II

111TH CONGRESS 2D SESSION

S. 3804

To combat online infringement, and for other purposes.

IN THE SENATE OF THE UNITED STATES
SEPTEMBER 20, 2010 Mr. LEAHY (for himself, Mr. HATCH, Ms. KLOBUCHAR, Mr. WHITEHOUSE, Mr. SCHUMER, Mr. KOHL, Mr. SPECTER, Mr. DURBIN, Mr. BAYH, Mr. VOINOVICH, and Mrs. FEINSTEIN) introduced the following bill; which was read twice and referred to the Committee on the Judiciary

A BILL
To combat online infringement, and for other purposes. 1 Be it enacted by the Senate and House of Representa-

2 tives of the United States of America in Congress assembled, 3 4
SECTION 1. SHORT TITLE.

This Act may be cited as the ‘‘Combating Online In-

5 fringement and Counterfeits Act’’. 6 7 8
SMARTINEZ on DSKB9S0YB1PROD with BILLS

SEC. 2. INTERNET SITES DEDICATED TO INFRINGING ACTIVITIES.

Chapter 113 of title 18, United States Code, is

9 amended by adding at the end the following:

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Internet sites dedicated to infringing activi2 3 ties ‘‘(a) DEFINITION.IS S3804 24 25 26 VerDate Mar 15 2010 01:58 Sep 21. without the authorization of the copyright owner or otherwise by operation of law. or enable or facilitate a violation of title 17. transmission. or is marketed by its operator. or ‘‘(2) is— ‘‘(A) primarily designed. by any means.—For purposes of this section.2 1 ‘‘§ 2324. to offer— ‘‘(i) goods or services in violation of title 17. in complete or substantially complete form. 2010 . commercially significant purpose or use other than. including by means of download. works protected by title 17. an 4 Internet site is ‘dedicated to infringing activities’ if such 5 site— 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(1) is otherwise subject to civil forfeiture to the United States Government under section 2323. including by offering or providing access to. or by a person acting in concert with the operator. or otherwise. United States Code. has no demonstrable. copies of. including the provision of a link or aggre•S 3804 IS Jkt 089200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. or public performance or display of. United States Code.

such activities are central to the activity of the Internet site or sites accessed through a specific domain name. and ‘‘(B) engaged in the activities described in subparagraph (A). a preliminary injunction. to carry out the provisions of certain international conventions. 2010 Jkt 089200 PO 00000 Frm 00003 Fmt 6652 Sfmt 6201 E:\BILLS\S3804.3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 gated links to other sites or Internet resources for obtaining such copies for accessing such performance or displays.—On application of the At- 21 torney General following the commencement of an action 22 pursuant to subsection (c). the court may issue a tem23 porary restraining order.C. and for other purposes’.IS S3804 .S. 1116(d)). ‘‘(b) INJUNCTIVE RELIEF. as that term is defined in section 34(d) of the Act entitled ‘An Act to provide for the registration and protection of trademarks used in commerce. or materials bearing a counterfeit mark. or ‘‘(ii) to sell or distribute goods. services. approved July 5. or an SMARTINEZ on DSKB9S0YB1PROD with BILLS 24 injunction against the domain name used by an Internet 25 site dedicated to infringing activities to cease and desist •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. and when taken together. 15 U. 1946 (commonly referred to as the ‘Trademark Act of 1946’ or the ‘Lanham Act’.

2010 Jkt 089200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. if— ‘‘(A) the domain name is dedicated to infringing activities. if pursuant to subsection (d)(2). or. and ‘‘(B) neously— ‘‘(i) sends a notice of the alleged violation and intent to proceed under this subsection to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar.— ‘‘(1) IN GENERAL. in the District of Columbia. A party described in subsection 4 (e) receiving an order issued pursuant to this section shall 5 take the appropriate actions described in subsection (e).—The Attorney General may commence an in rem action against any domain name used by an Internet site in the judicial district in which the domain name registrar or domain name registry is located. if available. in accordance with rule 65 of the Federal 3 Rules of Civil Procedure. and ‘‘(ii) publishes notice of the action as the court may direct promptly after filing the action.IS S3804 .4 1 from undertaking any infringing activity in violation of 2 this section. the Attorney General simulta- 24 25 •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(c) IN REM ACTION.

provided that for a registry that is located in more than 1 judicial district.IS S3804 . ‘‘(2) DOMAINS FOR WHICH THE REGISTRY OR REGISTRAR IS NOT LOCATED DOMESTICALLY. venue shall be appropriate at the principal place where the registry operations are performed.—For purposes of this section.— ‘‘(A) ACTION COLUMBIA.— ‘‘(1) DOMAINS FOR WHICH THE REGISTRY OR REGISTRAR IS LOCATED DOMESTICALLY. the in rem action may be brought in the District of Columbia to prevent the importation into the 24 25 •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21.5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(2) SERVICE OF PROCESS.—In an in rem action commenced under subsection (c). 2010 Jkt 089200 PO 00000 Frm 00005 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. a domain name shall be deemed to have its situs in the judicial district in which— ‘‘(A) the domain name registrar or registry is located. the actions described under paragraph (1)(B) shall constitute service of process.—If BROUGHT IN DISTRICT OF the provisions of paragraph (1) do not apply to a particular domain name. ‘‘(d) SITUS. or ‘‘(B) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.

