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Anticybersquatting Consumer Protection Act ("ACPA") |
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S.1948
Intellectual Property and Communications Omnibus Reform Act of 1999
(Introduced in the Senate)
TITLE III--TRADEMARK CYBERPIRACY PREVENTION
SEC. 3001. SHORT TITLE; REFERENCES.
(a) SHORT TITLE- This title may be cited as the `Anticybersquatting Consumer Protection Act'.
(b) REFERENCES TO THE TRADEMARK ACT OF 1946- Any
reference in this title to the Trademark Act
of 1946 shall be a reference to the Act entitled
`An Act to provide for the registration and protection
of trademarks used in commerce, to carry out the
provisions of certain international conventions, and
for other purposes', approved July 5, 1946 (15 U.S.C.
1051 et seq.).
SEC. 3002. CYBERPIRACY PREVENTION.
(a) IN GENERAL- Section 43 of the Trademark Act of
1946 (15 U.S.C. 1125) is amended by inserting
at the end the following:
`(d)(1)(A) A person shall be liable in a civil action
by the owner of a mark, including a personal name
which is protected as a mark under this section,
if, without regard to the goods or services of the
parties, that person--
`(i) has a bad faith intent to
profit from that mark, including a personal name which is protected
as a mark under this section;
and
`(ii) registers, traffics in, or uses a domain name that--
`(I) in the case
of a mark that is distinctive at the time of registration of the domain
name,
is identical
or confusingly similar to that mark;
`(II) in the
case of a famous mark that is famous at the time of registration of the
domain
name, is identical
or confusingly similar to or dilutive of that mark; or
`(III) is a trademark,
word, or name protected by reason of section 706 of title 18, United
States Code,
or section 220506 of title 36, United States Code.
`(B)(i) In determining whether a person has a bad
faith intent described under subparagraph (A), a
court may consider factors such as, but not limited
to--
`(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
`(II) the extent to which the domain
name consists of the legal name of the person or a name
that is otherwise commonly used
to identify that person;
`(III) the person's prior use,
if any, of the domain name in connection with the bona fide offering
of any goods or services;
`(IV) the person's bona fide noncommercial
or fair use of the mark in a site accessible under the
domain name;
`(V) the person's intent to divert
consumers from the mark owner's online location to a site
accessible under the domain name
that could harm the goodwill represented by the mark, either
for commercial gain or with the
intent to tarnish or disparage the mark, by creating a likelihood
of confusion as to the source,
sponsorship, affiliation, or endorsement of the site;
`(VI) the person's offer to transfer,
sell, or otherwise assign the domain name to the mark owner
or any third party for financial
gain without having used, or having an intent to use, the domain
name in the bona fide offering
of any goods or services, or the person's prior conduct indicating a
pattern of such conduct;
`(VII) the person's provision of
material and misleading false contact information when applying
for the registration of the domain
name, the person's intentional failure to maintain accurate
contact information, or the person's
prior conduct indicating a pattern of such conduct;
`(VIII) the person's registration
or acquisition of multiple domain names which the person knows
are identical or confusingly similar
to marks of others that are distinctive at the time of
registration of such domain names,
or dilutive of famous marks of others that are famous at the
time of registration of such domain
names, without regard to the goods or services of the parties;
and
`(IX) the extent to which the mark
incorporated in the person's domain name registration is or is
not distinctive and famous within
the meaning of subsection (c)(1) of section 43.
`(ii) Bad faith intent described under subparagraph
(A) shall not be found in any case in which the
court determines that the person believed and had
reasonable grounds to believe that the use of the
domain name was a fair use or otherwise lawful.
`(C) In any civil action involving the registration,
trafficking, or use of a domain name under this
paragraph, a court may order the forfeiture or cancellation
of the domain name or the transfer of the
domain name to the owner of the mark.
`(D) A person shall be liable for using a domain
name under subparagraph (A) only if that person is
the domain name registrant or that registrant's
authorized licensee.
`(E) As used in this paragraph, the term `traffics
in' refers to transactions that include, but are not
limited to, sales, purchases, loans, pledges, licenses,
exchanges of currency, and any other transfer
for consideration or receipt in exchange for consideration.
