SOPA – Dying on the Vine?

by Christina Frangiosa


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):

“In light of recent events, I have decided to postpone Tuesday’s vote on the PROTECT I.P. Act.
    There is no reason that the legitimate issues raised by many about this bill cannot be resolved. Counterfeiting and piracy cost the American economy billions of dollars and thousands of jobs each year, with the movie industry alone supporting over 2.2 million jobs. We must take action to stop these illegal practices. We live in a country where people rightfully expect to be fairly compensated for a day’s work, whether that person is a miner in the high desert of Nevada, an independent band in New York City, or a union worker on the back lots of a California movie studio.
    I admire the work that Chairman Leahy has put into this bill. I encourage him to continue engaging with all stakeholders to forge a balance between protecting Americans’ intellectual property, and maintaining openness and innovation on the internet. We made good progress through the discussions we’ve held in recent days, and I am optimistic that we can reach a compromise in the coming weeks.” (Jan. 20, 2012)

Sen. Leahy issued several public statements just before – and in the wake of – the Jan. 18 protests:

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
  • “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:

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:

CONCLUSIONS

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.

Common Questions: So You’re Starting a New Business, How Do You Protect your Brand?

by Christina Frangiosa

In addition to the other concerns you may have about starting a new business, you will also be deciding how to brand your new products or services. Perhaps you’ve had a team of people working on identifying a good brand name – perhaps you’re working on it yourself. Either way, you want to make sure that no one else adopts the same (or substantially similar name) and competes with you. How do you do this?

Choosing a Name

From the perspective of telling the public what you do in as few words as possible, perhaps you’ve picked a very descriptive name – such as Women’s Clothing, Inc. (if you sell women’s clothing), on the theory that people will come to you for your products if they can see automatically what you sell. However, from the perspective of developing a unique brand name that your customers and competitors will come to associate with only your products or services, you really should create a name that does not describe or suggest what products/services you provide , or serve as a generic term for them. Good examples of strong marks are Kodak for photo paper or Google for Internet searching services.

In the trademark world, if you’ve made up the name completely from scratch, and there’s no descriptive quality to the name, you can develop a very strong brand which will allow customers to think of you automatically when seeing your mark. You are also more likely to be able to achieve federal trademark registration and to keep others from trying to trade on the good will you develop if they use a name that is confusingly similar to yours.

Protecting Your Mark

Protecting your valuable trademark requires a multi-pronged approach. Under current trademark law, you obtain trademark rights under “common law” the moment you begin using the mark in commerce in connection with certain goods or services. There are benefits to federally registering your trademark (such as the availability of treble damages for willful infringement of a registered mark, ability to obtain “incontestable” status after five years, etc.), so consider whether applying for registration makes sense for you.

There are also things you should do to police your mark: for instance, you should research what new products or services your competitors are delivering, and what new brand names they may use. You should periodically search both the Internet and any relevant trade periodicals that are important in your industry to ensure that no one else is using marks that are similar to yours for similar products or services. You should also periodically search the USPTO database to ensure that no competing applications are filed covering similar marks or goods/services. You can engage a commercial search service (such as Thompson Compumark or CT Corsearch among others) to watch for new applications for a fee.

A recent study by the Secretary of Commerce confirms that trademark owners are obligated to police their markets to ensure that infringement does not occur, but the report also suggests that any single enforcement tool may not be enough on its own. Similarly, recent cases suggest that you cannot delegate this burden entirely to a third party, but instead must rely on a variety of enforcement tools. Tiffany v. eBay, Civ. A. No. 08-3947, 600 F.3d 93 (2d Cir. April 1, 2010) (rejected on appeal by the U.S. Supreme Court (see also this explanation)). In that case, Tiffany tried to hold eBay liable for accepting listings of counterfeit products that appeared to be Tiffany knockoffs. This case has been read to require that eBay would be obligated to take down any listings that were demonstrably counterfeit and about which the rights holder complained. And, while it had every incentive to remove counterfeit products it learned about, it was not responsible for pro-actively policing new listings to ensure that no further knockoffs were listed. This, instead, is the burden of the trademark owner.

Where to Go for Further Information

The US Patent and Trademark Office has some good resources to get you started in determining what creation and enforcement options may be right for you. You can also contact a trademark attorney for advice. Several bar associations for trademark attorneys are the American Bar Association’s Intellectual Property Law Section, International Trademark Association, Intellectual Property Owner’s Association and the American Intellectual Property Law Association. Each of these organizations provides information relating to trademark law that may be of interest to you.

Index of 2011 Articles

by Christina Frangiosa


Welcome to a new year! I wish you all prosperity, health and happiness for 2012!

Before we begin our discussions of new developments in copyright, trademark and privacy law, I’d like to close out last year. Below is a listing of the topics discussed in this Blog during the past year. During the tail end of 2011, we had a number of legislative developments that were interesting to consider, and I imagine that trend will continue into the new year. We will also be covering recent court decisions impacting the world of intellectual property.