and ‘‘(II) harms intellectual property rights holders that are residents of the United States. ‘‘(B) DETERMINATION BY THE COURT. 2010 Jkt 089200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. 24 25 •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. a court shall consider. and ‘‘(ii) the Internet site— ‘‘(I) conducts business directed to residents of the United States.— For purposes of determining whether an Internet site conducts business directed to residents of the United States under subparagraph (A)(ii)(I). among other indicia whether— ‘‘(i) the Internet site is actually providing goods or services to subscribers located in the United States.6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS United States of goods and services offered by an Internet site dedicated to infringing activities if— ‘‘(i) the domain name is used to access such Internet site in the United States.IS S3804 . ‘‘(ii) the Internet site states that it is not intended. infringing material from being accessed in or delivered to the United States. and has measures to prevent.

the domain name registrar or domain name registry shall suspend operation of. the domain name.—Upon receipt 24 25 of a court order issued pursuant to this section— •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. and ‘‘(iv) any prices for goods and services are indicated in the currency of the United States.— TO BE SERVED. upon the registry. if the domain name registrar is not located within the United States. and lock. the Attorney General may serve any court order issued pursuant to this section on any entity listed in clauses (i) through (iii) of subparagraph (B).—In an in rem action to which subsection (d)(2) applies.—In an in rem action to which subsection (d)(1) applies. Upon receipt of such order. 2010 Jkt 089200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\S3804.7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(iii) the Internet site offers services accessible in the United States.— ‘‘(1) DOMESTIC DOMAINS. the Attorney General shall serve any court order issued pursuant to this section on the domain name registrar or. ‘‘(B) REQUIRED ACTIONS. ‘‘(2) NONDOMESTIC ‘‘(A) ENTITY DOMAINS. ‘‘(e) SERVICE OF COURT ORDER.IS S3804 .

or other operator of a domain name system server shall take reasonable steps that will prevent a domain name from resolving to that domain name’s Internet protocol address. as that term is defined in section 5362(4) of title 31. and ‘‘(II) its trademarks from being authorized for use on Internet sites associated with such domain name. as expeditiously as practical. United States Code. shall take reasonable measures. as expeditiously as practical.8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(i) a service provider. 2010 Jkt 089200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. to prevent— ‘‘(I) its service from processing transactions for customers located within the United States based on purchases associated with the domain name. as that term is defined in section 512(k)(1) of title 17. ‘‘(ii) a financial transaction provider.IS S3804 . to prevent its network 24 25 •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. and ‘‘(iii) a service that serves contextual or display advertisements to Internet sites shall take reasonable measures. United States Code.

or agent thereof.IS S3804 . 18 ‘‘(g) ENFORCEMENT OF ORDERS. officer. •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. ‘‘(f) PUBLICATION OF ORDERS.—In order to com- 19 pel compliance with this section. together with 17 other relevant information. ‘‘(3) IMMUNITY. A showing by the defend23 ing party in such action that it does not have the technical SMARTINEZ on DSKB9S0YB1PROD with BILLS 24 means to comply with this section shall serve as a complete 25 defense to such action.9 1 2 3 4 5 6 7 8 9 10 from serving advertisements to an Internet site accessed through such domain name.—No cause of action shall lie in any Federal or State court or administrative agency against any entity receiving a court order issued under this section. in order to inform the public. The Intellectual 15 Property Enforcement Coordinator shall post such domain 16 names on a publicly available Internet site. 2010 Jkt 089200 PO 00000 Frm 00009 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. for any action reasonably calculated to comply with this section or arising from such order.—The Attorney Gen- 11 eral shall inform the Intellectual Property Enforcement 12 Coordinator of all court orders issued under this section 13 directed to specific domain names associated with Internet 14 sites dedicated to infringing activities. or against any director. the Attorney General may 20 bring an action against any party receiving a court order 21 issued pursuant to this section that willfully or persistently 22 fails to comply with such order. employee.

10 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(h) MODIFICATION MISSAL. and ‘‘(B) a defendant or owner or operator of a domain name subject to the order. DIS- ‘‘(1) MODIFICATION OR VACATION OF ORDER. or operation of the Internet site associated with the domain name subject to the order and the Internet site associated with the requested modification. or any party required to take action based on the order. by providing the court with clear indicia of joint control. 2010 Jkt 089200 PO 00000 Frm 00010 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. and ‘‘(ii) to include additional domain names that are used in substantially the same manner as the Internet site against which the action was brought. may petition the court to modify.— OR VACATION OF ORDERS. ownership.IS S3804 .— At any time after the issuance of a court order constituting injunctive relief under this section— ‘‘(A) the Attorney General may apply for a modification of the order— ‘‘(i) to expand the order to apply to a domain name that is reconstituted using a different domain name subsequent to the original order. sus- 24 •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21.

