[Congressional Record: June 22, 1999 (Senate)]
[Page S7452-S7457]
From the Congressional Record Online via GPO Access [wais.access.gpo.gov]
[DOCID:cr22jn99-169]


          STATEMENTS ON INTRODUCED BILLS AND JOINT RESOLUTIONS

      By Mr. HATCH (for himself, Mr. Leahy, and Mr. Schumer):
  S. 1257. A bill to amend statutory damages provisions of title 17,
United States Code; to the Committee on the Judiciary.

               copyright damages improvement act of 1999

                                 ______

      By Mr. HATCH (for himself and Mr. Leahy):
  S. 1258. A bill to authorize funds for the payment of salaries and
expenses of the Patent and Trademark Office, and for other purposes; to
the Committee on the Judiciary.

       patent fee integrity and innovation protection act of 1999

                                 ______

      By Mr. HATCH (for himself and Mr. Leahy):
  S. 1259. A bill to amend the Trademark Act of 1946 relating to
dilution of famous marks, and for other purposes; to the Committee on
the Judiciary.

                    trademark amendments act of 1999

                                 ______

      By Mr. HATCH (for himself and Mr. Leahy):
  S. 1260. A bill to make technical corrections in title 17, United
States Code, and other laws; to the Committee on the Judiciary.

                  copyright act technical corrections

  Mr. HATCH. Mr. President, today I am pleased to rise, along with the
ranking minority Member on the Judiciary Committee, Senator Leahy, to
introduce a series of intellectual property related ``high-tech''
measures designed to promote the continued growth of these vital
sectors of the American economy and to protect the interests and
investment of the entrepreneurs, authors, and innovators who fuel their
growth.
  It is no secret that high technology is the driving force in the
American economy today. American technology is setting new standards
for the global economy, from computer chip technology and computer
hardware, to personal and business software applications, to Internet,
multimedia and telecommunications technology, and even cutting-edge
pharmaceuticals and genetic research. In my own state of Utah, these
information technology industries contribute in excess of $7 billion
each year to the State's economy and pay wages that average 66 percent
higher than the state average. Their performance has placed Utah among
the world's top ten technology centers according to Newsweek Magazine.
Where Wired is a Way of Life, Newsweek, November 9, 1998, at 44.
Similar success is seen across the country, with seven of the world's
top ten technology centers located in the United States, and with
American creative industries now surpassing all other export sectors in
foreign sales and exports.
  Underlying all of these technologies are the intangible property
rights--

[[Page S7453]]

copyrights, trademarks, patents, and trade secrets--that serve to
promote creativity and innovation by safeguarding the investment,
effort, and goodwill of those who venture into these fast-paced and
volatile fields. Providing adequate protections for these intellectual
property rights in the global high-tech environment is critical,
particularly in the digital environment where electronic piracy is so
easy, so cheap, and yet so potentially devastating to intellectual
property owners--many of which are small entrepreneurial enterprises.
In Utah, 65 percent of the information technology companies have fewer
than 25 employees, and a majority have annual revenues of less than $1
million. Over half of Utah's information technology companies have been
in business for less than 10 years, with nearly a quarter having opened
their doors since 1995. Intellectual property is the lifeblood of these
companies and others similarly situated throughout the country, and
even a single instance of piracy may be enough to drive them out of
business. What's more, without adequate international protection, these
companies would simply be unable to compete in the global marketplace.
  That is why in the last Congress we enacted a number of measures to
provide enhanced protection for intellectual property in the new
global, high-tech environment. For example, last year Congress ratified
two new landmark World Intellectual Property Organization (WIPO)
treaties to update international copyright standards to respond to the
challenges of the global economy and the digital, networked
environment. In enacting the Digital Millennium Copyright Act (DMCA),
Congress implemented these treaties in the United States by bringing
our own copyright laws into the digital age and set the standard
internationally for other nations to follow in amending their own laws
to meet the requirements of the new WIPO treaties. In addition, as a
part of that bill, we paved the way for new growth in online commerce
by creating greater security for copyright owners and for the Internet
service providers who transmit and store copyrighted works online. We
also addressed new technologies, such as webcasting and satellite
radio, to provide a copyright framework in which these new platforms
can flourish.

