On January 8, 2014, Sen. Patrick Leahy (D-Vt) re-introduced a personal privacy protection bill intended “to prevent and mitigate identity theft, to ensure privacy, to provide notice of security breaches, and to enhance criminal penalties, law enforcement assistance, and other protections against security breaches, fraudulent access, and misuse of personally identifiable information.” Personal Data Privacy and Security Act of 2014, S. 1897 at preamble (introduced Jan. 8, 2014). Sen. Leahy introduced prior versions of this bill in 2005, and in each of the four Congresses since. Press Release, “Leahy Reintroduces Data Privacy Legislation,” Jan. 8, 2014.
In August 2012, the Intellectual Property Law (IPL) Section of the American Bar Association (ABA) will be hosting an open forum during the ABA Annual Meeting in Chicago on online piracy and counterfeiting. I will be moderating one panel (on the scope and severity of the problem) and one of my co-chairs of the Joint Task Force on Online Piracy and Counterfeiting, Chris Katopis, will be moderating the other (essentially, on the U.S. government’s response and remedies). During these panels, and through the work of the Task Force, we are focusing on conduct by entities offshore – essentially foreign sites that currently are beyond U.S. jurisdiction, but who may be engaged in significant copyright piracy of U.S. works and/or trademark counterfeiting of U.S. trademarks.
More details about the panels can be found on the ABA’s Annual Meeting Site, and in particular, the Intellectual Property Law Section’s description of the IPL programs that will occur during the meeting.
This panel follows a similar panel that I moderated in March, during the IPL Section’s Annual Meeting in Washington, D.C. (page 9). We had excellent attendance and feedback after the program. I am hoping for a similar result from the Chicago panel discussion, and look forward to getting feedback and input from the attendees about these issues.
In the meantime, here are some governmental resources that identify some of the concerns, and the impacts on the U.S. economy of piracy & counterfeiting that originates outside our borders, but is directed to a U.S. audience:
- Customs & Border Protection (CBP) Annual Reports
Victoria Espinel, Intellectual Property Enforcement Coordinator (IPEC)
- U.S. Chamber of Commerce: Intellectual Property “Issue” Page
US Trade Representative, Intellectual Property Initiative
- US Patent & Trademark Office, Intellectual Property Rights (IPR) Attaché Program
I look forward to seeing you in August.
I, for one, hope not. While we in the intellectual property law community may differ as to the best method to combat foreign online counterfeiting and piracy, the basic fact is that this type of theft is not currently enforceable using existing U.S. law. The conduct itself is illegal under the Lanham Act (15 U.S.C. § 1116(d)) and the Copyright Act (17 U.S.C. §§ 501, 512, 1201), and rights holders today can enforce these rights against U.S. based infringers. However, obtaining jurisdiction over a foreign entity is the challenge that bills like SOPA, PROTECT IP and OPEN are aiming to address.
In light of the online protests – in the form of site blackouts – that occurred on January 18, 2012, both the Senate and the House have tabled their bills pending additional communications with the technology community to find solutions that the community can support. (Note that the OPEN Act is proceeding under a different format – and appears to be continuing on its path to a vote.)
PROTECT IP Act – Current Status
The Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (“The PROTECT IP Act”) (S. 968) had been scheduled for cloture (see prior post explaining process) on January 24, 2012. Sen. Harry Reid has confirmed that the vote has been postponed. A new date has not yet been set.
