[Congressional Bills 111th Congress]
[From the U.S. Government Publishing Office]
[S. 3728 Reported in Senate (RS)]

                                                       Calendar No. 674
111th CONGRESS
  2d Session
                                S. 3728

To amend title 17, United States Code, to extend protection to fashion 
                    design, and for other purposes.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                             August 5, 2010

 Mr. Schumer (for himself, Mr. Hatch, Mr. Graham, Mr. Whitehouse, Mrs. 
  Gillibrand, Ms. Snowe, Mrs. Boxer, Mrs. Feinstein, Mr. Cardin, Mr. 
Kohl, and Mrs. Hutchison) introduced the following bill; which was read 
          twice and referred to the Committee on the Judiciary

                            December 6, 2010

                Reported by Mr. Leahy, with an amendment
 [Strike out all after the enacting clause and insert the part printed 
                               in italic]

_______________________________________________________________________

                                 A BILL


 
To amend title 17, United States Code, to extend protection to fashion 
                    design, and for other purposes.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

<DELETED>SECTION 1. SHORT TITLE.</DELETED>

<DELETED>    This Act may be cited as the ``Innovative Design 
Protection and Piracy Prevention Act''.</DELETED>

<DELETED>SEC. 2. AMENDMENTS TO TITLE 17, UNITED STATES CODE.</DELETED>

<DELETED>    (a) Designs Protected.--Section 1301 of title 17, United 
States Code, is amended--</DELETED>
        <DELETED>    (1) in subsection (a), by adding at the end the 
        following:</DELETED>
        <DELETED>    ``(4) Fashion design.--A fashion design is subject 
        to protection under this chapter.'';</DELETED>
        <DELETED>    (2) in subsection (b)--</DELETED>
                <DELETED>    (A) in paragraph (2), by inserting ``, or 
                an article of apparel,'' after ``plug or mold''; 
                and</DELETED>
                <DELETED>    (B) by adding at the end the 
                following:</DELETED>
        <DELETED>    ``(7) A `fashion design'--</DELETED>
                <DELETED>    ``(A) is the appearance as a whole of an 
                article of apparel, including its ornamentation; 
                and</DELETED>
                <DELETED>    ``(B) includes original elements of the 
                article of apparel or the original arrangement or 
                placement of original or non-original elements as 
                incorporated in the overall appearance of the article 
                of apparel that--</DELETED>
                        <DELETED>    ``(i) are the result of a 
                        designer's own creative endeavor; and</DELETED>
                        <DELETED>    ``(ii) provide a unique, 
                        distinguishable, non-trivial and non-
                        utilitarian variation over prior designs for 
                        similar types of articles.</DELETED>
        <DELETED>    ``(8) The term `design' includes fashion design, 
        except to the extent expressly limited to the design of a 
        vessel.</DELETED>
        <DELETED>    ``(9) The term `apparel' means--</DELETED>
                <DELETED>    ``(A) an article of men's, women's, or 
                children's clothing, including undergarments, 
                outerwear, gloves, footwear, and headgear;</DELETED>
                <DELETED>    ``(B) handbags, purses, wallets, duffel 
                bags, suitcases, tote bags, and belts; and</DELETED>
                <DELETED>    ``(C) eyeglass frames.</DELETED>
        <DELETED>    ``(10) In the case of a fashion design, the term 
        `substantially identical' means an article of apparel which is 
        so similar in appearance as to be likely to be mistaken for the 
        protected design, and contains only those differences in 
        construction or design which are merely trivial.''; 
        and</DELETED>
        <DELETED>    (3) by adding at the end the following:</DELETED>
<DELETED>    ``(c) Rule of Construction.--In the case of a fashion 
design under this chapter, those differences or variations which are 
considered non-trivial for the purposes of establishing that a design 
is subject to protection under subsection (b)(7) shall be considered 
non-trivial for the purposes of establishing that a defendant's design 
