[Congressional Record Volume 144, Number 30 (Wednesday, March 18, 1998)]
[House]
[Pages H1243-H1247]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]
VESSEL HULL DESIGN PROTECTION ACT
Mr. COBLE. Mr. Speaker, I move to suspend the rules and pass the bill
(H.R. 2696) to amend title 17, United States Code, to provide for
protection of certain original designs, as amended.
The Clerk read as follows:
H.R. 2696
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 referred to as the ``Vessel Hull Design
Protection Act''.
SEC. 2. PROTECTION OF CERTAIN ORIGINAL DESIGNS.
Title 17, United States Code, is amended by adding at the
end the following new chapter:
``CHAPTER 12--PROTECTION OF ORIGINAL DESIGNS
``Sec.
``1201. Designs protected.
``1202. Designs not subject to protection.
``1203. Revisions, adaptations, and rearrangements.
``1204. Commencement of protection.
``1205. Term of protection.
``1206. Design notice.
``1207. Effect of omission of notice.
``1208. Exclusive rights.
``1209. Infringement.
``1210. Application for registration.
``1211. Benefit of earlier filing date in foreign country.
``1212. Oaths and acknowledgments.
``1213. Examination of application and issue or refusal of
registration.
``1214. Certification of registration.
``1215. Publication of announcements and indexes.
``1216. Fees.
``1217. Regulations.
``1218. Copies of records.
``1219. Correction of errors in certificates.
``1220. Ownership and transfer.
``1221. Remedy for infringement.
``1222. Injunctions.
``1223. Recovery for infringement.
``1224. Power of court over registration.
``1225. Liability for action on registration fraudulently obtained.
``1226. Penalty for false marking.
``1227. Penalty for false representation.
``1228. Enforcement by Treasury and Postal Service .
``1229. Relation to design patent law.
``1230. Common law and other rights unaffected.
``1231. Administrator; Office of the Administrator.
``1232. No retroactive effect.
``Sec. 1201. Designs protected
``(a) Designs Protected.--
``(1) In general.--The designer or other owner of an
original design of a useful article which makes the article
attractive or distinctive in appearance to the purchasing or
using public may secure the protection provided by this
chapter upon complying with and subject to this chapter.
``(2) Vessel hulls.--The design of a vessel hull, including
a plug or mold, is subject to protection under this chapter,
notwithstanding section 1202(4).
[[Page H1244]]
``(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, 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, especially one larger than a
rowboat, designed to navigate on water, but does not include
any such craft that exceeds 200 feet in length.
``(4) A `hull' is the frame or body of a vessel, including
the deck of a vessel, exclusive of masts, sails, yards, and
rigging.
``(5) A `plug' means a device or model used to make a mold
for the purpose of exact duplication, 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.
``Sec. 1202. Designs not subject to protection
``Protection under this chapter shall not be available for
a design that is--
``(1) not original;
``(2) staple or commonplace, such as a standard geometric
figure, a familiar symbol, 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 1 year before the date of the application
for registration under this chapter.
``Sec. 1203. Revisions, adaptations, and rearrangements
``Protection for a design under this chapter shall be
available notwithstanding the employment in the design of
subject matter excluded from protection under section 1202 if
the design is a substantial revision, adaptation, or
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.
``Sec. 1204. 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 1213(a) or the date the design
is first made public as defined by section 1210(b).
``Sec. 1205. 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 1204.
``(b) Expiration.--All terms of protection provided in this
section shall run to the end of the calendar year in which
they would otherwise expire.
``(c) Termination of Rights.--Upon expiration or
termination of protection in a particular design under this
chapter, all rights under this chapter in the design shall
terminate, regardless of the number of different articles in
which the design may have been used during the term of its
protection.
``Sec. 1206. Design notice
``(a) Contents of Design Notice.--(1) Whenever any design
for which protection is sought under this chapter is made
public under section 1210(b), the owner of the design shall,
subject to the provisions of section 1207, mark it or have it
marked legibly with a design notice consisting of--
``(A) the words `Protected Design', the 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 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.
``Sec. 1207. Effect of omission of notice
``(a) Actions With Notice.--Except as provided in
subsection (b), the omission of the notice prescribed in
section 1206 shall not cause loss of the protection under
this chapter or prevent recovery for infringement under this
chapter against any person who, after receiving written
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 1206 shall prevent any recovery under
section 1223 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.
``Sec. 1208. 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.
