§ 1114. — Remedies; infringement; innocent infringement by printers and publishers.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1114]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER III--GENERAL PROVISIONS
Sec. 1114. Remedies; infringement; innocent infringement by
printers and publishers
(1) Any person who shall, without the consent of the registrant--
(a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising of any goods
or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a
registered mark and apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce upon
or in connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or to
deceive,
shall be liable in a civil action by the registrant for the remedies
hereinafter provided. Under subsection (b) hereof, the registrant shall
not be entitled to recover profits or damages unless the acts have been
committed with knowledge that such imitation is intended to be used to
cause confusion, or to cause mistake, or to deceive.
As used in this paragraph, the term ``any person'' includes the
United States, all agencies and instrumentalities thereof, and all
individuals, firms, corporations, or other persons acting for the United
States and with the authorization and consent of the United States, and
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. The United States, all agencies and instrumentalities thereof,
and all individuals, firms, corporations, other persons acting for the
United States and with the authorization and consent of the United
States, and any State, and any such instrumentality, officer, or
employee, shall be subject to the provisions of this chapter in the same
manner and to the same extent as any nongovernmental entity.
(2) Notwithstanding any other provision of this chapter, the
remedies given to the owner of a right infringed under this chapter or
to a person bringing an action under section 1125(a) or (d) of this
title shall be limited as follows:
(A) Where an infringer or violator is engaged solely in the
business of printing the mark or violating matter for others and
establishes that he or she was an innocent infringer or innocent
violator, the owner of the right infringed or person bringing the
action under section 1125(a) of this title shall be entitled as
against such infringer or violator only to an injunction against
future printing.
(B) Where the infringement or violation complained of is
contained in or is part of paid advertising matter in a newspaper,
magazine, or other similar periodical or in an electronic
communication as defined in section 2510(12) of title 18, the
remedies of the owner of the right infringed or person bringing the
action under section 1125(a) of this title as against the publisher
or distributor of such newspaper, magazine, or other similar
periodical or electronic communication shall be limited to an
injunction against the presentation of such advertising matter in
future issues of such newspapers, magazines, or other similar
periodicals or in future transmissions of such electronic
communications. The limitations of this subparagraph shall apply
only to innocent infringers and innocent violators.
(C) Injunctive relief shall not be available to the owner of the
right infringed or person bringing the action under section 1125(a)
of this title with respect to an issue of a newspaper, magazine, or
other similar periodical or an electronic communication containing
infringing matter or violating matter where restraining the
dissemination of such infringing matter or violating matter in any
particular issue of such periodical or in an electronic
communication would delay the delivery of such issue or transmission
of such electronic communication after the regular time for such
delivery or transmission, and such delay would be due to the method
by which publication and distribution of such periodical or
transmission of such electronic communication is customarily
conducted in accordance with sound business practice, and not due to
any method or device adopted to evade this section or to prevent or
delay the issuance of an injunction or restraining order with
respect to such infringing matter or violating matter.
(D)(i)(I) A domain name registrar, a domain name registry, or
other domain name registration authority that takes any action
described under clause (ii) affecting a domain name shall not be
liable for monetary relief or, except as provided in subclause (II),
for injunctive relief, to any person for such action, regardless of
whether the domain name is finally determined to infringe or dilute
the mark.
(II) A domain name registrar, domain name registry, or other
domain name registration authority described in subclause (I) may be
subject to injunctive relief only if such registrar, registry, or
other registration authority has--
(aa) not expeditiously deposited with a court, in which an
action has been filed regarding the disposition of the domain
name, documents sufficient for the court to establish the
court's control and authority regarding the disposition of the
registration and use of the domain name;
(bb) transferred, suspended, or otherwise modified the
domain name during the pendency of the action, except upon order
of the court; or
(cc) willfully failed to comply with any such court order.
(ii) An action referred to under clause (i)(I) is any action of
refusing to register, removing from registration, transferring,
temporarily disabling, or permanently canceling a domain name--
(I) in compliance with a court order under section 1125(d)
of this title; or
(II) in the implementation of a reasonable policy by such
registrar, registry, or authority prohibiting the registration
of a domain name that is identical to, confusingly similar to,
or dilutive of another's mark.
(iii) A domain name registrar, a domain name registry, or other
domain name registration authority shall not be liable for damages
under this section for the registration or maintenance of a domain
name for another absent a showing of bad faith intent to profit from
such registration or maintenance of the domain name.
(iv) If a registrar, registry, or other registration authority
takes an action described under clause (ii) based on a knowing and
material misrepresentation by any other person that a domain name is
identical to, confusingly similar to, or dilutive of a mark, the
person making the knowing and material misrepresentation shall be
liable for any damages, including costs and attorney's fees,
incurred by the domain name registrant as a result of such action.
The court may also grant injunctive relief to the domain name
registrant, including the reactivation of the domain name or the
transfer of the domain name to the domain name registrant.
(v) A domain name registrant whose domain name has been
suspended, disabled, or transferred under a policy described under
clause (ii)(II) may, upon notice to the mark owner, file a civil
action to establish that the registration or use of the domain name
by such registrant is not unlawful under this chapter. The court may
grant injunctive relief to the domain name registrant, including the
reactivation of the domain name or transfer of the domain name to
the domain name registrant.
(E) As used in this paragraph--
(i) the term ``violator'' means a person who violates
section 1125(a) of this title; and
(ii) the term ``violating matter'' means matter that is the
subject of a violation under section 1125(a) of this title.