  This year, Senator Leahy and I are continuing to focus our attention,
and that of the Judiciary Committee, on important high-tech and
intellectual property legislation. Already this year the Judiciary
Committee has reported, and the Senate has enacted, legislation to
extend the Satellite Home Viewer Act, which will enable the satellite
industry to use new and emerging technology to provide competition in
the multichannel video marketplace and allow satellite subscribers to
receive local network stations by way of their satellite dishes for the
first time.
  Today we are introducing a number of additional measures relating to
technology and intellectual property to strengthen our laws further in
order to provide both incentives to creativity and deterrents against
infringement. Included among these are legislation that builds upon
existing protections, including last year's measures to deter digital
piracy, by raising the Copyright Act's limit on statutory damages,
thereby making it more costly to engage in cyber-piracy and copyright
theft. Also included is a measure to make technical ``clean-up''
amendments to the Digital Millennium Copyright Act in order to make its
provisions clearer and more user-friendly. On the trademark side,
Senator Leahy and I are introducing a bill to make the protection of
famous marks easier and more efficient and to provide recourse for
trademark owners against the federal government for trademark
infringement. Finally, we are introducing Patent and Trademark Office
reauthorization legislation to allow the PTO to better serve its
customers--America's innovators and trademark owners--through the
collection and retention of patent and trademark fees.
  It is our intention to turn to these bills in the Judiciary Committee
prior to the July 4th recess at a Committee markup session dedicated
solely to the consideration of intellectual property legislation. I
expect these measures to be noncontroversial, and I look forward to
working with my colleagues in the Senate as we bring these bills to the
floor.

             the copyright damages improvement act of 1999

  The Copyright Damages Improvement Act will provide strengthened
protections for copyright owners and added deterrence against
infringement by making it more costly to engage in digital piracy and
copyright theft. In an age where electronic piracy costs next to
nothing and where the distribution of pirated goods to locations around
the world is as easy as the click of a button, we are faced with the
danger that the costs of engaging in piracy will pale in comparison
with the anticipated rewards. Last year we strengthened the Copyright
Act's substantive protections to deter digital piracy in this global
networked environment. The bill we are introducing today will make it
more costly to infringe these and the Copyright Act's other substantive
protections by raising the limit on statutory damages by 50 percent.
  Section 504(c) of the Copyright Act provides for the award of
statutory damages at the plaintiff's election in order to provide
greater security for copyright owners, who often find it difficult to
prove actual damages in infringement cases--particularly in the
electronic environment--and to provide greater deterrence for would-be
infringers. The current provision caps statutory damages at $20,000
($100,000 in cases of willful infringement), which reflects figures set
in statute in 1988 when the United States joined the Berne Convention.
The combination of more than a decade of inflation and revolutionary
changes in technology have rendered those figures largely inadequate to
achieve their aims. The Copyright Damages Improvement Act updates the
statutory damage provisions to account for both these factors.
  Under the bill, the cap on statutory damages is increased by 50
percent, from $20,000 to $30,000, and the minimum is similarly
increased from $500 to $750. For cases of willful infringement, the cap
is raised to $150,000. In addition, the bill creates a new tier of
statutory damages targeted at bad actors who engage in a repeated
pattern or practice of infringement. In these cases, the court is
authorized to award statutory damages up to $250,000.
  This will not mean that a court must impose the full amount of
damages in any given case, or even that it will be more likely to do
so. In most cases, courts attempt to do justice by fixing the statutory
damages at a level that approximates actual damages and defendant's
profits. What this bill does is give courts wider discretion to award
damages that are commensurate with the harm caused and the gravity of
the offense. At the same time, the bill preserves provisions of the
current law allowing the court to reduce the award of statutory damages
to as little as $200 in cases of innocent infringement and requiring
the court to remit damages in certain cases involving nonprofit
educational institutions, libraries, archives, or public broadcasting
entities.

