§ 1114. Remedies; infringement; innocent infringement by printers and publishers

Legislative history

Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.

1. 1946

   Pub. L. 79–540 · 60 Stat. 427

   Enacted · 15 U.S.C. § 1114

   July 5, 1946, ch. 540, title VI, § 32, 60 Stat. 437

   Source evidence

   Code source credit
   July 5, 1946, ch. 540, title VI, § 32, 60 Stat. 437

2. 1962

   Pub. L. 87–772 § 17 · 76 Stat. 769

   1. Amended · 15 U.S.C. § 1114(1)

      Pub. L. 87–772 amended provisions generally, and among other changes

   2. Inserted · 15 U.S.C. § 1114(1)

      Pub. L. 87–772 inserted “distribution”

   3. Struck · 15 U.S.C. § 1114(1)

      Pub. L. 87–772 struck out “purchasers as to the source of origin of such goods or services” after “or to deceive” in subsec. (a)

   4. Inserted · 15 U.S.C. § 1114(1)

      Pub. L. 87–772 inserted provisions regarding the likelihood of such use causing confusion, mistake, or deception, in subsec. (b)

   5. Struck · 15 U.S.C. § 1114(1)

      Pub. L. 87–772 struck out the limitation on recovery under subsec. (b) to acts committed with knowledge that such acts would deceive purchasers

   Source evidence

   Code amendment note
   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.

   Enacted provision · exact public law section
   Sec. 17. Subsection (1) of section 32 is amended by striking the 15 USC 1114. entire subsection and inserting in lieu thereof the following: “Any person who shall, without the consent of the registrant— Infringement. “(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.” Paragraph (b) of subsection (2) of section 32 is amended by striking the word “published” and inserting in lieu thereof the word “publisher”.

3. 1962

   Pub. L. 87–772 § 17 · 76 Stat. 769

   Substituted · 15 U.S.C. § 1114(2)(b)

   Pub. L. 87–772 substituted “publisher” for “published”

   Source evidence

   Code amendment note
   Par. (2)(b). Pub. L. 87–772 substituted “publisher” for “published”.

   Enacted provision · exact public law section
   Sec. 17. Subsection (1) of section 32 is amended by striking the 15 USC 1114. entire subsection and inserting in lieu thereof the following: “Any person who shall, without the consent of the registrant— Infringement. “(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.” Paragraph (b) of subsection (2) of section 32 is amended by striking the word “published” and inserting in lieu thereof the word “publisher”.

4. 1988

   Trademark Law Revision Act of 1988

   Pub. L. 100–667 title I § 127 · 102 Stat. 3935

   Amended · 15 U.S.C. § 1114(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.”

   Source evidence

   Code amendment note
   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.”

   Enacted provision · exact public law section
   SEC. 127. INNOCENT INFRINGEMENT AND VIOLATIONS OF SECTION 13(a). Section 32(2) (15 U.S.C. 1114(2)) is amended to read as follows: “(2) Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act or to a person bringing an action under section 43(a) 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 43(a) 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, United States Code, the remedies of the owner of the right infringed or person bringing the action under section 43(a) 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 43(a) 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) As used in this paragraph— “(i) the term ‘violator’ means a person who violates section 43(a); and “(ii) the term ‘violating matter’ means matter that is the subject of a violation under section 43(a).”.

5. 1992

   Trademark Remedy Clarification Act

   Pub. L. 102–542 § 3(a) · 106 Stat. 3567

   Inserted · 15 U.S.C. § 1114(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.”

   Source evidence

   Code amendment note
   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.”

   Enacted provision · exact public law section
   (a) Liability and Remedies.— Section 32(1) of the Act (15 U.S.C. 1114(1) is amended by adding at the end thereof the following: “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 Act in the same manner and to the same extent as any nongovernmental entity.”.

6. 1998

   Pub. L. 105–330 title II § 201(a)(8) · 112 Stat. 3064

   Substituted · 15 U.S.C. § 1114(1)

   Pub. L. 105–330 substituted “As used in this paragraph” for “As used in this subsection” in last paragraph

   Source evidence

   Code amendment note
   Par. (1). Pub. L. 105–330 substituted “As used in this paragraph” for “As used in this subsection” in last paragraph.

   Enacted provision · exact public law section
   (8) Section 32(1) (15 U.S.C. 1114(1)) is amended by striking “As used in this subsection” and inserting “As used in this paragraph”.