In announcing the postponement, Sen. Reid made the following statement (emphasis added):
Sen. Leahy issued several public statements just before – and in the wake of – the Jan. 18 protests:
- Dec. 17: Comment of Senator Patrick Leahy on Senate Consideration of the PROTECT IP Act
- Jan. 12: Comment of Senator Patrick Leahy on Internet Service Providers and the PROTECT IP Act
- Jan. 13: Leahy: Senate Should Debate How To Fight Online Infringement
- Jan. 17: Comment of Senator Patrick Leahy on the PROTECT IP Act
- Jan. 18: The PROTECT IP Act: Targeting Websites DEDICATED to Infringement
- Jan. 19 (not exactly on the PROTECT IP Act, but related): Comment of Senator Patrick Leahy on DOJ’s Action Against MegaUpload.com and Online Infringement
- Jan. 20: Comment of Senator Patrick Leahy on Postponement of The Vote on Cloture on the Motion to Proceed to the PROTECT IP Act
Jan. 23: Leahy: Senate Should Focus On Stopping Online Theft That Undercuts Economic Recovery, and in particular said:“Rogue websites, primarily based overseas, are stealing American property, harming American consumers, hurting the American economic recovery and costing us American jobs. Stealing and counterfeiting are wrong. They are harmful. The Institute for Policy Innovation estimates that copyright infringement alone costs more than $50 billion a year, and the sale of counterfeits online is estimated to be several times more costly. The AFL-CIO estimates that hundreds of thousands of jobs are lost to these forms of theft.And this is not just an economic and jobs problem for Americans. This is a consumer safety issue. According to a study released earlier this year, a couple dozen websites selling counterfeit prescription drugs had more than 141,000 visits per day, on average. Counterfeit medication, brake linings and other products threaten Americans’ safety. These are serious concerns. These are the concerns I have kept in mind over the last several years as I have worked with Senators on both sides of the aisle to help resolve these serious problems.”* * *“At the end of the day, this debate boils down to a simple question. Should Americans and American companies profit from what they produce and be able to provide American jobs, or do we want to continue to let thieves operating overseas steal that property and sell it to unsuspecting American consumers? I hope that in the coming days the Senate will focus on stopping that theft that is undercutting our economic recovery. I remain committed to confronting this problem.”
SOPA – Current Status
The Stop Online Piracy Act (“SOPA”) (H.R. 3261) was the bill most clearly targeted by media coverage and the Internet blackouts in the last few days. The bill is currently on hold, and no hearings are currently scheduled to finish the markup process, in which a Manager’s Amendment had been proposed, followed by several amendments to it. The amendments would have modified the Manager’s Amendment, which would then be introduced formally as a new version of SOPA.
Rep. Lamar Smith, Chairman of the Judiciary Committee, similarly issued several press releases on SOPA recently that explain further the progress of this bill through the Committee:
- Dec. 15: SOPA Has Strong Support
- Dec. 16: Markup Shows Strong Support for SOPA
- Jan. 13: Smith to Remove DNS Blocking from SOPA
- Jan. 14: SOPA Meets White House Requirements
- Jan. 17: Stop Online Piracy Act Markup to Resume in February
- Jan. 19: OPEN Act Increases Bureaucracy, Won’t Stop IP Theft
Jan. 20: Statement from Chairman Smith on Senate Delay of Vote on PROTECT IP Act, in which he said:“The problem of online piracy is too big to ignore. American intellectual property industries provide 19 million high-paying jobs and account for more than 60 percent of U.S. exports. The theft of America’s intellectual property costs the U.S. economy more than $100 billion annually and results in the loss of thousands of American jobs. Congress cannot stand by and do nothing while American innovators and job creators are under attack.The online theft of American intellectual property is no different than the theft of products from a store. It is illegal and the law should be enforced both in the store and online.The Committee will continue work with copyright owners, Internet companies, financial institutions to develop proposals that combat online piracy and protect America’s intellectual property. We welcome input from all organizations and individuals who have an honest difference of opinion about how best to address this widespread problem. The Committee remains committed to finding a solution to the problem of online piracy that protects American intellectual property and innovation.The House Judiciary Committee will postpone consideration of the legislation until there is wider agreement on a solution.”
The House Committee on the Judiciary maintained an Issues page on its web site focusing on rogue websites. Among other things, the website contains an article entitled, “Dispelling the Myths Surrounding SOPA,” which provides a cogent summary of the arguments in favor of the SOPA bill.
