The PROTECT IP 2011 bill is out in draft form, which is this year version of last year’s Leahy Bill entitled Combating Online Infringement and Counterfeits Act (COICA)

This proposed bill is different than the COICA in that it no longer includes the ability to go to domain registries and registrars and require them to remove domains or hand them over to the government but replaces it with a private cause of action remedy against website holders who violate copyright laws (of course the government can still seize domains through ICE).

In the even website owners are outside of US jurisdiction the Bill would allow injuries parties to bring in rem actions against property located inside the US including Domain names.

While domain registries and registrars seem to largely be off the hook, other third parties are now on the clock, including search engines, ISP and payment processors.

For sites “dedicated to infringing activities” Search Engines are require to de-list them and not let them buy sponsored listings, ISP are required to block them and payment processors are required to  stop processing payments for them.

 

There are plenty of safe harbors in place for Search Engines, ISP’s, payment processors and domain registries and registrars that take action again sites, even if they do so in error.

According to the Bill:

The term “Internet site dedicated to infringing activities” means an Internet site accessed through a specific domain name that has no [substantial/significant] use other than, or is designed, operated, or marketed by its operator persons operating in concert with the operator, [and is in fact,] primarily as a means for —

1. enabling or facilitating the reproduction, distribution, or performance of copyright works, in complete or substantially complete form, in a manner that constitutes copyright infringement under section 501 of title 17, or offering goods or services in violation of section 1201 of title 17; or
2. enabling or facilitating sale, distribution, or promotion of goods, services or materials bearing a counterfeit market, as that term is defined in section 34(d) of the Lanham Act;

[provided that there is no objectively reasonable interpretation of an express license between the owner or operator of such Internet site and the copyright owner or trademark owner or an agent thereof that authorizes the activities;] Here is the draft bill in its entirety:

 

SECTION 1. SHORT TITLE.

This Act may be cited as the ‘Preventing Real Online Threats to Economic Creativity and

Theft of Intellectual  Property Act of 2011’ or the ‘PROTECT IP Act of 2011’. Sec. 2. Definitions.

For purposes of this Act-

 

U the term “domain  name” has the same meaning as in section 45 of the Lanham Act

(15 u.s.c. 1127);

 

Uthe term “domain name system server” means a server used to provide the Internet protocol address associated with a domain name;

 

U the term “financial  transaction provider” has the same meaning as in section 5362(4)

oftitle 31, United States Code;

 

[U the term “interactive computer service” has the same meaning as in section 230(f) of the Communications Act of 1934;]

 

U the term “Internet  advertising service” means a service that sells, purchases, brokers, serves, inserts or otherwise facilitates the placement of an advertisement that is rendered in viewable form for any period oftime on an Internet site.

 

Uthe term “Internet site” means the collection of digital assets accessible through the

Internet that are addressed  relative to a common domain name.

 

Uthe term “Internet  site dedicated to infringing activities” means an Internet site accessed through a specific domain name that has no [substantial/significant] use other than, or is designed, operated, or marketed by its operator or persons operating in concert with the operator, [and is in fact used,] primarily as a means for –

 

(1) enabling or facilitating the reproduction,  distribution, or performance of copyright works, in complete or substantially complete form, in a manner that constitutes copyright infringement  under section 501 oftitle 17, or offering goods or services in violation of section 1201 oftitle 17; or

 

(2) enabling or facilitating the sale, distribution, or promotion of goods, services, or materials bearing a counterfeit  mark, as that term is defined in section 34(d) of the Lanham Act;

 

[provided that there is no objectively reasonable interpretation of an express license between the owner or operator of such Internet site and the copyright owner or trademark owner or an agent thereofthat authorizes the activities;]

 

Uthe term “Lanham Act” means 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 referred to as the “Trademark  Act of 1946” or the “Lanham  Act”);

 

Uthe term “qualifying plaintiff’ means- (1) the Attorney General, or

(2) a holder of an intellectual property right harmed by the activities of an Internet site dedicated to infringing activities occurring on that Internet site.

