audio-visual fixation where such fixation was itself prepared and published for the sole purpose of being used in connection with systematic instructional
activities.
(d) Subject to subparagraphs (a) to (c), the provisions of the preceding paragraphs
shall apply to the grant and exercise of any license granted under this paragraph.
Article III
Limitation on the Right of Reproduction:
1. Licenses grantable by competent authority; 2 to 5. Conditions allowing the grant
of such licenses; 6. Termination of licenses; 7. Works to which this Article applies
(1) Any country which has declared that it will avail itself of the faculty provided for
in this Article shall be entitled to substitute for the exclusive right of reproduction provided for in Article 9 a system of non-exclusive and non-transferable licenses, granted
by the competent authority under the following conditions and subject to Article IV.
(2)(a) If, in relation to a work to which this Article applies by virtue of paragraph (7),
435

APPENDIX

Berne Convention for the

after the expiration of
(i) the relevant period specified in paragraph (3), commencing on the date of first
publication of a particular edition of the work, or
(ii) any longer period determined by national legislation of the country referred to
in paragraph (1), commencing on the same date, copies of such edition have not been
distributed in that country to the general public or in connection with systematic instructional activities, by the owner of the right of reproduction or with his authorization, at a price reasonably related to that normally charged in the country for
comparable works, any national of such country may obtain a license to reproduce
and publish such edition at that or a lower price for use in connection with systematic
instructional activities.
(b) A license to reproduce and publish an edition which has been distributed as described in subparagraph (a) may also be granted under the conditions provided for in
this Article if, after the expiration of the applicable period, no authorized copies of that
edition have been on sale for a period of six months in the country concerned to the
general public or in connection with systematic instructional activities at a price reasonably related to that normally charged in the country for comparable works.
(3) The period referred to in paragraph (2)(a)(i) shall be five years, except that
(i) for works of the natural and physical sciences, including mathematics, and of
technology, the period shall be three years;
(ii) for works of fiction, poetry, drama and music, and for art books, the period
shall be seven years.
(4)(a) No license obtainable after three years shall be granted under this Article until a
period of six months has elapsed
(i) from the date on which the applicant complies with the requirements mentioned
in Article IV(1), or
(ii) where the identity or the address of the owner of the right of reproduction is unknown, from the date on which the applicant sends, as provided for in Article IV(2),
copies of his application submitted to the authority competent to grant the license.
(b) Where licenses are obtainable after other periods and Article IV(2) is applicable,
no license shall be granted until a period of three months has elapsed from the date of
the dispatch of the copies of the application.
(c) If, during the period of six or three months referred to in subparagraphs (a) and
(b), a distribution as described in paragraph (2)(a) has taken place, no license shall be
granted under this Article.
(d) No license shall be granted if the author has withdrawn from circulation all copies
of the edition for the reproduction and publication of which the license has been applied for.
(5) A license to reproduce and publish a translation of a work shall not be granted
under this Article in the following cases:
(i) where the translation was not published by the owner of the right of translation
or with his authorization, or
(ii) where the translation is not in a language in general use in the country in which
the license is applied for.
(6) If copies of an edition of a work are distributed in the country referred to in paragraph (1) to the general public or in connection with systematic instructional activities,
by the owner of the right of reproduction or with his authorization, at a price reasonably
related to that normally charged in the country for comparable works, any license granted
436

Protection of Literary and Artistic Works

APPENDIX

under this Article shall terminate if such edition is in the same language and with substantially the same content as the edition which was published under the said license.
Any copies already made before the license terminates may continue to be distributed
until their stock is exhausted.
(7)(a) Subject to subparagraph (b), the works to which this Article applies shall be
limited to works published in printed or analogous forms of reproduction.
(b) This Article shall also apply to the reproduction in audio-visual form of lawfully
made audio-visual fixations including any protected works incorporated therein and to
the translation of any incorporated text into a language in general use in the country in
which the license is applied for, always provided that the audio-visual fixations in
question were prepared and published for the sole purpose of being used in connection
with systematic instructional activities.
Article IV
Provisions Common to Licenses Under Articles II and III:
1 and 2. Procedure; 3. Indication of author and title of work;
4. Exportation of copies; 5. Notice; 6. Compensation
(1) A license under Article II or Article III may be granted only if the applicant, in
accordance with the procedure of the country concerned, establishes either that he has
requested, and has been denied, authorization by the owner of the right to make and
publish the translation or to reproduce and publish the edition, as the case may be, or
that, after due diligence on his part, he was unable to find the owner of the right. At the
same time as making the request, the applicant shall inform any national or international
information center referred to in paragraph (2).
(2) If the owner of the right cannot be found, the applicant for a license shall send, by
registered airmail, copies of his application, submitted to the authority competent to grant
the license, to the publisher whose name appears on the work and to any national or
international information center which may have been designated, in a notification to
that effect deposited with the Director General, by the Government of the country in
which the publisher is believed to have his principal place of business.
(3) The name of the author shall be indicated on all copies of the translation or reproduction published under a license granted under Article II or Article III. The title of the
work shall appear on all such copies. In the case of a translation, the original title of the
work shall appear in any case on all the said copies.
(4)(a) No license granted under Article II or Article III shall extend to the export of
copies, and any such license shall be valid only for publication of the translation or of
the reproduction, as the case may be, in the territory of the country in which it has been
applied for.
(b) For the purposes of subparagraph (a), the notion of export shall include the sending of copies from any territory to the country which, in respect of that territory, has
made a declaration under Article I(5).
(c) Where a governmental or other public entity of a country which has granted a
license to make a translation under Article II into a language other than English, French
or Spanish sends copies of a translation published under such license to another country, such sending of copies shall not, for the purposes of subparagraph (a), be considered to constitute export if all of the following conditions are met:
(i) the recipients are individuals who are nationals of the country whose competent
authority has granted the license, or organizations grouping such individuals;
437

APPENDIX

Berne Convention for the

(ii) the copies are to be used only for the purpose of teaching, scholarship or research;
(iii) the sending of the copies and their subsequent distribution to recipients is
without any commercial purpose; and
(iv) the country to which the copies have been sent has agreed with the country
whose competent authority has granted the license to allow the receipt, or distribution, or both, and the Director General has been notified of the agreement by the
Government of the country in which the license has been granted.
(5) All copies published under a license granted by virtue of Article II or Article III
shall bear a notice in the appropriate language stating that the copies are available for
distribution only in the country or territory to which the said license applies.
(6)(a) Due provision shall be made at the national level to ensure
(i) that the license provides, in favour of the owner of the right of translation or of
reproduction, as the case may be, for just compensation that is consistent with standards of royalties normally operating on licenses freely negotiated between persons
in the two countries concerned, and
(ii) payment and transmittal of the compensation: should national currency regulations intervene, the competent authority shall make all efforts, by the use of international machinery, to ensure transmittal in internationally convertible currency or
its equivalent.
(b) Due provision shall be made by national legislation to ensure a correct translation
of the work, or an accurate reproduction of the particular edition, as the case may be.
Article V
Alternative Possibility for Limitation of the Rights of Translation:
1. Regime provided for under the 1886 and 1896 Acts; 2. No possibility of change
to regime under Article II; 3. Time limit for choosing the alternative possibility
(1)(a) Any country entitled to make a declaration that it will avail itself of the faculty
provided for in Article II may, instead, at the time of ratifying or acceding to this Act:
(i) if it is a country to which Article 30(2)(a) applies, make a declaration under that
provision as far as the right of translation is concerned;
(ii) if it is a country to which Article 30(2)(a) does not apply, and even if it is not
a country outside the Union, make a declaration as provided for in Article 30(2)(b),
first sentence.
(b) In the case of a country which ceases to be regarded as a developing country as
referred to in Article I(1), a declaration made according to this paragraph shall be effective until the date on which the period applicable under Article I(3) expires.
(c) Any country which has made a declaration according to this paragraph may not
subsequently avail itself of the faculty provided for in Article II even if it withdraws
the said declaration.
(2) Subject to paragraph (3), any country which has availed itself of the faculty provided
for in Article II may not subsequently make a declaration according to paragraph (1).
(3) Any country which has ceased to be regarded as a developing country as referred to
in Article I(1) may, not later than two years prior to the expiration of the period applicable
under Article I(3), make a declaration to the effect provided for in Article 30(2)(b), first
sentence, notwithstanding the fact that it is not a country outside the Union. Such declaration shall take effect at the date on which the period applicable under Article I(3) expires.

438

Protection of Literary and Artistic Works

APPENDIX

Article VI
Possibilities of applying, or admitting the application of,
certain provisions of the Appendix before becoming bound by it:
1. Declaration; Depository and effective date of declaration
(1) Any country of the Union may declare, as from the date of this Act, and at any time
before becoming bound by Articles 1 to 21 and this Appendix:
(i) if it is a country which, were it bound by Articles 1 to 21 and this Appendix,
would be entitled to avail itself of the faculties referred to in Article I(1), that it will
apply the provisions of Article II or of Article III or of both to works whose country
of origin is a country which, pursuant to (ii) below, admits the application of those
Articles to such works, or which is bound by Articles 1 to 21 and this Appendix;
such declaration may, instead of referring to Article II, refer to Article V;
(ii) that it admits the application of this Appendix to works of which it is the country of origin by countries which have made a declaration under (i) above or a notification under Article I.
(2) Any declaration made under paragraph (1) shall be in writing and shall be deposited
with the Director General. The declaration shall become effective from the date of its
deposit.

439

[JB/JJ Note: The WIPO Copyright Treaty is reproduced below; the contemporaneous
WIPO Performances and Phonograms Treaty contained analogous provisions for the
benefit of performers and phonogram producers.]

WIPO Copyright Treaty
(adopted in Geneva on December 20, 1996)
Entry into force: March 6, 2002. Source: International Bureau of WIPO.
Note: The agreed statements of the Diplomatic Conference that adopted the Treaty (WIPO
Diplomatic Conference on Certain Copyright and Neighboring Rights Questions) concerning
certain provisions of the WCT are reproduced in footnotes.
CONTENTS
Preamble
Article 1:
Article 2:
Article 3:
Article 4:
Article 5:
Article 6:
Article 7:
Article 8:
Article 9:
Article 10:
Article 11:
Article 12:
Article 13:
Article 14:
Article 15:
Article 16:
Article 17:
Article 18:
Article 19:
Article 20:
Article 21:
Article 22:
Article 23:
Article 24:
Article 25:

Relation to the Berne Convention
Scope of Copyright Protection
Application of Articles 2 to 6 of the Berne Convention
Computer Programs
Compilations of Data (Databases)
Right of Distribution
Right of Rental
Right of Communication to the Public
Duration of the Protection of Photographic Works
Limitations and Exceptions
Obligations concerning Technological Measures
Obligations concerning Rights Management Information
Application in Time
Provisions on Enforcement of Rights
Assembly
International Bureau
Eligibility for Becoming Party to the Treaty
Rights and Obligations under the Treaty
Signature of the Treaty
Entry into Force of the Treaty
Effective Date of Becoming Party to the Treaty
No Reservations to the Treaty
Denunciation of the Treaty
Languages of the Treaty
Depositary

Preamble
The Contracting Parties,
Desiring to develop and maintain the protection of the rights of authors in their literary
and artistic works in a manner as effective and uniform as possible,
Recognizing the need to introduce new international rules and clarify the interpretation
of certain existing rules in order to provide adequate solutions to the questions raised by
new economic, social, cultural and technological developments,
Recognizing the profound impact of the development and convergence of information
and communication technologies on the creation and use of literary and artistic works,
Emphasizing the outstanding significance of copyright protection as an incentive for
literary and artistic creation,
Recognizing the need to maintain a balance between the rights of authors and the larger
440

WIPO Copyright Treaty

Article 4

public interest, particularly education, research and access to information, as reflected in
the Berne Convention,
Have agreed as follows:
Article 1
Relation to the Berne Convention
(1) This Treaty is a special agreement within the meaning of Article 20 of the Berne
Convention for the Protection of Literary and Artistic Works, as regards Contracting
Parties that are countries of the Union established by that Convention. This Treaty shall
not have any connection with treaties other than the Berne Convention, nor shall it prejudice any rights and obligations under any other treaties.
(2) Nothing in this Treaty shall derogate from existing obligations that Contracting
Parties have to each other under the Berne Convention for the Protection of Literary and
Artistic Works.
(3) Hereinafter, “Berne Convention” shall refer to the Paris Act of July 24, 1971 of the
Berne Convention for the Protection of Literary and Artistic Works.
(4) Contracting Parties shall comply with Articles 1 to 21 and the Appendix of the
Berne Convention.1
Article 2
Scope of Copyright Protection
Copyright protection extends to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such.
Article 3
Application of Articles 2 to 6 of the Berne Convention
Contracting Parties shall apply mutatis mutandis the provisions of Articles 2 to 6 of
the Berne Convention in respect of the protection provided for in this Treaty.2
Article 4
Computer Programs
Computer programs are protected as literary works within the meaning of Article 2 of
the Berne Convention. Such protection applies to computer programs, whatever may be
the mode or form of their expression.3
1 Agreed statements concerning Article 1(4): The reproduction right, as set out in Article 9 of the Berne

Convention, and the exceptions permitted thereunder, fully apply in the digital environment, in particular to
the use of works in digital form. It is understood that the storage of a protected work in digital form in an
electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention.
2 Agreed statements concerning Article 3: It is understood that in applying Article 3 of this Treaty, the ex-

pression “country of the Union” in Articles 2 to 6 of the Berne Convention will be read as if it were a
reference to a Contracting Party to this Treaty, in the application of those Berne Articles in respect of protection provided for in this Treaty. It is also understood that the expression “country outside the Union” in
those Articles in the Berne Convention will, in the same circumstances, be read as if it were a reference to a
country that is not a Contracting Party to this Treaty, and that “this Convention” in Articles 2(8), 2bis(2), 3,
4 and 5 of the Berne Convention will be read as if it were a reference to the Berne Convention and this
Treaty. Finally, it is understood that a reference in Articles 3 to 6 of the Berne Convention to a “national of
one of the countries of the Union” will, when these Articles are applied to this Treaty, mean, in regard to an
intergovernmental organization that is a Contracting Party to this Treaty, a national of one of the countries
that is member of that organization.
3 Agreed statements concerning Article 4: The scope of protection for computer programs under Article 4 of

441

Article 5

WIPO Copyright Treaty

Article 5
Compilations of Data (Databases)
Compilations of data or other material, in any form, which by reason of the selection
or arrangement of their contents constitute intellectual creations, are protected as such.
This protection does not extend to the data or the material itself and is without prejudice
to any copyright subsisting in the data or material contained in the compilation.4
Article 6
Right of Distribution
(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing
the making available to the public of the original and copies of their works through sale
or other transfer of ownership.
(2) Nothing in this Treaty shall affect the freedom of Contracting Parties to determine
the conditions, if any, under which the exhaustion of the right in paragraph (1) applies
after the first sale or other transfer of ownership of the original or a copy of the work
with the authorization of the author.5
Article 7
Right of Rental
(1) Authors of
(i) computer programs;
(ii) cinematographic works; and
(iii) works embodied in phonograms, as determined in the national law of Contracting Parties,
shall enjoy the exclusive right of authorizing commercial rental to the public of the originals or copies of their works.
(2) Paragraph (1) shall not apply
(i) in the case of computer programs, where the program itself is not the essential
object of the rental; and
(ii) in the case of cinematographic works, unless such commercial rental has led
to widespread copying of such works materially impairing the exclusive right of
reproduction.
(3) Notwithstanding the provisions of paragraph (1), a Contracting Party that, on April
15, 1994, had and continues to have in force a system of equitable remuneration of authors
for the rental of copies of their works embodied in phonograms may maintain that system
provided that the commercial rental of works embodied in phonograms is not giving rise
to the material impairment of the exclusive right of reproduction of authors.5,6
this Treaty, read with Article 2, is consistent with Article 2 of the Berne Convention and on a par with the
relevant provisions of the TRIPS Agreement.
4 Agreed statements concerning Article 5: The scope of protection for compilations of data (databases) under

Article 5 of this Treaty, read with Article 2, is consistent with Article 2 of the Berne Convention and on a
par with the relevant provisions of the TRIPS Agreement.
5 Agreed statements concerning Articles 6 and 7: As used in these Articles, the expressions “copies” and

