H.R.1790 - Design Innovation and Technology Act of 1991102nd Congress (1991-1992)
|Sponsor:||Rep. Gephardt, Richard A. [D-MO-3] (Introduced 04/16/1991)|
|Committees:||House - Judiciary|
|Latest Action:||House - 01/29/1992 Subcommittee Hearings Held. (All Actions)|
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Text: H.R.1790 — 102nd Congress (1991-1992)All Information (Except Text)
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HR 1790 SC3 102d CONGRESS 2d Session H. R. 1790 To amend title 17, United States Code, to provide for protection of industrial designs of useful articles. IN THE HOUSE OF REPRESENTATIVES April 16, 1991 Mr. GEPHARDT (for himself, Mr. MOORHEAD, Mr. MICHEL, Mr. FISH, Mr. SENSENBRENNER, Mr. COBLE, Mr. ACKERMAN, Mr. BRYANT, Mr. MANTON, Mr. LIPINSKI, Mr. SMITH of Florida, Mr. ROE, Mr. ESPY, Mr. MARKEY, Mr. KLECZKA, Mr. MRAZEK, Ms. LONG, Mr. SABO, Mr. DE LUGO, Mr. HERTEL, Mr. CAMPBELL of Colorado, Mr. ABERCROMBIE, Mr. FROST, Mr. WISE, Mr. BONIOR, Ms. SLAUGHTER of New York, Mr. ECKART, MS. KAPTUR, Mr. PANETTA, Mr. SERRANO, Mr. ENGEL, Mr. TORRICELLI, Mr. FAZIO, Mr. ERDREICH, Mr. CARDIN, Mr. WALSH, Mr. MCDADE, Mr. GALLEGLY, Mr. KOLBE, Mr. DERRICK, Mr. SPENCE, Mr. DORNAN of California, Mr. STEARNS, Mr. PETRI, Mr. DANNEMEYER, Mr. SCHEUER, Mr. ANDERSON, Mr. FALEOMAVAEGA, Mr. MCGRATH, Mrs. JOHNSON of Connecticut, Mr. GUNDERSON, Mr. FAWELL, Mr. MARTIN, Mr. HEFNER, Mr. FORD of Michigan, Mr. BUSTAMANTE, Mr. HAYES of Louisiana, Mr. EVANS, Mr. DYMALLY, Mr. HOYER, Mr. ANDREWS of Maine, Mr. COSTELLO, Mr. BENNETT, Mr. CRAMER, Mr. DONNELLY, Mr. BOEHNER, Mr. COLEMAN of Missouri, Mr. SANGMEISTER, Mr. BEREUTER, and Mr. BILBRAY) introduced the following bill; which was referred to the Committee on the Judiciary September 9, 1991 Additional sponsors: Mr. DWYER of New Jersey, Mr. JACOBS, Mrs. BOXER, Mr. OWENS of Utah, Mr. PAXON, Mr. SHARP, Mr. PEASE, Mr. CARR, Mr. GEJDENSON, Mr. CAMPBELL of California, Mr. TRAFICANT, Mr. RITTER, Mr. MCNULTY, and Mr. Nowak Deleted sponsors: Mr. SENSENBRENNER (added April 16, 1991; deleted June 5, 1991), and Mr. GLICKMAN (added May 1, 1991; deleted June 4, 1991) December 19, 1991 Additional sponsors: Mr. COX of Illinois, Mr. RAMSTAD, Mr. YATES, and Mr. COX of California Deleted sponsors: Mr. ERDREICH (added April 16, 1991; deleted October 23, 1991), Mr. KOLBE (added April 16, 1991; deleted October 3, 1991), Mr. FAWELL (added April 16, 1991; deleted November 19, 1991), Mr. BEREUTER (added April 16, 1991, deleted September 23, 1991), and Mr. SHARP (added May 1, 1991; deleted November 25, 1991) May 28, 1992 Additional sponsors: Mr. CONYERS, Mr. PURSELL, Mr. GAYDOS, Mr. SANTORUM, and Mr. Kildee Deleted sponsors: Mr. WALSH (added April 16, 1991; deleted March 19, 1992), Mrs. JOHNSON of Connecticut (added April 16, 1991; deleted May 14, 1992), Mr. CRAMER (added April 16, 1991; deleted May 21, 1992), Mr. COLEMAN of Missouri (added April 16, 1991; deleted May 28, 1992), and Mr. PAXON (added May 1, 1991; deleted April 1, 1992) A BILL To amend title 17, United States Code, to provide for protection of industrial designs of useful articles. 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 `Design Innovation and Technology Act of 1991'. SEC. 2. PROTECTION OF INDUSTRIAL DESIGNS. Title 17, United States Code, is amended by adding at the end the following new chapter: `CHAPTER 10--PROTECTION OF ORIGINAL DESIGNS OF USEFUL ARTICLES `Sec. `1001. Designs protected. `1002. Designs not subject to protection. `1003. Revision, adaptations, and rearrangements. `1004. Commencement of protection. `1005. Term of protection. `1006. Design notice. `1007. Effect of omission of notice. `1008. Exclusive rights. `1009. Infringement. `1010. Application for registration. `1011. Benefit of earlier filing date in foreign country. `1012. Oaths and acknowledgments. `1013. Examination of application and issue or refusal of registration. `1014. Certification of registration. `1015. Publication of announcements and indexes. `1016. Fees. `1017. Regulations. `1018. Copies of records. `1019. Correction of errors in certificates. `1020. Ownership and transfer. `1021. Remedy for infringement. `1022. Injunctions. `1023. Recovery for infringement. `1024. Power of court over registration. `1025. Liability for action on registration fraudulently obtained. `1026. Penalty for false marking. `1027. Penalty for false representation. `1028. Enforcement by Treasury and Postal Service. `1029. Relation to design patent and copyright law. `1030. Common law and other rights unaffected. `1031. Administrator. `1032. No retroactive effect.'. `Sec. 1001. Designs protected `(a) DESIGNS PROTECTED- 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. `(b) DEFINITIONS- For the purposes 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 an article 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 a part of a useful article shall be deemed to be a useful article. `(3) A `typeface' consists of a set of letters, numbers, or other symbolic characters, whose forms are related by repeating design elements consistently applied in a notational system. A typeface is a design subject to protection under this chapter when the repeating design elements in the combinations employed in a notational system are-- `(A) original; `(B) distinct; and `(C) incorporated in a typefont. `(4) A `typefont' is any useful article in which a typeface resides as the implement of printing technology, regardless of medium or form. `Sec. 1002. 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, familiar symbol, emblem, or motif, or other 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; `(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; `(6) composed of three-dimensional features of shape and surface with respect to men's, women's, and children's apparel, including undergarments and outerwear; `(7) a semiconductor chip product which is protected under chapter 9 of this title; `(8) an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such design; or `(9) for motor vehicle glass, including windshields and side and rear vision glass. With respect to articles which are normally part of a larger useful article as defined in section 1001(b)(2), that portion of the article shape dictated by the mechanical interface, perimeter, or envelope restrictions necessary to permit the physical and functional substitution of an article shall be considered to be a design for which protection under this chapter is not available under paragraph (4). `Sec. 1003. 