17 U.S.C. § 911 — Civil actions

Page 207 TITLE 17—COPYRIGHTS § 911 such service, but the failure of the Register to become a party to the action shall not deprive the court of jurisdiction to determine that issue. (c)(1) 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 905 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: (A) Obtain a court order enjoining, or an order of the International Trade Commission under section 337 of the Tariff Act of 1930 ex- cluding, importation of the articles. (B) Furnish proof that the mask work in- volved is protected under this chapter and that the importation of the articles would in- fringe the rights in the mask work under this chapter. (C) Post a surety bond for any injury that may result if the detention or exclusion of the articles proves to be unjustified. (2) Articles imported in violation of the rights set forth in section 905 are subject to seizure and forfeiture in the same manner as property im- ported in violation of the customs laws. Any such forfeited articles shall be destroyed as di- rected by the Secretary of the Treasury or the court, as the case may be, except that the arti- cles 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. (Added Pub. L. 98–620, title III, § 302, Nov. 8, 1984, 98 Stat. 3352; amended Pub. L. 101–553, § 2(b)(1), Nov. 15, 1990, 104 Stat. 2750; Pub. L. 105–80, § 12(a)(23), Nov. 13, 1997, 111 Stat. 1535.) Editorial Notes REFERENCES IN TEXT The Federal Rules of Civil Procedure, referred to in subsec. (b)(2), are set out in the Appendix to Title 28, Judiciary and Judicial Procedure. Section 337 of the Tariff Act of 1930, referred to in subsec. (c)(1)(A), is classified to section 1337 of Title 19, Customs Duties. AMENDMENTS 1997—Subsec. (a). Pub. L. 105–80 substituted ‘‘As used’’ for ‘‘as used’’ in second sentence. 1990—Subsec. (a). Pub. L. 101–553 inserted sentences at end defining ‘‘any person’’ and providing that any State and any instrumentality, officer, or employee be subject to the provisions of this chapter in the same manner and to the same extent as any nongovern- mental entity. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1990 AMENDMENT Amendment by Pub. L. 101–553 effective with respect to violations that occur on or after Nov. 15, 1990, see section 3 of Pub. L. 101–553, set out as a note under sec- tion 501 of this title. § 911. Civil actions (a) Any court having jurisdiction of a civil ac- tion arising under this chapter may grant tem- porary restraining orders, preliminary injunc- tions, and permanent injunctions on such terms as the court may deem reasonable to prevent or restrain infringement of the exclusive rights in a mask work under this chapter. (b) Upon finding an infringer liable, to a per- son entitled under section 910(b)(1) to institute a civil action, for an infringement of any exclu- sive right under this chapter, the court shall award such person actual damages suffered by the person as a result of the infringement. The court shall also award such person the infring- er’s profits that are attributable to the infringe- ment and are not taken into account in com- puting the award of actual damages. In estab- lishing the infringer’s profits, such person is re- quired to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the ele- ments of profit attributable to factors other than the mask work. (c) At any time before final judgment is ren- dered, a person entitled to institute a civil ac- tion for infringement may elect, instead of ac- tual damages and profits as provided by sub- section (b), an award of statutory damages for all infringements involved in the action, with respect to any one mask work for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and sev- erally, in an amount not more than $250,000 as the court considers just. (d) An action for infringement under this chapter shall be barred unless the action is com- menced within three years after the claim ac- crues. (e)(1) At any time while an action for infringe- ment of the exclusive rights in a mask work under this chapter is pending, the court may order the impounding, on such terms as it may deem reasonable, of all semiconductor chip products, and any drawings, tapes, masks, or other products by means of which such products may be reproduced, that are claimed to have been made, imported, or used in violation of those exclusive rights. Insofar as practicable, applications for orders under this paragraph shall be heard and determined in the same man- ner as an application for a temporary restrain- ing order or preliminary injunction. (2) As part of a final judgment or decree, the court may order the destruction or other dis- position of any infringing semiconductor chip products, and any masks, tapes, or other articles by means of which such products may be repro- duced. (f) In any civil action arising under this chap- ter, the court in its discretion may allow the re- covery of full costs, including reasonable attor- neys’ fees, to the prevailing party. (g)(1) Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity, for a violation of any of the exclusive rights of the owner of a mask work under this chapter, or for any other viola- tion under this chapter. Page 208 TITLE 17—COPYRIGHTS § 912 (2) In a suit described in paragraph (1) for a violation described in that paragraph, remedies (including remedies both at law and in equity) are available for the violation to the same ex- tent as such remedies are available for such a violation in a suit against any public or private entity other than a State, instrumentality of a State, or officer or employee of a State acting in his or her official capacity. Such remedies in- clude actual damages and profits under sub- section (b), statutory damages under subsection (c), impounding and disposition of infringing ar- ticles under subsection (e), and costs and attor- ney’s fees under subsection (f). (Added Pub. L. 98–620, title III, § 302, Nov. 8, 1984, 98 Stat. 3353; amended Pub. L. 101–553, § 2(b)(2), Nov. 15, 1990, 104 Stat. 2750.) Editorial Notes AMENDMENTS 1990—Subsec. (g). Pub. L. 101–553 added subsec. (g). Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1990 AMENDMENT Amendment by Pub. L. 101–553 effective with respect to violations that occur on or after Nov. 15, 1990, see section 3 of Pub. L. 101–553, set out as a note under sec- tion 501 of this title. § 912. Relation to other laws (a) Nothing in this chapter shall affect any right or remedy held by any person under chap- ters 1 through 8 or 10 of this title, or under title 35. (b) Except as provided in section 908(b) of this title, references to ‘‘this title’’ or ‘‘title 17’’ in chapters 1 through 8 or 10 of this title shall be deemed not to apply to this chapter. (c) The provisions of this chapter shall pre- empt the laws of any State to the extent those laws provide any rights or remedies with respect to a mask work which are equivalent to those rights or remedies provided by this chapter, ex- cept that such preemption shall be effective only with respect to actions filed on or after January 1, 1986. (d) Notwithstanding subsection (c), nothing in this chapter shall detract from any rights of a mask work owner, whether under Federal law (exclusive of this chapter) or under the common law or the statutes of a State, heretofore or hereafter declared or enacted, with respect to any mask work first commercially exploited be- fore July 1, 1983. (Added Pub. L. 98–620, title III, § 302, Nov. 8, 1984, 98 Stat. 3354; amended Pub. L. 100–702, title X, § 1020(b), Nov. 19, 1988, 102 Stat. 4672; Pub. L. 102–563, § 3(c), Oct. 28, 1992, 106 Stat. 4248.) Editorial Notes AMENDMENTS 1992—Subsecs. (a), (b). Pub. L. 102–563 inserted ‘‘or 10’’ after ‘‘8’’. 1988—Subsecs. (d), (e). Pub. L. 100–702 redesignated subsec. (e) as (d) and struck out former subsec. (d) which read as follows: ‘‘The provisions of sections 1338, 1400(a), and 1498(b) and (c) of title 28 shall apply with respect to exclusive rights in mask works under this chapter.’’ § 913. Transitional provisions (a) No application for registration under sec- tion 908 may be filed, and no civil action under section 910 or other enforcement proceeding under this chapter may be instituted, until sixty days after the date of the enactment of this chapter. (b) No monetary relief under section 911 may be granted with respect to any conduct that oc- curred before the date of the enactment of this chapter, except as provided in subsection (d). (c) Subject to subsection (a), the provisions of this chapter apply to all mask works that are first commercially exploited or are registered under this chapter, or both, on or after the date of the enactment of this chapter. (d)(1) Subject to subsection (a), protection is available under this chapter to any mask work that was first commercially exploited on or after July 1, 1983, and before the date of the en- actment of this chapter, if a claim of protection in the mask work is registered in the Copyright Office before July 1, 1985, under section 908. (2) In the case of any mask work described in paragraph (1) that is provided protection under this chapter, infringing semiconductor chip product units manufactured before the date of the enactment of this chapter may, without li- ability under sections 910 and 911, be imported into or distributed in the United States, or both, until two years after the date of registration of the mask work under section 908, but only if the importer or distributor, as the case may be, first pays or offers to pay the reasonable royalty re- ferred to in section 907(a)(2) to the mask work owner, on all such units imported or distributed, or both, after the date of the enactment of this chapter. (3) In the event that a person imports or dis- tributes infringing semiconductor chip product units described in paragraph (2) of this sub- section without first paying or offering to pay the reasonable royalty specified in such para- graph, or if the person refuses or fails to make such payment, the mask work owner shall be en- titled to the relief provided in sections 910 and 911. (Added Pub. L. 98–620, title III, § 302, Nov. 8, 1984, 98 Stat. 3354.) Editorial Notes REFERENCES IN TEXT The date of enactment of this chapter, referred to in text, is the date of enactment of Pub. L. 98–620, which was approved Nov. 8, 1984. § 914. International transitional provisions (a) Notwithstanding the conditions set forth in subparagraphs (A) and (C) of section 902(a)(1) with respect to the availability of protection under this chapter to nationals, domiciliaries, and sovereign authorities of a foreign nation, the Secretary of Commerce may, upon the peti- tion of any person, or upon the Secretary’s own motion, issue an order extending protection under this chapter to such foreign nationals, domiciliaries, and sovereign authorities if the Secretary finds— (1) that the foreign nation is making good faith efforts and reasonable progress toward—