 

Uthe term “nondomestic domain name” means a domain name for which the domain name registry that issued the domain name and operates the relevant top level domain, and the domain name registrar for the domain name, are not located in the United States.

 

Uthe term “owner” or “operator” when used in connection with an Internet site shall include, respectively,  any owner of a majority interest in, or any person with authority to operate, such Internet site.

 

Uthe term “sponsored link” means a hypertext link to a domain name. returned by a search engine or similar service that pays the search engine or similar service for its placement.

 

 

 

Section 3.  Enhancing Enforcement Against Rogue Websites Operated and Registered Overseas

 

(a) In General.-The Attorney General may commence- (1) an in personam action against-

(A) a registrant of the domain name of a nondomestic domain name used by an Internet site dedicated to infringing activities; or

 

(B) an owner or operator of an Internet site dedicated to infringing activities accessed through a nondomestic domain name;

 

or, if through due diligence the Attorney General was not able to find a person described in subparagraphs  (A) or (B), or no such person found has an address within a judicial district of the United States,

 

(2) an in rem action against a nondomestic domain name used by an Internet site dedicated to infringing activities.

 

(b) On application  of the Attorney General following the commencement of an action pursuant to subsection (a), the court may issue a temporary restraining order, a preliminary injunction, or an injunction, in accordance with rule 65 of the Federal Rules of Civil Procedure, against the nondomestic domain name used by an Internet site dedicated to infringing activities, or against a registrant of such domain name, or the owner or operator of such Internet site dedicated·to infringing activities, to cease and desist from undertaking any further activity as an Internet site dedicated to infringing activities, as defined in this Act, if-

 

 

 

and
(1) the domain name is used within the United States to access such Internet site;

 

(2) the Internet site-

 

(A) conducts business directed to residents of the United States; and

 

(B) harms holders of United States intellectual property rights.

 

(3) Determination by the court.-F. or purposes of determining whether an Internet site conducts business directed to residents of the United States under paragraph (2), a court shall consider, among other indicia, whether-

 

(A) the Internet site is providing goods or services described in section

2(f) to users located in the United States;

 

(B) there is evidence that the Internet site is not intended to provide-

 

 

 

 

States; and

 

United States;
(I) such goods and services to users located in the United States; (II) access to such goods and services to users located in the United

(III) delivery of such goods and services to users located in the

(D) the Internet site offers services obtained in the United States; and

(E) any prices for goods and services are indicated in the currency of the  United States.

(c) Notice and Service of Process.-Upon commencing an action under this section, the Attorney General shall send a notice of the alleged violation and intent to proceed under this Act to the registrant of the domain name of the Internet site- 

(1) at the postal and e-mail address appearing in the applicable publicly accessible database of registrations, if any and to the extent such addresses are reasonably available;

 

(2) via the postal and e-mail address of the registrar, registry, or other domain name registration authority that registered or assigned the domain name, to the extent such addresses are reasonably available; and

 

(3) in any other such form as the court finds necessary, including as may be required by Rule 4(£) of the Federal Rules of Civil Procedure.

 

(4) For purposes of this section, the actions described in this subsection shall constitute service of process.

 

(d) Required Actions Based on Court Orders.

 

(1) A Federal law enforcement officer may serve a copy of any court order issued pursuant to this section on entities described in paragraph (2).  Proof of service shall be filed with the court.

(2) After being served with a copy of an order pursuant to this subsection- (A) An operator of a nonauthoritative  domain name system server shall take technically feasible and reasonable steps designed to prevent the domain name described in the order from resolving to that domain name’s  Internet protocol address, except that-

(I) such entity shall not be required-

 

(bb) to take any steps with respect to domain name lookups not performed by its own domain name server or domain name system servers located outside the United States; or

 

(cc) to continue to prevent access to a domain name to which access has been effectively disable by other means; and

 

(II) nothing in this subparagraph shall affect the limitation on an entity’s  liability under section 512 of title 17, United States Code.