                  Copyright Act Technical Corrections

  Senator Leahy and I are also introducing a general clean-up measure
as a follow-up to the Digital Millennium Copyright Act and the Sonny
Bono Copyright Term Extension Act, which were enacted at the end of the
last Congress. This bill improves these bills to make them more user-
friendly for copyright owners and those who make use of their works in
accordance with the provisions of the Copyright Act.

                  The Trademark Amendments Act of 1999

  The Trademark Amendments Act will provide stronger and more efficient
protection for trademark owners and consumers by making it possible to
prevent trademark dilution before it occurs, by clarifying the remedies
available under the federal trademark dilution statute when it does
occur, by providing recourse against the federal government for its
infringement of others' trademarks, and by creating greater certainty
and uniformity in the area of trade dress protection.
  In 1995, Senator Leahy and I sponsored the Federal Trademark Dilution
Act to provide a uniform federal cause of action for trademark
dilution--the commercial use in commerce of a mark that dilutes, or
``whittles away,'' the distinctive quality of a famous trademark. Under
this legislation, now codified as section 43(c) of the Lanham Act, the
owner of a famous mark is able to

[[Page S7454]]

protect the investment and consumer goodwill associated with his mark
by preventing others from using the same or similar marks in ways that
tarnish or blur the distinctiveness of his mark, even where such uses
do not directly compete with the goods or services of the trademark
owner. This new federal cause of action has been used increasingly in
the high-tech, online environment as a means of combating cyber-pirates
and shady dealers who register famous marks as Internet domain names,
seeking to sell them at a huge profit to the legitimate trademark
owners or to reap where they have not sown, trading on the goodwill of
others by confusing consumers about their relationships to famous
brand-names. This problem is particularly acute in the Internet context
where the only assurance of quality or sponsorship may be the
information found on a web page and the IP address that leads consumers
there.

  On the whole, the Federal Trademark Dilution Act has been effective
in achieving better protection for trademark owners and national
uniformity in this area of the law. There are a number of areas,
however, in which we can improve implementation of the law and its
ability to protect both trademark owners and consumers. The Trademark
Amendments Act of 1999 is designed to do just that.
  First, it authorizes the Trademark Trial and Appeals Board (TTAB) to
consider dilution as grounds for refusal to register a mark or for
cancellation of a registered mark. In Babson Bros. Co. v. Surge Power
Corp., 39 USPQ 2d. 1953 (TTAB 1996), the TTAB held that it was not
authorized by the Federal Trademark Dilution Act to consider dilution
as grounds for opposition or cancellation of a registration. Thus,
under current law a trademark owner may seek relief under the federal
dilution statute only after dilution of the mark has occurred. And at
least one circuit has held that likelihood of dilution is not enough,
the trademark owner must prove actual dilution. The result is that the
owner of a famous mark must stand idly by throughout the registration
process and await recourse through costly litigation in federal court
only after he has suffered harm to his mark. By specifically allowing
the trademark owner to oppose registration or to petition for
cancellation of a diluting mark, the bill we are introducing today will
prevent needless harm to the goodwill and distinctiveness of many
trademarks and will make enforcing the federal dilution statute less
costly and time consuming for all involved.
  Second, the bill clarifies the trademark remedies available in
dilution cases, including injunctive relief, defendant's profits,
damages, costs, and, in exceptional cases, reasonable attorney fees,
and the destruction of articles containing the diluting mark.
  In addition, our bill will amend the Lanham Act to subject the
federal government to suit for trademark infringement and dilution. The
federal government increasingly participates in the marketplace as a
provider of goods and services in competition with private entities. In
fact, the federal government owns a substantial number of trademarks
registered with the Patent and Trademark Office (PTO), and the Lanham
Act even allows the PTO Commissioner to waive the registration fees for
federal agencies. As a trademark owner, the federal government enjoys
the full panoply of rights under the Lanham Act, including the right to
sue private citizens and businesses to enforce its rights under the
Act. In contrast, in Preferred Risk Mutual Insurance Co. v. United
States, 39 F3d 789 (8th Cir. 1996), the Eighth Circuit held that the
federal government is immune from suit for trademark infringement
absent an explicit waiver of sovereign immunity.