is not substantially identical under subsection (b)(10) and section 
1309(e).''.</DELETED>
<DELETED>    (b) Designs Not Subject to Protection.--Section 1302(5) of 
title 17, United States Code, is amended--</DELETED>
        <DELETED>    (1) by striking ``(5)'' and inserting ``(5)(A) in 
        the case of a design of a vessel hull,'';</DELETED>
        <DELETED>    (2) by striking the period and inserting ``; or''; 
        and</DELETED>
        <DELETED>    (3) by adding at the end the following:</DELETED>
        <DELETED>    ``(B) in the case of a fashion design, embodied in 
        a useful article that was made public by the designer or owner 
        in the United States or a foreign country before the date of 
        enactment of this chapter or more than 3 years before the date 
        upon which protection of the design is asserted under this 
        chapter.''.</DELETED>
<DELETED>    (c) Revisions, Adaptations, and Rearrangements.--Section 
1303 of title 17, United States Code, is amended by adding at the end 
the following: ``The presence or absence of a particular color or 
colors or of a pictorial or graphic work imprinted on fabric shall not 
be considered in determining the protection of a fashion design under 
section 1301 or 1302 or in determining infringement under section 
1309.''.</DELETED>
<DELETED>    (d) Term of Protection.--Section 1305(a) of title 17, 
United States Code, is amended to read as follows:</DELETED>
<DELETED>    ``(a) In General.--Subject to subsection (b), the 
protection provided under this chapter--</DELETED>
        <DELETED>    ``(1) for a design of a vessel hull, shall 
        continue for a term of 10 years beginning on the date of the 
        commencement of protection under section 1304; and</DELETED>
        <DELETED>    ``(2) for a fashion design, shall continue for a 
        term of 3 years beginning on the date of the commencement of 
        protection under section 1304.''.</DELETED>
<DELETED>    (e) Infringement.--Section 1309 of title 17, United States 
Code, is amended--</DELETED>
        <DELETED>    (1) in subsection (c)--</DELETED>
                <DELETED>    (A) by inserting ``offer for sale, 
                advertise,'' after ``sell,''; and</DELETED>
                <DELETED>    (B) by inserting ``either actual or 
                reasonably inferred from the totality of the 
                circumstances,'' after ``created without 
                knowledge'';</DELETED>
        <DELETED>    (2) by amending subsection (e) to read as 
        follows:</DELETED>
<DELETED>    ``(e) Infringing Article Defined.--</DELETED>
        <DELETED>    ``(1) In general.--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, or from 
        an image thereof, 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.</DELETED>
        <DELETED>    ``(2) Vessel hull design.--In the case of a design 
        of a vessel hull, 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.</DELETED>
        <DELETED>    ``(3) Fashion design.--In the case of a fashion 
        design, a design shall not be deemed to have been copied from a 
        protected design if that design--</DELETED>
                <DELETED>    ``(A) is not substantially identical in 
                overall visual appearance to and as to the original 
                elements of a protected design; or</DELETED>
                <DELETED>    ``(B) is the result of independent 
                creation.''; and</DELETED>
        <DELETED>    (3) by adding at the end the following:</DELETED>
<DELETED>    ``(h) Secondary Liability.--The doctrines of secondary 
infringement or secondary liability that are applied in actions under 
chapter 5 of this title apply to the same extent to actions under this 
chapter. Any person who is liable under either such doctrine under this 
chapter is subject to all the remedies provided under this chapter, 
including those attributable to any underlying or resulting 
infringement.</DELETED>
<DELETED>    ``(i) Home Sewing Exception.--</DELETED>
        <DELETED>    ``(1) In general.--It is not an infringement of 
        the exclusive rights of a design owner for a person to produce 
        a single copy of a protected design for personal use or for the 
        use of an immediate family member, if that copy is not offered 
        for sale or use in trade during the period of 
        protection.</DELETED>
        <DELETED>    ``(2) Rule of construction.--Nothing in this 