“original and copies,” being subject to the right of distribution and the right of rental under the said Articles,
refer exclusively to fixed copies that can be put into circulation as tangible objects.
6 Agreed statements concerning Article 7: It is understood that the obligation under Article 7(1) does not

require a Contracting Party to provide an exclusive right of commercial rental to authors who, under that
Contracting Party’s law, are not granted rights in respect of phonograms. It is understood that this obligation
is consistent with Article 14(4) of the TRIPS Agreement.
442

WIPO Copyright Treaty

Article 12

Article 8
Right of Communication to the Public
Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii),
11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public
of their works, by wire or wireless means, including the making available to the public
of their works in such a way that members of the public may access these works from a
place and at a time individually chosen by them.7
Article 9
Duration of the Protection of Photographic Works
In respect of photographic works, the Contracting Parties shall not apply the provisions
of Article 7(4) of the Berne Convention.
Article 10
Limitations and Exceptions
(1) Contracting Parties may, in their national legislation, provide for limitations of or
exceptions to the rights granted to authors of literary and artistic works under this Treaty
in certain special cases that do not conflict with a normal exploitation of the work and
do not unreasonably prejudice the legitimate interests of the author.
(2) Contracting Parties shall, when applying the Berne Convention, confine any limitations of or exceptions to rights provided for therein to certain special cases that do not
conflict with a normal exploitation of the work and do not unreasonably prejudice the
legitimate interests of the author.8
Article 11
Obligations concerning Technological Measures
Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne
Convention and that restrict acts, in respect of their works, which are not authorized by
the authors concerned or permitted by law.
Article 12
Obligations concerning Rights Management Information
(1) Contracting Parties shall provide adequate and effective legal remedies against any
person knowingly performing any of the following acts knowing, or with respect to civil
7 Agreed statements concerning Article 8: It is understood that the mere provision of physical facilities for

enabling or making a communication does not in itself amount to communication within the meaning of this
Treaty or the Berne Convention. It is further understood that nothing in Article 8 precludes a Contracting
Party from applying Article 11bis(2).
8 Agreed statement concerning Article 10: It is understood that the provisions of Article 10 permit Contract-

ing Parties to carry forward and appropriately extend into the digital environment limitations and exceptions
in their national laws which have been considered acceptable under the Berne Convention. Similarly, these
provisions should be understood to permit Contracting Parties to devise new exceptions and limitations that
are appropriate in the digital network environment.
It is also understood that Article 10(2) neither reduces nor extends the scope of applicability of the limitations and exceptions permitted by the Berne Convention.
443

Article 13

WIPO Copyright Treaty

remedies having reasonable grounds to know, that it will induce, enable, facilitate or conceal an infringement of any right covered by this Treaty or the Berne Convention:
(i) to remove or alter any electronic rights management information without
authority;
(ii) to distribute, import for distribution, broadcast or communicate to the public,
without authority, works or copies of works knowing that electronic rights management information has been removed or altered without authority.
(2) As used in this Article, “rights management information” means information which
identifies the work, the author of the work, the owner of any right in the work, or information about the terms and conditions of use of the work, and any numbers or codes that
represent such information, when any of these items of information is attached to a copy
of a work or appears in connection with the communication of a work to the public.9
Article 13
Application in Time
Contracting Parties shall apply the provisions of Article 18 of the Berne Convention
to all protection provided for in this Treaty.
Article 14
Provisions on Enforcement of Rights
(1) Contracting Parties undertake to adopt, in accordance with their legal systems, the
measures necessary to ensure the application of this Treaty.
(2) Contracting Parties shall ensure that enforcement procedures are available under
their law so as to permit effective action against any act of infringement of rights covered
by this Treaty, including expeditious remedies to prevent infringements and remedies
which constitute a deterrent to further infringements.
Article 15
Assembly
(1)(a) The Contracting Parties shall have an Assembly.
(b) Each Contracting Party shall be represented by one delegate who may be assisted
by alternate delegates, advisors and experts.
(c) The expenses of each delegation shall be borne by the Contracting Party that has
appointed the delegation. The Assembly may ask the World Intellectual Property Organization (hereinafter referred to as “WIPO”) to grant financial assistance to facilitate
the participation of delegations of Contracting Parties that are regarded as developing
countries in conformity with the established practice of the General Assembly of the
United Nations or that are countries in transition to a market economy.
(2)(a) The Assembly shall deal with matters concerning the maintenance and development of this Treaty and the application and operation of this Treaty.
(b) The Assembly shall perform the function allocated to it under Article 17(2) in
respect of the admission of certain intergovernmental organizations to become party
to this Treaty.
9 Agreed statements concerning Article 12: It is understood that the reference to “infringement of any right

covered by this Treaty or the Berne Convention” includes both exclusive rights and rights of remuneration.
It is further understood that Contracting Parties will not rely on this Article to devise or implement rights
management systems that would have the effect of imposing formalities which are not permitted under the
Berne Convention or this Treaty, prohibiting the free movement of goods or impeding the enjoyment of
rights under this Treaty.
444

WIPO Copyright Treaty

Article 20

(c) The Assembly shall decide the convocation of any diplomatic conference for the
revision of this Treaty and give the necessary instructions to the Director General of
WIPO for the preparation of such diplomatic conference.
(3)(a) Each Contracting Party that is a State shall have one vote and shall vote only in
its own name.
(b) Any Contracting Party that is an intergovernmental organization may participate
in the vote, in place of its Member States, with a number of votes equal to the number
of its Member States which are party to this Treaty. No such intergovernmental organization shall participate in the vote if any one of its Member States exercises its right
to vote and vice versa.
(4) The Assembly shall meet in ordinary session once every two years upon convocation by the Director General of WIPO.
(5) The Assembly shall establish its own rules of procedure, including the convocation
of extraordinary sessions, the requirements of a quorum and, subject to the provisions of
this Treaty, the required majority for various kinds of decisions.
Article 16
International Bureau
The International Bureau of WIPO shall perform the administrative tasks concerning
the Treaty.
Article 17
Eligibility for Becoming Party to the Treaty
(1) Any Member State of WIPO may become party to this Treaty.
(2) The Assembly may decide to admit any intergovernmental organization to become
party to this Treaty which declares that it is competent in respect of, and has its own
legislation binding on all its Member States on, matters covered by this Treaty and that
it has been duly authorized, in accordance with its internal procedures, to become party
to this Treaty.
(3) The European Community, having made the declaration referred to in the preceding
paragraph in the Diplomatic Conference that has adopted this Treaty, may become party
to this Treaty.
Article 18
Rights and Obligations under the Treaty
Subject to any specific provisions to the contrary in this Treaty, each Contracting Party
shall enjoy all of the rights and assume all of the obligations under this Treaty.
Article 19
Signature of the Treaty
This Treaty shall be open for signature until December 31, 1997, by any Member State
of WIPO and by the European Community.
Article 20
Entry into Force of the Treaty
This Treaty shall enter into force three months after 30 instruments of ratification or
accession by States have been deposited with the Director General of WIPO.
445

Article 21

WIPO Copyright Treaty

Article 21
Effective Date of Becoming Party to the Treaty
This Treaty shall bind:
(i) the 30 States referred to in Article 20, from the date on which this Treaty has
entered into force;
(ii) each other State from the expiration of three months from the date on which
the State has deposited its instrument with the Director General of WIPO;
(iii) the European Community, from the expiration of three months after the deposit
of its instrument of ratification or accession if such instrument has been deposited
after the entry into force of this Treaty according to Article 20, or, three months after
the entry into force of this Treaty if such instrument has been deposited before the
entry into force of this Treaty;
(iv) any other intergovernmental organization that is admitted to become party to
this Treaty, from the expiration of three months after the deposit of its instrument of
accession.
Article 22
No Reservations to the Treaty
No reservation to this Treaty shall be admitted.
Article 23
Denunciation of the Treaty
This Treaty may be denounced by any Contracting Party by notification addressed to
the Director General of WIPO. Any denunciation shall take effect one year from the date
on which the Director General of WIPO received the notification.
Article 24
Languages of the Treaty
(1) This Treaty is signed in a single original in English, Arabic, Chinese, French, Russian and Spanish languages, the versions in all these languages being equally authentic.
(2) An official text in any language other than those referred to in paragraph (1) shall
be established by the Director General of WIPO on the request of an interested party,
after consultation with all the interested parties. For the purposes of this paragraph, “interested party” means any Member State of WIPO whose official language, or one of
whose official languages, is involved and the European Community, and any other intergovernmental organization that may become party to this Treaty, if one of its official
languages is involved.
Article 25
Depositary
The Director General of WIPO is the depositary of this Treaty.

446

Paris Convention for the Protection of Industrial Property
of March 20, 1883,
as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at
The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31,
1958, and at Stockholm on July 14, 1967, and as amended on September 28, 1979
TABLE OF CONTENTS1
Article 1:
Establishment of the Union; Scope of Industrial Property
Article 2:
National Treatment for Nationals of Countries of the Union
Article 3:
Same Treatment for Certain Categories of Persons as for Nationals of
Countries of the Union
Article 4:
A. to I. Patents, Utility Models, Industrial Designs, Marks, Inventors’
Certificates: Right of Priority. - G. Patents: Division of the Application
Article 4bis:
Patents: Independence of Patents Obtained for the Same Invention in
Different Countries
Article 4ter:
Patents: Mention of the Inventor in the Patent
Article 4quater:
Patents: Patentability in Case of Restrictions of Sale by Law
Article 5:
A. Patents: Importation of Articles; Failure to Work or Insufficient
Working; Compulsory Licenses. - B. Industrial Designs: Failure to
Work; Importation of Articles. - C. Marks: Failure to Use; Different
Forms; Use by Co-proprietors. - D. Patents, Utility Models, Marks,
Industrial Designs: Marking
Article 5bis:
All Industrial Property Rights: Period of Grace for the Payment of
Fees for the Maintenance of Rights; Patents: Restoration
Article 5ter:
Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land
Vehicles
Article 5quater:
Patents: Importation of Products Manufactured by a Process
Patented in the Importing Country
Article 5quinquies: Industrial Designs
Article 6:
Marks: Conditions of Registration; Independence of Protection of
Same Mark in Different Countries
Article 6bis:
Marks: Well-Known Marks
Article 6ter:
Marks: Prohibitions concerning State Emblems, Official Hallmarks,
and Emblems of Intergovernmental Organizations
Article 6quater:
Marks: Assignment of Marks
Article 6quinquies: Marks: Protection of Marks Registered in One Country of the Union
in the Other Countries of the Union
Article 6sexies:
Marks: Service Marks
Article 6septies:
Marks: Registration in the Name of the Agent or Representative of
the Proprietor Without the Latter’s Authorization
Article 7:
Marks: Nature of the Goods to which the Mark is Applied
Article 7bis:
Marks: Collective Marks
Article 8:
Trade Names
Article 9:
Marks, Trade Names: Seizure, on Importation, etc., of Goods
Unlawfully Bearing a Mark or Trade Name
Article 10:
False Indications: Seizure, on Importation, etc., of Goods Bearing
False Indications as to their Source or the Identity of the Producer
Article 10bis:
Unfair Competition
Article 10ter:
Marks, Trade Names, False Indications, Unfair Competition:
Remedies, Right to Sue
1 This Table of Contents is added for the convenience of the reader. It does not appear in the signed text of

the Convention.
447

Article 1

Paris Convention for the

Article 11:
Article 12:
Article 13:
Article 14:
Article 15:
Article 16:
Article 17:
Article 18:
Article 19:
Article 20:
Article 21:
Article 22:
Article 23:
Article 24:
Article 25:
Article 26:
Article 27:
Article 28:
Article 29:
Article 30:

Inventions, Utility Models, Industrial Designs, Marks: Temporary
Protection at Certain International Exhibitions
Special National Industrial Property Services
Assembly of the Union
Executive Committee
International Bureau
Finances
Amendment of Articles 13 to 17
Revision of Articles 1 to 12 and 18 to 30
Special Agreements
Ratification or Accession by Countries of the Union; Entry Into Force
Accession by Countries Outside the Union; Entry Into Force
Consequences of Ratification or Accession
Accession to Earlier Acts
Territories
Implementation of the Convention on the Domestic Level
Denunciation
Application of Earlier Acts
Disputes
Signature, Languages, Depositary Functions
Transitional Provisions

Article 1
Establishment of the Union; Scope of Industrial Property2
(1) The countries to which this Convention applies constitute a Union for the protection
of industrial property.
(2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.
(3) Industrial property shall be understood in the broadest sense and shall apply not
only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf,
fruit, cattle, minerals, mineral waters, beer, flowers, and flour.
(4) Patents shall include the various kinds of industrial patents recognized by the laws
of the countries of the Union, such as patents of importation, patents of improvement,
patents and certificates of addition, etc.
Article 2
National Treatment for Nationals of Countries of the Union
(1) Nationals of any country of the Union shall, as regards the protection of industrial
property, enjoy in all the other countries of the Union the advantages that their respective
laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights
specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights,
provided that the conditions and formalities imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where
protection is claimed may be imposed upon nationals of countries of the Union for the
enjoyment of any industrial property rights.
(3) The provisions of the laws of each of the countries of the Union relating to judicial
2 Articles have been given titles to facilitate their identification. There are no titles in the signed (French) text.

448

Protection of Industrial Property

Article 4

and administrative procedure and to jurisdiction, and to the designation of an address for
service or the appointment of an agent, which may be required by the laws on industrial
property are expressly reserved.
Article 3
Same Treatment for Certain Categories of Persons as
for Nationals of Countries of the Union
Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of
the Union shall be treated in the same manner as nationals of the countries of the Union.
Article 4
A to I. Patents, Utility Models, Industrial Designs,
Marks, Inventors’ Certificates: Right of Priority
G. Patents: Division of the Application
A.(1) Any person who has duly filed an application for a patent, or for the registration
of a utility model, or of an industrial design, or of a trademark, in one of the countries of
the Union, or his successor in title, shall enjoy, for the purpose of filing in the other
countries, a right of priority during the periods hereinafter fixed.
(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded
between countries of the Union shall be recognized as giving rise to the right of priority.
(3) By a regular national filing is meant any filing that is adequate to establish the
date on which the application was filed in the country concerned, whatever may be the
subsequent fate of the application.
B. Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of
any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the
mark, and such acts cannot give rise to any third-party right or any right of personal
possession. Rights acquired by third parties before the date of the first application that
serves as the basis for the right of priority are reserved in accordance with the domestic
legislation of each country of the Union
C.(1) The periods of priority referred to above shall be twelve months for patents and
utility models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of
filing shall not be included in the period.
(3) If the last day of the period is an official holiday, or a day when the Office is not
open for the filing of applications in the country where protection is claimed, the period
shall be extended until the first following working day.
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union
shall be considered as the first application, of which the filing date shall be the starting
point of the period of priority, if, at the time of filing the subsequent application, the
said previous application has been withdrawn, abandoned, or refused, without having
been laid open to public inspection and without leaving any rights outstanding, and if it
has not yet served as a basis for claiming a right of priority. The previous application
449

Article 4

Paris Convention for the

may not thereafter serve as a basis for claiming a right of priority.
D.(1) Any person desiring to take advantage of the priority of a previous filing shall
be required to make a declaration indicating the date of such filing and the country in
which it was made. Each country shall determine the latest date on which such declaration must be made.
(2) These particulars shall be mentioned in the publications issued by the competent
authority, and in particular in the patents and the specifications relating thereto.
(3) The countries of the Union may require any person making a declaration of priority to produce a copy of the application (description, drawings, etc.) previously filed.
The copy, certified as correct by the authority which received such application, shall
not require any authentication, and may in any case be filed, without fee, at any time
within three months of the filing of the subsequent application. They may require it to
be accompanied by a certificate from the same authority showing the date of filing,
and by a translation.
(4) No other formalities may be required for the declaration of priority at the time of
filing the application. Each country of the Union shall determine the consequences of
failure to comply with the formalities prescribed by this Article, but such consequences
shall in no case go beyond the loss of the right of priority.
(5) Subsequently, further proof may be required.
Any person who avails himself of the priority of a previous application shall be required to specify the number of that application; this number shall be published as provided for by paragraph (2), above.
E.(1) Where an industrial design is filed in a country by virtue of a right of priority
based on the filing of a utility model, the period of priority shall be the same as that fixed
for industrial designs.
(2) Furthermore, it is permissible to file a utility model in a country by virtue of a
right of priority based on the filing of a patent application, and vice versa.
F. No country of the Union may refuse a priority or a patent application on the ground
that the applicant claims multiple priorities, even if they originate in different countries,
or on the ground that an application claiming one or more priorities contains one or more
elements that were not included in the application or applications whose priority is
claimed, provided that, in both cases, there is unity of invention within the meaning of
the law of the country.
With respect to the elements not included in the application or applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions.
G.(1) If the examination reveals that an application for a patent contains more than one
invention, the applicant may divide the application into a certain number of divisional
applications and preserve as the date of each the date of the initial application and the
benefit of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and
preserve as the date of each divisional application the date of the initial application and
the benefit of the right of priority, if any. Each country of the Union shall have the
right to determine the conditions under which such division shall be authorized.
H. Priority may not be refused on the ground that certain elements of the invention for
which priority is claimed do not appear among the claims formulated in the application
in the country of origin, provided that the application documents as a whole specifically
disclose such elements.
I.(1) Applications for inventors’ certificates filed in a country in which applicants have
450