 

(B) A financial transaction provider shall take technically feasible and reasonable measures, as expeditiously as reasonable, designed to prevent or prohibit its service from completing payment transactions involving customers located with the United States and the Internet site associated with the domain name set forth in the order;

 

(C) An Internet advertising service that contracts with the Internet site associated with the domain name set forth in the order to provide advertising to that site, or which serves advertising to such site, shall take technically feasible and reasonable measures, as expeditiously as reasonable, designed to prevent its service from providing advertisements to the Internet site associated with such domain name; and

 

(D) An interactive computer service shall take technically feasible and reasonable measures, as expeditiously as possible, to remove or disable access to the Internet site associated with the domain name set forth in the order, or a hypertext link to such Internet site.

 

(3) COMMUNICATION WITH USERS- An entity taking an action described in this subsection shall determine how to communicate such action to the entity’s users or customers.

 

(4) RULE OF CONSTRUCTION- For purposes of an action filed under this section, the obligations of an entity described in this subsection shall be limited to the actions set out in each paragraph or subparagraph applicable to such entity, and no order issued pursuant to this section shall impose any additional obligations on, or require additional  actions by, such entity.

 

(5) ACTIONS PURSUANT TO COURT ORDER- 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 subsection, or against any director, officer, employee, or agent thereof, for any act reasonably designed to comply with this subsection or reasonably arising from such order, other than in an action pursuant to subsection (e). Any entity receiving an order under this subsection, and any director, officer, employee, or agent thereof, shall not be liable to any party for any acts reasonably designed to comply with this subsection or reasonably arising from such order, other than in an action pursuant to subsection (e), and any actions taken by customers of such entity to circumvent any restriction on access to the Internet domain instituted pursuant to this subsection or any act, failure, or inability to restrict access to an Internet domain that is the subject of a court order issued pursuant to this subsection despite good faith efforts to do so by such entity shall not be used by any person in any claim or cause of action against such entity, other than in an action pursuant to subsection (e).

 

(e) ENFORCEMENT OF ORDERS.-

 

(1) 1N GENERAL.-In order to compel compliance with this section, the Attorney General may bring an action for injunctive relief against any party receiving a court order issued pursuant to this section that knowingly and willfully fails to comply with such order.

(2) RULE OF CONSTRUCTION.-The authority granted the Attorney General under paragraph (1) shall be the sole legal remedy for enforcing the obligations under this section of any entity described in subsection (d).

 

(3) DEFENSE.-A defendant in an action under paragraph (1) may establish an affirmative defense by showing that the defendant does not have the technical means to comply with the subsection without incurring an unreasonable economic burden, or that the order is inconsistent with the Act.  This showing shall serve as a defense only to the extent of such inability to comply or inconsistency.

 

(f) MODIFICATION OR VACATION OF ORDERS.-

 

(I )At any time after the issuance of an order under subsection (b), a motion to modify, suspend, or vacate the order may be filed by-

(A) any person, or owner or operator of property, bound by the order; (B) any registrant of the domain name, or the owner or operator of the Internet site subject to the order;

 

(C) any domain name registrar or registry that has registered or assigned the domain name of the Internet site subject to the order; or

(D) any entity that has received a copy of an order pursuant to subsection

(d) requiring it to take action prescribed in that subsection.

 

(2) Relief under this subsection shall be proper if the court finds that-

 

(A) the Internet site associated with the domain name subject to the order is no longer, or never was, dedicated to infringing activities as defined in this Act; or

 

(3) In making a determination  under paragraph (2), a court may consider whether the domain name has expired or has been re-registered by a different party.

 

(g) RELATED ACTIONS.-

 

(1) The Attorney General, if alleging that an Internet site previously adjudicated to be an Internet site dedicated to infringing activities is accessible or has been reconstituted at a different domain name, may commence a related action under this section against the additional domain name in the same judicial district as the previous action.

(1) an in personam  action against-

 

(A) a registrant of the domain name of a domain name used by an Internet site dedicated to infringing activities; or

 

(B) an owner or operator of an Internet site dedicated to infringing activities accessed through a domain name; or, if hrough due diligence the qualifying plaintiff was not able to find a person described in subparagraphs (A) or (B), or no such person found has an address within a judicial district of the United States,

 

(2) an in rem action against a domain name used by an Internet site dedicated to infringing activities.