        subsection shall be construed to permit the publication or 
        distribution of instructions or patterns for the copying of a 
        protected design.''.</DELETED>
<DELETED>    (f) Application for Registration.--Section 1310(a) of 
title 17, United States Code, is amended--</DELETED>
        <DELETED>    (1) by striking ``Protection under this chapter'' 
        and inserting ``In the case of a design of a vessel hull, 
        protection under this chapter''; and</DELETED>
        <DELETED>    (2) by adding ``Registration shall not apply to 
        fashion designs.'' after ``first made public.''.</DELETED>
<DELETED>    (g) Remedy for Infringement.--Section 1321 of title 17, 
United States Code, is amended--</DELETED>
        <DELETED>    (1) by striking subsection (a) and inserting the 
        following:</DELETED>
<DELETED>    ``(a) In General.--</DELETED>
        <DELETED>    ``(1) Vessel hull.--In the case of a vessel hull, 
        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.</DELETED>
        <DELETED>    ``(2) Fashion design.--In the case of a fashion 
        design, the owner of a design is entitled to institute an 
        action for any infringement of the design after the design is 
        made public under the terms of section 1310(b) of this 
        chapter.''; and</DELETED>
        <DELETED>    (2) by adding at the end the following:</DELETED>
<DELETED>    ``(e) Pleading Requirement for Fashion Designs.--
</DELETED>
        <DELETED>    ``(1) In general.--In the case of a fashion 
        design, a claimant in an action for infringement shall plead 
        with particularity facts establishing that--</DELETED>
                <DELETED>    ``(A) the design of the claimant is 
                protected under this chapter;</DELETED>
                <DELETED>    ``(B) the design of the defendant 
                infringes upon the protected design as described under 
                section 1309(e); and</DELETED>
                <DELETED>    ``(C) the protected design or an image 
                thereof was available in such location or locations, in 
                such a manner, and for such duration that it can be 
                reasonably inferred from the totality of the 
                surrounding facts and circumstances that the defendant 
                saw or otherwise had knowledge of the protected 
                design.</DELETED>
        <DELETED>    ``(2) Considerations.--In considering whether a 
        claim for infringement has been adequately pleaded, the court 
        shall consider the totality of the circumstances.''.</DELETED>
<DELETED>    (h) Penalty for False Representation.--Section 1327 of 
title 17, United States Code, is amended--</DELETED>
        <DELETED>    (1) by inserting ``or for purposes of obtaining 
        recovery based on a claim of infringement under this chapter'' 
        after ``registration of a design under this 
        chapter'';</DELETED>
        <DELETED>    (2) by striking ``$500'' and inserting ``5,000''; 
        and</DELETED>
        <DELETED>    (3) by striking ``$1,000'' and inserting 
        ``$10,000''.</DELETED>
<DELETED>    (i) Nonapplicability of Enforcement by Treasury and Postal 
Service.--Section 1328 of title 17, United States Code, is amended--
</DELETED>
        <DELETED>    (1) in subsection (a), in the first sentence, by 
        striking ``The Secretary'' and inserting ``In the case of 
        designs of vessel hulls protected under this chapter, the 
        Secretary'';</DELETED>
        <DELETED>    (2) in subsection (b), in the first sentence, by 
        striking ``Articles'' and inserting ``In the case of designs of 
        vessel hulls protected under this chapter, articles''; 
        and</DELETED>
        <DELETED>    (3) by adding at the end the following:</DELETED>
<DELETED>    ``(c) Nonapplicability.--This section shall not apply to 
fashion designs protected under this chapter.''.</DELETED>
<DELETED>    (j) Common Law and Other Rights Unaffected.--Section 1330 
of title 17, United States Code, is amended--</DELETED>
        <DELETED>    (1) in paragraph (1), by striking ``or'' after the 
        semicolon;</DELETED>
        <DELETED>    (2) in paragraph (2), by striking the period and 
        inserting ``; or''; and</DELETED>
        <DELETED>    (3) by adding at the end the following:</DELETED>
        <DELETED>    ``(3) any rights that may exist under provisions 
        of this title other than this chapter.''.</DELETED>