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 1002 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. 1004. 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 1013(a) or the date the design is first made public as defined by section 1010(b). `Sec. 1005. 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 from the date of the commencement of protection under section 1004. `(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. 1006. Design notice `(a) CONTENTS OF DESIGN NOTICE- (1) Whenever any design for which protection is sought under this chapter is made public under section 1010(b), the owner of the design shall, subject to the provisions of section 1007, 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 approved and 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. This requirement may be fulfilled, in the case of sheetlike or strip materials bearing repetitive or continuous designs, by application of the notice to each repetition, or to the margin, selvage, or reverse side of the material at reasonably frequent intervals, or to tags or labels affixed to the material at such intervals. `(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. 1007. Effect of omission of notice `(a) ACTIONS WITH NOTICE- Except as provided in subsection (b), the omission of the notice prescribed in section 1006 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 1006 shall prevent any recovery under section 1023 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. 1008. 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. 1009. Infringement `(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 an 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 having received 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 or an article that embodies, in common with the protected design, only elements described in section 1002. 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 a 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. `(h) USE OF TYPEFACE FOR PRINTED MATERIALS- (1) It is not an infringement of a typeface that is a design protected under this chapter to reproduce, modify, or distribute printed materials using the typeface. `(2) The exemption provided in paragraph (1) shall extend as well to any person's potential liability for infringement of a protected typeface or design of a typefont that might otherwise be imposed under the doctrine of vicarious liability or related infringement. `Sec. 1010. Application for registration `(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 one year 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 1006, 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 article named in the application, 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 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 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. 1011. 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 the same effect as if filed in the United States on the date on which the application was first filed in any 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. 1012. 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. 1013. 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 1010, and upon payment of the fee prescribed under section 1016, 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 Administrator 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. It shall also be within the authority of the Administrator 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. 1014. 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 that 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, this 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. 1015. 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. 1016. 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. 1017. Regulations `The Administrator may establish regulations for the administration of this chapter. `Sec. 1018. 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. 1019. 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. 1020. 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 AFFIRMATION OF TRANSFER- An acknowledgment under section 1012 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. 1021. 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 Administrator's failure 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 1013(c). `Sec. 1022. 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, 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, to recover a reasonable attorney's fee. `Sec. 1023. 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. 1024. 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. 1025. 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. 1026. 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 1006, 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. 1027. 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. 1028. 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 1008 with respect to importation. These 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 1008 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. `Sec. 1029. Relation to design patent and copyright law `The issuance of a design patent under title 35 for an original design for an article of manufacture, or the issuance of a copyright registration under title 17 for an original design, shall terminate any protection of the original design under this chapter. `Sec. 1030. 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 rights under the trademark laws or any right protected against unfair competition. `Sec. 1031. Administrator `The Administrator and Office of the Administrator referred to in this chapter shall be the Register of Copyrights and the Copyright Office of the Library of Congress, respectively. `Sec. 1032. No retroactive effect `Protection under this chapter shall not be available for any design that has been made public under section 1009(b) before the effective date of this chapter.'. SEC. 3. CONFORMING AMENDMENTS. (a) 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 10 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 table of sections at the beginning of chapter 85 of title 28, United States Code, is amended by inserting `designs,' after `mask works,'. (b) PLACE OF DESIGN ACTIONS- Section 1400(a) of title 28, United States Code, is amended by inserting `or designs' after `mask works,'. (c) 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 10 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.