Protection of Industrial Property

Article 5

the right to apply at their own option either for a patent or for an inventor’s certificate
shall give rise to the right of priority provided for by this Article, under the same conditions and with the same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either
for a patent or for an inventor’s certificate, an applicant for an inventor’s certificate
shall, in accordance with the provisions of this Article relating to patent applications,
enjoy a right of priority based on an application for a patent, a utility model, or an
inventor’s certificate.
Article 4bis
Patents: Independence of Patents Obtained for the Same Invention in Different Countries
(1) Patents applied for in the various countries of the Union by nationals of countries
of the Union shall be independent of patents obtained for the same invention in other
countries, whether members of the Union or not.
(2) The foregoing provision is to be understood in an unrestricted sense, in particular,
in the sense that patents applied for during the period of priority are independent, both
as regards the grounds for nullity and forfeiture, and as regards their normal duration.
(3) The provision shall apply to all patents existing at the time when it comes into effect.
(4) Similarly, it shall apply, in the case of the accession of new countries, to patents in
existence on either side at the time of accession.
(5) Patents obtained with the benefit of priority shall, in the various countries of the
Union, have a duration equal to that which they would have, had they been applied for
or granted without the benefit of priority.
Article 4ter
Patents: Mention of the Inventor in the Patent
The inventor shall have the right to be mentioned as such in the patent.
Article 4quater
Patents: Patentability in Case of Restrictions of Sale by Law
The grant of a patent shall not be refused and a patent shall not be invalidated on the
ground that the sale of the patented product or of a product obtained by means of a patented process is subject to restrictions or limitations resulting from the domestic law.
Article 5
A. Patents: Importation of Articles; Failure to Work or
Insufficient Working; Compulsory Licenses
B. Industrial Designs: Failure to Work; Importation of Articles
C. Marks: Failure to Use; Different Forms; Use by Co-proprietors
D. Patents, Utility Models, Marks, Industrial Designs: Marking
A.(1) Importation by the patentee into the country where the patent has been granted
of articles manufactured in any of the countries of the Union shall not entail forfeiture of
the patent.
(2) Each country of the Union shall have the right to take legislative measures
providing for the grant of compulsory licenses to prevent the abuses which might result
from the exercise of the exclusive rights conferred by the patent, for example, failure
to work.
(3) Forfeiture of the patent shall not be provided for except in cases where the grant
451

Article 5bis

Paris Convention for the

of compulsory licenses would not have been sufficient to prevent the said abuses. No
proceedings for the forfeiture or revocation of a patent may be instituted before the
expiration of two years from the grant of the first compulsory license.
(4) A compulsory license may not be applied for on the ground of failure to work or
insufficient working before the expiration of a period of four years from the date of
filing of the patent application or three years from the date of the grant of the patent,
whichever period expires last; it shall be refused if the patentee justifies his inaction
by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not
be transferable, even in the form of the grant of a sub-license, except with that part of
the enterprise or goodwill which exploits such license.
(5) The foregoing provisions shall be applicable, mutatis mutandis, to utility models.
B. The protection of industrial designs shall not, under any circumstance, be subject to
any forfeiture, either by reason of failure to work or by reason of the importation of
articles corresponding to those which are protected.
C.(1) If, in any country, use of the registered mark is compulsory, the registration may
be cancelled only after a reasonable period, and then only if the person concerned does
not justify his inaction.
(2) Use of a trademark by the proprietor in a form differing in elements which do
not alter the distinctive character of the mark in the form in which it was registered in
one of the countries of the Union shall not entail invalidation of the registration and
shall not diminish the protection granted to the mark.
(3) Concurrent use of the same mark on identical or similar goods by industrial or
commercial establishments considered as co-proprietors of the mark according to the
provisions of the domestic law of the country where protection is claimed shall not
prevent registration or diminish in any way the protection granted to the said mark in
any country of the Union, provided that such use does not result in misleading the
public and is not contrary to the public interest.
D. No indication or mention of the patent, of the utility model, of the registration of
the trademark, or of the deposit of the industrial design, shall be required upon the goods
as a condition of recognition of the right to protection.
Article 5bis
All Industrial Property Rights: Period of Grace for the Payment
of Fees for the Maintenance of Rights; Patents: Restoration
(1) A period of grace of not less than six months shall be allowed for the payment of
the fees prescribed for the maintenance of industrial property rights, subject, if the domestic legislation so provides, to the payment of a surcharge.
(2) The countries of the Union shall have the right to provide for the restoration of
patents which have lapsed by reason of non-payment of fees.
Article 5ter
Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles
In any country of the Union the following shall not be considered as infringements of
the rights of a patentee:
(i) the use on board vessels of other countries of the Union of devices forming the
subject of his patent in the body of the vessel, in the machinery, tackle, gear and
other accessories, when such vessels temporarily or accidentally enter the waters of
the said country, provided that such devices are used there exclusively for the needs
452

Protection of Industrial Property

Article 6bis

of the vessel;
(ii) the use of devices forming the subject of the patent in the construction or operation of aircraft or land vehicles of other countries of the Union, or of accessories
of such aircraft or land vehicles, when those aircraft or land vehicles temporarily or
accidentally enter the said country.
Article 5quater
Patents: Importation of Products Manufactured
by a Process Patented in the Importing Country
When a product is imported into a country of the Union where there exists a patent
protecting a process of manufacture of the said product, the patentee shall have all the
rights, with regard to the imported product, that are accorded to him by the legislation of
the country of importation, on the basis of the process patent, with respect to products
manufactured in that country.
Article 5quinquies
Industrial Designs
Industrial designs shall be protected in all the countries of the Union.
Article 6
Marks: Conditions of Registration; Independence of
Protection of Same Mark in Different Countries
(1) The conditions for the filing and registration of trademarks shall be determined in
each country of the Union by its domestic legislation.
(2) However, an application for the registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration
be invalidated, on the ground that filing, registration, or renewal, has not been effected
in the country of origin.
(3) A mark duly registered in a country of the Union shall be regarded as independent
of marks registered in the other countries of the Union, including the country of origin.
Article 6bis
Marks: Well-Known Marks
(1) The countries of the Union undertake, ex officio if their legislation so permits, or
at the request of an interested party, to refuse or to cancel the registration, and to prohibit
the use, of a trademark which constitutes a reproduction, an imitation, or a translation,
liable to create confusion, of a mark considered by the competent authority of the country
of registration or use to be well known in that country as being already the mark of a
person entitled to the benefits of this Convention and used for identical or similar goods.
These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for
requesting the cancellation of such a mark. The countries of the Union may provide for
a period within which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the
use of marks registered or used in bad faith.

453

Article 6ter

Paris Convention for the

Article 6ter
Marks: Prohibitions concerning State Emblems, Official
Hallmarks, and Emblems of Intergovernmental Organizations
(1)(a) The countries of the Union agree to refuse or to invalidate the registration, and
to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags,
and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point
of view.
(b) The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the
exception of armorial bearings, flags, other emblems, abbreviations, and names, that
are already the subject of international agreements in force, intended to ensure their
protection.
(c) No country of the Union shall be required to apply the provisions of subparagraph
(b), above, to the prejudice of the owners of rights acquired in good faith before the
entry into force, in that country, of this Convention. The countries of the Union shall
not be required to apply the said provisions when the use or registration referred to in
subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags,
emblems, abbreviations, and names, or if such use or registration is probably not of
such a nature as to mislead the public as to the existence of a connection between the
user and the organization.
(2) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are
intended to be used on goods of the same or a similar kind.
(3)(a) For the application of these provisions, the countries of the Union agree to communicate reciprocally, through the intermediary of the International Bureau, the list of
State emblems, and official signs and hallmarks indicating control and warranty, which
they desire, or may hereafter desire, to place wholly or within certain limits under the
protection of this Article, and all subsequent modifications of such list. Each country of
the Union shall in due course make available to the public the lists so communicated.
Nevertheless such communication is not obligatory in respect of flags of States.
(b) The provisions of subparagraph (b) of paragraph (1) of this Article shall apply
only to such armorial bearings, flags, other emblems, abbreviations, and names, of
international intergovernmental organizations as the latter have communicated to the
countries of the Union through the intermediary of the International Bureau.
(4) Any country of the Union may, within a period of twelve months from the receipt of
the notification, transmit its objections, if any, through the intermediary of the International
Bureau, to the country or international intergovernmental organization concerned.
(5) In the case of State flags, the measures prescribed by paragraph (1), above, shall
apply solely to marks registered after November 6, 1925.
(6) In the case of State emblems other than flags, and of official signs and hallmarks
of the countries of the Union, and in the case of armorial bearings, flags, other emblems,
abbreviations, and names, of international intergovernmental organizations, these provisions shall apply only to marks registered more than two months after receipt of the
communication provided for in paragraph (3), above.
(7) In cases of bad faith, the countries shall have the right to cancel even those marks
454

Protection of Industrial Property

Article 6quinquies

incorporating State emblems, signs, and hallmarks, which were registered before November 6, 1925.
(8) Nationals of any country who are authorized to make use of the State emblems,
signs, and hallmarks, of their country may use them even if they are similar to those of
another country.
(9) The countries of the Union undertake to prohibit the unauthorized use in trade of
the State armorial bearings of the other countries of the Union, when the use is of such a
nature as to be misleading as to the origin of the goods.
(10) The above provisions shall not prevent the countries from exercising the right
given in paragraph (3) of Article 6quinquies, Section B, to refuse or to invalidate the
registration of marks incorporating, without authorization, armorial bearings, flags, other
State emblems, or official signs and hallmarks adopted by a country of the Union, as well
as the distinctive signs of international intergovernmental organizations referred to in
paragraph (1), above.
Article 6quater
Marks: Assignment of Marks
(1) When, in accordance with the law of a country of the Union, the assignment of a
mark is valid only if it takes place at the same time as the transfer of the business or
goodwill to which the mark belongs, it shall suffice for the recognition of such validity
that the portion of the business or goodwill located in that country be transferred to the
assignee, together with the exclusive right to manufacture in the said country, or to sell
therein, the goods bearing the mark assigned.
(2) The foregoing provision does not impose upon the countries of the Union any obligation to regard as valid the assignment of any mark the use of which by the assignee
would, in fact, be of such a nature as to mislead the public, particularly as regards the
origin, nature, or essential qualities, of the goods to which the mark is applied.
Article 6quinquies
Marks: Protection of Marks Registered in One Country
of the Union in the Other Countries of the Union
A.(1) Every trademark duly registered in the country of origin shall be accepted for
filing and protected as is in the other countries of the Union, subject to the reservations
indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the
competent authority. No authentication shall be required for this certificate.
(2) Shall be considered the country of origin the country of the Union where the
applicant has a real and effective industrial or commercial establishment, or, if he has
no such establishment within the Union, the country of the Union where he has his
domicile, or, if he has no domicile within the Union but is a national of a country of
the Union, the country of which he is a national.
B. Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases:
(i) when they are of such a nature as to infringe rights acquired by third parties in
the country where protection is claimed;
(ii) when they are devoid of any distinctive character, or consist exclusively of
signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production,
or have become customary in the current language or in the bona fide and established
455

Article 6sexies

Paris Convention for the

practices of the trade of the country where protection is claimed;
(iii) when they are contrary to morality or public order and, in particular, of such a
nature as to deceive the public. It is understood that a mark may not be considered
contrary to public order for the sole reason that it does not conform to a provision of
the legislation on marks, except if such provision itself relates to public order.
This provision is subject, however, to the application of Article 10bis.
C.(1) In determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has
been in use.
(2) No trademark shall be refused in the other countries of the Union for the sole
reason that it differs from the mark protected in the country of origin only in respect
of elements that do not alter its distinctive character and do not affect its identity in the
form in which it has been registered in the said country of origin.
D. No person may benefit from the provisions of this Article if the mark for which he
claims protection is not registered in the country of origin.
E. However, in no case shall the renewal of the registration of the mark in the country
of origin involve an obligation to renew the registration in the other countries of the
Union in which the mark has been registered.
F. The benefit of priority shall remain unaffected for applications for the registration
of marks filed within the period fixed by Article 4, even if registration in the country of
origin is effected after the expiration of such period.
Article 6sexies
Marks: Service Marks
The countries of the Union undertake to protect service marks. They shall not be required to provide for the registration of such marks.
Article 6septies
Marks: Registration in the Name of the Agent or Representative
of the Proprietor Without the Latter’s Authorization
(1) If the agent or representative of the person who is the proprietor of a mark in one
of the countries of the Union applies, without such proprietor’s authorization, for the
registration of the mark in his own name, in one or more countries of the Union, the
proprietor shall be entitled to oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favor of the said registration, unless such agent or representative justifies his action.
(2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above,
be entitled to oppose the use of his mark by his agent or representative if he has not
authorized such use.
(3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article.
Article 7
Marks: Nature of the Goods to which the Mark is Applied
The nature of the goods to which a trademark is to be applied shall in no case form an
obstacle to the registration of the mark.