``Sec. 1209. Infringement
``(a) Acts of Infringement.--Except as provided in
subjection (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
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.
``Sec. 1210. Application for registration
``(a) Time Limit for Application for Registration.--
Protection under this chapter
[[Page H1245]]
shall be lost if application for registration of the design
is not made within two 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
``(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 1206, 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.
``Sec. 1211. 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.
``Sec. 1212. 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.
``Sec. 1213. 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 1210, and upon
payment of the fee prescribed under section 1216, 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 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.
``Sec. 1214. Certification of registration
``Certificates of registration shall be issued in the name
of the United States under the seal of the Office of the
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.
``Sec. 1215. Publication of announcements and indexes
``(a) Publications of the Administrator.--The Administrator
shall publish lists and indexes of registered designs and
cancellations of designs and may also publish the drawings or
other pictorial representations of registered designs for
sale or other distribution.
``(b) File of Representatives of Registered 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.
``Sec. 1216. Fees
``The Administrator shall by regulation set reasonable fees
for the filing of applications to register designs under this
chapter and for other services relating to the administration
of this chapter, taking into consideration the cost of
providing these services and the benefit of a public record.
``Sec. 1217. Regulations
``The Administrator may establish regulations for the
administration of this chapter.
[[Page H1246]]
``Sec. 1218. Copies of records
``Upon payment of the prescribed fee, any person may obtain
a certified copy of any official record of the Office of the
Administrator that relates to this chapter. That copy shall
be admissible in evidence with the same effect as the
original.
``Sec. 1219. 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.
``Sec. 1220. Ownership and transfer
``(a) Property Right in Design.--The property right in a
design subject to protection under this chapter shall vest in
the designer, the legal representatives of a 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 Acknowledgement of Transfer.--An oath or
acknowledgment under section 1212 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.
``Sec. 1221. Remedy for infringement
``(a) In General.--The owner of a design is entitled, after
issuance of a certificate of registration of the design under
this chapter, to institute an action for any 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
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 1213(c).
Sec. 1222. 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.
``Sec. 1223. 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.
``Sec. 1224. 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.
``Sec. 1225. Liability for action on registration
fraudulently obtained
``Any person who brings an action for infringement knowing
that registration of the design was obtained by a false or
fraudulent representation materially affecting the rights
under this chapter, shall be liable in the sum of $10,000, or
such part of that amount as the court may determine. That
amount shall be to compensate the defendant and shall be
charged against the plaintiff and paid to the defendant, in
addition to such costs and attorney's fees of the defendant
as may be assessed by the court.
``Sec. 1226. 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 1206, 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.
``Sec. 1227. 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.
``Sec. 1228. 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 1208 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 1208 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
[[Page H1247]]
the importer had no reasonable grounds for believing that his
or her acts constituted a violation of the law.
``Sec. 1229. Relation to design patent law
``The issuance of a design patent under title 35 for an
original design for an article of manufacture shall terminate
any protection of the original design under this chapter.
``Sec. 1230. Common law and other rights unaffected
``Nothing in this chapter shall annul or limit--
``(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.
``Sec. 1231. 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.
``Sec. 1232. No retroactive effect
``Protection under this chapter shall not be available for
any design that has been made public under section 1210(b)
before the effective date of this chapter.''.
SEC. 3. CONFORMING AMENDMENTS.
(a) Table of Chapters.--The table of chapters for title 17,
United States Code, is amended by adding at the end the
following:
``12. Protection of Original Designs........................1201''.....
(b) Jurisdiction of District Courts Over Design Actions.--
(1) Section 1338(c) of title 28, United States Code, is
amended by inserting ``, and to exclusive rights in designs
under chapter 12 of title 17,'' after ``title 17''.
(2)(A) The section heading for section 1338 of title 28,
United States Code, is amended by inserting ``designs,''
after ``mask works,''.
(B) The item relating to section 1338 in the table of
sections at the beginning of chapter 85 of title 28, United
States Code, is amended by inserting ``designs,'' after
``mask works,''.
(c) Place for Bringing Design Actions.--Section 1400(a) of
title 28, United States Code, is amended by inserting ``or
designs'' after ``mask works''.
(d) Actions Against the United States.--Section 1498(e) of
title 28, United States Code, is amended by inserting ``, and
to exclusive rights in designs under chapter 12 of title
17,'' after ``title 17''.
SEC. 4. EFFECTIVE DATE.