(July 5, 1946, ch. 540, title VI, Sec. 32, 60 Stat. 437; Pub. L. 87-772,
Sec. 17, Oct. 9, 1962, 76 Stat. 773; Pub. L. 100-667, title I, Sec. 127,
Nov. 16, 1988, 102 Stat. 3943; Pub. L. 102-542, Sec. 3(a), Oct. 27,
1992, 106 Stat. 3567; Pub. L. 105-330, title II, Sec. 201(a)(8), Oct.
30, 1998, 112 Stat. 3070; Pub. L. 106-43, Sec. 4(a), Aug. 5, 1999, 113
Stat. 219; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title III,
Sec. 3004], Nov. 29, 1999, 113 Stat. 1536, 1501A-549.)
Prior Provisions
Acts Feb. 20, 1905, ch. 592, Sec. 16, 33 Stat. 728; Mar. 19, 1920,
ch. 104, Sec. 4, 41 Stat. 534.
Amendments
1999--Par. (1). Pub. L. 106-43, in undesignated par., inserted after
``includes'' in first sentence ``the United States, all agencies and
instrumentalities thereof, and all individuals, firms, corporations, or
other persons acting for the United States and with the authorization
and consent of the United States, and'' and, in second sentence,
substituted ``The United States, all agencies and instrumentalities
thereof, and all individuals, firms, corporations, other persons acting
for the United States and with the authorization and consent of the
United States, and any'' for ``Any''.
Par. (2). Pub. L. 106-113, Sec. 1000(a)(9) [title III,
Sec. 3004(1)], in introductory provisions, substituted ``under section
1125(a) or (d) of this title'' for ``under section 1125(a) of this
title''.
Par. (2)(D), (E). Pub. L. 106-113, Sec. 1000(a)(9) [title III,
Sec. 3004(2)], added subpar. (D) and redesignated former subpar. (D) as
(E).
1998--Par. (1). Pub. L. 105-330 substituted ``As used in this
paragraph'' for ``As used in this subsection'' in last paragraph.
1992--Par. (1). Pub. L. 102-542 inserted at end ``As used in this
subsection, the term `any person' includes 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. Any
State, and any such instrumentality, officer, or employee, shall be
subject to the provisions of this chapter in the same manner and to the
same extent as any nongovernmental entity.''
1988--Par. (2). Pub. L. 100-667 amended par. (2) generally. Prior to
amendment, par. (2) read as follows: ``Notwithstanding any other
provision of this chapter, the remedies given to the owner of the right
infringed shall be limited as follows: (a) Where an infringer in engaged
solely in the business of printing the mark for others and establishes
that he was an innocent infringer the owner of the right infringed shall
be entitled as against such infringer only to an injunction against
future printing; (b) where the infringement complained of is contained
in or is part of paid advertising matter in a newspaper, magazine, or
other similar periodical the remedies of the owner of the right
infringed as against the publisher or distributor of such newspaper,
magazine, or other similar periodical shall be confined to an injunction
against the presentation of such advertising matter in future issues of
such newspapers, magazines, or other similar periodical: Provided, That
these limitations shall apply only to innocent infringers; (c)
injunction relief shall not be available to the owner of the right
infringed in respect of an issue of a newspaper, magazine, or other
similar periodical containing infringing matter when restraining the
dissemination of such infringing matter in any particular issue of such
periodical would delay the delivery of such issue after the regular time
therefor, and such delay would be due to the method by which publication
and distribution of such periodical is customarily conducted in
accordance with sound business practice, and not to any method or device
adopted for the evasion of this section or to prevent or delay the
issuance of an injunction or restraining order with respect to such
infringing matter.''
1962--Par. (1). Pub. L. 87-772 amended provisions generally, and
among other changes, inserted ``distribution'', and struck out
``purchasers as to the source of origin of such goods or services''
after ``or to deceive'' in subsec. (a), inserted provisions regarding
the likelihood of such use causing confusion, mistake, or deception, in
subsec. (b), and struck out the limitation on recovery under subsec. (b)
to acts committed with knowledge that such acts would deceive
purchasers.
Par. (2)(b). Pub. L. 87-772 substituted ``publisher'' for
``published''.
Effective Date of 1999 Amendment
Amendment by Pub. L. 106-113 applicable to all domain names
registered before, on, or after Nov. 29, 1999, see section 1000(a)(9)
[title III, Sec. 3010] of Pub. L. 106-113, set out as a note under
section 1117 of this title.
Effective Date of 1998 Amendment
Amendment by Pub. L. 105-330 effective Oct. 30, 1998, and applicable
only to any civil action filed or proceeding before the United States
Patent and Trademark Office commenced on or after such date relating to
the registration of a mark, see section 201(b) of Pub. L. 105-330, set
out as a note under section 1051 of this title.
Effective Date of 1992 Amendment
Section 4 of Pub. L. 102-542 provided that: ``The amendments made by
this Act [enacting section 1122 of this title and amending this section
and sections 1125 and 1127 of this title] shall take effect with respect
to violations that occur on or after the date of the enactment of this
Act [Oct. 27, 1992].''
Effective Date of 1988 Amendment
Amendment by Pub. L. 100-667 effective one year after Nov. 16, 1988,
see section 136 of Pub. L. 100-667, set out as a note under section 1051
of this title.
Repeal and Effect on Existing Rights
Repeal of inconsistent provisions, effect of this chapter on pending
proceedings and existing registrations and rights under prior acts, see
notes set out under section 1051 of this title.
Section Referred to in Other Sections
This section is referred to in sections 1115, 1116, 1117, 1122 of
this title.