456

Protection of Industrial Property

Article 10

Article 7bis
Marks: Collective Marks
(1) The countries of the Union undertake to accept for filing and to protect collective
marks belonging to associations the existence of which is not contrary to the law of the
country of origin, even if such associations do not possess an industrial or commercial
establishment.
(2) Each country shall be the judge of the particular conditions under which a collective
mark shall be protected and may refuse protection if the mark is contrary to the public
interest.
(3) Nevertheless, the protection of these marks shall not be refused to any association
the existence of which is not contrary to the law of the country of origin, on the ground
that such association is not established in the country where protection is sought or is not
constituted according to the law of the latter country.
Article 8
Trade Names
A trade name shall be protected in all the countries of the Union without the obligation
of filing or registration, whether or not it forms part of a trademark.
Article 9
Marks, Trade Names: Seizure, on Importation, etc., of
Goods Unlawfully Bearing a Mark or Trade Name
(1) All goods unlawfully bearing a trademark or trade name shall be seized on importation into those countries of the Union where such mark or trade name is entitled to legal
protection.
(2) Seizure shall likewise be effected in the country where the unlawful affixation occurred or in the country into which the goods were imported.
(3) Seizure shall take place at the request of the public prosecutor, or any other competent authority, or any interested party, whether a natural person or a legal entity, in
conformity with the domestic legislation of each country.
(4) The authorities shall not be bound to effect seizure of goods in transit.
(5) If the legislation of a country does not permit seizure on importation, seizure shall
be replaced by prohibition of importation or by seizure inside the country.
(6) If the legislation of a country permits neither seizure on importation nor prohibition
of importation nor seizure inside the country, then, until such time as the legislation is
modified accordingly, these measures shall be replaced by the actions and remedies
available in such cases to nationals under the law of such country.
Article 10
False Indications: Seizure, on Importation, etc., of Goods Bearing
False Indications as to their Source or the Identity of the Producer
(1) The provisions of the preceding Article shall apply in cases of direct or indirect use
of a false indication of the source of the goods or the identity of the producer, manufacturer, or merchant.
(2) Any producer, manufacturer, or merchant, whether a natural person or a legal entity, engaged in the production or manufacture of or trade in such goods and established
either in the locality falsely indicated as the source, or in the region where such locality
is situated, or in the country falsely indicated, or in the country where the false indication
457

Article 10bis

Paris Convention for the

of source is used, shall in any case be deemed an interested party.
Article 10bis
Unfair Competition
(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial
matters constitutes an act of unfair competition.
(3) The following in particular shall be prohibited:
(i) all acts of such a nature as to create confusion by any means whatever with the
establishment, the goods, or the industrial or commercial activities, of a competitor;
(ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
(iii) indications or allegations the use of which in the course of trade is liable to
mislead the public as to the nature, the manufacturing process, the characteristics,
the suitability for their purpose, or the quantity, of the goods.
Article 10ter
Marks, Trade Names, False Indications, Unfair Competition: Remedies, Right to Sue
(1) The countries of the Union undertake to assure to nationals of the other countries
of the Union appropriate legal remedies effectively to repress all the acts referred to in
Articles 9, 10, and 10bis.
(2) They undertake, further, to provide measures to permit federations and associations
representing interested industrialists, producers, or merchants, provided that the existence of such federations and associations is not contrary to the laws of their countries, to
take action in the courts or before the administrative authorities, with a view to the repression of the acts referred to in Articles 9, 10, and 10bis, in so far as the law of the
country in which protection is claimed allows such action by federations and associations
of that country.
Article 11
Inventions, Utility Models, Industrial Designs, Marks:
Temporary Protection at Certain International Exhibitions
(1) The countries of the Union shall, in conformity with their domestic legislation,
grant temporary protection to patentable inventions, utility models, industrial designs,
and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them.
(2) Such temporary protection shall not extend the periods provided by Article 4. If,
later, the right of priority is invoked, the authorities of any country may provide that the
period shall start from the date of introduction of the goods into the exhibition.
(3) Each country may require, as proof of the identity of the article exhibited and of
the date of its introduction, such documentary evidence as it considers necessary.
Article 12
Special National Industrial Property Services
(1) Each country of the Union undertakes to establish a special industrial property service and a central office for the communication to the public of patents, utility models,
industrial designs, and trademarks.
(2) This service shall publish an official periodical journal. It shall publish regularly:
458

Protection of Industrial Property

Article 13

(a) the names of the proprietors of patents granted, with a brief designation of the
inventions patented;
(b) the reproductions of registered trademarks.
Article 13
Assembly of the Union
(1)(a) The Union shall have an Assembly consisting of those countries of the Union
which are bound by Articles 13 to 17.
(b) The Government of each country shall be represented by one delegate, who may
be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be borne by the Government which has
appointed it.
(2)(a) The Assembly shall:
(i) deal with all matters concerning the maintenance and development of the Union
and the implementation of this Convention;
(ii) give directions concerning the preparation for conferences of revision to the
International Bureau of Intellectual Property (hereinafter designated as “the International Bureau”) referred to in the Convention establishing the World Intellectual
Property Organization (hereinafter designated as “the Organization”), due account
being taken of any comments made by those countries of the Union which are not
hound by Articles 13 to 17;
(iii) review and approve the reports and activities of the Director General of the
Organization concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;
(iv) elect the members of the Executive Committee of the Assembly;
(v) review and approve the reports and activities of its Executive Committee, and
give instructions to such Committee;
(vi) determine the program and adopt the biennial budget of the Union, and approve its final accounts;
(vii) adopt the financial regulations of the Union;
(viii) establish such committees of experts and working groups as it deems appropriate to achieve the objectives of the Union;
(ix) determine which countries not members of the Union and which intergovernmental and international nongovernmental organizations shall be admitted to its
meetings as observers;
(x) adopt amendments to Articles 13 to 17;
(xi) take any other appropriate action designed to further the objectives of the Union;
(xii) perform such other functions as are appropriate under this Convention;
(xiii) subject to its acceptance, exercise such rights as are given to it in the Convention establishing the Organization.
(b) With respect to matters which are of interest also to other Unions administered
by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(3)(a) Subject to the provisions of subparagraph (b), a delegate may represent one
country only.
(b) Countries of the Union grouped under the terms of a special agreement in a common office possessing for each of them the character of a special national service of
industrial property as referred to in Article 12 may be jointly represented during discussions by one of their number.
459

Article 14

Paris Convention for the

(4)(a) Each country member of the Assembly shall have one vote.
(b) One-half of the countries members of the Assembly shall constitute a quorum.
(c) Notwithstanding the provisions of subparagraph (b), if, in any session, the number of countries represented is less than one-half but equal to or more than one-third
of the countries members of the Assembly, the Assembly may make decisions but,
with the exception of decisions concerning its own procedure, all such decisions shall
take effect only if the conditions, set forth hereinafter are fulfilled. The International
Bureau shall communicate the said decisions to the countries members of the Assembly which were not represented and shall invite them to express in writing their vote
or abstention within a period of three months from the date of the communication. If,
at the expiration of this period, the number of countries having thus expressed their
vote or abstention attains the number of countries which was lacking for attaining the
quorum in the session itself, such decisions shall take effect provided that at the same
time the required majority still obtains.
(d) Subject to the provisions of Article 17(2), the decisions of the Assembly shall
require two-thirds of the votes cast.
(e) Abstentions shall not be considered as votes.
(5)(a) Subject to the provisions of subparagraph (b), a delegate may vote in the name
of one country only.
(b) The countries of the Union referred to in paragraph (3)(b) shall, as a general rule,
endeavor to send their own delegations to the sessions of the Assembly. If, however,
for exceptional reasons, any such country cannot send its own delegation, it may give
to the delegation of another such country the power to vote in its name, provided that
each delegation may vote by proxy for one country only. Such power to vote shall be
granted in a document signed by the Head of State or the competent Minister.
(6) Countries of the Union not members of the Assembly shall be admitted to the meetings of the latter as observers.
(7)(a) The Assembly shall meet once in every second calendar year in ordinary session
upon convocation by the Director General and, in the absence of exceptional circumstances, during the same period and at the same place as the General Assembly of the
Organization.
(b) The Assembly shall meet in extraordinary session upon convocation by the Director General, at the request of the Executive Committee or at the request of onefourth of the countries members of the Assembly.
(8) The Assembly shall adopt its own rules of procedure.
Article 14
Executive Committee
(1) The Assembly shall have an Executive Committee.
(2)(a) The Executive Committee shall consist of countries elected by the Assembly
from among countries members of the Assembly. Furthermore, the country on whose
territory the Organization has its headquarters shall, subject to the provisions of Article
16(7)(b), have an ex officio seat on the Committee.
(b) The Government of each country member of the Executive Committee shall be
represented by one delegate, who may be assisted by alternate delegates, advisors, and
experts.
(c) The expenses of each delegation shall be borne by the Government which has
appointed it.
(3) The number of countries members of the Executive Committee shall correspond to
460

Protection of Industrial Property

Article 15

one-fourth of the number of countries members of the Assembly. In establishing the
number of seats to be filled, remainders after division by four shall be disregarded.
(4) In electing the members of the Executive Committee, the Assembly shall have due
regard to an equitable geographical distribution and to the need for countries party to the
Special Agreements established in relation with the Union to be among the countries
constituting the Executive Committee.
(5)(a) Each member of the Executive Committee shall serve from the close of the session
of the Assembly which elected it to the close of the next ordinary session of the Assembly.
(b) Members of the Executive Committee may be re-elected, but only up to a maximum of two-thirds of such members.
(c) The Assembly shall establish the details of the rules governing the election and
possible re-election of the members of the Executive Committee.
(6)(a) The Executive Committee shall:
(i) prepare the draft agenda of the Assembly;
(ii) submit proposals to the Assembly in respect of the draft program and biennial
budget of the Union prepared by the Director General;
(iii) [deleted]
(iv) submit, with appropriate comments, to the Assembly the periodical reports of
the Director General and the yearly audit reports on the accounts;
(v) take all necessary measures to ensure the execution of the program of the Union
by the Director General, in accordance with the decisions of the Assembly and having
regard to circumstances arising between two ordinary sessions of the Assembly;
(vi) perform such other functions as are allocated to it under this Convention.
(b) With respect to matters which are of interest also to other Unions administered
by the Organization, the Executive Committee shall make its decisions after having
heard the advice of the Coordination Committee of the Organization.
(7)(a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same
place as the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon convocation
by the Director General, either on his own initiative, or at the request of its Chairman
or one-fourth of its members.
(8)(a) Each country member of the Executive Committee shall have one vote.
(b) One-half of the members of the Executive Committee shall constitute a quorum.
(c) Decisions shall be made by a simple majority of the votes cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one country only.
(9) Countries of the Union not members of the Executive Committee shall be admitted
to its meetings as observers.
(10) The Executive Committee shall adopt its own rules of procedure.
Article 15
International Bureau
(1)(a) Administrative tasks concerning the Union shall be performed by the International Bureau, which is a continuation of the Bureau of the Union united with the Bureau
of the Union established by the International Convention for the Protection of Literary
and Artistic Works.
(b) In particular, the International Bureau shall provide the secretariat of the various
organs of the Union.
461

Article 16

Paris Convention for the

(c) The Director General of the Organization shall be the chief executive of the Union and shall represent the Union.
(2) The International Bureau shall assemble and publish information concerning the
protection of industrial property. Each country of the Union shall promptly communicate
to the International Bureau all new laws and official texts concerning the protection of
industrial property. Furthermore, it shall furnish the International Bureau with all the
publications of its industrial property service of direct concern to the protection of industrial property which the International Bureau may find useful in its work.
(3) The International Bureau shall publish a monthly periodical.
(4) The International Bureau shall, on request, furnish any country of the Union with
information on matters concerning the protection of industrial property.
(5) The International Bureau shall conduct Studies, and shall provide services, designed to facilitate the protection of industrial property.
(6) The Director General and any staff member designated by him shall participate,
without the right to vote, in all meetings of the Assembly, the Executive Committee, and
any other committee of experts or working group. The Director General, or a staff member designated by him, shall be ex officio secretary of these bodies.
(7)(a) The International Bureau shall, in accordance with the directions of the Assembly
and in cooperation with the Executive Committee, make the preparations for the conferences of revision of the provisions of the Convention other than Articles 13 to 17.
(b) The International Bureau may consult with intergovernmental and international
non-governmental organizations concerning preparations for conferences of revision.
(c) The Director General and persons designated by him shall take part, without the
right to vote, in the discussions at these conferences.
(8) The International Bureau shall carry out any other tasks assigned to it.
Article 16
Finances
(1)(a) The Union shall have a budget.
(b) The budget of the Union shall include the income and expenses proper to the Union, its contribution to the budget of expenses common to the Unions, and, where applicable, the sum made available to the budget of the Conference of the Organization.
(c) Expenses not attributable exclusively to the Union but also to one or more other
Unions administered by the Organization shall be considered as expenses common to
the Unions. The share of the Union in such common expenses shall be in proportion
to the interest the Union has in them.
(2) The budget of the Union shall be established with due regard to the requirements
of coordination with the budgets of the other Unions administered by the Organization.
(3) The budget of the Union shall be financed from the following sources:
(i) contributions of the countries of the Union;
(ii) fees and charges due for services rendered by the International Bureau in relation to the Union;
(iii) sale of, or royalties on, the publications of the International Bureau concerning
the Union;
(iv) gifts, bequests, and subventions;
(v) rents, interests, and other miscellaneous income.
(4)(a) For the purpose of establishing its contribution towards the budget, each country
of the Union shall belong to a class, and shall pay its annual contributions on the basis
of a number of units fixed as follows:
462

Protection of Industrial Property

Article 16

Class I ................ 25
Class II ............... 20
Class III .............. 15
Class IV .............. 10
Class V ................. 5
Class VI ................ 3
Class VII ............... 1
(b) Unless it has already done so, each country shall indicate, concurrently with depositing its instrument of ratification or accession, the class to which it wishes to belong. Any
country may change class. If it chooses a lower class, the country must announce such
change to the Assembly at one of its ordinary sessions. Any such change shall take effect
at the beginning of the calendar year following the said session.
(c) The annual contribution of each country shall be an amount in the same proportion to the total sum to be contributed to the budget of the Union by all countries as the
number of its units is to the total of the units of all contributing countries.
(d) Contributions shall become due on the first of January of each year.
(e) A country which is in arrears in the payment of its contributions may not exercise
its right to vote in any of the organs of the Union of which it is a member if the amount
of its arrears equals or exceeds the amount of the contributions due from it for the preceding two full years. However, any organ of the Union may allow such a country to
continue to exercise its right to vote in that organ if, and as long as, it is satisfied that
the delay in payment is due to exceptional and unavoidable circumstances.
(f) If the budget is not adopted before the beginning of a new financial period, it shall
be at the same level as the budget of the previous year, as provided in the financial
regulations.
(5) The amount of the fees and charges due for services rendered by the International
Bureau in relation to the Union shall be established, and shall be reported to the Assembly and the Executive Committee, by the Director General.
(6)(a) The Union shall have a working capital fund which shall be constituted by a
single payment made by each country of the Union. If the fund becomes insufficient, the
Assembly shall decide to increase it.
(b) The amount of the initial payment of each country to the said fund or of its participation in the increase thereof shall be a proportion of the contribution of that country
for the year in which the fund is established or the decision to increase it is made.
(c) The proportion and the terms of payment shall be fixed by the Assembly on the
proposal of the Director General and after it has heard the advice of the Coordination
Committee of the Organization.
(7)(a) In the headquarters agreement concluded with the country on the territory of
which the Organization has its headquarters, it shall be provided that, whenever the
working capital fund is insufficient, such country shall grant advances. The amount of
these advances and the conditions on which they are granted shall be the subject of
separate agreements, in each case, between such country and the Organization. As long
as it remains under the obligation to grant advances, such country shall have an ex officio seat on the Executive Committee.
(b) The country referred to in subparagraph (a) and the Organization shall each have
the right to denounce the obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.
(8) The auditing of the accounts shall be effected by one or more of the countries of
463

Article 17

Paris Convention for the

the Union or by external auditors, as provided in the financial regulations. They shall be
designated, with their agreement, by the Assembly.
Article 17
Amendment of Articles 13 to 17
(1) Proposals for the amendment of Articles 13, 14, 15, 16, and the present Article,
may be initiated by any country member of the Assembly, by the Executive Committee,
or by the Director General. Such proposals shall be communicated by the Director General to the member countries of the Assembly at least six months in advance of their
consideration by the Assembly.
(2) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly. Adoption shall require three-fourths of the votes cast, provided that any amendment to Article 13, and to the present paragraph, shall require four-fifths of the votes cast.
(3) Any amendment to the Articles referred to in paragraph (1) shall enter into force
one month after written notifications of acceptance, effected in accordance with their
respective constitutional processes, have been received by the Director General from
three-fourths of the countries members of the Assembly at the time it adopted the amendment. Any amendment to the said Articles thus accepted shall bind all the countries
which are members of the Assembly at the time the amendment enters into force, or
which become members thereof at a subsequent date, provided that any amendment increasing the financial obligations of countries of the Union shall bind only those countries which have notified their acceptance of such amendment.
Article 18
Revision of Articles 1 to 12 and 18 to 30
(1) This Convention shall be submitted to revision with a view to the introduction of
amendments designed to improve the system of the Union.
(2) For that purpose, conferences shall be held successively in one of the countries of
the Union among the delegates of the said countries.
(3) Amendments to Articles 13 to 17 are governed by the provisions of Article 17.
Article 19
Special Agreements
It is understood that the countries of the Union reserve the right to make separately
between themselves special agreements for the protection of industrial property, in so far
as these agreements do not contravene the provisions of this Convention.
Article 20
Ratification or Accession by Countries of the Union; Entry Into Force
(1)(a) Any country of the Union which has signed this Act may ratify it, and, if it has
not signed it, may accede to it. Instruments of ratification and accession shall be deposited with the Director General.
(b) Any country of the Union may declare in its instrument of ratification or accession that its ratification or accession shall not apply:
(i) to Articles 1 to 12, or
(ii) to Articles 13 to 17.
(c) Any country of the Union which, in accordance with subparagraph (b), has excluded from the effects of its ratification or accession one of the two groups of Articles
464

