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Senate Judiciary Committee Marks Up S. 968 (PROTECT IP Act)

by Christina Frangiosa


Yesterday, the Senate Judiciary Committee held a business meeting which was scheduled for purposes of discussing certain nominations and markups to at least two bills: 1) S.968, Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (“PROTECT IP Act”) (sponsored by Leahy, Hatch, Grassley, Kohl, Feinstein, Schumer, Graham, Whitehouse, Klobuchar, Franken, Coons, Blumenthal); and 2) S.978, A bill to amend the criminal penalty provision for criminal infringement of a copyright, and for other purposes (Klobuchar, Cornyn, Coons). A discussion of S. 978 was held over until the next meeting.

The meeting was not open to the public and was not simulcast, but an audio file of the meeting is now available on the Committee’s site, along with the agenda. Senators Leahy and Franken have also published their prepared remarks on the Committee’s site.  (UPDATE:  A webcast of the Executive Business Meeting is now available on the site.)

During the meeting, Senators Leahy, Hatch and Grassley offered an amendment in the nature of a substitute, and Senators Leahy and Grassley offered an additional amendment. Both of these were made available on the Senate Judiciary Committee’s main site, although I imagine they will be moved at some point in the near future (once there is more current news to publish on the main site).

Both amendments passed the Senate Judiciary Committee on a 10-0 Voice Vote. Following the announcement that the Bill had passed the Senate Judiciary Committee, however, Senator Wyden announced a hold on the Bill, commenting that while “I understand and agree with the goal of the legislation, to protect intellectual property and combat commerce in counterfeit goods, . . . I am not willing to muzzle speech and stifle innovation and economic growth to achieve this objective.” An interesting article in Wired.com identifies the “hold” process as “rarely used” in the Senate, but effectively blocking the Bill from “landing” on the Senate floor.

Statements of several organizations on both sides of the fence on this issue can be found as follows (below are excerpts of the various statements, please click the links to their full statements to get complete context):

IN FAVOR

  • Microsoft, praising the Bill (5/26/11), issued before the amendments were reported, supports the Bill, but cautions: “Safeguards should be included to ensure that rogue sites are identified clearly and appropriately, and that the responsibilities of companies required to take action to ensure compliance are well defined and their liability appropriately limited. In addition, steps should be taken to ensure that the private right of action is not subject to abuse, and that the new actions and resulting orders do not stifle free speech or the free flow of information.” Brad Smith, General Counsel and Senior Vice President, Legal & Corporate Affairs, Microsoft also issued a statement in support of the Bill.
  • U.S. Chamber of Commerce’s Global Intellectual Property Center, praising the Bill (5/26/11), specifically stating: “Rogue sites and their operators contribute nothing to the U.S. economy. They do not innovate, they do not pay taxes, they do not follow safety standards, and they do not follow the law. Today’s vote serves as a wakeup call to those who illicitly profit at the expense of American businesses and consumers—the U.S. will not tolerate your careless, reckless, malicious behavior.”
  • Copyright Alliance, praising the Bill (5/26/11), specifically stating: “”The websites targeted by this legislation are draining income from American businesses and misleading consumers with their unregulated, unlicensed and unsafe practices. This bill provides much-needed tools for law enforcement to do its job and we urge the full Senate to consider it in the very near future.”
  • National Cable & Telecommunications Association, supporting the Bill (5/26/11), stating “By cracking down on rogue websites that have for too long encouraged the theft of valuable content and intellectual property, the PROTECT IP Act of 2011 sends a strong message that this illicit practice will no longer be tolerated.”
  • A group of entertainment professionals jointly issued a statement in support of the Bill, entitled, “Joint Statement from AFM, AFTRA, DGA, IATSE, IBT and SAG Commending Senate Judiciary Committee Passage of the PROTECT IP Act.” Representing “more than 400,000 entertainment industry workers including craftspeople, actors, technicians, directors, musicians, recording artists and others whose creativity is at the heart of the American entertainment industry,” the statement opines,
    • “[W]e believe the PROTECT IP Act is critical to efforts to aggressively combat the proliferation of foreign ‘rogue websites’ that steal US produced content and profit from it by illegally selling it to the American public. Let us be very clear: online theft is stealing. It results in thousands of lost jobs and millions of dollars in lost wages for our members. We reject the claims that shutting down illegal sites may somehow impact legitimate commercial websites. This bill clearly goes after illegal sites; legitimate and law abiding websites are not the target and we would hope that those who advocate against either of these bills are not condoning illegal activity on the Internet any more than they would condone illegal activity in their bank or grocery store. Today’s passage of the PROTECT IP Act is a significant step toward ending the ‘looting’ of the creative and artistic entertainment works that constitute our members’ hard work, and are an invaluable part of our collective cultural heritage.” (Emphasis added.)
    • The groups signing on to this Joint Statement are the American Federation of Musicians (AFM), American Federation of Television and Radio Artists (AFTRA), Directors Guild of America (DGA), International Alliance of Theatrical Stage Employees, Moving Picture Technicians, Artists and Allied Crafts of the United States, Its Territories and Canada (IATSE), International Brotherhood of Teamsters (IBT) and Screen Actors Guild (SAG).
  • Another group in the entertainment industry (IFTA, NATO and MPAA) jointly supported the Bill, specifically stating, “By helping shut down rogue websites that profit from stolen films, television shows, and other counterfeit goods, this legislation will protect wages and benefits for the millions of middle class workers who bring America’s creativity to life.” (Specific quote was attributed to Michael O’Leary, MPAA).
    • According to the press release, this group includes the Independent Film & Television Alliance® (IFTA), the National Association of Theatre Owners (NATO), and the Motion Picture Association of America, Inc. (MPAA)
  • The American Apparel and Footwear Association, supporting the Bill (5/26/11), states “While the current PROTECT IP Act is a significant improvement over previous attempts at legislation to shut down rogue Web sites that sell counterfeit goods, the U.S. apparel and footwear industry believes this bill can be made stronger. We are pleased that language has been included to allow law enforcement the ability to share information with rightsholders.”