  Limited waivers of sovereign immunity exist for patent and copyright
cases, as well as for cases involving protected plant varieties and
semiconductor chip mask works. Congress has also explicitly abrogated
state immunity from suit under the 11th Amendment for cases involving
trademark, copyright, and patent infringement. Our bill will extend
these same policies to the federal government, making it subject to
suit for trademark infringement and dilution on the same terms and
conditions as states under the Lanham Act.
  The bill we are introducing will also promote greater uniformity and
certainty in the area of trade dress protection by requiring plaintiffs
to demonstrate that an unregistered mark is not functional. While trade
dress may be afforded protection and registered on the Principal
Register if it serves as a trademark or service mark, protection under
the Lanham Act does not extend to functional trade dress features--
those that are essential to compete in a given market--which are
properly the subject of patent law. Where the plaintiff has
demonstrated through the examination process that the trade dress is
eligible for registration, the federal registration serves as prima
facie evidence of the validity of the mark and the registration, and in
effect as prima facie evidence of nonfunctionality. For those cases
where the plaintiff asserting trade dress protection has not
demonstrated eligibility for registration through the trademark
examination process, a majority of courts require the plaintiff to
prove nonfunctionality. A minority of courts, however, have held that
functionality is an affirmative defense which must be proved by the
defendant.
  Our bill creates uniformity by adopting the majority view, requiring
the plaintiff to demonstrate nonfunctionality, either in the
examination process or as an element of his case in seeking to enforce
trade dress rights in litigation. This is consistent with the
principles of federal trademark law and the common law, which requires
plaintiffs to prove the essential elements of their case. Moreover, it
will promote both certainty and competitive fairness by encouraging
trade dress owners to register eligible designs and to seek patent
protection for those that are ineligible due to functionality
  Finally, this bill makes a number of technical ``clean-up''
amendments relating to the Trademark Law Treaty Implementation Act,
which was enacted at the end of the last Congress.

  the United States Patent and trademark office reauthorization act,
                            fiscal year 2000

  The fourth bill we are introducing today is designed to allow the PTO
to better serve American innovators and trademark owners through the
collection and retention of patent and trademark fees. Last year we
enacted legislation to provide the PTO with the resources it needs to
meet the demands of its workload and to limit the ability of Congress
and the Administration to divert money from the PTO to unrelated
federal programs--all while providing for an overall decrease in patent
fees. The bill we are introducing today continues those policies by
allowing the PTO to generate the revenue it needs to operate as a fully
fee-funded agency and to retain those fees for use in its patent and
trademark operations, without fee diversions or the creation of new
surcharges.
  In the past, a substantial portion of patent fees revenues have been
diverted in the budget process to pay for unrelated federal programs.
The result has been substantial backlogs in patent pendency and a
general inability to provide the type of service our nation's inventors
pay for. I, along with several of my colleagues, have vigorously
opposed this practice. The legislation we enacted last year went a long
way to ensure that this practice would not continue. The legislation we
are introducing today will continue this assurance by authorizing the
PTO to raise just the revenues it needs to meet its program goals and
retain those fees for use in its patent and trademark operations. The
bill also makes available $116 million in fees from previous years,
which the Administration has sought to withhold, and prohibits the
imposition of unprecedented new surcharge fees sought by the
Administration's budget to subsidize federal health and life insurance
benefits for PTO employees. In the end, this legislation will promote a
stronger, more efficient patent office and will mean, quite simply,
that America's innovators and trademark owners will get what they pay
for.
  Mr. President, I look forward to working with my colleagues to
promote the progress of innovation in this country and the continued
growth of the high-tech industrial base that has put our nation at the
forefront of the global economy. Each of the bills we are introducing
today will help to do

