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1 "(b) The property right in a registered design, or a 2 design for which an application for registration has been or 3 may be filed, may be assigned, granted, conveyed, or mort4 gaged by an instrument in writing, signed by the proprietor, 5 or may be bequeathed by will.

6

"(c) An acknowledgment as provided in section 1011 7 shall be prima facie evidence of the execution of an assign

8 ment, grant, conveyance, or mortgage.

9

"(d) An assignment, grant, conveyance, or mortgage 10 shall be void as against any subsequent purchaser or mortga11 gee for a valuable consideration, without notice, unless it is 12 recorded in the Office of the Administrator within three 13 months from its date of execution or prior to the date of such 14 subsequent purchase or mortgage.

15

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"REMEDY FOR INFRINGEMENT

"SEC. 1020. (a) The proprietor of a design shall have

17 remedy for infringement by civil action instituted after issu18 ance of a certificate of registration of the design.

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"(b) The proprietor of a design may have judicial review 20 of a final refusal of the Administrator to register the design, 21 by a civil action brought as for infringement and shall have 22 remedy for infringement by the same action if the court ad23 judges the design subject to protection under this chapter: 24 Provided, That (1) he has previously duly filed and duly pros25 ecuted to such final refusal an application in proper form for

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1 registration of the design, and (2) he causes a copy of the 2 complaint in action to be delivered to the Administrator 3 within ten days after the commencement of the action, and 4 (3) the defendant has committed acts in respect to the design 5 which would constitute infringement with respect to a design 6 protected under this chapter.

7 "(c) The Administrator may, at his or her option, 8 become a party to the action with respect to the issue of 9 registrability of the design claim by entering an appearance 10 within sixty days after such service, but the Administrator's 11 failure to become a party shall not deprive the court of juris12 diction to determine that issue.

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"(d) The parties to an infringement dispute under this 14 law, within such time as may be specified by the Administra15 tor by regulation, may determine such contest or any aspect 16 thereof by arbitration. Such arbitration shall be governed by 17 the provision of title 9 to the extent such title is not inconsist18 ent with this section. The parties shall give notice of any 19 arbitration award to the Administrator, and such award shall, 20 as between the parties to the arbitration be dispositive of the 21 issues to which it relates. The arbitration award shall be un22 enforceable until such notice is given. Nothing in this subsec23 tion shall preclude the Administrator from determining 24 whether a design is subject to registration in a cancellation 25 proceeding under section 1012(c).

1

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"INJUNCTION

"SEC. 1021. The several courts having jurisdiction of 3 actions under this chapter may grant injunctions in accord4 ance with the principles of equity to prevent infringement, 5 including, in their discretion, prompt relief by temporary re6 straining orders and preliminary injunctions.

7

8

"RECOVERY FOR INFRINGEMENT, AND SO FORTH

"SEC. 1022. (a) Upon finding for the claimant, the court 9 shall award such claimant damages adequate to compensate 10 for the infringement, but in no event less than the reasonable 11 value the court shall assess them. In addition, the court may 12 increase the damages to such amount, not exceeding $50,000 13 or $1 per copy, whichever is greater, as to the court shall 14 appear to be just. The damages awarded in any of the above 15 circumstances shall constitute compensation and not a 16 penalty. The court may receive expert testimony as an aid to 17 the determination of damages.

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"(b) Alternatively, the court may award the claimant 19 the infringer's profits resulting from the sale of the copies if it 20 finds that the infringer's sales are reasonably related to the 21 use of the claimant's design. In such a case, the claimant 22 shall be required to prove only the infringer's sales and the 23 infringer shall be required to prove its expenses against such 24 sales.

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“(c) No recovery under paragraph (a) shall be had for 2 any infringement committed more than three years prior to 3 the filing of the complaint.

4 "(d) The court may award reasonable attorney's fees to 5 the prevailing party. The court may also award other ex6 penses of suit to a defendant prevailing in an action brought 7 under section 1020(b).

8 "(e) The court may order that all infringing articles, and 9 any plates, molds, patterns, models, or other means specifi10 cally adapted for making the same be delivered up for de11 struction or other disposition as the court may direct.

12

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"POWER OF COURT OVER REGISTRATION

"SEC. 1023. In any action involving a design for which 14 protection is sought under this chapter, the court when ap15 propriate may order registration of a design or the cancella16 tion of a registration. Any such order shall be certified by the 17 court to the Administrator, who shall make an appropriate 18 entry upon the record.

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2220

“LIABILITY FOR Action on REGISTRATION

FRAUDULENTLY OBTAINED

21 "SEC. 1024. Any person who shall bring an action for 22 infringement knowing that registration of the design was ob23 tained by a false or fraudulent representation materially af24 fecting the rights under this chapter, shall be liable in the 25 sum of $1,000, or such part thereof as the court may deter

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1 filed in this country on the date on which the application was

2 first filed in any such foreign country, if the application in 3 this country is filed within six months from the earliest date 4 on which any such foreign application was filed.

5

6

"OATHS AND ACKNOWLEDGMENTS

"SEC. 1011. (a) Oaths and acknowledgments required

7 by this chapter may be made before any person in the United 8 States authorized by law to administer oaths, or, when made 9 in a foreign country, before any diplomatic or consular officer 10 of the United States authorized to administer oaths, or before 11 any official authorized to administer oaths in the foreign 12 country concerned, whose authority shall be proved by a cer13 tificate of a diplomatic or consular officer of the United 14 States, and shall be valid if they comply with the laws of the 15 State or country where made.

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"(b) The Administrator may by rule prescribe that any 17 document to be filed in the Office of the Administrator and 18 which is required by any law, rule, or other regulation to be 19 under oath may be subscribed to by a written declaration in 20 such form as the Administrator may prescribe, such declara21 tion to be in lieu of the oath otherwise required.

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"(c) Whenever a written declaration as permitted in 23 subsection (b) is used, the document must warn the declarant 24 that willful false statements and the like are punishable by 25 fine or imprisonment, or both (18 U.S.C. 1001) and may

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