OPEN Act – Current Status
The Online Protection and Enforcement of Digital Trade Act (“the OPEN Act”) was introduced in the Senate by Senator Wyden on December 17, 2011 as S. 2029. A nearly identical version (with minor changes) was introduced by Rep. Issa in the House on January 18, 2011 as H.R. 3782. At present, the bills have been referred to committees for further consideration. The House bill has been “[r]eferred to the Committee on Ways and Means, and in addition to the Committee on the Judiciary, for a period to be subsequently determined by the Speaker, in each case for consideration of such provisions as fall within the jurisdiction of the committee concerned.” Status Report for H.R. 3782.
Most recently, Sen. Wyden made the following public statements:
- Jan. 12: Wyden Statement on Potential Modifications to Protect IP Act
- Jan. 13: Wyden Statement on the Letter to Senator Reid Calling for More Time to Consider PIPA and Dropping of DNS Provision in SOPA
- Jan. 20: Wyden and Moran Respond to the Postponing of Protect IP Vote in the Senate
Similarly, Rep. Issa, the Chairman of the House Oversight Committee, has issued a few public statements, but the OPEN Act was only introduced in the House six days ago, leaving him little time to comment in the interim:
- Jan. 18: Issa Introduces the OPEN Act
Jan. 18: #SOPA & #PIPA Website Blackouts, including the following notation:“The Oversight Committee had originally scheduled a hearing on DNS blocking for today. The hearing was postponed after assurances from Leader Cantor and the removal of DNS blocking provisions from SOPA were made. Even with this alteration, Chairman Issa continues to oppose SOPA as well as PIPA.”
- Jan. 20: Retreat of Protect IP Act (PIPA) and Stop Online Piracy Act (SOPA)
It appears, therefore, that the debate about the right mechanism to combat foreign online piracy and counterfeiting is not completely off the table, although it is hard to imagine the PROTECT IP Act or SOPA proceeding unaltered. Any debate on the issue – regardless of what bill is associated with the debate – will raise questions of effectiveness of the solution, ability to enforce the bill, if enacted, against foreign entities, and whether there is unintended harm that must be avoided. At base, however, this is a problem that warrants a legislative solution.
On December 17, 2011, Senator Harry Reid (D-Nev.) introduced a “cloture” motion to “bring to a close” the debate on the motion to allow the PROTECT IP Act (S. 968) to be considered on the floor of the Senate, about which Senator Wyden has been successful so far in placing “on hold.”
To the non-Washington-insiders among us (myself included), a “cloture motion” is an archaic expression that requires definition. According to Black’s Law Dictionary (West 6th ed. 1991), a cloture is a “legislative rule or procedure whereby unreasonable debate (i.e., filibuster) is ended to permit vote to be taken.” The term filibuster is defined as “tactics designed to obstruct and delay legislative action by prolonged and often irrelevant speeches on the floor of the House or Senate.” Id.
Certainly, after Senator Wyden announced that he intended to place a “hold” on floor consideration of the bill, a cloture would be the necessary next step to initiate a Senate-wide vote on the bill.
According to the Congressional Record, the cloture vote is scheduled for January 24, 2012, beginning at 2:15pm. Congr. Rec. S8783 (Dec. 17, 2011) (“Mr. REID. Mr. President, I ask unanimous consent that the cloture vote on the motion to proceed to S. 968 occur at 2:15 p.m. on Tuesday, January 24–that is the day after we start the session–and that the mandatory quorum under rule XXII be waived. . . . The PRESIDING OFFICER. Without objection, it is so ordered.”).
Immediately after the cloture was introduced, Senator Wyden again expressed his intent to filibuster the bill. Press release, Dec. 17, 2011 (“Therefore, I will be working with colleagues on both sides of the aisle over the next month to explain the basis for this wide-spread concern and I intend to follow through on a commitment that I made more than a year ago, to filibuster this bill when the Senate returns in January.”).
This statement is repeated in the Congressional Record immediately following Sen. Reid’s request for scheduling, but the Record incorrectly categorized his statement as relating to the “Personal Information Protection Act” (presumably because Sen. Wyden used the acronym “PIPA” in his remarks). Given the duplication between Sen. Wyden’s press release (specifically referring to the Protect IP Act) and this statement on the public record, it appears that the Congressional Record is simply mistaken in this instance.