`(2)(A) The owner of a mark may file an in rem civil
action against a domain name in the judicial
district in which the domain name registrar, domain
name registry, or other domain name authority
that registered or assigned the domain name is located
if--
`(i) the domain name violates any
right of the owner of a mark registered in the Patent and
Trademark Office, or protected
under subsection (a) or (c); and
`(ii) the court finds that the owner--
`(I) is not able
to obtain in personam jurisdiction over a person who would have been a
defendant in
a civil action under paragraph (1); or
`(II) through
due diligence was not able to find a person who would have been a defendant
in a civil action
under paragraph (1) by--
`(aa) sending a notice of the alleged violation and intent to proceed under
this
paragraph to the registrant of the domain name at the postal and e-mail
address
provided by the registrant to the registrar; and
`(bb) publishing notice of the action as the court may direct promptly
after filing the
action.
`(B) The actions under subparagraph (A)(ii) shall constitute service of process.
`(C) In an in rem action under this paragraph, a
domain name shall be deemed to have its situs in
the judicial district in which--
`(i) the domain name registrar,
registry, or other domain name authority that registered or
assigned the domain name is located;
or
`(ii) documents sufficient to establish
control and authority regarding the disposition of the
registration and use of the domain
name are deposited with the court.
`(D)(i) The remedies in an in rem action under this
paragraph shall be limited to a court order for the
forfeiture or cancellation of the domain name or
the transfer of the domain name to the owner of the
mark. Upon receipt of written notification of a
filed, stamped copy of a complaint filed by the owner of
a mark in a United States district court under this
paragraph, the domain name registrar, domain
name registry, or other domain name authority shall--
`(I) expeditiously deposit with
the court documents sufficient to establish the court's control and
authority regarding the disposition
of the registration and use of the domain name to the court;
and
`(II) not transfer, suspend, or
otherwise modify the domain name during the pendency of the
action, except upon order of the
court.
`(ii) The domain name registrar or registry or other
domain name authority shall not be liable for
injunctive or monetary relief under this paragraph
except in the case of bad faith or reckless
disregard, which includes a willful failure to comply
with any such court order.
`(3) The civil action established under paragraph
(1) and the in rem action established under
paragraph (2), and any remedy available under either
such action, shall be in addition to any other
civil action or remedy otherwise applicable.
`(4) The in rem jurisdiction established under paragraph
(2) shall be in addition to any other
jurisdiction that otherwise exists, whether in rem
or in personam.'.
(b) CYBERPIRACY PROTECTIONS FOR INDIVIDUALS-
(1) IN GENERAL-
(A) CIVIL LIABILITY-
Any person who registers a domain name that consists of the name of
another living
person, or a name substantially and confusingly similar thereto, without
that
person's consent,
with the specific intent to profit from such name by selling the domain
name for financial
gain to that person or any third party, shall be liable in a civil action
by
such person.
(B) EXCEPTION-
A person who in good faith registers a domain name consisting of the name
of another living
person, or a name substantially and confusingly similar thereto, shall
not be
liable under
this paragraph if such name is used in, affiliated with, or related to
a work of
authorship protected
under title 17, United States Code, including a work made for hire as
defined in section
101 of title 17, United States Code, and if the person registering the
domain name
is the copyright owner or licensee of the work, the person intends to sell
the
domain name
in conjunction with the lawful exploitation of the work, and such registration
is
not prohibited
by a contract between the registrant and the named person. The exception
under this subparagraph
shall apply only to a civil action brought under paragraph (1) and
shall in no
manner limit the protections afforded under the Trademark Act of 1946 (15
U.S.C.
1051 et seq.)
or other provision of Federal or State law.
(2) REMEDIES- In any civil action
brought under paragraph (1), a court may award injunctive
relief, including the forfeiture
or cancellation of the domain name or the transfer of the domain
name to the plaintiff. The court
may also, in its discretion, award costs and attorneys fees to the
prevailing party.
(3) DEFINITION- In this subsection,
the term `domain name' has the meaning given that term in
section 45 of the Trademark Act
of 1946 (15 U.S.C. 1127).
(4) EFFECTIVE DATE- This subsection
shall apply to domain names registered on or after the
date of the enactment of this
Act.
SEC. 3003. DAMAGES AND REMEDIES.
