Advanced Copyright Law on the Internet

appearance to a protected design.”^1473 Strictly speaking, this provision enumerates only one way
in which an alleged infringer can rebut an allegation of copying, and it does not state that this is
the only way. However, it is unclear what happens when an accused design is, by coincidence,
substantially similar to a protected design but can be shown to have been independently
developed. Such a showing of independent development would be sufficient to avoid liability
under copyright law, and it seems logical that it should be sufficient to prove that the design was
not “copied” under the design statute as well.

(8) Benefit of Foreign Filing Date

Under Section 1311, an applicant for registration of a design in the United States can
claim the benefit of an earlier filing date in a foreign country for registration of the same design
if (i) the foreign country extends similar design protection to citizens of the United States, and
(ii) the application is filed in the United States within six months after the earliest date on which
any such foreign application was filed.

(9) Vesting and Transfer of Ownership

Under Section 1320, design rights vest in the creator of the design, or, in the case of a
design made within the regular scope of the designer’s employment, in the employer. Property
rights in a design may be assigned or mortgaged by an instrument in writing, and any such
conveyance is void as against a subsequent purchaser or mortgagee for valuable consideration
unless it is recorded in the Copyright Office within three months after its execution or before the
date of such subsequent purchase or mortgage.

(10) Remedies of Injunctive Relief, Damages, Attorneys’ Fees
and Destruction

Section 1322 permits a court to award preliminary and permanent injunctive relief against
infringement of protected designs. Under Section 1323(a), the owner of a protected design may
recover “damages adequate to compensate for the infringement,” but the damages awarded “shall
constitute compensation and not a penalty.” Section 1323(a) permits the court to increase the
damages to such amount, not exceeding $50,000 or $1 per copy, whichever is greater, as the
court deems just. As an alternative, under Section 1323(b), the court may award the owner of the
protected design the infringer’s profits resulting from the sale of the infringing copies “if the
court finds that the infringer’s sales are reasonably related to the use” of the protected design.
The owner is required to prove only the amount of the infringer’s sales, and the infringer must
then prove its expenses against such sales. Section 1323(d) allows the court to award attorneys’
fees to the prevailing party and Section 1323(e) allows the court to order the destruction of

(^1473) It is unclear what the relationship is between the standard of “substantially similar” for infringement purposes
and the standard of “distinguishable variation” (in the definition of “original”) for purposes of protectability.
However, Section 1309(f) provides that if an accused infringer introduces an earlier work which is identical to
an allegedly protected design or so similar as to make a prima facie showing that such design was copied, then
the burden shifts to the owner of the allegedly protected design to prove its originality.