—A court order constituting injunctive relief under this section issued against a domain name used by an Internet site dedicated to infringing activities shall automatically cease to have any force or effect upon expiration of the registration of the domain name. based on evidence that— ‘‘(i) the Internet site associated with the domain name subject to the order is no longer dedicated to infringing activities. suspended. It shall be the responsibility of the domain name registrar to notify the court of such expiration. or vacate the order. 2010 Jkt 089200 PO 00000 Frm 00011 Fmt 6652 Sfmt 6201 E:\BILLS\S3804.—Nothing in this section shall 18 be construed to limit civil or criminal remedies available 19 to any person (including the United States) for infringing 20 activities on the Internet pursuant to any other Federal 21 or State law.11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 pend.IS S3804 . or ‘‘(ii) the interests of justice require that the order be modified. 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(j) INTERNET SITES ALLEGED MENT OF BY THE TO DEPART- JUSTICE TO BE DEDICATED INFRINGING 24 ACTIVITIES.— •S 3804 IS VerDate Mar 15 2010 02:52 Sep 21. or vacated. ‘‘(2) DISMISSAL OF ORDER. ‘‘(i) SAVINGS CLAUSE.

12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS ‘‘(1) IN GENERAL.—After the Attorney General makes a final determination on a petition to remove a domain name appearing on the list established under paragraph (1) filed by an 24 25 •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21.—If FOR UNDERTAKING CORREC- an entity described under sub- section (e) takes any action specified in such subsection with respect to a domain name that appears on the list established under paragraph (1).— GENERAL.IS S3804 .—The Attorney General shall maintain a public listing of domain names that. the Department of Justice determines are dedicated to infringing activities but for which the Attorney General has not filed an action under this section. upon information and reasonable belief. ‘‘(3) REMOVAL FROM LIST. then such entity shall receive the immunity protections described under subsection (e)(3). 2010 Jkt 089200 PO 00000 Frm 00012 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. ‘‘(4) JUDICIAL ‘‘(A) IN REVIEW. ‘‘(2) PROTECTION TIVE MEASURES.—The Attorney Gen- eral shall establish and publish procedures for the owner or operator of a domain name appearing on the list established under paragraph (1) to petition the Attorney General to remove such domain name from the list based on any of the factors described under subsection (h)(1)(B).

—A civil action for such judicial review shall be brought in the district court of the United States for the judicial district in which the plaintiff resides.—The court shall have power to enter.13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS individual pursuant to the procedures referred to in paragraph (3). if the plaintiff does not reside or have a principal place of business within any such judicial district. ‘‘(B) JURISDICTION.—As part of the Attorney General’s answer to a complaint for such judicial review. ‘‘(C) ANSWER. upon the pleadings and transcript of the record. the Attorney General shall file a certified copy of the administrative record compiled pursuant to the petition to remove. or such further time as the Attorney General may allow. ‘‘(D) JUDGMENT. or. including the evidence upon which the findings and decision complained of are based. a judgment affirming or re- 24 25 •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. in the District Court of the United States for the District of Columbia. 2010 Jkt 089200 PO 00000 Frm 00013 Fmt 6652 Sfmt 6201 E:\BILLS\S3804. the individual may obtain judicial review of such determination in a civil action commenced not later than 90 days after notice of such decision.IS S3804 . or has a principal place of business.

REQUIRED ACTIONS BY THE ATTORNEY GENERAL.IS S3804 . 3. and (5) provide appropriate resources and procedures for case management and development to affect timely disposition of actions brought under such section 2324. as that term is defined under section 2324 of title 18. (3) provide guidance to intellectual property rights holders about how to supplement an ongoing investigation initiated pursuant to such section 2324.’’. 2010 Jkt 089200 PO 00000 Frm 00014 Fmt 6652 Sfmt 6301 E:\BILLS\S3804. 24 Æ •S 3804 IS VerDate Mar 15 2010 01:58 Sep 21. SEC.14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 SMARTINEZ on DSKB9S0YB1PROD with BILLS versing the result of the Attorney General’s determination on the petition to remove. (4) establish standards for prioritization of actions brought under such section 2324. United States Code. with or without remanding the cause for a rehearing. (2) provide guidance to intellectual property rights holders about what information such rights holders should provide the Department of Justice to initiate an investigation pursuant to such section 2324. The Attorney General shall— (1) publish procedures to receive information from the public about Internet sites that are dedicated to infringing activities.

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