[[Page S7455]]

that, and I urge my colleagues' support.
  Mr. LEAHY. Mr. President, I am pleased to join the chairman of the
Judiciary Committee in introducing four bills to reauthorize the Patent
and Trademark Office, update the statutory damages available under the
Copyright Act, make technical corrections to two new copyright laws
enacted last year, and prevent trademark dilution. As the Chairman and
I have already indicated in our June 11 joint statement, we hope that
the Senate Judiciary Committee reports these bills promptly and that
the Senate considers the bills without delay.
  The introduction of these bills is a good start, but we must not lose
sight of the other copyright and patent issues requiring our attention
before the end of this Congress. The Senate Judiciary Committee has a
full slate of intellectual property matters to consider and I am
pleased to work on a bipartisan basis with the Chairman on an agenda to
provide the creators and inventors of copyrighted and patented works
with the protection they may need in our global economy, while at the
same time providing libraries, educational institutions and other users
with the clarity they need as to what constitutes a fair use of such
works.
  Among the other important intellectual property matters for us to
consider are the following:
  Distance Education. The Senate Judiciary Committee held a hearing
last month on the Copyright Office's thorough and balanced report on
copyright and digital distance education. We need to address the
legislative recommendations outlined in that report to ensure that our
laws permit the appropriate use of copyrighted works in valid distance
learning activities.
  Patent Reform. A critical matter on the intellectual property agenda,
important to the nation's economic future, is reform of our patent
laws. I worked on a bipartisan basis in the last Congress to get the
Omnibus Patent Act, S. 507, reported by the Judiciary Committee to the
Senate by a vote of 177 to one, and then tried to have this bill
considered and passed by the Senate. Unfortunately, the bill became
stalled due to resistance by some in the majority. We should consider
and pass this important legislation.
  Madrid Protocol Implementation Act. I introduced this legislation, S.
671, to help American businesses, and especially small and medium-sized
companies, protect their trademarks as they expand into international
markets by conforming American trademark application procedures to the
terms of the Protocol in anticipation of the U.S.'s eventual
ratification of the treaty. Ratification by the United States of this
treaty would help create a ``one stop'' international trademark
registration process, which would be an enormous benefit for American
businesses.

  Database Protection. I noted upon passage of the Digital Millennium
Copyright Act last year that there was not enough time before the end
of that Congress to give due consideration to the issue of database
protection, and that I hoped the Senate Judiciary Committee would hold
hearings and consider database protection legislation in this Congress,
with a commitment to make more progress. I support legal protection
against commercial misappropriation of collections of information, but
am sensitive to the concerns raised by the Administration, the
libraries, certain educational institutions, and the scientific
community. This is a complex and important matter that I look forward
to considering in this Congress.
  Tampering with Product Identification Codes. Product identification
codes provide a means for manufacturers to track their goods, which can
be important to protect consumers in cases of defective, tainted or
harmful products and to implement product recalls. Defacing, removing
or tampering with product identification codes can thwart these
tracking efforts, with potential safety consequences for American
consumers. We should examine the scope of, and legislative solutions to
remedy, this problem.
  Online Trademark Protection or ``Cybersquatting.'' I have long been
concerned with protection online of registered trademarks. Indeed, when
the Congress passed the Federal Trademark Dilution Act of 1995, I noted
that:

       [A]lthough no one else has yet considered this application,
     it is my hope that this antidilution statute can help stem
     the use of deceptive Internet addresses taken by those who
     are choosing marks that are associated with the products and
     reputations of others. (Congressional Record, December 29,
     1995, page S19312).

  Last year, my amendment authorizing a study by the National Research
Council of the National Academy of Sciences of the effects on trademark
holders of adding new top-level domain names and requesting
recommendations on related dispute resolution procedures, was enacted
as part of the Next Generation Internet Research Act. We have not yet
seen the results of that study, and I understand that the Internet
Corporation for Assigned Names and Numbers (I-CANN) and World
Intellectual Property Organization (WIPO) are considering mechanisms
for resolving trademark and other disputes over assignments of domain
names in an expeditious and inexpensive manner.
  This is an important issue both for trademark holders and for the
future of the global Internet. While I share the concern of trademark
holders over what WIPO has characterized as ``predatory and parasitical
practices by a minority of domain registrants acting in bad faith'' to
register famous or well-known marks of others--which can lead to
consumer confusion or downright fraud--the Congress should tread
carefully to ensure that any remedies do not impede or stifle the free
flow of information on the Internet.