Protection of Industrial Property

Article 21

referred to in that subparagraph may at any later time declare that it extends the effects
of its ratification or accession to that group of Articles. Such declaration shall be deposited with the Director General.
(2)(a) Articles 1 to 12 shall enter into force, with respect to the first ten countries of
the Union which have deposited instruments of ratification or accession without making
the declaration permitted under paragraph (1)(b)(i), three months after the deposit of the
tenth such instrument of ratification or accession.
(b) Articles 13 to 17 shall enter into force, with respect to the first ten countries of
the Union which have deposited instruments of ratification or accession without making the declaration permitted under paragraph (1)(b)(ii), three months after the deposit
of the tenth such instrument of ratification or accession.
(c) Subject to the initial entry into force, pursuant to the provisions of subparagraphs (a)
and (b), of each of the two groups of Articles referred to in paragraph (1)(b)(i) and (ii), and
subject to the provisions of paragraph (1)(b), Articles 1 to 17 shall, with respect to any
country of the Union, other than those referred to in subparagraphs (a) and (b), which deposits an instrument of ratification or accession or any country of the Union which deposits
a declaration pursuant to paragraph (1)(c), enter into force three months after the date of
notification by the Director General of such deposit, unless a subsequent date has been
indicated in the instrument or declaration deposited. In the latter case, this Act shall enter
into force with respect to that country on the date thus indicated.
(3) With respect to any country of the Union which deposits an instrument of ratification or accession, Articles 18 to 30 shall enter into force on the earlier of the dates on
which any of the groups of Articles referred to in paragraph (1)(b) enters into force with
respect to that country pursuant to paragraph (2)(a), (b), or (c).
Article 21
Accession by Countries Outside the Union; Entry Into Force
(1) Any country outside the Union may accede to this Act and thereby become a member
of the Union. Instruments of accession shall be deposited with the Director General.
(2)(a) With respect to any country outside the Union which deposits its instrument of
accession one month or more before the date of entry into force of any provisions of the
present Act, this Act shall enter into force, unless a subsequent date has been indicated
in the instrument of accession, on the date upon which provisions first enter into force
pursuant to Article 20(2)(a) or (b); provided that:
(i) if Articles 1 to 12 do not enter into force on that date, such country shall, during
the interim period before the entry into force of such provisions, and in substitution
therefor, be bound by Articles 1 to 12 of the Lisbon Act,
(ii) if Articles 13 to 17 do not enter into force on that date, such country shall, during
the interim period before the entry into force of such provisions, and in substitution
therefor, be bound by Articles 13 and 14(3), (4), and (5), of the Lisbon Act.
If a country indicates a subsequent date in its instrument of accession, this Act shall
enter into force with respect to that country on the date thus indicated.
(b) With respect to any country outside the Union which deposits its instrument of
accession on a date which is subsequent to, or precedes by less than one month, the
entry into force of one group of Articles of the present Act, this Act shall, subject to
the proviso of subparagraph (a), enter into force three months after the date on which
its accession has been notified by the Director General, unless a subsequent date has
been indicated in the instrument of accession. In the latter case, this Act shall enter into
force with respect to that country on the date thus indicated.
465

Article 22

Paris Convention for the

(3) With respect to any country outside the Union which deposits its instrument Of
accession after the date of entry into force of the present Act in its entirety, or less than
one month before such date, this Act shall enter into force three months after the date on
which its accession has been notified by the Director General, unless a subsequent date
has been indicated in the instrument of accession. In the latter case, this Act shall enter
into force with respect to that country on the date thus indicated.
Article 22
Consequences of Ratification or Accession
Subject to the possibilities of exceptions provided for in Articles 20(1)(b) and 28(2),
ratification or accession shall automatically entail acceptance of all the clauses and admission to all the advantages of this Act.
Article 23
Accession to Earlier Acts
After the entry into force of this Act in its entirety, a country may not accede to earlier
Acts of this Convention.
Article 24
Territories
(1) Any country may declare in its instrument of ratification or accession, or may inform the Director General by written notification any time thereafter, that this Convention shall be applicable to all or part of those territories, designated in the declaration or
notification, for the external relations of which it is responsible.
(2) Any country which has made such a declaration or given such a notification may,
at any time, notify the Director General that this Convention shall cease to be applicable
to all or part of such territories.
(3)(a) Any declaration made under paragraph (1) shall take effect on the same date as
the ratification or accession in the instrument of which it was included, and any notification given under such paragraph shall take effect three months after its notification by
the Director General.
(b) Any notification given under paragraph (2) shall take effect twelve months after
its receipt by the Director General.
Article 25
Implementation of the Convention on the Domestic Level
(1) Any country party to this Convention undertakes to adopt, in accordance with its
constitution, the measures necessary to ensure the application of this Convention.
(2) It is understood that, at the time a country deposits its instrument of ratification or
accession, it will be in a position under its domestic law to give effect to the provisions
of this Convention.
Article 26
Denunciation
(1) This Convention shall remain in force without limitation as to time.
(2) Any country may denounce this Act by notification addressed to the Director General. Such denunciation shall constitute also denunciation of all earlier Acts and shall
466

Protection of Industrial Property

Article 28

affect only the country making it, the Convention remaining in full force and effect as
regards the other countries of the Union.
(3) Denunciation shall take effect one year after the day on which the Director General
has received the notification.
(4) The right of denunciation provided by this Article shall not be exercised by any
country before the expiration of five years from the date upon which it becomes a member of the Union.
Article 27
Application of Earlier Acts
(1) The present Act shall, as regards the relations between the countries to which it
applies, and to the extent that it applies, replace the Convention of Paris of March 20,
1883 and the subsequent Acts of revision.
(2)(a) As regards the countries to which the present Act does not apply, or does not
apply in its entirety, but to which the Lisbon Act of October 31, 1958, applies, the latter
shall remain in force in its entirety or to the extent that the present Act does not replace
it by virtue of paragraph (1).
(b) Similarly, as regards the countries to which neither the present Act, nor portions
thereof, nor the Lisbon Act applies, the London Act of June 2, 1934, shall remain in
force in its entirety or to the extent that the present Act does not replace it by virtue of
paragraph (1).
(c) Similarly, as regards the countries to which neither the present Act, nor portions
thereof, nor the Lisbon Act, nor the London Act applies, the Hague Act of November
6, 1925, shall remain in force in its entirety or to the extent that the present Act does
not replace it by virtue of paragraph (1).
(3) Countries outside the Union which become party to this Act shall apply it with
respect to any country of the Union not party to this Act or which, although party to this
Act, has made a declaration pursuant to Article 20(1)(b)(i). Such countries recognize that
the said country of the Union may apply, in its relations with them, the provisions of the
most recent Act to which it is party.
Article 28
Disputes
(1) Any dispute between two or more countries of the Union concerning the interpretation or application of this Convention, not settled by negotiation, may, by any one of
the countries concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the countries concerned agree on
some other method of settlement. The country bringing the dispute before the Court shall
inform the International Bureau; the International Bureau shall bring the matter to the
attention of the other countries of the Union.
(2) Each country may, at the time it signs this Act or deposits its instrument of ratification or accession, declare that it does not consider itself bound by the provisions of
paragraph (1). With regard to any dispute between such country and any other country
of the Union, the provisions of paragraph (1) shall not apply.
(3) Any country having made a declaration in accordance with the provisions of paragraph (2) may, at any time, withdraw its declaration by notification addressed to the
Director General.

467

Article 29

Paris Convention for the

Article 29
Signature, Languages, Depositary Functions
(1)(a) This Act shall be signed in a single copy in the French language and shall be
deposited with the Government of Sweden.
(b) Official texts shall be established by the Director General, after consultation with
the interested Governments, in the English, German, Italian, Portuguese, Russian and
Spanish languages, and such other languages as the Assembly may designate.
(c) In case of differences of opinion on the interpretation of the various texts, the
French text shall prevail.
(2) This Act shall remain open for signature at Stockholm until January 13, 1968.
(3) The Director General shall transmit two copies, certified by the Government of
Sweden, of the signed text of this Act to the Governments of all countries of the Union
and, on request, to the Government of any other country.
(4) The Director General shall register this Act with the Secretariat of the United Nations.
(5) The Director General shall notify the Governments of all countries of the Union of
signatures, deposits of instruments of ratification or accession and any declarations included
in such instruments or made pursuant to Article 20(1)(c), entry into force of any provisions
of this Act, notifications of denunciation, and notifications pursuant to Article 24.
Article 30
Transitional Provisions
(1) Until the first Director General assumes office, references in this Act to the International Bureau of the Organization or to the Director General shall be deemed to be
references to the Bureau of the Union or its Director, respectively.
(2) Countries of the Union not bound by Articles 13 to 17 may, until five years after
the entry into force of the Convention establishing the Organization, exercise, if they so
desire, the rights provided under Articles 13 to 17 of this Act as if they were bound by
those Articles. Any country desiring to exercise such rights shall give written notification
to that effect to the Director General; such notification shall be effective from the date of
its receipt. Such countries shall be deemed to be members of the Assembly until the
expiration of the said period.
(3) As long as all the countries of the Union have not become Members of the Organization, the International Bureau of the Organization shall also function as the Bureau of
the Union, and the Director General as the Director of the said Bureau.
(4) Once all the countries of the Union have become Members of the Organization, the
rights, obligations, and property, of the Bureau of the Union shall devolve on the International Bureau of the Organization.

468

[JB/JJ Note: The TRIPS Agreement is Annex 1C of the Marrakesh Agreement establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994.]

AGREEMENT ON TRADE-RELATED ASPECTS
OF INTELLECTUAL PROPERTY RIGHTS
PART I GENERAL PROVISIONS AND BASIC PRINCIPLES
PART II STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF
INTELLECTUAL PROPERTY RIGHTS
1.
Copyright and Related Rights
2.
Trademarks
3.
Geographical Indications
4.
Industrial Designs
5.
Patents
6.
Layout-Designs (Topographies) of Integrated Circuits
7.
Protection of Undisclosed Information
8.
Control of Anti-Competitive Practices in Contractual Licences
PART III ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
1.
General Obligations
2.
Civil and Administrative Procedures and Remedies
3.
Provisional Measures
4.
Special Requirements Related to Border Measures
5.
Criminal Procedures
PART IV ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY
RIGHTS AND RELATED INTER-PARTES PROCEDURES
PART V DISPUTE PREVENTION AND SETTLEMENT
PART VI TRANSITIONAL ARRANGEMENTS
PART VII INSTITUTIONAL ARRANGEMENTS; FINAL PROVISIONS

Members,
Desiring to reduce distortions and impediments to international trade, and taking into
account the need to promote effective and adequate protection of intellectual property
rights, and to ensure that measures and procedures to enforce intellectual property rights
do not themselves become barriers to legitimate trade;
Recognizing, to this end, the need for new rules and disciplines concerning:
(a) the applicability of the basic principles of GATT 1994 and of relevant international intellectual property agreements or conventions;
(b) the provision of adequate standards and principles concerning the availability,
scope and use of trade-related intellectual property rights;
(c) the provision of effective and appropriate means for the enforcement of traderelated intellectual property rights, taking into account differences in national legal
systems;
(d) the provision of effective and expeditious procedures for the multilateral prevention and settlement of disputes between governments; and
469

Article 1

Agreement on Trade-Related Aspects

(e) transitional arrangements aiming at the fullest participation in the results of the
negotiations;
Recognizing the need for a multilateral framework of principles, rules and disciplines
dealing with international trade in counterfeit goods;
Recognizing that intellectual property rights are private rights;
Recognizing the underlying public policy objectives of national systems for the protection of intellectual property, including developmental and technological objectives;
Recognizing also the special needs of the least-developed country Members in respect
of maximum flexibility in the domestic implementation of laws and regulations in order
to enable them to create a sound and viable technological base;
Emphasizing the importance of reducing tensions by reaching strengthened commitments to resolve disputes on trade-related intellectual property issues through multilateral procedures;
Desiring to establish a mutually supportive relationship between the WTO and the
World Intellectual Property Organization (referred to in this Agreement as “WIPO”) as
well as other relevant international organizations;
Hereby agree as follows:
PART I
GENERAL PROVISIONS AND BASIC PRINCIPLES
Article 1
Nature and Scope of Obligations
1. Members shall give effect to the provisions of this Agreement. Members may, but
shall not be obliged to, implement in their law more extensive protection than is required
by this Agreement, provided that such protection does not contravene the provisions of this
Agreement. Members shall be free to determine the appropriate method of implementing
the provisions of this Agreement within their own legal system and practice.
2. For the purposes of this Agreement, the term “intellectual property” refers to all
categories of intellectual property that are the subject of Sections 1 through 7 of Part II.
3. Members shall accord the treatment provided for in this Agreement to the nationals
of other Members.1
In respect of the relevant intellectual property right, the nationals of other Members
shall be understood as those natural or legal persons that would meet the criteria for
eligibility for protection provided for in the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of
Integrated Circuits, were all Members of the WTO members of those conventions.2 Any
Member availing itself of the possibilities provided in paragraph 3 of Article 5 or paragraph 2 of Article 6 of the Rome Convention shall make a notification as foreseen in
1 When “nationals” are referred to in this Agreement, they shall be deemed, in the case of a separate customs

territory Member of the WTO, to mean persons, natural or legal, who are domiciled or who have a real and
effective industrial or commercial establishment in that customs territory.
2 In this Agreement, “Paris Convention” refers to the Paris Convention for the Protection of Industrial Prop-

erty; “Paris Convention (1967)” refers to the Stockholm Act of this Convention of 14 July 1967. “Berne
Convention” refers to the Berne Convention for the Protection of Literary and Artistic Works; “Berne Convention (1971)” refers to the Paris Act of this Convention of 24 July 1971. “Rome Convention” refers to the
International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, adopted at Rome on 26 October 1961. “Treaty on Intellectual Property in Respect of Integrated
Circuits” (IPIC Treaty) refers to the Treaty on Intellectual Property in Respect of Integrated Circuits, adopted
at Washington on 26 May 1989. “WTO Agreement” refers to the Agreement Establishing the WTO.
470

of Intellectual Property Rights (TRIPS)

Article 4

those provisions to the Council for Trade-Related Aspects of Intellectual Property Rights
(the “Council for TRIPS”).
Article 2
Intellectual Property Conventions
1. In respect of Parts II, III and IV of this Agreement, Members shall comply with
Articles 1 through 12, and Article 19, of the Paris Convention (1967).
2. Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that
Members may have to each other under the Paris Convention, the Berne Convention, the
Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits.
Article 3
National Treatment
1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection3 of intellectual property, subject to the exceptions already provided in, respectively, the Paris
Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty
on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in
respect of the rights provided under this Agreement. Any Member availing itself of the
possibilities provided in Article 6 of the Berne Convention (1971) or paragraph 1(b) of
Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for TRIPS.
2. Members may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative procedures, including the designation of an address for
service or the appointment of an agent within the jurisdiction of a Member, only where
such exceptions are necessary to secure compliance with laws and regulations which are
not inconsistent with the provisions of this Agreement and where such practices are not
applied in a manner which would constitute a disguised restriction on trade.
Article 4
Most-Favoured-Nation Treatment
With regard to the protection of intellectual property, any advantage, favour, privilege
or immunity granted by a Member to the nationals of any other country shall be accorded
immediately and unconditionally to the nationals of all other Members. Exempted from
this obligation are any advantage, favour, privilege or immunity accorded by a Member:
(a) deriving from international agreements on judicial assistance or law enforcement of
a general nature and not particularly confined to the protection of intellectual property;
(b) granted in accordance with the provisions of the Berne Convention (1971) or the
Rome Convention authorizing that the treatment accorded be a function not of national
treatment but of the treatment accorded in another country;
(c) in respect of the rights of performers, producers of phonograms and broadcasting
organizations not provided under this Agreement;
(d) deriving from international agreements related to the protection of intellectual
property which entered into force prior to the entry into force of the WTO Agreement,
3 For the purposes of Articles 3 and 4, “protection” shall include matters affecting the availability, acquisi-

tion, scope, maintenance and enforcement of intellectual property rights as well as those matters affecting
the use of intellectual property rights specifically addressed in this Agreement.
471