 

(b) On application  of the qualifying plaintiff following the commencement of an action pursuant to subsection (a), the court may issue a temporary restraining order, a preliminary injunction, or an injunction, in accordance with rule 65 of the Federal Rules of Civil Procedure, against the domain name used by an Internet site dedicated to infringing activities, or against a registrant of such domain name, or the owner or operator of such Internet site dedicated to infringing activities, to cease and desist from undertaking any further activity as an Internet site dedicated to infringing activities, as defined in this Act, if

 

(1)  the domain name is registered or assigned by a domain name registrar or domain name registry that located or doing business in the United States, or-

 

(A) the domain name is used within the United States to access such Internet site; and

 

 

(B) the Internet site-

(I) conducts business directed to residents of the United States; and

 

(II) harms holders of United States intellectual  property rights.

(3) Determination by the court.-For purposes of determining  whether an Internet site conducts business directed to residents of the United States under paragraph (2), a court shall consider, among other indicia, whether- 

(A) the Internet site is providing goods or services described in section

2(f) to users located in the United States;

(B) there is evidence that the Internet site is not intended to provide ; and

 

United States;
(I) such goods and services to users located in the United States;

(II) access to such goods and services to users located in the United

 

(III) delivery of such goods and services to users located in the

 

(C) the Internet site has reasonable measures to prevent such goods and services from being accessed from or delivered to the United States;

 

(D) the Internet site offers services obtained in the United States;

(E) any prices for goods and services are indicated in the currency of the United States

(c) Notice and Service of Process.-Upon commencing  an action under this section, the qualifying plaintiff shall send a notice of the alleged violation and intent to proceed under this Act to the registrant of the domain name of the Internet site- 

(1) at the postal and e-mail address appearing in the applicable publicly accessible database of registrations, if any and to the extent such addresses are reasonably available;

 

(2) via the postal and e-mail address ofthe registrar, registry, or other domain name registration authority that registered or assigned the domain name, to the extent such addresses are reasonably available; and

 

(3) in any other such form as the court finds necessary, including as may be required by Rule 4(f) of the Federal Rules of Civil Procedure.

 

(4) For purposes of this section, the actions described in this subsection shall constitute service of process.

 

(d) Required Actions Based on Court Orders.

 

(1) A Federal law enforcement officer may based on an action filed by the Attorney General, and with the prior approval of the court a qualifying plaintiff based on an action filed by that party may, serve a copy of any court order issued pursuant to this section on entities described in paragraph (2).  Proof of service shall be filed with the court.

(2) After being served with a copy of an order pursuant to this subsection- (A) A financial transaction provider shall take technically feasible and reasonable measures, as expeditiously as reasonable, designed to prevent or prohibit its service from completing payment transactions involving customers located with the United States and the Internet site associated with the domain name set forth in the order;

 

(B) An Internet advertising service that contracts with the Internet site associated with the domain name set forth in the order to provide advertising to that site, or which serves advertising to such site, shall take technically feasible and reasonable measures, as expeditiously as reasonable, designed to prevent its service from providing advertisements to the Internet site associated with such domain name; and

 

(C) A server of sponsored links shall take technically feasible and reasonable measures, as expeditiously  as reasonable, to cease making available sponsored links that provide access to the domain name.

 

(3) COMMUNICATION WITH USERS- An entity taking an action described in this subsection shall determine how to communicate such action to the entity’s users or customers.

 

(4) RULE OF CONSTRUCTION- For purposes of an action filed under this section, the obligations of an entity described in this subsection shall be limited to the actions set out in each paragraph or subparagraph applicable to such entity, and no order issued pursuant to this section shall impose any additional obligations on, or require additional actions by, such entity.

