[Congressional Bills 112th Congress]
[From the U.S. Government Publishing Office]
[S. 3523 Introduced in Senate (IS)]

112th CONGRESS
  2d Session
                                S. 3523

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


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                           September 10, 2012

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

_______________________________________________________________________

                                 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,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Innovative Design Protection Act of 
2012''.

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:
            ``(8) 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.
            ``(9) The term `design' includes fashion design, except to 
        the extent expressly limited to the design of a vessel.
            ``(10) 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.
            ``(11) 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)(8) shall be considered non-trivial for 
the purposes of establishing that a defendant's design is not 
substantially identical under subsection (b)(11) 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) Notice.--Section 1306 of title 17, United States Code, is 
amended by adding at the end the following:
    ``(d) Fashion Design.--
            ``(1) In general.--In the case of a fashion design, the 
        owner of the design shall provide written notice of the design 
        protection to any person the design owner has reason to believe 
        has violated or will violate this chapter.
            ``(2) Contents.--The written notice required under 
        paragraph (1) shall contain, at a minimum--
                    ``(A) the date on which protection for the design 
                commenced;
                    ``(B) a description of the protected design which 
                specifies how the protected design falls within the 
                meaning of section 1301(b)(8);
                    ``(C) a description of the allegedly infringing 
                design which specifies how the allegedly infringing 
                design infringed upon the protected design as described 
                under section 1309(e); and
                    ``(D) the date on which the protected design or an 
                image thereof was available such that it could be 
                reasonably inferred from the totality of the 
                surrounding facts and circumstances that the owner of 
                the allegedly infringing design saw or otherwise had 
                knowledge of the protected design.
            ``(3) Commencement of action.--An action for infringement 
        of a fashion design under this chapter shall not commence until 
        the date that is 21 days after the date on which written notice 
        required under this subsection was provided to the defendant.
            ``(4) Limitation on damages.--A person alleged to be 
        undertaking action leading to infringement under this chapter 
        shall be held liable only for damages and profits accrued after 
        the date on which the action for infringement is commenced 
        against such person under paragraph (3).''.
    (f) Infringement.--Section 1309 of title 17, United States Code, is 
amended--
            (1) in subsection (b)--
                    (A) by amending the matter preceding paragraph (1) 
                to read as follows:
    ``(b) Acts of Sellers, Importers and Distributors.--A retailer, 
seller, importer or distributor of an infringing article who did not 
make the article shall be deemed to have infringed on a design 
protected under this chapter only if that person--''; and
                    (B) in paragraph (1), by striking ``, or an 
                importer to import'';
            (2) in subsection (c)--
                    (A) by inserting ``offer for sale'' after 
                ``sell,''; and
                    (B) by inserting ``either actual or reasonably 
                inferred from the totality of the circumstances,'' 
                after ``created without knowledge'';
            (3) by redesignating subsections (e), (f), and (g) as 
        subsections (f), (g), and (h), respectively;
            (4) by inserting after subsection (d) the following:
    ``(e) Acts of Third Parties.--Acts that do not constitute acts of 
infringement under subsections (a) or (b) do not otherwise constitute 
acts of infringement under this chapter. It shall not be infringement 
under this section to be engaged in--
            ``(1) the provision of a telecommunications service, or of 
        an Internet access service or Internet information location 
        tool (as those terms are defined in section 231 the 
        Communications Act of 1934 (47 U.S.C. 231)); or
            ``(2) the transmission, storage, retrieval, hosting, 
        formatting, or translation (or any combination thereof) of a 
        communication, without selection or alteration of the content 
        of the communication, except that deletion of a particular 
        communication or material made by another person in a manner 
        consistent with section 230(c) of the Communications Act of 
        1934 (47 U.S.C. 230(c)).'';
            (5) by amending subsection (f), as so redesignated, to read 
        as follows:
    ``(f) 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
            (6) by adding at the end the following:
    ``(i) 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.''.
    (g) 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.''.
    (h) 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--
                    ``(A) the design is made public under the terms of 
                section 1310(b) of this chapter; and
                    ``(B) the 21-day period described in section 
                1306(d).''; 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(b)(8) 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.''.
    (i) 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''.
    (j) 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.''.
    (k) 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.
                                 <all>