(a) REMEDIES IN CASES OF DOMAIN NAME PIRACY-
(1) INJUNCTIONS- Section 34(a)
of the Trademark Act of 1946 (15 U.S.C. 1116(a)) is amended in
the first sentence by striking
`(a) or (c)' and inserting `(a), (c), or (d)'.
(2) DAMAGES- Section 35(a) of the
Trademark Act of 1946 (15 U.S.C. 1117(a)) is amended in the
first sentence by inserting `,
(c), or (d)' after `section 43(a)'.
(b) STATUTORY DAMAGES- Section 35 of the Trademark
Act of 1946 (15 U.S.C. 1117) is amended by
adding at the end the following:
`(d) In a case involving a violation of section 43(d)(1),
the plaintiff may elect, at any time before final
judgment is rendered by the trial court, to recover,
instead of actual damages and profits, an award
of statutory damages in the amount of not less than
$1,000 and not more than $100,000 per domain
name, as the court considers just.
SEC. 3004. LIMITATION ON LIABILITY.
Section 32(2) of the Trademark Act of 1946 (15 U.S.C. 1114) is amended--
(1) in the matter preceding subparagraph
(A) by striking `under section 43(a)' and inserting
`under section 43(a) or (d)';
and
(2) by redesignating subparagraph
(D) as subparagraph (E) and inserting after subparagraph (C)
the following:
`(D)(i)(I) A domain name registrar,
a domain name registry, or other domain name registration
authority that takes any action
described under clause (ii) affecting a domain name shall not be
liable for monetary relief or,
except as provided in subclause (II), for injunctive relief, to any
person for such action, regardless
of whether the domain name is finally determined to infringe
or dilute the mark.
`(II) A domain name registrar,
domain name registry, or other domain name registration
authority described in subclause
(I) may be subject to injunctive relief only if such registrar,
registry, or other registration
authority has--
`(aa) not expeditiously
deposited with a court, in which an action has been filed regarding
the disposition
of the domain name, documents sufficient for the court to establish the
court's control
and authority regarding the disposition of the registration and use of
the
domain name;
`(bb) transferred,
suspended, or otherwise modified the domain name during the pendency
of the action,
except upon order of the court; or
`(cc) willfully failed to comply with any such court order.
`(ii) An action referred to under
clause (i)(I) is any action of refusing to register, removing from
registration, transferring, temporarily
disabling, or permanently canceling a domain name--
`(I) in compliance with a court order under section 43(d); or
`(II) in the
implementation of a reasonable policy by such registrar, registry, or authority
prohibiting
the registration of a domain name that is identical to, confusingly similar
to, or
dilutive of
another's mark.
`(iii) A domain name registrar,
a domain name registry, or other domain name registration
authority shall not be liable
for damages under this section for the registration or maintenance of
a domain name for another absent
a showing of bad faith intent to profit from such registration
or maintenance of the domain name.
`(iv) If a registrar, registry,
or other registration authority takes an action described under clause
(ii) based on a knowing and material
misrepresentation by any other person that a domain name
is identical to, confusingly similar
to, or dilutive of a mark, the person making the knowing and
material misrepresentation shall
be liable for any damages, including costs and attorney's fees,
incurred by the domain name registrant
as a result of such action. The court may also grant
injunctive relief to the domain
name registrant, including the reactivation of the domain name or
the transfer of the domain name
to the domain name registrant.
`(v) A domain name registrant whose
domain name has been suspended, disabled, or
transferred under a policy described
under clause (ii)(II) may, upon notice to the mark owner, file
a civil action to establish that
the registration or use of the domain name by such registrant is
not unlawful under this Act. The
court may grant injunctive relief to the domain name registrant,
including the reactivation of
the domain name or transfer of the domain name to the domain
name registrant.'.
SEC. 3005. DEFINITIONS.
Section 45 of the Trademark Act of 1946 (15 U.S.C.
1127) is amended by inserting after the
undesignated paragraph defining the term `counterfeit'
the following:
`The term `domain name' means any alphanumeric designation
which is registered with or assigned
by any domain name registrar, domain name registry,
or other domain name registration authority as
part of an electronic address on the Internet.
`The term `Internet' has the meaning given that term
in section 230(f)(1) of the Communications Act
of 1934 (47 U.S.C. 230(f)(1)).'.