     the patent fee integrity and innovation protection act of 1999

  We are introducing today the Patent Fee Integrity and Innovation
Protection Act to reauthorize the Patent and Trademark Office for
fiscal year 2000, on terms that ensure the fees collected from users
will be used to operate the Patent and Trademark Office and not
diverted to other uses.
  The PTO is fully funded and operated through the payment of
application and user fees. Indeed, taxpayer support for the operations
of the PTO was eliminated in the Omnibus Budget Reconciliation Act of
1990, which imposed a large fee increase (referred to as a
``surcharge'') on those who use the PTO, namely businesses and
inventors applying for or seeking to protect patents on trademarks.
  The fees accumulated from the surcharge were held in a surcharge
account, for use by the PTO to support the patent and trademark
systems. Unfortunately, however, the funds in the surcharge account
were also diverted to fund other, unrelated government programs. By
fiscal year 1997, almost $54 million from the surcharge account was
diverted from PTO operations.
  Last year, Congress responded to this diversion of PTO fees by
enacting H.R. 3723/S. 507, which the Chairman and I had introduced on
March 20, 1997. That legislation authorized a schedule of fees to fund
the PTO, but no other government program, and resulted in the first
decrease in patent application fees in at least 50 years.
  This PTO reauthorization bill would make $116,000,000 available to
the Patent and Trademark Office, a self-sustaining agency, to pay for
salaries and necessary expenses in FY 2000. This money reflects the
amount in carryover funds from FY99 that PTO expects to receive from
fees collected, pursuant to the Patent Act and the Trademark Act. By
authorizing the money to go to PTO, the bill would avoid diversion of
these fees to other government agencies and programs. Inventors and the
business community who rely on the patent and trademark systems do not
want the fees they pay to be diverted but would rather see this money
spent on PTO upgraded equipment, additional examiners and expert
personnel or other items to make the systems more efficient. I agree.

                copyright act technical corrections act

  In the last Congress, Senator Hatch and I worked together for passage
of the Digital Millennium Copyright Act (DMCA) and the Sonny Bono
Copyright Term Extension Act. This significant legislation is intended
to encourage copyright owners to make their works available online by
updating the copyright laws with additional protections for digital
works, and conforming copyright terms available to American authors to
those available overseas. We are now introducing legislation that will
make certain technical corrections to those bills.
  Specifically, this bill (1) renumbers the section number for the
liability

[[Page S7456]]

limits for online service providers; (2) renumbers paragraphs in the
section on ``ephemeral recordings'' which are used solely for
transmitting or archiving a performance or audiovisual display; (3)
clarifies that the Commissioner of Patents is to be paid at level III
of the executive schedule rather than level V, consistent with a
provision in the DMCA; and (4) changes from one to two years the time
for seeking design protection after a design is made public by the
designer or, in other words, forfeits protection if an application for
registration is not made within 2 years of the design being made
public.
  I remain hopeful that as this bills moves forward we can also address
another item inadvertently omitted from the DMCA. Specifically, to
include public broadcasting entities in the liability limitation
provisions granted under the DMCA to nonprofit libraries, archives and
educational institutions.
  The House of Representatives passed its version of this legislation,
H.R. 1189, on April 13, 1999, and I urge prompt Senate action on this
Hatch-Leahy bill.

 the digital theft deterrence and copyright damages improvement act of
                                  1999