Article 5

Agreement on Trade-Related Aspects

provided that such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members.
Article 5
Multilateral Agreements on Acquisition or Maintenance of Protection
The obligations under Articles 3 and 4 do not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or
maintenance of intellectual property rights.
Article 6
Exhaustion
For the purposes of dispute settlement under this Agreement, subject to the provisions
of Articles 3 and 4 nothing in this Agreement shall be used to address the issue of the
exhaustion of intellectual property rights.
Article 7
Objectives
The protection and enforcement of intellectual property rights should contribute to the
promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in
a manner conducive to social and economic welfare, and to a balance of rights and obligations.
Article 8
Principles
1. Members may, in formulating or amending their laws and regulations, adopt
measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement.
2. Appropriate measures, provided that they are consistent with the provisions of this
Agreement, may be needed to prevent the abuse of intellectual property rights by right
holders or the resort to practices which unreasonably restrain trade or adversely affect
the international transfer of technology.
PART II
STANDARDS CONCERNING THE AVAILABILITY, SCOPE
AND USE OF INTELLECTUAL PROPERTY RIGHTS
SECTION 1: COPYRIGHT AND RELATED RIGHTS
Article 9
Relation to the Berne Convention
1. Members shall comply with Articles 1 through 21 of the Berne Convention (1971)
and the Appendix thereto. However, Members shall not have rights or obligations under
this Agreement in respect of the rights conferred under Article 6bis of that Convention
or of the rights derived therefrom.
2. Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.
472

of Intellectual Property Rights (TRIPS)

Article 14

Article 10
Computer Programs and Compilations of Data
1. Computer programs, whether in source or object code, shall be protected as literary
works under the Berne Convention (1971).
2. Compilations of data or other material, whether in machine readable or other form,
which by reason of the selection or arrangement of their contents constitute intellectual
creations shall be protected as such. Such protection, which shall not extend to the data
or material itself, shall be without prejudice to any copyright subsisting in the data or
material itself.
Article 11
Rental Rights
In respect of at least computer programs and cinematographic works, a Member shall
provide authors and their successors in title the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. A Member
shall be excepted from this obligation in respect of cinematographic works unless such
rental has led to widespread copying of such works which is materially impairing the
exclusive right of reproduction conferred in that Member on authors and their successors
in title. In respect of computer programs, this obligation does not apply to rentals where
the program itself is not the essential object of the rental.
Article 12
Term of Protection
Whenever the term of protection of a work, other than a photographic work or a work
of applied art, is calculated on a basis other than the life of a natural person, such term
shall be no less than 50 years from the end of the calendar year of authorized publication,
or, failing such authorized publication within 50 years from the making of the work, 50
years from the end of the calendar year of making.
Article 13
Limitations and Exceptions
Members shall confine limitations or exceptions to exclusive rights to certain special
cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.
Article 14
Protection of Performers, Producers of Phonograms
(Sound Recordings) and Broadcasting Organizations
1. In respect of a fixation of their performance on a phonogram, performers shall have
the possibility of preventing the following acts when undertaken without their authorization: the fixation of their unfixed performance and the reproduction of such fixation.
Performers shall also have the possibility of preventing the following acts when undertaken without their authorization: the broadcasting by wireless means and the communication to the public of their live performance.
2. Producers of phonograms shall enjoy the right to authorize or prohibit the direct or
indirect reproduction of their phonograms.
3. Broadcasting organizations shall have the right to prohibit the following acts when
473

Article 15

Agreement on Trade-Related Aspects

undertaken without their authorization: the fixation, the reproduction of fixations, and
the rebroadcasting by wireless means of broadcasts, as well as the communication to the
public of television broadcasts of the same. Where Members do not grant such rights to
broadcasting organizations, they shall provide owners of copyright in the subject matter
of broadcasts with the possibility of preventing the above acts, subject to the provisions
of the Berne Convention (1971).
4. The provisions of Article 11 in respect of computer programs shall apply mutatis
mutandis to producers of phonograms and any other right holders in phonograms as determined in a Member’s law. If on 15 April 1994 a Member has in force a system of
equitable remuneration of right holders in respect of the rental of phonograms, it may
maintain such system provided that the commercial rental of phonograms is not giving
rise to the material impairment of the exclusive rights of reproduction of right holders.
5. The term of the protection available under this Agreement to performers and producers of phonograms shall last at least until the end of a period of 50 years computed
from the end of the calendar year in which the fixation was made or the performance
took place. The term of protection granted pursuant to paragraph 3 shall last for at least
20 years from the end of the calendar year in which the broadcast took place.
6. Any Member may, in relation to the rights conferred under paragraphs 1, 2 and 3,
provide for conditions, limitations, exceptions and reservations to the extent permitted
by the Rome Convention. However, the provisions of Article 18 of the Berne Convention
(1971) shall also apply, mutatis mutandis, to the rights of performers and producers of
phonograms in phonograms.
SECTION 2: TRADEMARKS
Article 15
Protectable Subject Matter
1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters,
numerals, figurative elements and combinations of colours as well as any combination
of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a
condition of registration, that signs be visually perceptible.
2. Paragraph 1 shall not be understood to prevent a Member from denying registration
of a trademark on other grounds, provided that they do not derogate from the provisions
of the Paris Convention (1967).
3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application
shall not be refused solely on the ground that intended use has not taken place before the
expiry of a period of three years from the date of application.
4. The nature of the goods or services to which a trademark is to be applied shall in no
case form an obstacle to registration of the trademark.
5. Members shall publish each trademark either before it is registered or promptly after
it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed.
474

of Intellectual Property Rights (TRIPS)

Article 19

Article 16
Rights Conferred
1. The owner of a registered trademark shall have the exclusive right to prevent all
third parties not having the owner’s consent from using in the course of trade identical
or similar signs for goods or services which are identical or similar to those in respect of
which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood
of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.
2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account
of the knowledge of the trademark in the relevant sector of the public, including
knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.
3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods
or services which are not similar to those in respect of which a trademark is registered,
provided that use of that trademark in relation to those goods or services would indicate
a connection between those goods or services and the owner of the registered trademark
and provided that the interests of the owner of the registered trademark are likely to be
damaged by such use.
Article 17
Exceptions
Members may provide limited exceptions to the rights conferred by a trademark, such
as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.
Article 18
Term of Protection
Initial registration, and each renewal of registration, of a trademark shall be for a term of
no less than seven years. The registration of a trademark shall be renewable indefinitely.
Article 19
Requirement of Use
1. If use is required to maintain a registration, the registration may be cancelled only
after an uninterrupted period of at least three years of non-use, unless valid reasons based
on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute
an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized
as valid reasons for non-use.
2. When subject to the control of its owner, use of a trademark by another person shall
be recognized as use of the trademark for the purpose of maintaining the registration.

475

Article 20

Agreement on Trade-Related Aspects

Article 20
Other Requirements
The use of a trademark in the course of trade shall not be unjustifiably encumbered by
special requirements, such as use with another trademark, use in a special form or use in
a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings. This will not preclude a requirement prescribing
the use of the trademark identifying the undertaking producing the goods or services
along with, but without linking it to, the trademark distinguishing the specific goods or
services in question of that undertaking.
Article 21
Licensing and Assignment
Members may determine conditions on the licensing and assignment of trademarks, it
being understood that the compulsory licensing of trademarks shall not be permitted and
that the owner of a registered trademark shall have the right to assign the trademark with
or without the transfer of the business to which the trademark belongs.
SECTION 3: GEOGRAPHICAL INDICATIONS
Article 22
Protection of Geographical Indications
1. Geographical indications are, for the purposes of this Agreement, indications which
identify a good as originating in the territory of a Member, or a region or locality in that
territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
2. In respect of geographical indications, Members shall provide the legal means for
interested parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates
or suggests that the good in question originates in a geographical area other than the
true place of origin in a manner which misleads the public as to the geographical origin
of the good;
(b) any use which constitutes an act of unfair competition within the meaning of
Article 10bis of the Paris Convention (1967).
3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists
of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such
a nature as to mislead the public as to the true place of origin.
4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical
indication which, although literally true as to the territory, region or locality in which the
goods originate, falsely represents to the public that the goods originate in another territory.
Article 23
Additional Protection for Geographical Indications for Wines and Spirits
1. Each Member shall provide the legal means for interested parties to prevent use of
a geographical indication identifying wines for wines not originating in the place indi476

of Intellectual Property Rights (TRIPS)

Article 24

cated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the
true origin of the goods is indicated or the geographical indication is used in translation
or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like.4
2. The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member’s
legislation so permits or at the request of an interested party, with respect to such wines
or spirits not having this origin.
3. In the case of homonymous geographical indications for wines, protection shall be
accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each
Member shall determine the practical conditions under which the homonymous indications
in question will be differentiated from each other, taking into account the need to ensure
equitable treatment of the producers concerned and that consumers are not misled.
4. In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a
multilateral system of notification and registration of geographical indications for wines
eligible for protection in those Members participating in the system.
Article 24
International Negotiations; Exceptions
1. Members agree to enter into negotiations aimed at increasing the protection of individual geographical indications under Article 23. The provisions of paragraphs 4 through
8 below shall not be used by a Member to refuse to conduct negotiations or to conclude
bilateral or multilateral agreements. In the context of such negotiations, Members shall
be willing to consider the continued applicability of these provisions to individual geographical indications whose use was the subject of such negotiations.
2. The Council for TRIPS shall keep under review the application of the provisions of
this Section; the first such review shall take place within two years of the entry into force
of the WTO Agreement. Any matter affecting the compliance with the obligations under
these provisions may be drawn to the attention of the Council, which, at the request of a
Member, shall consult with any Member or Members in respect of such matter in respect
of which it has not been possible to find a satisfactory solution through bilateral or plurilateral consultations between the Members concerned. The Council shall take such action as may be agreed to facilitate the operation and further the objectives of this Section.
3. In implementing this Section, a Member shall not diminish the protection of geographical indications that existed in that Member immediately prior to the date of entry
into force of the WTO Agreement.
4. Nothing in this Section shall require a Member to prevent continued and similar use
of a particular geographical indication of another Member identifying wines or spirits in
connection with goods or services by any of its nationals or domiciliaries who have used
that geographical indication in a continuous manner with regard to the same or related
goods or services in the territory of that Member either (a) for at least 10 years preceding
15 April 1994 or (b) in good faith preceding that date.
5. Where a trademark has been applied for or registered in good faith, or where rights
to a trademark have been acquired through use in good faith either:
4 Notwithstanding the first sentence of Article 42, Members may, with respect to these obligations, instead

provide for enforcement by administrative action.
477

Article 25

Agreement on Trade-Related Aspects

(a) before the date of application of these provisions in that Member as defined in
Part VI; or
(b) before the geographical indication is protected in its country of origin;
measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that
such a trademark is identical with, or similar to, a geographical indication.
6. Nothing in this Section shall require a Member to apply its provisions in respect of a
geographical indication of any other Member with respect to goods or services for which
the relevant indication is identical with the term customary in common language as the
common name for such goods or services in the territory of that Member. Nothing in this
Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant
indication is identical with the customary name of a grape variety existing in the territory
of that Member as of the date of entry into force of the WTO Agreement.
7. A Member may provide that any request made under this Section in connection with
the use or registration of a trademark must be presented within five years after the adverse use of the protected indication has become generally known in that Member or
after the date of registration of the trademark in that Member provided that the trademark
has been published by that date, if such date is earlier than the date on which the adverse
use became generally known in that Member, provided that the geographical indication
is not used or registered in bad faith.
8. The provisions of this Section shall in no way prejudice the right of any person to
use, in the course of trade, that person’s name or the name of that person’s predecessor
in business, except where such name is used in such a manner as to mislead the public.
9. There shall be no obligation under this Agreement to protect geographical indications which are not or cease to be protected in their country of origin, or which have
fallen into disuse in that country.
SECTION 4: INDUSTRIAL DESIGNS
Article 25
Requirements for Protection
1. Members shall provide for the protection of independently created industrial designs
that are new or original. Members may provide that designs are not new or original if
they do not significantly differ from known designs or combinations of known design
features. Members may provide that such protection shall not extend to designs dictated
essentially by technical or functional considerations.
2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably
impair the opportunity to seek and obtain such protection. Members shall be free to meet
this obligation through industrial design law or through copyright law.
Article 26
Protection
1. The owner of a protected industrial design shall have the right to prevent third parties
not having the owner’s consent from making, selling or importing articles bearing or
embodying a design which is a copy, or substantially a copy, of the protected design,
when such acts are undertaken for commercial purposes.
2. Members may provide limited exceptions to the protection of industrial designs,
478

of Intellectual Property Rights (TRIPS)

Article 28

provided that such exceptions do not unreasonably conflict with the normal exploitation
of protected industrial designs and do not unreasonably prejudice the legitimate interests
of the owner of the protected design, taking account of the legitimate interests of third
parties.
3. The duration of protection available shall amount to at least 10 years.
SECTION 5: PATENTS
Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any
inventions, whether products or processes, in all fields of technology, provided that they
are new, involve an inventive step and are capable of industrial application.5 Subject to
paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article,
patents shall be available and patent rights enjoyable without discrimination as to the
place of invention, the field of technology and whether products are imported or locally
produced.
2. Members may exclude from patentability inventions, the prevention within their
territory of the commercial exploitation of which is necessary to protect ordre public or
morality, including to protect human, animal or plant life or health or to avoid serious
prejudice to the environment, provided that such exclusion is not made merely because
the exploitation is prohibited by their law.
3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or
animals;
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties
either by patents or by an effective sui generis system or by any combination thereof.
The provisions of this subparagraph shall be reviewed four years after the date of entry
into force of the WTO Agreement.
Article 28
Rights Conferred
1. A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not
having the owner’s consent from the acts of: making, using, offering for sale, selling,
or importing6 for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not
having the owner’s consent from the act of using the process, and from the acts of:
using, offering for sale, selling, or importing for these purposes at least the product
obtained directly by that process.
2. Patent owners shall also have the right to assign, or transfer by succession, the patent
and to conclude licensing contracts.
5 For the purposes of this Article, the terms “inventive step” and “capable of industrial application” may be

deemed by a Member to be synonymous with the terms “non-obvious” and “useful” respectively.
6 This right, like all other rights conferred under this Agreement in respect of the use, sale, importation or

other distribution of goods, is subject to the provisions of Article 6.
479

Article 29

Agreement on Trade-Related Aspects

Article 29
Conditions on Patent Applicants
1. Members shall require that an applicant for a patent shall disclose the invention in a
manner sufficiently clear and complete for the invention to be carried out by a person
skilled in the art and may require the applicant to indicate the best mode for carrying out
the invention known to the inventor at the filing date or, where priority is claimed, at the
priority date of the application.
2. Members may require an applicant for a patent to provide information concerning
the applicant’s corresponding foreign applications and grants.
Article 30
Exceptions to Rights Conferred
Members may provide limited exceptions to the exclusive rights conferred by a patent,
provided that such exceptions do not unreasonably conflict with a normal exploitation of
the patent and do not unreasonably prejudice the legitimate interests of the patent owner,
taking account of the legitimate interests of third parties.
Article 31
Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use7 of the subject matter of a patent
without the authorization of the right holder, including use by the government or third
parties authorized by the government, the following provisions shall be respected:
(a) authorization of such use shall be considered on its individual merits;
(b) such use may only be permitted if, prior to such use, the proposed user has made
efforts to obtain authorization from the right holder on reasonable commercial terms
and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national
emergency or other circumstances of extreme urgency or in cases of public non- commercial use. In situations of national emergency or other circumstances of extreme
urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor,
without making a patent search, knows or has demonstrable grounds to know that a
valid patent is or will be used by or for the government, the right holder shall be informed promptly;
(c) the scope and duration of such use shall be limited to the purpose for which it
was authorized, and in the case of semi-conductor technology shall only be for public
non-commercial use or to remedy a practice determined after judicial or administrative
process to be anti-competitive;
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;
(f) any such use shall be authorized predominantly for the supply of the domestic
market of the Member authorizing such use;
(g) authorization for such use shall be liable, subject to adequate protection of the
legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The competent
7 “Other use” refers to use other than that allowed under Article 30.