SEC. 3006. STUDY ON ABUSIVE DOMAIN NAME REGISTRATIONS INVOLVING
PERSONAL NAMES.
(a) IN GENERAL- Not later than 180 days after the
date of the enactment of this Act, the Secretary of
Commerce, in consultation with the Patent and Trademark
Office and the Federal Election
Commission, shall conduct a study and report to
Congress with recommendations on guidelines and
procedures for resolving disputes involving the
registration or use by a person of a domain name that
includes the personal name of another person, in
whole or in part, or a name confusingly similar
thereto, including consideration of and recommendations
for--
(1) protecting personal names from
registration by another person as a second level domain
name for purposes of selling or
otherwise transferring such domain name to such other person or
any third party for financial
gain;
(2) protecting individuals from
bad faith uses of their personal names as second level domain
names by others with malicious
intent to harm the reputation of the individual or the goodwill
associated with that individual's
name;
(3) protecting consumers from the
registration and use of domain names that include personal
names in the second level domain
in manners which are intended or are likely to confuse or
deceive the public as to the affiliation,
connection, or association of the domain name registrant,
or a site accessible under the
domain name, with such other person, or as to the origin,
sponsorship, or approval of the
goods, services, or commercial activities of the domain name
registrant;
(4) protecting the public from
registration of domain names that include the personal names of
government officials, official
candidates, and potential official candidates for Federal, State, or
local political office in the
United States, and the use of such domain names in a manner that
disrupts the electoral process
or the public's ability to access accurate and reliable information
regarding such individuals;
(5) existing remedies, whether
under State law or otherwise, and the extent to which such
remedies are sufficient to address
the considerations described in paragraphs (1) through (4);
and
(6) the guidelines, procedures,
and policies of the Internet Corporation for Assigned Names and
Numbers and the extent to which
they address the considerations described in paragraphs (1)
through (4).
(b) GUIDELINES AND PROCEDURES- The Secretary of Commerce
shall, under its Memorandum of
Understanding with the Internet Corporation for
Assigned Names and Numbers, collaborate to
develop guidelines and procedures for resolving
disputes involving the registration or use by a person
of a domain name that includes the personal name
of another person, in whole or in part, or a name
confusingly similar thereto.
SEC. 3007. HISTORIC PRESERVATION.
Section 101(a)(1)(A) of the National Historic Preservation
Act (16 U.S.C. 470a(a)(1)(A)) is amended
by adding at the end the following: `Notwithstanding
section 43(c) of the Act entitled `An Act to
provide for the registration and protection of trademarks
used in commerce, to carry out the
provisions of certain international conventions,
and for other purposes', approved July 5, 1946
(commonly known as the `Trademark Act of 1946' (15
U.S.C. 1125(c))), buildings and structures on
or eligible for inclusion on the National Register
of Historic Places (either individually or as part of a
historic district), or designated as an individual
landmark or as a contributing building in a historic
district by a unit of State or local government,
may retain the name historically associated with the
building or structure.'.
SEC. 3008. SAVINGS CLAUSE.
Nothing in this title shall affect any defense available
to a defendant under the Trademark Act of
1946 (including any defense under section 43(c)(4)
of such Act or relating to fair use) or a person's
right of free speech or expression under the first
amendment of the United States Constitution.
SEC. 3009. TECHNICAL AND CONFORMING AMENDMENTS.
Chapter 85 of title 28, United States Code, is amended as follows:
(1) Section 1338 of title 28, United States Codes, is amended--
(A) in the section heading by striking `trade-marks' and inserting `trademarks';
(B) in subsection (a) by striking `trade-marks' and inserting `trademarks'; and
(C) in subsection (b) by striking `trade-mark' and inserting `trademark'.
(2) The item relating to section
1338 in the table of sections for chapter 85 of title 28, United
States Code, is amended by striking
`trade-marks' and inserting `trademarks'.
SEC. 3010. EFFECTIVE DATE.
Sections 3002(a), 3003, 3004, 3005, and 3008 of this
title shall apply to all domain names registered
before, on, or after the date of the enactment of
this Act, except that damages under subsection (a)
or (d) of section 35 of the Trademark Act of 1946
(15 U.S.C. 1117), as amended by section 3003 of
this title, shall not be available with respect
to the registration, trafficking, or use of a domain name
that occurs before the date of the enactment of
this Act.
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