Articles (in Reverse Chronological Order) – Topic Labels

12/30/11 PROTECT IP Act May Move Toward Vote in January 2012 – Counterfeiting, Online piracy, Proposed legislation

12/29/11 Manager’s Amendment to SOPA Makes Big Changes – counterfeiting, Online piracy, Proposed legislation

12/28/11 Alternative to PROTECT IP Act and SOPA Proposed by Bipartisan, Bicameral Group – counterfeiting, Online piracy, Proposed legislation

12/6/11 ‘Tis the Season for . . . Anti-Counterfeiting Legislation? – COICA, counterfeiting, IPEC, Online piracy, Proposed legislation, trademarks

11/27/11 Stop Online Piracy Act Introduced to Combat Online Piracy and Counterfeiting – Part 2 of the Online Counterfeiting Topic – COICA, copyright, counterfeiting, IPEC, Online piracy, Proposed legislation, trademarks

11/11/11 PROTECT IP Act Introduced to Combat Online Piracy and Counterfeiting – Part 1 of the Online Counterfeiting Topic – COICA, copyright, counterfeiting, Online piracy, Proposed legislation, trademarks

10/31/11 Common Questions: When Should I Enforce My Trademark Rights? – Common Questions, trademarks

10/26/11 New Bill Introduced in the House to Combat Online Piracy – COICA, copyright, counterfeiting, Online piracy, trademarks

10/25/11 PSB&N Trademark Practice Group Launches New Web Site and Blog – Firm News

10/24/11 Common Questions: Can I Copyright My Idea? – Common Questions, copyright

9/30/11 Facebook Sued for Trademark Infringement of “TIMELINES” Mark – trademarks

9/28/11 Update – Unauthorized Sequel to Catcher in the Rye Permanently Enjoined, by Agreement – fictional characters

9/22/11 US Trade Representative Seeks Comments on 2011 Notorious Markets List – copyright, counterfeiting, IPEC, trademarks

9/15/11 Upcoming Senate Judiciary Committee Hearing on Google
– Google Book Project

9/1/11 Removal of Photographer’s “Gutter Credit” is Potentially Actionable Under DMCA – copyright, DMCA

8/24/11 First Sale Doctrine Not Available as Defense to Copyright Infringement, Where the Works were Foreign-Made – copyright

8/18/11 IP Enforcement Coordinator Seeks Public Comments about Counterfeiting – counterfeiting, government oversight, IPEC

8/4/11 Senate Judiciary Committee Issues Report on PROTECT IP Act – COICA, counterfeiting, Online piracy, Proposed legislation, trademarks

6/21/11 Senate Judiciary Committee Hearing Tomorrow on IPEC Oversight – cybersecurity, Dept of Homeland Security, government oversight

6/6/11 Redaction Failures Continue in Electronic Court Filings, Study Shows – ECF System, privacy, redaction

5/26/11 Senate Judiciary Committee Marks Up S. 968 (PROTECT IP Act) – COICA, copyright, counterfeiting, Proposed legislation, trademarks

5/17/11 New Version of Online Counterfeiting and Infringement Bill Proposed – COICA, Online piracy, Proposed legislation, trademarks

5/6/11 Revised TTAB Manual of Procedure is Now Available – trademarks, TTAB

5/3/11 Department of Commerce Issued Report on Trademark Litigation Tactics – government oversight, trademark misuse, trademarks

4/25/11 Senate Hearing Scheduled on Mobile Privacy – cell phones, mobile devices, privacy

4/18/11 House Examines Online Infringement and Counterfeiting (2d Hearing) – COICA, copyright, counterfeiting, Proposed legislation, trademarks

3/25/11 District Court Rejects Proposed GoogleBooks Settlement – copyright, Google Book Project

3/22/11 House Judiciary Committee Holds Hearing on Online Infringement – COICA, copyright, counterfeiting, Proposed legislation, trademarks

3/17/11 White House Releases Recommendations for IP Enforcement – copyright, counterfeiting, IPEC, Proposed legislation, trademarks

3/9/11 Senate Judiciary Committee Considering New COICA Bill – COICA, copyright, counterfeiting, IPEC, Proposed legislation, trademarks

2/15/11 ABA Intellectual Property Law Section Weighs in on USPTO’s Trademark Misuse Study – Enacted legislation, government oversight, trademark misuse, trademarks

1/27/11 New Bill Seeks to Eliminate Social Security Numbers as Uniform Identifiers – privacy, Proposed legislation, social security numbers

I look forward to more cases and legislation in this area, and welcome your comments on these posts.

PROTECT IP Act May Move Toward Vote in January 2012

by Christina Frangiosa


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.

Manager’s Amendment to SOPA Makes Big Changes

by Christina Frangiosa


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.

According to a Summary statement issued by the Committee on the Judiciary, the Manager’s Amendment makes the following changes:

  1. Clarifies that the bill does not require that users of a targeted website be directed or redirected to another site;
  2. 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);
  3. Applies only to foreign websites;
  4. 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;
  5. Removes the pre-suit notification provision to “encourag[e] parties to engage in voluntary, completely market-based solutions;”
  6. Removes language in the private right of action that provided liability in cases of willful blindness or engaging/facilitating in the infringement/counterfeiting;
  7. Limits the definition of intermediaries that could be subject to this bill;
  8. Provides that ISPs cannot be ordered to block a subdomain;
  9. 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
  10. 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:

“While the DMCA helps, it only applies in limited circumstances:
  • 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.