On December 12, 2011, Representative Lamar Smith, chairman of the House Committee on the Judiciary, introduced a “Manager’s Amendment” to the pending Stop Online Piracy Act (H.R. 3261), in advance of a scheduled hearing and markup session before the Committee on December 15 and 16, 2011. On December 14, he issued a press release challenging the opposition that had garnered significant press attention. In it, he denounced the opposition, claiming that it is either mistaken about the actual contents of the bill or that its complaints are simply outdated because of the changes made in the Manager’s Amendment.
With regard to Google, one of the loudest opponents of both the PROTECT IP Act and SOPA, Chairman Smith stated, “In August, Google paid half a billion dollars to settle a criminal case because of the search engine giant’s active promotion of foreign rogue pharmacies that sold counterfeit and illegal drugs to U.S. patients. Their opposition to this legislation is self-serving since they profit from doing business with rogue sites that steal and sell America’s intellectual property.”
Webcasts for the hearing and markup sessions may be found in the Committee’s hearing notices, although news reports indicate that the first session ran a “marathon” twelve hours, so be prepared for the long session. Tamlin Bason, “Rep. Lamar Smith Delays SOPA Markup, Will Consider a Hearing on DNS Blocking,” 83 BNA Patent Trademark & Copyright Journal 261 (Dec. 23, 2011) (subscription access required). Draft transcripts are available for both the December 15 (459 pages) and December 16 (58 pages) sessions. An additional markup session originally scheduled for December 21, 2011, was postponed “due to House schedule” (presumably referring to the recess taken on December 20.) A summary of the proposed amendments and vote count can also be found on the Committee’s hearing page.
- Clarifies that the bill does not require that users of a targeted website be directed or redirected to another site;
- Establishes a “kill switch” that would allow an ISP to decline to carry out any court order that it finds would “impair the security or integrity of the system” – thus protecting the security and integrity of the DNS (domain name system);
- Applies only to foreign websites;
- Adds new savings clauses – a) providing no duty to monitor illegal activity on a provider’s network or service; b) does not impose a technology mandate on any party; and c) leaves all DMCA safe harbors in place for intermediaries;
- Removes the pre-suit notification provision to “encourag[e] parties to engage in voluntary, completely market-based solutions;”
- Removes language in the private right of action that provided liability in cases of willful blindness or engaging/facilitating in the infringement/counterfeiting;
- Limits the definition of intermediaries that could be subject to this bill;
- Provides that ISPs cannot be ordered to block a subdomain;
- Provides that search engines would be allowed to continue to deliver links to any legitimate subdomains or portions of the site that do not infringe; and
- Clarifies that the ISPs may only be required to take measures that they determine are the “least burdensome, technically feasible, and reasonable.”
People in the IP community have asked why the DMCA (Digital Millenium Copyright Act) can’t simply be applied to seek takedowns of infringing/counterfeiting sites such as these. Chairman Smith answered that question in a December 15 public statement about the necessity for legislation such as the Stop Online Piracy Act:
- It provides no effective relief when a rogue web-site is foreign-based and foreign-operated like PirateBay – the 89th most visited site in the U.S.;
- It doesn’t protect trademark owners and consumers from counterfeit and unsafe products like fake prescription medications available on legitimate-appearing but unlicensed “online pharmacies”;
- It doesn’t assist copyright owners when foreign rogue sites are devoted to the theft of intellectual property on a massive scale;
And, finally, it does nothing to address the use of intermediaries such as payment processors and Internet advertising services that are employed by criminals to fund illegal activities.”
Id. (bullets added).
Chairman Smith indicated at the close of the December 16 session that he may entertain additional markup sessions, but as Congress is now in recess, these sessions will likely be scheduled after the next session begins on January 17, 2012.
The Judiciary Committee’s “Rogue Websites” page has some interesting links to various articles demonstrating support for SOPA and various summaries and fact sheets about the bill. The page does not purport to be an unbiased recitation of commentary to date about SOPA (for instance, it does not catalog the various positions articulated in opposition to the bill), it provides a useful one-stop-shop for statements in support that may not be available together elsewhere.