108TH CONGRESS

2D SESSION H. R. 3632

AN ACT

To prevent and punish counterfeiting of copypurposes. righted copies and phonorecords, and for other

108TH CONGRESS

2D SESSION H. R. 3632

AN ACT

To prevent and punish counterfeiting of copyrighted copies

and phonorecords, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,
2

•HR 3632 EH

1 SECTION 1. SHORT TITLE.

2 This Act may be cited as the ‘‘Intellectual Property

3 Protection and Courts Amendments Act of 2004’’.

4 TITLE I—ANTI-COUNTERFEITING

5 PROVISIONS

6 SEC. 101. SHORT TITLE.

7 This title may be cited as the ‘‘Anti-counterfeiting

8 Amendments Act of 2004’’.

9 SEC. 102. PROHIBITION AGAINST TRAFFICKING IN COUN10 TERFEIT COMPONENTS.

11 (a) IN GENERAL.—Section 2318 of title 18, United

12 States Code, is amended—

13 (1) by striking the section heading and insert14 ing the following:

15 ‘‘§ 2318. Trafficking in counterfeit labels, illicit labels,

16 or counterfeit documentation or pack17 aging’’;

18 (2) by striking subsection (a) and inserting the

19 following:

20 ‘‘(a) Whoever, in any of the circumstances described

21 in subsection (c), knowingly traffics in—

22 ‘‘(1) a counterfeit label or illicit label affixed to,

23 enclosing, or accompanying, or designed to be af24 fixed to, enclose, or accompany—

25 ‘‘(A) a phonorecord;

26 ‘‘(B) a copy of a computer program;
3

•HR 3632 EH

1 ‘‘(C) a copy of a motion picture or other

2 audiovisual work;

3 ‘‘(D) a copy of a literary work;

4 ‘‘(E) a copy of a pictorial, graphic, or

5 sculptural work;

6 ‘‘(F) a work of visual art; or

7 ‘‘(G) documentation or packaging; or

8 ‘‘(2) counterfeit documentation or packaging,

9 shall be fined under this title or imprisoned for not more

10 than 5 years, or both.’’;

11 (3) in subsection (b)—

12 (A) in paragraph (2), by striking ‘‘and’’

13 after the semicolon;

14 (B) in paragraph (3)—

15 (i) by striking ‘‘and ‘audiovisual work’

16 have’’ and inserting the following: ‘‘ ‘audio17 visual work’, ‘literary work’, ‘pictorial,

18 graphic, or sculptural work’, ‘sound record19 ing’, ‘work of visual art’, and ‘copyright

20 owner’ have’’; and

21 (ii) by striking the period at the end

22 and inserting a semicolon; and

23 (C) by adding at the end the following:
4

•HR 3632 EH

1 ‘‘(4) the term ‘illicit label’ means a genuine cer2 tificate, licensing document, registration card, or

3 similar labeling component—

4 ‘‘(A) that is used by the copyright owner

5 to verify that a phonorecord, a copy of a com6 puter program, a copy of a motion picture or

7 other audiovisual work, a copy of a literary

8 work, a copy of a pictorial, graphic, or sculp9 tural work, a work of visual art, or documenta10 tion or packaging is not counterfeit or infring11 ing of any copyright; and

12 ‘‘(B) that is, without the authorization of

13 the copyright owner—

14 ‘‘(i) distributed or intended for dis15 tribution not in connection with the copy,

16 phonorecord, or work of visual art to which

17 such labeling component was intended to

18 be affixed by the respective copyright

19 owner; or

20 ‘‘(ii) in connection with a genuine cer21 tificate or licensing document, knowingly

22 falsified in order to designate a higher

23 number of licensed users or copies than

24 authorized by the copyright owner, unless

25 that certificate or document is used by the
5

•HR 3632 EH

1 copyright owner solely for the purpose of

2 monitoring or tracking the copyright own3 er’s distribution channel and not for the

4 purpose of verifying that a copy or phono5 record is noninfringing;

6 ‘‘(5) the term ‘documentation or packaging’

7 means documentation or packaging, in physical

8 form, for a phonorecord, copy of a computer pro9 gram, copy of a motion picture or other audiovisual

10 work, copy of a literary work, copy of a pictorial,

11 graphic, or sculptural work, or work of visual art;