 

(5) ACTIONS PURSUANT TO COURT ORDER- 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 subsection, or against any director, officer, employee, or agent thereof, for any act reasonably designed to comply with this subsection or reasonably arising from such order, other than in an action pursuant to subsection (e). Any entity receiving an order under this subsection, and any director, officer, employee, or agent thereof, shall not be liable to any PartY for any acts reasonably designed to comply with this subsection or reasonably arising from such order, other than in an action pursuant to subsection (e), and any actions taken by customers of such entity to circumvent  any restriction on access to the Internet domain instituted pursuant to this subsection or any act, failure, or inability to restrict access to an Internet domain that is the subject of a court order issued pursuant to this subsection despite good faith efforts to do so by such entity shall not be used by any person in any claim or cause of action against such entity, other than in an action pursuant to subsection (e).

 

(e) ENFORCEMENT OF ORDERS.-

 

(1) IN GENERAL.-In order to compel compliance with this section, the qualifYing plaintiff may bring an action for injunctive relief against any party receiving a court order issued pursuant to this section that knowingly and willfully fails to comply with such order.

(2) RULE OF CONSTRUCTION.-The authority granted the Attorney General under paragraph (1) shall be the sole legal remedy for enforcing the obligations under this section of any entity described in subsection (d). 

(3) DEFENSE.-A defendant in an action under paragraph (1) may establish an affirmative defense by showing that the defendant does not have the technical means to comply with the subsection without incurring an unreasonable economic burden, or that the order is inconsistent with the Act.  This showing shall serve as a defense only to the extent of such inability to comply or inconsistency.

 

(f) MODIFICATION OR VACATION OF ORDERS.-

 

(1) At any time after the issuance of an order under subsection (b), a motion to modifY, suspend, or vacate the order may be filed by-

(A) any person, or owner or operator of property, bound by the order; (B) any registrant of the domain name, or the owner or operator of the

Internet site subject to the order;

 

(C) any domain name registrar or registry that has registered or assigned the domain name of the Internet site subject to the order; or

 

(D) any entity that has received a copy of an order pursuant to subsection

(d) requiring it to take action prescribed in that subsection.

 

(2) Relief under this subsection shall be proper if the court finds that-

 

(A) the Internet site associated with the domain name subject to the order is no longer, or never was, dedicated to infringing activities as defined in this Act; or

 

(3) In making a determination  under paragraph (2), a court may consider whether the domain name has expired or has been re-registered by a different party. 

(g) RELATED ACTIONS.-

 

(1) A qualifying plaintiff, if alleging that an Internet site previously adjudicated to be an Internet site dedicated to infringing activities is accessible or has been reconstituted at a different domain name, may commence a related action under this section against the additional domain name in the same judicial district as the previous action.

Section 5.  Voluntary action for Taking Action Against Websites Stealing American IntellectualProperty. 

 

(a) In GeneraL-No financial transaction provider or Internet advertising  service shall be liable for damages to any person for voluntarily taking any action described in section 3(d) or

4(d) of this Act with regard to an Internet site if the entity acting in good faith and on credible evidence has a reasonable  belief that the Internet site is dedicated to infringing activities as defined in section 2 of this Act.

(b) Internet sites engaged in infringing activities that endanger the public health. (I) A domain name registry, domain name registrar, financial transaction provider, search engine, or Internet advertising service, acting in good faith based on credible evidence, may stop providing or refuse to provide services to an infringing Internet site that endangers the public health.

 

(2) An entity described in paragraph (1) , including its directors, officers, employees or agents, that ceases or refused to provide services to an infringing Internet site that endangers the public health under paragraph (I) shall not be liable to any party for such action under any state or federal law for such action.

 

(3) For purposes of this subsection

(A) an “infringing Internet site that endangers the public health” means- (I) an Internet site that meets the definition of section 2U of this  Act and for which the counterfeit  products that it offers, sells, dispenses, or distributes are bcontrolled or non-controlled  prescription medication, or

(II) is an Internet site that has no substantial  use other than, or is designed, operated, or marketed by its operator or persons operating’in concert with the operator, and is in fact used, primarily as a means for-

(aa) offering, selling, dispensing, or distributing any controlled or non-controlled  prescription  medication, and does so regularly without a valid prescription; or

(bb) offering selling, dispensing, or distributed any controlled or non-controlled  prescription  medication, and does so regularly for medication that is adulterated or misbranded;

(B) the term “valid prescription” has the same meaning as in section 829(e)(2)(A) of title 21;