The amendments made by sections 2 and 3 shall take effect
one year after the date of the enactment of this Act.
The SPEAKER pro tempore. Pursuant to the rule, the gentleman from
North Carolina (Mr. Coble) and the gentleman from Virginia (Mr. Scott)
each will control 20 minutes.
The Chair recognizes the gentleman from North Carolina (Mr. Coble).
General Leave
Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may
have 5 legislative days within which to revise and extend their remarks
on the bill under consideration.
The SPEAKER pro tempore. Is there objection to the request of the
gentleman from North Carolina?
There was no objection.
Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
During our subcommittee hearing on H.R. 2696, the marine
manufacturers effectively demonstrated that ``hull splashing,'' an
industry term for applying a direct molding process to a boat hull in
an effort to create a knock-off design, is harmful and pervasive enough
to warrant legislative redress.
Consumers who purchase boats with knock-off hulls are defrauded in
the sense that they are not benefiting from the many attributes of hull
design, other than shape, that are structurally relevant, including
those related to quality and safety. It is also highly unlikely that
consumers know that a boat has been copied from an existing design.
Most importantly, for the purposes of promoting intellectual property
rights, if manufacturers are not permitted to recoup at least some of
their research and development costs, they may no longer invest in new,
innovative boat designs.
Accordingly and consistent with the history of design legislation,
H.R. 2696 protects the original designs of vessel hulls. Owners of
protected designs must register their work with the Copyright Office,
and the term of protection allows for 10 years. The owner will enjoy
the exclusive right to make, import and sell any legislative hull
embodying a protected design. Infringers will be liable for
compensatory damages or lost sales, and a court may increase damages by
as much as $50,000 in egregious cases.
Finally, Mr. Speaker, during the full committee markup of the bill,
the gentleman from Virginia (Mr. Scott) expressed his desire that H.R.
2696 not cover large ships manufactured for military use. It was never
our intention to protect designs for large vessels used by the Merchant
Marine or the Armed Services, and I am pleased that we were able to
develop some compromise language on the subject that is acceptable to
all parties involved.
This language and a few technical changes to the bill are
incorporated in the manager's amendment which I offer as a substitute
to the bill as reported by the committee.
In sum, Mr. Speaker, this is a good bill that will offer limited
protection to an industry in which effort, investment and creativity
are presently unrewarded. I urge my colleagues to pass H.R. 2696, as
amended.
Mr. Speaker, I reserve the balance of my time.
Mr. SCOTT. Mr. Speaker, I yield myself such time as I may consume.
I rise in support of H.R. 2696, the Vessel Hull Design Protection
Act. This legislation creates a new design patent for vessel hulls.
Confusion between copyright patent and trademark protection for hull
models over the years has apparently produced a proliferation of
unattributed and bad copies of expensive designs, and this legislation
articulates clearer standards for the grant of a design patent.
This industrial design problem is illustrated in the Supreme Court's
1989 decision in Bonito Boats, effectively denying intellectual
property protection for a Florida boat designer because of the contrary
Florida State law. Here, I agree with the subcommittee Chairman, Mr.
Coble, in that it is important that we send a message that when it
comes to theft of patents and trademarks, it is necessary for Congress
to set a predictable and uniform Federal rule.
The Patent and Trademark Office does not have a formal view on this
bill; but, as a general policy, they prefer not to enumerate subgroups
of patents. Nevertheless, they do not oppose this legislation.
Finally, I would like to thank the Chairman for his cooperation and
kind assistance by adding clarifying language that exempts vessels more
than 200 feet. This language, while maintaining copyright protection of
smaller vessels, will not interfere with the commercial practices of
the industry for larger vessels, and that is a very significant concern
in my congressional district.
Mr. Speaker, I urge my colleagues to support the bill.
Mr. Speaker, I yield back the balance of my time.
Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume to
express my thanks to the gentleman from Virginia (Mr. Scott) and the
other members of the subcommittee for having worked very cooperatively
with us in this matter.
Mr. Speaker, I have no further requests for time; and I yield back
the balance of my time.
The SPEAKER pro tempore. The question is on the motion offered by the
gentleman from North Carolina (Mr. Coble) that the House suspend the
rules and pass the bill, H.R. 2696, as amended.
The question was taken; and (two-thirds having voted in favor
thereof) the rules were suspended and the bill, as amended, was passed.
A motion to reconsider was laid on the table.
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