12 and

13 ‘‘(6) the term ‘counterfeit documentation or

14 packaging’ means documentation or packaging that

15 appears to be genuine, but is not.’’;

16 (4) in subsection (c)—

17 (A) by striking paragraph (3) and insert18 ing the following:

19 ‘‘(3) the counterfeit label or illicit label is af20 fixed to, encloses, or accompanies, or is designed to

21 be affixed to, enclose, or accompany—

22 ‘‘(A) a phonorecord of a copyrighted sound

23 recording or copyrighted musical work;

24 ‘‘(B) a copy of a copyrighted computer

25 program;
6

•HR 3632 EH

1 ‘‘(C) a copy of a copyrighted motion pic2 ture or other audiovisual work;

3 ‘‘(D) a copy of a literary work;

4 ‘‘(E) a copy of a pictorial, graphic, or

5 sculptural work;

6 ‘‘(F) a work of visual art; or

7 ‘‘(G) copyrighted documentation or pack8 aging; or’’; and

9 (B) in paragraph (4), by striking ‘‘for a

10 computer program’’; and

11 (5) in subsection (d)—

12 (A) by inserting ‘‘or illicit labels’’ after

13 ‘‘counterfeit labels’’ each place it appears; and

14 (B) by inserting before the period at the

15 end the following: ‘‘, and of any equipment, de16 vice, or material used to manufacture, repro17 duce, or assemble the counterfeit labels or illicit

18 labels’’.

19 (b) CIVIL REMEDIES.—Section 2318 of title 18,

20 United States Code, is further amended by adding at the

21 end the following:

22 ‘‘(f) CIVIL REMEDIES.—

23 ‘‘(1) IN GENERAL.—Any copyright owner who

24 is injured, or is threatened with injury, by a viola-
7

•HR 3632 EH

1 tion of subsection (a) may bring a civil action in an

2 appropriate United States district court.

3 ‘‘(2) DISCRETION OF COURT.—In any action

4 brought under paragraph (1), the court—

5 ‘‘(A) may grant 1 or more temporary or

6 permanent injunctions on such terms as the

7 court determines to be reasonable to prevent or

8 restrain a violation of subsection (a);

9 ‘‘(B) at any time while the action is pend10 ing, may order the impounding, on such terms

11 as the court determines to be reasonable, of any

12 article that is in the custody or control of the

13 alleged violator and that the court has reason14 able cause to believe was involved in a violation

15 of subsection (a); and

16 ‘‘(C) may award to the injured party—

17 ‘‘(i) reasonable attorney fees and

18 costs; and

19 ‘‘(ii)(I) actual damages and any addi20 tional profits of the violator, as provided in

21 paragraph (3); or

22 ‘‘(II) statutory damages, as provided

23 in paragraph (4).

24 ‘‘(3) ACTUAL DAMAGES AND PROFITS.—
8

•HR 3632 EH

1 ‘‘(A) IN GENERAL.—The injured party is

2 entitled to recover—

3 ‘‘(i) the actual damages suffered by

4 the injured party as a result of a violation

5 of subsection (a), as provided in subpara6 graph (B) of this paragraph; and

7 ‘‘(ii) any profits of the violator that

8 are attributable to a violation of subsection

9 (a) and are not taken into account in com10 puting the actual damages.

11 ‘‘(B) CALCULATION OF DAMAGES.—The

12 court shall calculate actual damages by

13 multiplying—

14 ‘‘(i) the value of the phonorecords,

15 copies, or works of visual art which are, or

16 are intended to be, affixed with, enclosed

17 in, or accompanied by any counterfeit la18 bels, illicit labels, or counterfeit docu19 mentation or packaging, by

20 ‘‘(ii) the number of phonorecords, cop21 ies, or works of visual art which are, or are

22 intended to be, affixed with, enclosed in, or

23 accompanied by any counterfeit labels, il24 licit labels, or counterfeit documentation or

25 packaging.
9

•HR 3632 EH

1 ‘‘(C) DEFINITION.—For purposes of this

2 paragraph, the ‘value’ of a phonorecord, copy,

3 or work of visual art is—

4 ‘‘(i) in the case of a copyrighted

5 sound recording or copyrighted musical

6 work, the retail value of an authorized pho7 norecord of that sound recording or musi8 cal work;