480

of Intellectual Property Rights (TRIPS)

Article 34

authority shall have the authority to review, upon motivated request, the continued
existence of these circumstances;
(h) the right holder shall be paid adequate remuneration in the circumstances of each
case, taking into account the economic value of the authorization;
(i) the legal validity of any decision relating to the authorization of such use shall be
subject to judicial review or other independent review by a distinct higher authority in
that Member;
(j) any decision relating to the remuneration provided in respect of such use shall be
subject to judicial review or other independent review by a distinct higher authority in
that Member;
(k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and
(f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need to correct anti-competitive practices
may be taken into account in determining the amount of remuneration in such cases.
Competent authorities shall have the authority to refuse termination of authorization if
and when the conditions which led to such authorization are likely to recur;
(l) where such use is authorized to permit the exploitation of a patent (“the second
patent”) which cannot be exploited without infringing another patent (“the first patent”), the following additional conditions shall apply:
(i) the invention claimed in the second patent shall involve an important technical
advance of considerable economic significance in relation to the invention claimed
in the first patent;
(ii) the owner of the first patent shall be entitled to a cross-licence on reasonable
terms to use the invention claimed in the second patent; and
(iii) the use authorized in respect of the first patent shall be non-assignable except
with the assignment of the second patent.
Article 32
Revocation/Forfeiture
An opportunity for judicial review of any decision to revoke or forfeit a patent shall be
available.
Article 33
Term of Protection
The term of protection available shall not end before the expiration of a period of
twenty years counted from the filing date.8
Article 34
Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the infringement of the rights of
the owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is
a process for obtaining a product, the judicial authorities shall have the authority to order
the defendant to prove that the process to obtain an identical product is different from
the patented process. Therefore, Members shall provide, in at least one of the following

8 It is understood that those Members which do not have a system of original grant may provide that the term

of protection shall be computed from the filing date in the system of original grant.
481

Article 35

Agreement on Trade-Related Aspects

circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained
by the patented process:
(a) if the product obtained by the patented process is new;
(b) if there is a substantial likelihood that the identical product was made by the
process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof indicated in paragraph
1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is
fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.
3. In the adduction of proof to the contrary, the legitimate interests of defendants in
protecting their manufacturing and business secrets shall be taken into account.
SECTION 6: LAYOUT-DESIGNS (TOPOGRAPHIES)
OF INTEGRATED CIRCUITS
Article 35
Relation to the IPIC Treaty
Members agree to provide protection to the layout-designs (topographies) of integrated
circuits (referred to in this Agreement as “layout-designs”) in accordance with Articles
2 through 7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article
16 of the Treaty on Intellectual Property in Respect of Integrated Circuits and, in addition, to comply with the following provisions.
Article 36
Scope of the Protection
Subject to the provisions of paragraph 1 of Article 37, Members shall consider unlawful the following acts if performed without the authorization of the right holder:9 importing, selling, or otherwise distributing for commercial purposes a protected layout-design,
an integrated circuit in which a protected layout-design is incorporated, or an article incorporating such an integrated circuit only in so far as it continues to contain an unlawfully reproduced layout-design.
Article 37
Acts Not Requiring the Authorization of the Right Holder
1. Notwithstanding Article 36, no Member shall consider unlawful the performance of
any of the acts referred to in that Article in respect of an integrated circuit incorporating
an unlawfully reproduced layout-design or any article incorporating such an integrated
circuit where the person performing or ordering such acts did not know and had no reasonable ground to know, when acquiring the integrated circuit or article incorporating
such an integrated circuit, that it incorporated an unlawfully reproduced layout-design.
Members shall provide that, after the time that such person has received sufficient notice
that the layout-design was unlawfully reproduced, that person may perform any of the
acts with respect to the stock on hand or ordered before such time, but shall be liable to
pay to the right holder a sum equivalent to a reasonable royalty such as would be payable
9 The term “right holder” in this Section shall be understood as having the same meaning as the term “holder

of the right” in the IPIC Treaty.
482

of Intellectual Property Rights (TRIPS)

Article 38

under a freely negotiated licence in respect of such a layout-design.
2. The conditions set out in subparagraphs (a) through (k) of Article 31 shall apply
mutatis mutandis in the event of any non-voluntary licensing of a layout-design or of its
use by or for the government without the authorization of the right holder.
Article 38
Term of Protection
1. In Members requiring registration as a condition of protection, the term of protection
of layout- designs shall not end before the expiration of a period of 10 years counted
from the date of filing an application for registration or from the first commercial exploitation wherever in the world it occurs.
2. In Members not requiring registration as a condition for protection, layout-designs
shall be protected for a term of no less than 10 years from the date of the first commercial
exploitation wherever in the world it occurs.
3. Notwithstanding paragraphs 1 and 2, a Member may provide that protection shall
lapse 15 years after the creation of the layout-design.
SECTION 7: PROTECTION OF UNDISCLOSED INFORMATION
Article 39
1. In the course of ensuring effective protection against unfair competition as provided
in Article 10bis of the Paris Convention (1967), Members shall protect undisclosed information in accordance with paragraph 2 and data submitted to governments or governmental agencies in accordance with paragraph 3.
2. Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without
their consent in a manner contrary to honest commercial practices10 so long as such information:
(a) is secret in the sense that it is not, as a body or in the precise configuration and
assembly of its components, generally known among or readily accessible to persons
within the circles that normally deal with the kind of information in question;
(b) has commercial value because it is secret; and
(c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
3. Members, when requiring, as a condition of approving the marketing of pharmaceutical or of agricultural chemical products which utilize new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable
effort, shall protect such data against unfair commercial use. In addition, Members shall
protect such data against disclosure, except where necessary to protect the public, or
unless steps are taken to ensure that the data are protected against unfair commercial use.

10 For the purpose of this provision, “a manner contrary to honest commercial practices” shall mean at least

practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know,
that such practices were involved in the acquisition.
483

PART III

Agreement on Trade-Related Aspects

SECTION 8: CONTROL OF ANTI-COMPETITIVE PRACTICES IN
CONTRACTUAL LICENCES
Article 40
1. Members agree that some licensing practices or conditions pertaining to intellectual
property rights which restrain competition may have adverse effects on trade and may
impede the transfer and dissemination of technology.
2. Nothing in this Agreement shall prevent Members from specifying in their legislation licensing practices or conditions that may in particular cases constitute an abuse of
intellectual property rights having an adverse effect on competition in the relevant market. As provided above, a Member may adopt, consistently with the other provisions of
this Agreement, appropriate measures to prevent or control such practices, which may
include for example exclusive grantback conditions, conditions preventing challenges to
validity and coercive package licensing, in the light of the relevant laws and regulations
of that Member.
3. Each Member shall enter, upon request, into consultations with any other Member
which has cause to believe that an intellectual property right owner that is a national or
domiciliary of the Member to which the request for consultations has been addressed is
undertaking practices in violation of the requesting Member’s laws and regulations on the
subject matter of this Section, and which wishes to secure compliance with such legislation,
without prejudice to any action under the law and to the full freedom of an ultimate decision
of either Member. The Member addressed shall accord full and sympathetic consideration
to, and shall afford adequate opportunity for, consultations with the requesting Member, and
shall cooperate through supply of publicly available non-confidential information of relevance to the matter in question and of other information available to the Member, subject to
domestic law and to the conclusion of mutually satisfactory agreements concerning the safeguarding of its confidentiality by the requesting Member.
4. A Member whose nationals or domiciliaries are subject to proceedings in another
Member concerning alleged violation of that other Member’s laws and regulations on the
subject matter of this Section shall, upon request, be granted an opportunity for consultations by the other Member under the same conditions as those foreseen in paragraph 3.
PART III
ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
SECTION 1: GENERAL OBLIGATIONS
Article 41
1. Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of
intellectual property rights covered by this Agreement, including expeditious remedies
to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of
barriers to legitimate trade and to provide for safeguards against their abuse.
2. Procedures concerning the enforcement of intellectual property rights shall be fair
and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
3. Decisions on the merits of a case shall preferably be in writing and reasoned. They
shall be made available at least to the parties to the proceeding without undue delay.
484

of Intellectual Property Rights (TRIPS)

Article 43

Decisions on the merits of a case shall be based only on evidence in respect of which
parties were offered the opportunity to be heard.
4. Parties to a proceeding shall have an opportunity for review by a judicial authority
of final administrative decisions and, subject to jurisdictional provisions in a Member’s
law concerning the importance of a case, of at least the legal aspects of initial judicial
decisions on the merits of a case. However, there shall be no obligation to provide an
opportunity for review of acquittals in criminal cases.
5. It is understood that this Part does not create any obligation to put in place a judicial
system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of Members to enforce their
law in general. Nothing in this Part creates any obligation with respect to the distribution
of resources as between enforcement of intellectual property rights and the enforcement
of law in general.
SECTION 2: CIVIL AND ADMINISTRATIVE
PROCEDURES AND REMEDIES
Article 42
Fair and Equitable Procedures
Members shall make available to right holders11 civil judicial procedures concerning
the enforcement of any intellectual property right covered by this Agreement. Defendants
shall have the right to written notice which is timely and contains sufficient detail, including the basis of the claims. Parties shall be allowed to be represented by independent
legal counsel, and procedures shall not impose overly burdensome requirements concerning mandatory personal appearances. All parties to such procedures shall be duly
entitled to substantiate their claims and to present all relevant evidence. The procedure
shall provide a means to identify and protect confidential information, unless this would
be contrary to existing constitutional requirements.
Article 43
Evidence
1. The judicial authorities shall have the authority, where a party has presented reasonably available evidence sufficient to support its claims and has specified evidence relevant to substantiation of its claims which lies in the control of the opposing party, to
order that this evidence be produced by the opposing party, subject in appropriate cases
to conditions which ensure the protection of confidential information.
2. In cases in which a party to a proceeding voluntarily and without good reason refuses
access to, or otherwise does not provide necessary information within a reasonable period, or significantly impedes a procedure relating to an enforcement action, a Member
may accord judicial authorities the authority to make preliminary and final determinations, affirmative or negative, on the basis of the information presented to them, including the complaint or the allegation presented by the party adversely affected by the denial
of access to information, subject to providing the parties an opportunity to be heard on
the allegations or evidence.

11 For the purpose of this Part, the term “right holder” includes federations and associations having legal

standing to assert such rights.
485

Article 44

Agreement on Trade-Related Aspects

Article 44
Injunctions
1. The judicial authorities shall have the authority to order a party to desist from an
infringement, inter alia to prevent the entry into the channels of commerce in their jurisdiction of imported goods that involve the infringement of an intellectual property right,
immediately after customs clearance of such goods. Members are not obliged to accord
such authority in respect of protected subject matter acquired or ordered by a person prior
to knowing or having reasonable grounds to know that dealing in such subject matter
would entail the infringement of an intellectual property right.
2. Notwithstanding the other provisions of this Part and provided that the provisions
of Part II specifically addressing use by governments, or by third parties authorized by a
government, without the authorization of the right holder are complied with, Members
may limit the remedies available against such use to payment of remuneration in accordance with subparagraph (h) of Article 31. In other cases, the remedies under this Part
shall apply or, where these remedies are inconsistent with a Member’s law, declaratory
judgments and adequate compensation shall be available.
Article 45
Damages
1. The judicial authorities shall have the authority to order the infringer to pay the right
holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who
knowingly, or with reasonable grounds to know, engaged in infringing activity.
2. The judicial authorities shall also have the authority to order the infringer to pay the
right holder expenses, which may include appropriate attorney’s fees. In appropriate
cases, Members may authorize the judicial authorities to order recovery of profits and/or
payment of pre-established damages even where the infringer did not knowingly, or with
reasonable grounds to know, engage in infringing activity.
Article 46
Other Remedies
In order to create an effective deterrent to infringement, the judicial authorities shall
have the authority to order that goods that they have found to be infringing be, without
compensation of any sort, disposed of outside the channels of commerce in such a manner
as to avoid any harm caused to the right holder, or, unless this would be contrary to existing constitutional requirements, destroyed. The judicial authorities shall also have the authority to order that materials and implements the predominant use of which has been in
the creation of the infringing goods be, without compensation of any sort, disposed of
outside the channels of commerce in such a manner as to minimize the risks of further
infringements. In considering such requests, the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third
parties shall be taken into account. In regard to counterfeit trademark goods, the simple
removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit release of the goods into the channels of commerce.
Article 47
Right of Information
Members may provide that the judicial authorities shall have the authority, unless this
486

of Intellectual Property Rights (TRIPS)

Article 49

would be out of proportion to the seriousness of the infringement, to order the infringer
to inform the right holder of the identity of third persons involved in the production and
distribution of the infringing goods or services and of their channels of distribution.
Article 48
Indemnification of the Defendant
1. The judicial authorities shall have the authority to order a party at whose request
measures were taken and who has abused enforcement procedures to provide to a party
wrongfully enjoined or restrained adequate compensation for the injury suffered because
of such abuse. The judicial authorities shall also have the authority to order the applicant
to pay the defendant expenses, which may include appropriate attorney’s fees.
2. In respect of the administration of any law pertaining to the protection or enforcement of intellectual property rights, Members shall only exempt both public authorities
and officials from liability to appropriate remedial measures where actions are taken or
intended in good faith in the course of the administration of that law.
Article 49
Administrative Procedures
To the extent that any civil remedy can be ordered as a result of administrative procedures on the merits of a case, such procedures shall conform to principles equivalent in
substance to those set forth in this Section.
SECTION 3: PROVISIONAL MEASURES
Article 50
1. The judicial authorities shall have the authority to order prompt and effective provisional measures:
(a) to prevent an infringement of any intellectual property right from occurring, and
in particular to prevent the entry into the channels of commerce in their jurisdiction of
goods, including imported goods immediately after customs clearance;
(b) to preserve relevant evidence in regard to the alleged infringement.
2. The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence
being destroyed.
3. The judicial authorities shall have the authority to require the applicant to provide
any reasonably available evidence in order to satisfy themselves with a sufficient degree
of certainty that the applicant is the right holder and that the applicant’s right is being
infringed or that such infringement is imminent, and to order the applicant to provide a
security or equivalent assurance sufficient to protect the defendant and to prevent abuse.
4. Where provisional measures have been adopted inaudita altera parte, the parties
affected shall be given notice, without delay after the execution of the measures at the
latest. A review, including a right to be heard, shall take place upon request of the defendant with a view to deciding, within a reasonable period after the notification of the
measures, whether these measures shall be modified, revoked or confirmed.
5. The applicant may be required to supply other information necessary for the identification of the goods concerned by the authority that will execute the provisional measures.
487

Article 51

Agreement on Trade-Related Aspects

6. Without prejudice to paragraph 4, provisional measures taken on the basis of paragraphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to
have effect, if proceedings leading to a decision on the merits of the case are not initiated
within a reasonable period, to be determined by the judicial authority ordering the
measures where a Member’s law so permits or, in the absence of such a determination,
not to exceed 20 working days or 31 calendar days, whichever is the longer.
7. Where the provisional measures are revoked or where they lapse due to any act or
omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall
have the authority to order the applicant, upon request of the defendant, to provide the
defendant appropriate compensation for any injury caused by these measures.
8. To the extent that any provisional measure can be ordered as a result of administrative procedures, such procedures shall conform to principles equivalent in substance to
those set forth in this Section.
SECTION 4: SPECIAL REQUIREMENTS RELATED
TO BORDER MEASURES12
Article 51
Suspension of Release by Customs Authorities
Members shall, in conformity with the provisions set out below, adopt procedures13 to
enable a right holder, who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods14 may take place, to lodge an application in
writing with competent authorities, administrative or judicial, for the suspension by the
customs authorities of the release into free circulation of such goods. Members may enable such an application to be made in respect of goods which involve other infringements of intellectual property rights, provided that the requirements of this Section are
met. Members may also provide for corresponding procedures concerning the suspension
by the customs authorities of the release of infringing goods destined for exportation
from their territories.
Article 52
Application
Any right holder initiating the procedures under Article 51 shall be required to provide
adequate evidence to satisfy the competent authorities that, under the laws of the country
12 Where a Member has dismantled substantially all controls over movement of goods across its border with

another Member with which it forms part of a customs union, it shall not be required to apply the provisions
of this Section at that border.
13 It is understood that there shall be no obligation to apply such procedures to imports of goods put on the

market in another country by or with the consent of the right holder, or to goods in transit.
14 For the purposes of this Agreement:

(a) “counterfeit trademark goods” shall mean any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or
which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes
the rights of the owner of the trademark in question under the law of the country of importation;
(b) “pirated copyright goods” shall mean any goods which are copies made without the consent of
the right holder or person duly authorized by the right holder in the country of production and which
are made directly or indirectly from an article where the making of that copy would have constituted
an infringement of a copyright or a related right under the law of the country of importation.
488

of Intellectual Property Rights (TRIPS)

Article 55

of importation, there is prim a facie an infringement of the right holder’s intellectual
property right and to supply a sufficiently detailed description of the goods to make them
readily recognizable by the customs authorities. The competent authorities shall inform
the applicant within a reasonable period whether they have accepted the application and,
where determined by the competent authorities, the period for which the customs authorities will take action.
Article 53
Security or Equivalent Assurance
1. The competent authorities shall have the authority to require an applicant to provide
a security or equivalent assurance sufficient to protect the defendant and the competent
authorities and to prevent abuse. Such security or equivalent assurance shall not unreasonably deter recourse to these procedures.
2. Where pursuant to an application under this Section the release of goods involving
industrial designs, patents, layout-designs or undisclosed information into free circulation has been suspended by customs authorities on the basis of a decision other than by
a judicial or other independent authority, and the period provided for in Article 55 has
expired without the granting of provisional relief by the duly empowered authority, and
provided that all other conditions for importation have been complied with, the owner,
importer, or consignee of such goods shall be entitled to their release on the posting of a
security in an amount sufficient to protect the right holder for any infringement. Payment
of such security shall not prejudice any other remedy available to the right holder, it
being understood that the security shall be released if the right holder fails to pursue the
right of action within a reasonable period of time.
Article 54
Notice of Suspension
The importer and the applicant shall be promptly notified of the suspension of the release of goods according to Article 51.
Article 55
Duration of Suspension
If, within a period not exceeding 10 working days after the applicant has been served
notice of the suspension, the customs authorities have not been informed that proceedings leading to a decision on the merits of the case have been initiated by a party other
than the defendant, or that the duly empowered authority has taken provisional measures
prolonging the suspension of the release of the goods, the goods shall be released, provided that all other conditions for importation or exportation have been complied with;
in appropriate cases, this time-limit may be extended by another 10 working days. If
proceedings leading to a decision on the merits of the case have been initiated, a review,
including a right to be heard, shall take place upon request of the defendant with a view
to deciding, within a reasonable period, whether these measures shall be modified, revoked or confirmed. Notwithstanding the above, where the suspension of the release of
goods is carried out or continued in accordance with a provisional judicial measure, the
provisions of paragraph 6 of Article 50 shall apply.

