[Congressional Record Volume 151, Number 36 (Monday, April 4, 2005)]
[Senate]
[Pages S3153-S3154]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. DOMENICI (for himself, Mr. Nelson of Florida, Mr. 
        Santorum, Mr. Ensign, Mr. Martinez, Mr. Allen, Mr. Lieberman, 
        Mr. Lautenberg, and Mr. Bunning):
  S. 691. A bill to modify the prohibition on recognition by United 
States courts of certain rights relating to certain marks, trade names, 
or commercial names; to the Committee on the Judiciary.
  Mr. DOMENICI. Mr. President, I rise today to introduce legislation 
that will protect U.S. trademarks and their legitimate owners from the 
effects of the confiscations decreed by the Cuban Government.
  My colleagues and I believe in the fundamental principle that 
property rights must be respected and that it is wrong for governments 
to take property from individuals and companies, whether nationals or 
foreigners, without payment of prompt, adequate and effective 
compensation. We uphold the firmly established principle of our law and 
public policy that foreign confiscatory measures must never be given 
effect on property situated in the United States.
  When the Castro regime took power in Cuba, it engaged in a program of 
wholesale confiscation of property in Cuba, including property owned by 
Cuban nationals as well as by U.S. and other non-Cuban nationals. The 
Cuban Government also purported to extend the effects of the 
confiscation to property, such as trademarks, that the confiscation 
victims owned in other countries, and took other actions in an attempt 
to seize control of such assets.
  To protect U.S. trademarks and their legitimate owners from the 
effects of the confiscations decreed by the Cuban government, Congress 
enacted Section 211 of H.R. 4328, PL 105-277, in 1998. This law, 
referred to as Section 211, prohibits enforcement of U.S. rights to 
trademarks confiscated by the Cuban Government, except with the consent 
of the legitimate owner. Section 211 simply made it clear that the 
universal U.S. policy against giving effect to foreign confiscations of 
U.S. property applies with equal force in the case of U.S. trademarks 
confiscated by Cuba.
  Section 211 was challenged in the World Trade Organization, WTO, by 
the European Union, EU. In January 2002, the WTO appellate body finally 
resolved that challenge by finding in favor of the United States on all 
points except one. The appellate body made a narrow finding that, 
because Section 211 on its face does not apply to U.S. nationals, it is 
inconsistent with the national-treatment and most-favored-nation 
principles under the TRIPs Agreement. The appellate body fully 
supported the principle embodied in Section 211, that is, the non-
recognition of uncompensated confiscations and the protection of 
intellectual property ownership rights. The revision required to 
broaden the application of Section 211 to include U.S. nationals 
amounts to no more than a minor, technical fix.
  The legislation that I introduce today makes it clear that this well-
founded law applies to all parties claiming rights in confiscated Cuban 
trademarks, regardless of nationality. Such a technical correction will 
satisfy the WTO ruling and prevent the EU from applying trade sanctions 
against the United States at the end of this year. Moreover, this 
legislation does three things: it maintains protection for original 
owners of confiscated Cuban trademarks; it applies to all people, 
regardless of nationality; and it clarifies that trademarks and trade 
names confiscated by the Cuban Government will not be recognized in the 
United States when the assertion is being made by someone who knew or 
had reason to know that the mark was confiscated.
  This bill does not in any way decide which party owns a Cuban 
trademark in the U.S. nor does Section 211 prevent the Cuban Government 
or its various entities from having access to our courts or from 
registering legitimate trademarks in the U.S. As long as the trademark 
was not confiscated, the Cuban Government can legally register any 
trademark it desires. Moreover, even if the Cuban Government stole a 
trademark in the 1960s, it can still register the trademark in the U.S 
as long as the original owner has consented.
  Once revised, Section 211 is consistent with all of our international 
treaty obligations including the Inter-American Convention on 
Trademarks. Article 3 of the Inter-American Convention expressly allows 
non-recognition of a trademark when such recognition would be contrary 
to the public order or public policy of the state in which recognition 
is sought. There is no doubt whatsoever that allowing title to U.S. 
property to be determined by a foreign confiscation violates U.S. 
public policy. Section 211 simply makes it clear that the universal 
U.S. policy against giving effect to foreign confiscations of U.S. 
property applies with equal force in the case of U.S. trademarks 
confiscated by Cuba. Nothing in any treaty or in international law is 
inconsistent with that rule of U.S. law.
  I believe this piece of legislation is a simple technical corrections 
bill which will ensure that a fairly simple, but important, U.S. law is 
WTO-compliant.
  I ask unanimous consent that the text of the bill be printed in the 
Record.
  There being no objection, the bill was ordered to be printed in the 
Record, as follows:

                                 S. 691

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

     SECTION 1. MODIFICATION OF PROHIBITION.

       Section 211 of the Department of Commerce and Related 
     Agencies Appropriations Act, 1999 (as contained in section 
     101(b) of division A of Public Law 105-277; 112 Stat. 2681-
     88) is amended--
       (1) in subsection (a)(2)--
       (A) by striking ``by a designated national''; and
       (B) by inserting before the period ``that was used in 
     connection with a business or assets that were confiscated 
     unless the original owner of the mark, trade name, or 
     commercial name, or the bonafide successor-in-interest has 
     expressly consented'';
       (2) in subsection (b), by striking ``by a designated 
     national or its successor-in-interest'';
       (3) by redesignating subsection (d) as subsection (e);
       (4) by inserting after subsection (c) the following:
       ``(d) Subsections (a)(2) and (b) of this section shall 
     apply only if the person or entity asserting the rights knew 
     or had reason to know at the time when the person or entity 
     acquired the rights asserted that the mark, trade name, or 
     commercial name was the same as or substantially similar to a 
     mark, trade name, or commercial name that was used in 
     connection with a business or assets that were 
     confiscated.''; and
       (5) in subsection (e), as so redesignated, by striking ``In 
     this section:'' and all that follows through ``(2) The term'' 
     and inserting ``In this section, the term''.

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