OPPOSED

  • Center for Democracy and Policy (CDT), opposing the Bill (5/26/11), but noting that improvements were made during the markup session on May 26: “CDT has expressed its concern with this approach, and particularly with the portions of the bill that try to use the domain name system (DNS) to control ‘rogue websites,’ in previous blog posts and congressional testimony. The Committee today made a few modest but generally positive changes, such as improving transparency via annual oversight reports and tightening some language designed to prevent the bill from undermining the crucial copyright liability “safe harbor” under section 512 of the DMCA. But CDT’s core concerns remain.” (Internal hyperlinks omitted)
    • CDT published a letter sent by public interests groups on 5/25/11 to the Judiciary Committee, expressing concern with the Bill. The signatories were the American Association of Law Libraries, Association of College and Research Libraries, American Library Association, Association of Research Libraries, Center for Democracy and Technology, Demand Progress, EDUCAUSE, Electronic Frontier Foundation, Human Rights Watch, Rebecca MacKinnon, Bernard Schwartz Senior Fellow, New America Foundation, Public Knowledge, Reporters sans frontières / Reporters Without Borders and Special Libraries Association.
    • CDT published another letter sent by Internet and payment system companies on 5/25/11 to the Judiciary Committee, objecting to the creation of a private right of action included in the Bill. The signatories were American Express Company, Consumer Electronics Association, Discover, Visa, PayPal, NetCoalition, Yahoo!, eBay and Google.
    • CDT also published a letter sent by various trade associations on 5/25/11 to the Judiciary Committee, expressing concerns about the definition of “dedicated to infringing activities,” application to search engines, creation of a private right of action and DNS blocking. Signatories were Computer and Communications Industry Association (CCIA), Consumer Electronics Association (CEA) and NetCoalition.
  • Public Knowledge, opposing the Bill (5/26/11), specifically stating: “We are disappointed that the Senate Judiciary Committee today approved legislation (S. 968) that will threaten the security and global functioning of the Internet, and opens the door to nuisance lawsuits while doing little if anything to curb the issues of international source of illegal downloads the bill seeks to address.”  Public Knowledge also published a paper entitled, “Security and Other Technical Concerns Raised by the DNS Filtering Requirements in the PROTECT IP Bill” (May 2011).
  • Google appears to oppose the Bill (according to an article appearing in The Guardian (UK), but I was unable to find a formal press release to that effect. See “Google boss: anti-piracy laws would be disaster for free speech,” The Guardian, May 18, 2011 (i.e., before the measure passed the Senate Judiciary Committee). Note that they signed on to one of the 5/25/11 letters that CDT posted to its site (referenced above).