  I have long been concerned about reducing the levels of software
piracy in this country and around the world. The theft of digital
copyrighted works and, in particular, of software results in lost jobs
to American workers, lost taxes to Federal and State governments, and
lost revenue to American companies. A report released last week by the
Business Software Alliance estimates that worldwide theft of
copyrighted software in 1998 amounted to nearly $11 billion. According
to the report, if this ``pirated software has instead been legally
purchased, the industry would have been able to employ 32,700 more
people. In 2008, if software piracy remains at its current rate, 52,700
jobs will be lost in the core software industry.'' This theft also
reflects losses of $991 million in tax revenue in the United States.
  These statistics about the harm done to our economy by the theft of
copyrighted software alone, prompted me to introduce the ``Criminal
Copyright Improvement Act'' in both the 104th and 105th Congresses, and
work over those two Congresses for passage of this legislation, which
was finally enacted as the ``No Electronic Theft Act.'' The current
rates of software piracy show that we need to do better to combat this
theft, both with enforcement of our current copyright laws and with
strengthened copyright laws to deter potential infringes.
  I am, therefore, pleased to join Senator Hatch in introducing the
Digital Theft Deterrence and Copyright Damages Improvement Act. The
bill would amend the Copyright Act, 17 U.S.C. Sec. 504(c), by
increasing the amounts of statutory damages recoverable for copyright
infringements. These amounts were last increased in 1988 when the
United States acceded to the Berne Convention. Specifically, the bill
would increase the cap on statutory damages by 50 percent, raising the
minimum from $500 to $750 and raising the maximum from $20,000 to
$30,000. In addition, the bill would raise from $100,000 to $150,000
the amount of statutory damages for willful infringements.
  Courts determining the amount of statutory damages in any given case
would have discretion to impose damages within these statutory ranges
at just and appropriate levels, depending on the harm caused, ill-
gotten profits obtained and the gravity of the offense. The bill
preserves provisions of the current law allowing the court to reduce
the award of statutory damages to as little as $200 in cases of
innocent infringement and requiring the court to remit damages in
certain cases involving nonprofit educational institutions, libraries,
archives, or public broadcasting entities.
  In addition, the bill would create a new tier of statutory damages
allowing a court to award damages in the amount of $250,000 per
infringed work where the infringement is part of a willful and repeated
pattern of practice of infringement.
  I note that the House version of this legislation, H.R. 1761, omits
any scienter requirement for the new proposed enhanced penalty for
infringers who engage in a repeated pattern of infringement. I share
the concerns raised by the Copyright Office that this provision, absent
a willfulness scienter requirement, would permit imposition of the
enhanced penalty even against person who negligently, albeit
repeatedly, engaged in acts of infringement. The Hatch-Leahy bill
avoids casting such a wide net, which could chill legitimate fair uses
of copyrighted works.

                  the trademark amendments act of 1999

  Finally, I am pleased to join Senator Hatch in introducing the
Trademark Amendments Act to enhance protection for trademark owners and
consumers by making it possible to prevent trademark dilution before it
occurs, by clarifying the remedies available under the Federal
trademark dilution statute when it does occur, by providing recourse
against the Federal Government for its infringement of others'
trademarks, and by creating greater certainty and uniformity in the
area of trade dress protection.
  Current law provides for injunctive relief after an identical or
similar mark has been in use and has caused actual dilution of a famous
mark, but provides no means to oppose an application for a mark or to
cancel a registered mark that will result in dilution of the holder's
famous mark. In Babson Bros. Co. v. Surge Power Corp., 39 USPQ 2d. 1953
(TTAB 1996), the Trademark Trial and Appeals Board (TTAB) held that it
was not authorized by the ``Federal Trademark Dilution Act'' to
consider dilution as grounds for opposition or cancellation of a
registration. The bill remedies this situation by authorizing the TTAB
to consider dilution as grounds for refusal to register a mark or for
cancellation of a registered mark. This would permit the trademark
owner to oppose registration or to petition for cancellation of a
diluting mark, and thereby prevent needless harm to the goodwill and
distinctiveness of many trademarks and make enforcing the Federal
dilution statute less costly and time consuming for all involved.
  Second, the bill clarifies the trademark remedies available in
dilution cases, including injunctive relief, defendant's profits,
damages, costs, and, in exceptional cases, reasonable attorney fees,
and the destruction of articles containing the diluting mark.
  Third, the bill amends the Lanham Act to allow for private citizens
and corporate entities to sue the Federal Government for trademark
infringement and dilution. Currently, the Federal Government may not be
sued for trademark infringement, even though the Federal Government
competes in some areas with private business and may sue others for
infringement. This bill will level the playing field, and make the
Federal Government subject to suit for trademark infringement and
dilution on the same terms and conditions as States under the Lanham
Act.
  Fourth, the bill provides a limited amendment to the Lanham Act to
provide that in an action for trade dress infringement, where the
matter sought to be protected is not registered with the PTO, the
plaintiff has the burden of proving that the trade dress is not
functional. This will help promote fair competition and provide an
incentive for registration.
  Finally, this bill makes a number of technical ``clean-up''
amendments relating to the Trademark Law Treaty Implementation Act,
which was enacted at the end of the last Congress.
  These bills represent a good start on the work before the Senate
Judiciary Committee to update American intellectual property law to
ensure that it serves to advance and protect American interests both
here and abroad. I began this statement, however, with the list of
copyright, patent and trademark issues that we should also address. We
have a lot more work to do.
                                 ______

