(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 1302(4).
(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 —
(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 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.
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
2 years before the date of the application for registration under this chapter.
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.
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).
(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.
(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 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.
(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.
(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 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.
(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
(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.
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.
(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.
(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 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.
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.
(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.
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.
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.
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.
(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.
(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
1313(c).
(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.
(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.
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.
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.
(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.
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.
(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.
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.
(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.
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.
Protection under this chapter shall not be available for
any design that has been made public under section
1310(b) before the effective date of this chapter.6
1In 1998, the Vessel Hull Design
Protection Act added chapter 13, entitled “Protection of Original Designs,”
to title 17. Pub. L. No. 105-304, 112 Stat. 2860, 2905. The Vessel Hull Design
Protection Act is title V of the Digital Millennium Copyright Act, Pub. L.
No. 105-304, 112 Stat. 2860.
2The Satellite Home Viewer Improvement
Act of 1999 amended section 1301(b)(3) in its entirety. Pub. L. No. 106-113,
113 Stat. 1501, app. I at 1501A-593.
3In 1999, section 1302(5) was amended
to substitute “2 years” in lieu of “1 year.” Pub. L. No. 106-44, 113 Stat.
221, 222.
4The Satellite Home Viewer Improvement
Act of 1999 amended section 1313(c) by adding at the end thereof the last
sentence, which begins “Costs of the cancellation procedure.” Pub. L. No.
106-113, 113 Stat. 1501, app. I at 1501A-594.
5In 1999, section
1320 was amended to change the spelling in the heading of subsection (c)
from “acknowledgement” to “acknowledgment.” Pub. L. No. 106-44, 113 Stat.
221, 222.
6The effective date of
chapter 13 is October 28, 1998. See section 505 of the Digital Millennium
Copyright Act, which appears in Appendix V.
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