This is the first in a series, discussing the two new Bills proposed in Congress to deal with online pirates and counterfeiters.
On May 12, 2011, Senator Leahy introduced the PROTECT IP Act (S. 968 as reported), aimed at creating additional tools to combat rampant online infringement and counterfeiting. With some amendments, this Bill rocketed through the Senate Judiciary Committee, achieving unanimous bipartisan approval on May 26. The Bill was immediately placed on “hold” by Senator Wyden. It is unclear when or under what conditions the hold may be lifted, but this Bill still garners strong bipartisan support.
The Bill followed several public hearings this year alone (one in the Senate and two in the House), each focused on the problems created by unfettered counterfeiting and piracy, including by foreign web sites, of U.S. rights holders’ marks and copyrighted works and aimed at crafting mechanisms to combat that significant loss in U.S. income. It does not purport to fix all of the problems in this area and instead only addresses only the “worst of the worst” offenders.
The PROTECT IP Act provides for injunctions against any continued activities by an owner of a domain name used by an Internet site “dedicated to infringing activities” (or its registrant or operator). This order can be served upon the owner, operator or registrant of the site, but also upon certain Internet intermediaries requiring them to stop doing business with these sites.
ATTORNEY GENERAL’S ACTION (Section 3)
The U.S. Attorney General may only obtain injunctions against “nondomestic” domain names, but may serve the resulting orders on information location tools (i.e., search engines), operators (i.e., domain name registrars), financial transaction providers (i.e., MasterCard, Visa or PayPal), and Internet advertising services (i.e., Google or Yahoo!) requiring that they omit these sites from search results, block access to the site, refuse to accept payment from users of the site, or decline to distribute advertising to U.S.-based Internet users.
PRIVATE RIGHT OF ACTION (Section 4)
Private rightsholders can obtain injunctions against either domestic or nondomestic domain names, but may only serve the resulting court orders on financial payment processors and Internet advertisers as well as the owner, operator or registrant of the domain name.
Some safe harbors are provided to insulate these Internet intermediaries from liability for certain voluntary enforcement efforts. Monetary damages against either the intermediary or the web site owner/operator/registrant are not available, and monetary sanctions are not available if an intermediary ignores the initial court order and continues doing business with the site named in the court order.
SENATE HEARING PRIOR TO INTRODUCTION OF BILL
The Senate Judiciary Committee held a public hearing entitled, “Targeting Websites Dedicated to Stealing American IP” on February 16, 2011. The witnesses were (hyperlinks lead to prepared statements submitted in support of the hearing, as available from the Senate Judiciary Committee):
- Tom Adams (President and CEO, Rosetta Stone)
- Scott Turow (President, Authors Guild)
- Christine N. Jones (EVP, General Counsel and Corporate Secretary, The Go Daddy Group, Inc.)
- Thomas M. Dailey (Vice President and Deputy General Counsel, Verizon)
- Denise Yee (Senior Trademark Counsel, Visa, Inc.).
Representatives for both Google and Yahoo were invited to attend, but declined to appear. At the end of the hearing, Senator Leahy announced that a new version of what had been introduced in the prior term as the Combating Online Infringement and Counterfeits Act (S. 3804) (“COICA”) would be reintroduced during the current Congressional term.
A webcast of the hearing is available on the Senate Judiciary Committee’s site.
SENATE JUDICIARY COMMITTEE ISSUED REPORT
After Sen. Wyden placed his hold on the Bill (by announcing that he would oppose any attempt to move the Bill to a floor vote under a unanimous consent), Sen. Leahy issued a committee report explaining the Bill and its purpose. S. Rep. 112-39 (issued July 22, 2011).
No further action has yet been taken on this Bill, but because a companion Bill (the Stop Online Piracy Act, H.R. 3261) has been introduced in the House, we may see some activity on the Senate’s version shortly.