<DELETED>SEC. 3. EFFECTIVE DATE.</DELETED>

<DELETED>    This Act and the amendments made by this Act shall take 
effect on the date of enactment of this Act.</DELETED>

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Innovative Design Protection and 
Piracy Prevention Act''.

SEC. 2. AMENDMENTS TO TITLE 17, UNITED STATES CODE.

    (a) Designs Protected.--Section 1301 of title 17, United States 
Code, is amended--
            (1) in subsection (a), by adding at the end the following:
            ``(4) Fashion design.--A fashion design is subject to 
        protection under this chapter.'';
            (2) in subsection (b)--
                    (A) in paragraph (2), by inserting ``, or an 
                article of apparel,'' after ``plug or mold''; and
                    (B) by adding at the end the following:
            ``(7) A `fashion design'--
                    ``(A) is the appearance as a whole of an article of 
                apparel, including its ornamentation; and
                    ``(B) includes original elements of the article of 
                apparel or the original arrangement or placement of 
                original or non-original elements as incorporated in 
                the overall appearance of the article of apparel that--
                            ``(i) are the result of a designer's own 
                        creative endeavor; and
                            ``(ii) provide a unique, distinguishable, 
                        non-trivial and non-utilitarian variation over 
                        prior designs for similar types of articles.
            ``(8) The term `design' includes fashion design, except to 
        the extent expressly limited to the design of a vessel.
            ``(9) The term `apparel' means--
                    ``(A) an article of men's, women's, or children's 
                clothing, including undergarments, outerwear, gloves, 
                footwear, and headgear;
                    ``(B) handbags, purses, wallets, tote bags, and 
                belts; and
                    ``(C) eyeglass frames.
            ``(10) In the case of a fashion design, the term 
        `substantially identical' means an article of apparel which is 
        so similar in appearance as to be likely to be mistaken for the 
        protected design, and contains only those differences in 
        construction or design which are merely trivial.''; and
            (3) by adding at the end the following:
    ``(c) Rule of Construction.--In the case of a fashion design under 
this chapter, those differences or variations which are considered non-
trivial for the purposes of establishing that a design is subject to 
protection under subsection (b)(7) shall be considered non-trivial for 
the purposes of establishing that a defendant's design is not 
substantially identical under subsection (b)(10) and section 
1309(e).''.
    (b) Designs Not Subject to Protection.--Section 1302(5) of title 
17, United States Code, is amended--
            (1) by striking ``(5)'' and inserting ``(5)(A) in the case 
        of a design of a vessel hull,'';
            (2) by striking the period and inserting ``; or''; and
            (3) by adding at the end the following:
            ``(B) in the case of a fashion design, embodied in a useful 
        article that was made public by the designer or owner in the 
        United States or a foreign country before the date of enactment 
        of this chapter or more than 3 years before the date upon which 
        protection of the design is asserted under this chapter.''.
    (c) Revisions, Adaptations, and Rearrangements.--Section 1303 of 
title 17, United States Code, is amended by adding at the end the 
following: ``The presence or absence of a particular color or colors or 
of a pictorial or graphic work imprinted on fabric shall not be 
considered in determining the protection of a fashion design under 
section 1301 or 1302 or in determining infringement under section 
1309.''.
    (d) Term of Protection.--Section 1305(a) of title 17, United States 
Code, is amended to read as follows:
    ``(a) In General.--Subject to subsection (b), the protection 
provided under this chapter--
            ``(1) for a design of a vessel hull, shall continue for a 
        term of 10 years beginning on the date of the commencement of 
        protection under section 1304; and
            ``(2) for a fashion design, shall continue for a term of 3 
        years beginning on the date of the commencement of protection 
        under section 1304.''.
    (e) Infringement.--Section 1309 of title 17, United States Code, is 
amended--
            (1) in subsection (c)--
                    (A) by inserting ``offer for sale, advertise,'' 
                after ``sell,''; and
                    (B) by inserting ``either actual or reasonably 
                inferred from the totality of the circumstances,'' 
                after ``created without knowledge'';
            (2) by amending subsection (e) to read as follows:
    ``(e) Infringing Article Defined.--
            ``(1) In general.--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, or from an image 
        thereof, 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.
            ``(2) Vessel hull design.--In the case of a design of a 
        vessel hull, 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.
            ``(3) Fashion design.--In the case of a fashion design, a 