New Version of Online Counterfeiting and Infringement Bill Proposed

by Christina Frangiosa


On Thursday, May 12, Senators Leahy (D-VT), Hatch (R-UT), Grassley (R-IA), Schumer (D-NY), Feinstein (D-CA), Whitehouse (D-RI), Graham (R-SC), Kohl (D-WI), Coons (D-DE) and Blumenthal (D-CT) introduced a new version of the COICA bill, this time called the “Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011” (or, the PROTECT IP Act of 2011). As of this writing, a copy of the bill bearing the number has not yet been posted, although I have been informed that it will be numbered S. 968. (Thomas currently only provides access to bills S. 1 through S. 943.)

According to Senator Leahy’s press release, this bill provides:

  • A narrower definition of an Internet site “dedicated to infringing activities”;
  • Authorization for the Attorney General to serve an issued court order on a search engine, in addition to payment processors, advertising networks and Internet service providers;
  • Authorization for both the Attorney General and rights holders to bring actions against online infringers operating an internet site or domain where the site is “dedicated to infringing activities,” but with remedies limited to eliminating the financial viability of the site, not blocking access;
    • [Note: this is the so-called “private right of action” but appears to try to take into account the concerns expressed about avoiding restrictions on free speech rights]
  • Requirement of plaintiffs to attempt to bring an action against the owner or registrant of the domain name used to access an Internet site “dedicated to infringing activities” before bringing an action against the domain name itself;
    • [Note: this provision in the bill may actually contain a typographical error. As written, this section states that only after a private rights holder attempts to bring a civil action against the owner, then the Attorney General may bring an action against the domain name. I think this was supposed to authorize the private rights holder to take the “in rem” action, since the Attorney General’s ability to bring an “in rem” action is codified in the preceding section.]
  • Protection for domain name registries, registrars, search engines, payment processors, and advertising networks from damages resulting from their voluntary action against an Internet site “dedicated to infringing activities,” where that site also “endangers the public health,” by offering controlled or non-controlled prescription medication. 
    • [Note: This is one so-called “Safe Harbor” that witnesses representing GoDaddy and Visa requested for those private companies involved in the Internet ecosystem who try to prevent some of the bad actors from achieving profits in the U.S. market. It may not go as far as those witnesses requested, however, in that it is limited to counterfeit pharmaceuticals and dangerous goods.]

Senator Leahy also describes the purposes of the bill and republishes his statement on the floor to introduce the bill. He summarizes the ultimate point in this legislation:

“This legislation will provide law enforcement and rights holders with an increased ability to protect American intellectual property.  This will benefit American consumers, American businesses, and American jobs.  We should not expect that enactment of the legislation will completely solve the problem of online infringement, but it will make it more difficult for foreign entities to profit off American hard work and ingenuity.   This bill targets the most egregious actors, and is an important first step to putting a stop to online piracy and sale of counterfeit goods.”
 

Senator Grassley has posted a similar press release (although it does not include the same “summary of the bill” section that Senator Leahy’s does).

It remains to be seen how the bill will be received, and whether stakeholders believe that this version adequately addresses some of the criticisms of the prior bill that were raised during a Senate Hearing in February, and two House Hearings in March and April. (More on those hearings can be found in prior posts about the COICA bill.)

As of this writing, the House has not introduced a companion bill, but given its recent hearings on the topic, such a companion bill is expected in the near future.

Revised TTAB Manual of Procedure is Now Available

by Christina Frangiosa


The long-awaited revision of the Trademark Trial & Appeal Board’s Manual of Procedure (TBMP) is now available for download from the USPTO as a single document (large) or by individual chapters. The most-recent version prior to this one was May 2004, but the rules substantially changed in 2007, so this is a welcome publication for practitioners. (The USPTO’s summary of the 2007 rule changes remains available on the TTAB site as a quick reference.)

This new version of the TBMP is current through November 15, 2010. The Index of Changes provides a summary of what’s new.

The May 2004 version of the TBMP remains available from the TTAB’s website, but perhaps these links have not yet been updated to reflect the new version and will disappear shortly.