489

Article 56

Agreement on Trade-Related Aspects

Article 56
Indemnification of the Importer and of the Owner of the Goods
Relevant authorities shall have the authority to order the applicant to pay the importer,
the consignee and the owner of the goods appropriate compensation for any injury caused
to them through the wrongful detention of goods or through the detention of goods released pursuant to Article 55.
Article 57
Right of Inspection and Information
Without prejudice to the protection of confidential information, Members shall provide
the competent authorities the authority to give the right holder sufficient opportunity to
have any goods detained by the customs authorities inspected in order to substantiate the
right holder’s claims. The competent authorities shall also have authority to give the importer an equivalent opportunity to have any such goods inspected. Where a positive
determination has been made on the merits of a case, Members may provide the competent authorities the authority to inform the right holder of the names and addresses of the
consignor, the importer and the consignee and of the quantity of the goods in question.
Article 58
Ex Officio Action
Where Members require competent authorities to act upon their own initiative and to
suspend the release of goods in respect of which they have acquired prim a facie evidence
that an intellectual property right is being infringed:
(a) the competent authorities may at any time seek from the right holder any information that may assist them to exercise these powers;
(b) the importer and the right holder shall be promptly notified of the suspension.
Where the importer has lodged an appeal against the suspension with the competent authorities, the suspension shall be subject to the conditions, mutatis mutandis, set out at
Article 55;
(c) Members shall only exempt both public authorities and officials from liability to
appropriate remedial measures where actions are taken or intended in good faith.
Article 59
Remedies
Without prejudice to other rights of action open to the right holder and subject to the
right of the defendant to seek review by a judicial authority, competent authorities shall
have the authority to order the destruction or disposal of infringing goods in accordance
with the principles set out in Article 46. In regard to counterfeit trademark goods, the authorities shall not allow the re-exportation of the infringing goods in an unaltered state or
subject them to a different customs procedure, other than in exceptional circumstances.
Article 60
De Minimis Imports
Members may exclude from the application of the above provisions small quantities
of goods of a non-commercial nature contained in travellers’ personal luggage or sent in
small consignments.
490

of Intellectual Property Rights (TRIPS)

Article 63

SECTION 5: CRIMINAL PROCEDURES
Article 61
Members shall provide for criminal procedures and penalties to be applied at least in
cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a
deterrent, consistently with the level of penalties applied for crimes of a corresponding
gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture
and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for
criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.
PART IV
ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY
RIGHTS AND RELATED INTER-PARTES PROCEDURES
Article 62
1. Members may require, as a condition of the acquisition or maintenance of the intellectual property rights provided for under Sections 2 through 6 of Part II, compliance
with reasonable procedures and formalities. Such procedures and formalities shall be
consistent with the provisions of this Agreement.
2. Where the acquisition of an intellectual property right is subject to the right being
granted or registered, Members shall ensure that the procedures for grant or registration,
subject to compliance with the substantive conditions for acquisition of the right, permit
the granting or registration of the right within a reasonable period of time so as to avoid
unwarranted curtailment of the period of protection.
3. Article 4 of the Paris Convention (1967) shall apply mutatis mutandis to service
marks.
4. Procedures concerning the acquisition or maintenance of intellectual property rights
and, where a Member’s law provides for such procedures, administrative revocation and
inter partes procedures such as opposition, revocation and cancellation, shall be governed by the general principles set out in paragraphs 2 and 3 of Article 41.
5. Final administrative decisions in any of the procedures referred to under paragraph
4 shall be subject to review by a judicial or quasi-judicial authority. However, there shall
be no obligation to provide an opportunity for such review of decisions in cases of unsuccessful opposition or administrative revocation, provided that the grounds for such
procedures can be the subject of invalidation procedures.
PART V
DISPUTE PREVENTION AND SETTLEMENT
Article 63
Transparency
1. Laws and regulations, and final judicial decisions and administrative rulings of general application, made effective by a Member pertaining to the subject matter of this
Agreement (the availability, scope, acquisition, enforcement and prevention of the abuse
491

Article 64

Agreement on Trade-Related Aspects

of intellectual property rights) shall be published, or where such publication is not practicable made publicly available, in a national language, in such a manner as to enable
governments and right holders to become acquainted with them. Agreements concerning
the subject matter of this Agreement which are in force between the government or a
governmental agency of a Member and the government or a governmental agency of
another Member shall also be published.
2. Members shall notify the laws and regulations referred to in paragraph 1 to the
Council for TRIPS in order to assist that Council in its review of the operation of this
Agreement. The Council shall attempt to minimize the burden on Members in carrying
out this obligation and may decide to waive the obligation to notify such laws and regulations directly to the Council if consultations with WIPO on the establishment of a common register containing these laws and regulations are successful. The Council shall also
consider in this connection any action required regarding notifications pursuant to the
obligations under this Agreement stemming from the provisions of Article 6ter of the
Paris Convention (1967).
3. Each Member shall be prepared to supply, in response to a written request from
another Member, information of the sort referred to in paragraph 1. A Member, having
reason to believe that a specific judicial decision or administrative ruling or bilateral
agreement in the area of intellectual property rights affects its rights under this Agreement, may also request in writing to be given access to or be informed in sufficient detail
of such specific judicial decisions or administrative rulings or bilateral agreements.
4. Nothing in paragraphs 1, 2 and 3 shall require Members to disclose confidential
information which would impede law enforcement or otherwise be contrary to the public
interest or would prejudice the legitimate commercial interests of particular enterprises,
public or private.
Article 64
Dispute Settlement
1. The provisions of Articles XXII and XXIII of GATT 1994 as elaborated and applied
by the Dispute Settlement Understanding shall apply to consultations and the settlement of
disputes under this Agreement except as otherwise specifically provided herein.
2. Subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994 shall not apply to the
settlement of disputes under this Agreement for a period of five years from the date of
entry into force of the WTO Agreement.
3. During the time period referred to in paragraph 2, the Council for TRIPS shall examine the scope and modalities for complaints of the type provided for under subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994 made pursuant to this Agreement,
and submit its recommendations to the Ministerial Conference for approval. Any decision of the Ministerial Conference to approve such recommendations or to extend the
period in paragraph 2 shall be made only by consensus, and approved recommendations
shall be effective for all Members without further formal acceptance process.
PART VI
TRANSITIONAL ARRANGEMENTS
Article 65
Transitional Arrangements
1. Subject to the provisions of paragraphs 2, 3 and 4, no Member shall be obliged to
apply the provisions of this Agreement before the expiry of a general period of one year
492

of Intellectual Property Rights (TRIPS)

Article 67

following the date of entry into force of the WTO Agreement.
2. A developing country Member is entitled to delay for a further period of four years
the date of application, as defined in paragraph 1, of the provisions of this Agreement
other than Articles 3, 4 and 5.
3. Any other Member which is in the process of transformation from a centrallyplanned into a market, free-enterprise economy and which is undertaking structural reform of its intellectual property system and facing special problems in the preparation
and implementation of intellectual property laws and regulations, may also benefit from
a period of delay as foreseen in paragraph 2.
4. To the extent that a developing country Member is obliged by this Agreement to
extend product patent protection to areas of technology not so protectable in its territory
on the general date of application of this Agreement for that Member, as defined in paragraph 2, it may delay the application of the provisions on product patents of Section 5
of Part II to such areas of technology for an additional period of five years.
5. A Member availing itself of a transitional period under paragraphs 1, 2, 3 or 4 shall
ensure that any changes in its laws, regulations and practice made during that period do
not result in a lesser degree of consistency with the provisions of this Agreement.
Article 66
Least-Developed Country Members
1. In view of the special needs and requirements of least-developed country Members,
their economic, financial and administrative constraints, and their need for flexibility to
create a viable technological base, such Members shall not be required to apply the provisions of this Agreement, other than Articles 3, 4 and 5, for a period of 10 years from
the date of application as defined under paragraph 1 of Article 65. The Council for TRIPS
shall, upon duly motivated request by a least-developed country Member, accord extensions of this period.
2. Developed country Members shall provide incentives to enterprises and institutions
in their territories for the purpose of promoting and encouraging technology transfer to
least-developed country Members in order to enable them to create a sound and viable
technological base.
Article 67
Technical Cooperation
In order to facilitate the implementation of this Agreement, developed country Members
shall provide, on request and on mutually agreed terms and conditions, technical and financial cooperation in favour of developing and least-developed country Members. Such
cooperation shall include assistance in the preparation of laws and regulations on the protection and enforcement of intellectual property rights as well as on the prevention of their
abuse, and shall include support regarding the establishment or reinforcement of domestic
offices and agencies relevant to these matters, including the training of personnel.

493

Article 68

Agreement on Trade-Related Aspects

PART VII
INSTITUTIONAL ARRANGEMENTS; FINAL PROVISIONS
Article 68
Council for Trade-Related Aspects of Intellectual Property Rights
The Council for TRIPS shall monitor the operation of this Agreement and, in particular, Members’ compliance with their obligations hereunder, and shall afford Members
the opportunity of consulting on matters relating to the trade-related aspects of intellectual property rights. It shall carry out such other responsibilities as assigned to it by the
Members, and it shall, in particular, provide any assistance requested by them in the
context of dispute settlement procedures. In carrying out its functions, the Council for
TRIPS may consult with and seek information from any source it deems appropriate. In
consultation with WIPO, the Council shall seek to establish, within one year of its first
meeting, appropriate arrangements for cooperation with bodies of that Organization.
Article 69
International Cooperation
Members agree to cooperate with each other with a view to eliminating international
trade in goods infringing intellectual property rights. For this purpose, they shall establish and notify contact points in their administrations and be ready to exchange information on trade in infringing goods. They shall, in particular, promote the exchange of
information and cooperation between customs authorities with regard to trade in counterfeit trademark goods and pirated copyright goods.
Article 70
Protection of Existing Subject Matter
1. This Agreement does not give rise to obligations in respect of acts which occurred
before the date of application of the Agreement for the Member in question.
2. Except as otherwise provided for in this Agreement, this Agreement gives rise to
obligations in respect of all subject matter existing at the date of application of this
Agreement for the Member in question, and which is protected in that Member on the
said date, or which meets or comes subsequently to meet the criteria for protection under
the terms of this Agreement. In respect of this paragraph and paragraphs 3 and 4, copyright obligations with respect to existing works shall be solely determined under Article
18 of the Berne Convention (1971), and obligations with respect to the rights of producers of phonograms and performers in existing phonograms shall be determined solely
under Article 18 of the Berne Convention (1971) as made applicable under paragraph 6
of Article 14 of this Agreement.
3. There shall be no obligation to restore protection to subject matter which on the date of
application of this Agreement for the Member in question has fallen into the public domain.
4. In respect of any acts in respect of specific objects embodying protected subject
matter which become infringing under the terms of legislation in conformity with this
Agreement, and which were commenced, or in respect of which a significant investment
was made, before the date of acceptance of the WTO Agreement by that Member, any
Member may provide for a limitation of the remedies available to the right holder as to
the continued performance of such acts after the date of application of this Agreement
for that Member. In such cases the Member shall, however, at least provide for the payment of equitable remuneration.
494

of Intellectual Property Rights (TRIPS)

Article 71

5. A Member is not obliged to apply the provisions of Article 11 and of paragraph 4 of
Article 14 with respect to originals or copies purchased prior to the date of application
of this Agreement for that Member.
6. Members shall not be required to apply Article 31, or the requirement in paragraph 1
of Article 27 that patent rights shall be enjoyable without discrimination as to the field of
technology, to use without the authorization of the right holder where authorization for
such use was granted by the government before the date this Agreement became known.
7. In the case of intellectual property rights for which protection is conditional upon
registration, applications for protection which are pending on the date of application of
this Agreement for the Member in question shall be permitted to be amended to claim
any enhanced protection provided under the provisions of this Agreement. Such amendments shall not include new matter.
8. Where a Member does not make available as of the date of entry into force of the
WTO Agreement patent protection for pharmaceutical and agricultural chemical products commensurate with its obligations under Article 27, that Member shall:
(a) notwithstanding the provisions of Part VI, provide as from the date of entry into
force of the WTO Agreement a means by which applications for patents for such inventions can be filed;
(b) apply to these applications, as of the date of application of this Agreement, the
criteria for patentability as laid down in this Agreement as if those criteria were being
applied on the date of filing in that Member or, where priority is available and claimed,
the priority date of the application; and
(c) provide patent protection in accordance with this Agreement as from the grant of
the patent and for the remainder of the patent term, counted from the filing date in
accordance with Article 33 of this Agreement, for those of these applications that meet
the criteria for protection referred to in subparagraph (b).
9. Where a product is the subject of a patent application in a Member in accordance
with paragraph 8(a), exclusive marketing rights shall be granted, notwithstanding the
provisions of Part VI, for a period of five years after obtaining marketing approval in
that Member or until a product patent is granted or rejected in that Member, whichever
period is shorter, provided that, subsequent to the entry into force of the WTO Agreement, a patent application has been filed and a patent granted for that product in another
Member and marketing approval obtained in such other Member.
Article 71
Review and Amendment
1. The Council for TRIPS shall review the implementation of this Agreement after the
expiration of the transitional period referred to in paragraph 2 of Article 65. The Council
shall, having regard to the experience gained in its implementation, review it two years
after that date, and at identical intervals thereafter. The Council may also undertake reviews in the light of any relevant new developments which might warrant modification
or amendment of this Agreement.
2. Amendments merely serving the purpose of adjusting to higher levels of protection
of intellectual property rights achieved, and in force, in other multilateral agreements and
accepted under those agreements by all Members of the WTO may be referred to the
Ministerial Conference for action in accordance with paragraph 6 of Article X of the
WTO Agreement on the basis of a consensus proposal from the Council for TRIPS.

495

Article 72

Article 72
Reservations
Reservations may not be entered in respect of any of the provisions of this Agreement
without the consent of the other Members.
Article 73
Security Exceptions
Nothing in this Agreement shall be construed:
(a) to require a Member to furnish any information the disclosure of which it considers contrary to its essential security interests; or
(b) to prevent a Member from taking any action which it considers necessary for the
protection of its essential security interests;
(i) relating to fissionable materials or the materials from which they are derived;
(ii) relating to the traffic in arms, ammunition and implements of war and to such
traffic in other goods and materials as is carried on directly or indirectly for the purpose of supplying a military establishment;
(iii) taken in time of war or other emergency in international relations; or
(c) to prevent a Member from taking any action in pursuance of its obligations under
the United Nations Charter for the maintenance of international peace and security.

496