      By Mr. DODD:
  S. 1261. A bill to authorize the Secretary of Transportation to issue
a certificate of documentation with appropriate endorsement for
employment in the coastwise trade for the vessel Yankee; to the
Committee on Commerce, Science, and Transportation.

         certificate of documentation for the vessel ``yankee''

  Mr. DODD. Mr. President, I rise today to introduce legislation to
waive the 1920 Merchant Marine Act, commonly known as the Jones Act, to
allow Yankee Sailing, LLC to operate the 1959 Holland-built vessel
YANKEE.
  Yankee Sailing LLC is a family-owned business based out of New
London, Connecticut that intends to provide 2-4 hour day sails out of
the New

[[Page S7457]]

London and Mystic areas in the summer months. In an effort to provide
year-round sailing opportunities, Yankee Sailing LLC also hopes to
offer 1-2 week sail training trips along the coast in the fall and
winter. The YANKEE is equipped to carry 25-35 daytime passengers and 8-
10 overnight passengers, and does not pose any threat to larger U.S.
shipping interests.
  The YANKEE is a vessel of considerable historical significance having
been designed by and built for one of New England's most famous
contemporary sailors, the late Irving Johnson. The YANKEE shares a
well-established relationship with the Mystic Seaport Museum where the
Johnson Collection is housed, and it was also the centerpiece for an
Irving Johnson reunion held at the Seaport this past October.
  The owners request the waiver because while the vessel was originally
documented in the United States with a home port of Mystic, CT, it was
built in Holland and is, therefore, excluded from coastal trade by the
Jones Act. The owners were aware of the Jones Act's restrictions,
however, they were unclear as to its applicability with regard to a
vessel's size. Their understanding was that the act only pertained to
vessels 65 feet in length or greater carrying over six passengers.
Yankee Sailing LLC hoped to operate with six passengers to generate
revenue until they could receive full certification allowing for larger
sailing trips. Due to this confusion regarding the law, Yankee Sailing
LLC is unable to provide these small sailing trips and suffers
financially as a consequence.
  Yankee Sailing LLC wishes to provide residents of southeastern
Connecticut the opportunity to experience the excitement of sailing and
did not willfully violate the Jones Act. The presence of its services
will help stimulate the local economy and tourism in a region
attempting to promote an economic renaissance.
  Based upon all of the combined facts, I believe a waiver should be
granted for the YANKEE. I ask unanimous consent that the text of the
bill be printed in the Record.
  There being no objection, the bill was ordered to be printed in the
Record, as follows:

                                S. 1261

       Be it enacted by the Senate and House of Representatives of
     the United States of America in Congress assembled,

     SECTION 1. CERTIFICATE OF DOCUMENTATION.

       Notwithstanding section 27 of the Merchant Marine Act, 1920
     (46 U.S.C. App. 883), section 8 of the Act of June 19, 1886
     (24 Stat. 81, chapter 421; 46 U.S.C. App. 289), and sections
     12106 and 12108 of title 46, United States Code, the
     Secretary of Transportation may issue a certificate of
     documentation with appropriate endorsement for employment in
     the coastwise trade for the vessel YANKEE, United States
     official number 1076210.
                                 ______

      By Mr. REED (for himself, Mr. Cochran, Mr. Sarbanes, Mr.
        Wellstone, Mr. Kennedy, Mr. Daschle, Mr. Reid, and Mrs.
        Murray):
  S. 1262. A bill to amend the Elementary and Secondary Education Act
of 1965 to provide up-to-date school library medial resources and well-
trained, professionally certified school library media specialists for
elementary schools and secondary schools, and for other purposes; to
the Committee on Health, Education, Labor, and Pensions.

                          ____________________