Department of Commerce Issued Report on Trademark Litigation Tactics

by Christina Frangiosa


The U.S. Department of Congress issued its Report to Congress on Trademark Litigation Tactics on April 27, 2011. See also USPTO’s summary of its requests for comment. The report provided an excellent summary of trademark rights and trademark owners’ duties to enforce their rights or risk losing them. It also summarized the comments that the USPTO received during its two requests for public comment. In its formal Recommendations the Department proposed that it: 1) “engage the private sector about providing free or low-cost legal advice to small businesses via pro bono programs and IPR clinics;” 2) “engage the private sector about offering continuing legal education programs focused on trademark policing measures and tactics;” and 3) enhance Federal agency educational outreach programs by identifying resources that enable small businesses to further their understanding of trademark rights, enforcement measures, and available resources for protecting and enforcing trademarks.” Report at 26.

After having received comments from stakeholders and others during the comment periods, the Department conceded that it was “unclear whether small businesses are disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner’s rights,” id., which the Department had been tasked to explore. This analysis matches the conclusion of at least one of the bar associations that submitted comments – specifically, the American Bar Association’s Intellectual Property Law Section. See Feb. 4, 2011 Letter from the ABA IPL Section at 2 (“Although there is no consensus, as would be expected considering the diversity of the Section, the results reflect that trademark abuse is not limited to small businesses but can be experienced by any party defending a trademark suit.”).

The Department’s Report further concluded that “because trademark enforcement is a private property rights litigation issue, if abusive tactics are a problem, such tactics may best be addressed by the existing safeguards in the litigation system and by private sector outreach, support and education relating to these issues.” Report at 26. Again, the ABA IPL Letter made a similar point: based on a survey that the IPL Section had conducted, “The responses indicate that there is no consensus about many of these issues, lending further support to the conclusion that determining litigation misconduct – in a trademark case or otherwise – requires a fact-intensive analysis that cannot be addressed by a single, catch-all legislative solution.” Feb. 4, 2011 Letter at 4.

At the end of the Report, the Department provided several resources that small businesses could consult to assist it in its enforcement efforts. See Report at 22-25 (narrative discussion); and Appendix A (USG Resource Contact Information Sheet). The links in the Appendix are listed below for ease of reference (the descriptions of each reference below is verbatim from the report. Note that copying this information does not violate a copyright, since government works are not subject to the Copyright Law. 17 U.S.C. § 105):

  • STOP Hotline at 1-866-999-HALT.
  • “SME IP Training Tutorial” an online training tool for SMEs: http://www.StopFakes.gov/525/menu/index.htm.
  • “APEC Intellectual Property Explorer,” tool helps businesses identify their intellectual property assets, http://www.stopfakes.gov/.
  • “Experts’ Advice for Small Businesses Seeking Foreign Patents” (GAO Report), http://www.gao.gov/new.items/d03910.pdf.
  • USPTO Inventors Assistance, http://www.uspto.gov/inventors/iac/index.jsp; FAQs, http://www.uspto.gov/inventors/independent/index.jsp; and computer-based training, “From Concept to Protection,” http://www.uspto.gov/inventors/index.jsp
  • USPTO “TMIN,” the Trademark Information Network, which features broadcast-style videos that cover important topics and application filing tips, http://www.uspto.gov/trademarks/process/TMIN.jsp
  • “International IP Advisory Program”, through which U.S. small businesses can obtain one hour of free legal advice on their IP issues in various countries, http://www.stopfakes.gov/int_ipr_ap.asp
  • U.S. Copyright Office website for registration and general information (including Circular 1, “Copyright Basics”): http://www.copyright.gov,
  • USITC’s Trade Remedy Assistance Office (TRAO): online www.usitc.gov/trade_remedy/trao , by telephone at (800) 343-9822 or (202) 205-2200, or by fax at (202) 205-2139

More information about the statutes that commissioned the study as well as analysis of the ABA IPL Section’s letter can be found in prior posts within this blog.

Senate Hearing Scheduled on Mobile Privacy

by Christina Frangiosa


On April 25, 2011, the Senate Judiciary Committee announced that its Subcommittee on Privacy, Technology and the Law will hold a hearing on “Protecting Mobile Privacy: Your Smartphones, Tablets, Cell Phones and Your Privacy” on Tuesday, May 10, 2011 beginning at 10am. Chairman Al Franken will preside over the proceedings. Prior hearings of the various subcommittees of the Senate Judiciary Committee have been simulcast over the Internet, and it appears that this one will be treated similarly. The recorded webcast should also be available after the hearing, if you miss it in real time.

The witnesses have not yet been identified, but should be posted on the Senate’s hearing site when available.