7. 1999

   Trademark Amendments Act of 1999

   Pub. L. 106–43 § 4(a) · 113 Stat. 218

   1. Inserted · 15 U.S.C. § 1114(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

   2. Substituted · 15 U.S.C. § 1114(1)

      Pub. L. 106–43, in undesignated par., 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”

   Source evidence

   Code amendment note
   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”.

   Enacted provision · exact public law section
   (a) Civil Actions.— Section 32 of the Trademark Act of 1946 (15 U.S.C. 1114) is amended in the last undesignated paragraph in paragraph (1)— (1) in the first sentence by inserting after “includes” the following: “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 (2) in the second sentence by striking “Any” and inserting “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”.

8. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIII)(s3004)(1) · 113 Stat. 1501

   Substituted · 15 U.S.C. § 1114(2)

   Pub. L. 106–113, § 1000(a)(9) [title III, § 3004(1)], in introductory provisions, substituted “under section 1125(a) or (d) of this title” for “under section 1125(a) of this title”

   Source evidence

   Code amendment note
   Par. (2). Pub. L. 106–113, § 1000(a)(9) [title III, § 3004(1)], in introductory provisions, substituted “under section 1125(a) or (d) of this title” for “under section 1125(a) of this title”.

   Effective date note
   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, § 3010] of Pub. L. 106–113, set out as a note under section 1117 of this title.

9. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIII)(s3004)(2) · 113 Stat. 1501

   1. Added · 15 U.S.C. § 1114(2)(D); 15 U.S.C. § 1114(2)(E)

      Pub. L. 106–113, § 1000(a)(9) [title III, § 3004(2)], added subpar. (D)

   2. Redesignated · 15 U.S.C. § 1114(2)(D); 15 U.S.C. § 1114(2)(E)

      Pub. L. 106–113, § 1000(a)(9) [title III, § 3004(2)], redesignated former subpar. (D) as (E)

   Source evidence

   Code amendment note
   Par. (2)(D), (E). Pub. L. 106–113, § 1000(a)(9) [title III, § 3004(2)], added subpar. (D) and redesignated former subpar. (D) as (E).

   Effective date note
   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, § 3010] of Pub. L. 106–113, set out as a note under section 1117 of this title.

10. 2005

    Family Movie Act of 2005

    Pub. L. 109–9 title II § 202(b) · 119 Stat. 218

    Added · 15 U.S.C. § 1114(3)

    Pub. L. 109–9 added par. (3)

    Source evidence

    Code amendment note
    Par. (3). Pub. L. 109–9 added par. (3).

    Enacted provision · exact public law section
    (b) Exemption From Trademark Infringement.— Section 32 of the Trademark Act of 1946 (15 U.S.C. 1114) is amended by adding at the end the following: “(3) (A) Any person who engages in the conduct described in paragraph (11) of section 110 of title 17, United States Code, and who complies with the requirements set forth in that paragraph is not liable on account of such conduct for a violation of any right under this Act. This subparagraph does not preclude liability, nor shall it be construed to restrict the defenses or limitations on rights granted under this Act, of a person for conduct not described in paragraph (11) of section 110 of title 17, United States Code, even if that person also engages in conduct described in paragraph (11) of section 110 of such title. “(B) Notice. A manufacturer, licensee, or licensor of technology that enables the making of limited portions of audio or video content of a motion picture imperceptible as described in subparagraph (A) is not liable on account of such manufacture or license for a violation of any right under this Act, if such manufacturer, licensee, or licensor ensures that the technology provides a clear and conspicuous notice at the beginning of each performance that the performance of the motion picture is altered from the performance intended by the director or copyright holder of the motion picture. The limitations on liability in subparagraph (A) and this subparagraph shall not apply to a manufacturer, licensee, or licensor of technology that fails to comply with this paragraph. “(C) Applicability. Effective date. The requirement under subparagraph (B) to provide notice shall apply only with respect to technology manufactured after the end of the 180-day period beginning on the date of the enactment of the Family Movie Act of 2005. “(D) Any failure by a manufacturer, licensee, or licensor of technology to qualify for the exemption under subparagraphs (A) and (B) shall not be construed to create an inference that any such party that engages in conduct described in paragraph (11) of section 110 of title 17, United States Code, is liable for trademark infringement by reason of such conduct.” .

12 of 16 references resolved to an enrolled provision · 4 partial