        design shall not be deemed to have been copied from a protected 
        design if that design--
                    ``(A) is not substantially identical in overall 
                visual appearance to and as to the original elements of 
                a protected design; or
                    ``(B) is the result of independent creation.''; and
            (3) by adding at the end the following:
    ``(h) Home Sewing Exception.--
            ``(1) In general.--It is not an infringement of the 
        exclusive rights of a design owner for a person to produce a 
        single copy of a protected design for personal use or for the 
        use of an immediate family member, if that copy is not offered 
        for sale or use in trade during the period of protection.
            ``(2) Rule of construction.--Nothing in this subsection 
        shall be construed to permit the publication or distribution of 
        instructions or patterns for the copying of a protected 
        design.''.
    (f) Application for Registration.--Section 1310(a) of title 17, 
United States Code, is amended--
            (1) by striking ``Protection under this chapter'' and 
        inserting ``In the case of a design of a vessel hull, 
        protection under this chapter''; and
            (2) by adding ``Registration shall not apply to fashion 
        designs.'' after ``first made public.''.
    (g) Remedy for Infringement.--Section 1321 of title 17, United 
States Code, is amended--
            (1) by striking subsection (a) and inserting the following:
    ``(a) In General.--
            ``(1) Vessel hull.--In the case of a vessel hull, 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.
            ``(2) Fashion design.--In the case of a fashion design, the 
        owner of a design is entitled to institute an action for any 
        infringement of the design after the design is made public 
        under the terms of section 1310(b) of this chapter.''; and
            (2) by adding at the end the following:
    ``(e) Pleading Requirement for Fashion Designs.--
            ``(1) In general.--In the case of a fashion design, a 
        claimant in an action for infringement shall plead with 
        particularity facts establishing that--
                    ``(A) the design of the claimant is a fashion 
                design within the meaning of section 1301(a)(7) of this 
                title and thus entitled to protection under this 
                chapter;
                    ``(B) the design of the defendant infringes upon 
                the protected design as described under section 
                1309(e); and
                    ``(C) the protected design or an image thereof was 
                available in such location or locations, in such a 
                manner, and for such duration that it can be reasonably 
                inferred from the totality of the surrounding facts and 
                circumstances that the defendant saw or otherwise had 
                knowledge of the protected design.
            ``(2) Considerations.--In considering whether a claim for 
        infringement has been adequately pleaded, the court shall 
        consider the totality of the circumstances.''.
    (h) Penalty for False Representation.--Section 1327 of title 17, 
United States Code, is amended--
            (1) by inserting ``or for purposes of obtaining recovery 
        based on a claim of infringement under this chapter'' after 
        ``registration of a design under this chapter'';
            (2) by striking ``$500'' and inserting ``5,000''; and
            (3) by striking ``$1,000'' and inserting ``$10,000''.
    (i) Nonapplicability of Enforcement by Treasury and Postal 
Service.--Section 1328 of title 17, United States Code, is amended--
            (1) in subsection (a), in the first sentence, by striking 
        ``The Secretary'' and inserting ``In the case of designs of 
        vessel hulls protected under this chapter, the Secretary'';
            (2) in subsection (b), in the first sentence, by striking 
        ``Articles'' and inserting ``In the case of designs of vessel 
        hulls protected under this chapter, articles''; and
            (3) by adding at the end the following:
    ``(c) Nonapplicability.--This section shall not apply to fashion 
designs protected under this chapter.''.
    (j) Common Law and Other Rights Unaffected.--Section 1330 of title 
17, United States Code, is amended--
            (1) in paragraph (1), by striking ``or'' after the 
        semicolon;
            (2) in paragraph (2), by striking the period and inserting 
        ``; or''; and
            (3) by adding at the end the following:
            ``(3) any rights that may exist under provisions of this 
        title other than this chapter.''.

SEC. 3. EFFECTIVE DATE.

    This Act and the amendments made by this Act shall take effect on 
the date of enactment of this Act.
                                                       Calendar No. 674

111th CONGRESS

  2d Session

                                S. 3728

_______________________________________________________________________

                                 A BILL

To amend title 17, United States Code, to extend protection to fashion 
                    design, and for other purposes.

_______________________________________________________________________

                            December 6, 2010

                       Reported with an amendment