9 ‘‘(ii) in the case of a copyrighted com10 puter program, the retail value of an au11 thorized copy of that computer program;

12 ‘‘(iii) in the case of a copyrighted mo13 tion picture or other audiovisual work, the

14 retail value of an authorized copy of that

15 motion picture or audiovisual work;

16 ‘‘(iv) in the case of a copyrighted lit17 erary work, the retail value of an author18 ized copy of that literary work;

19 ‘‘(v) in the case of a pictorial, graphic,

20 or sculptural work, the retail value of an

21 authorized copy of that work; and

22 ‘‘(vi) in the case of a work of visual

23 art, the retail value of that work.

24 ‘‘(4) STATUTORY DAMAGES.—The injured party

25 may elect, at any time before final judgment is ren-
10

•HR 3632 EH

1 dered, to recover, instead of actual damages and

2 profits, an award of statutory damages for each vio3 lation of subsection (a) in a sum of not less than

4 $2,500 or more than $25,000, as the court considers

5 appropriate.

6 ‘‘(5) SUBSEQUENT VIOLATION.—The court may

7 increase an award of damages under this subsection

8 by 3 times the amount that would otherwise be

9 awarded, as the court considers appropriate, if the

10 court finds that a person has subsequently violated

11 subsection (a) within 3 years after a final judgment

12 was entered against that person for a violation of

13 that subsection.

14 ‘‘(6) LIMITATION ON ACTIONS.—A civil action

15 may not be commenced under section unless it is

16 commenced within 3 years after the date on which

17 the claimant discovers the violation of subsection

18 (a).’’.

19 (c) CONFORMING AMENDMENT.—The item relating

20 to section 2318 in the table of sections for chapter 113

21 of title 18, United States Code, is amended to read as

22 follows:

‘‘2318. Trafficking in counterfeit labels, illicit labels, or counterfeit documentation or packaging.’’.
11

•HR 3632 EH

1 SEC. 103. OTHER RIGHTS NOT AFFECTED.

2 (a) CHAPTERS 5 AND 12 OF TITLE 17; ELECTRONIC

3 TRANSMISSIONS.—The amendments made by this title—

4 (1) shall not enlarge, diminish, or otherwise af5 fect any liability or limitations on liability under sec6 tions 512, 1201 or 1202 of title 17, United States

7 Code; and

8 (2) shall not be construed to apply—

9 (A) in any case, to the electronic trans10 mission of a genuine certificate, licensing docu11 ment, registration card, similar labeling compo12 nent, or documentation or packaging described

13 in paragraph (4) or (5) of section 2318(b) of

14 title 18, United States Code, as amended by

15 this title; and

16 (B) in the case of a civil action under sec17 tion 2318(f) of title 18, United States Code, to

18 the electronic transmission of a counterfeit label

19 or counterfeit documentation or packaging de20 fined in paragraph (1) or (6) of section 2318(b)

21 of title 18, United States Code.

22 (b) FAIR USE.—The amendments made by this title

23 shall not affect the fair use, under section 107 of title 17,

24 United States Code, of a genuine certificate, licensing doc25 ument, registration card, similar labeling component, or

26 documentation or packaging described in paragraph (4)
12

•HR 3632 EH

1 or (5) of section 2318(b) of title 18, United States Code,

2 as amended by this title.

3 TITLE II—FRAUDULENT ONLINE

4 IDENTITY SANCTIONS

5 SEC. 201. SHORT TITLE.

6 This title may be cited as the ‘‘Fraudulent Online

7 Identity Sanctions Act’’.

8 SEC. 202. AMENDMENT TO TRADEMARK ACT OF 1946.

9 Section 35 of the Act entitled ‘‘An Act to provide for

10 the registration and protection of trademarks used in com11 merce, to carry out the provisions of certain international

12 conventions, and for other purposes’’, approved July 5,

13 1946 (commonly referred to as the ‘‘Trademark Act of

14 1946’’; 15 U.S.C. 1117), is amended by adding at the end

15 the following new subsection:

16 ‘‘(e) In the case of a violation referred to in this sec17 tion, it shall be a rebuttable presumption that the violation

18 is willful for purposes of determining relief if the violator,

19 or a person acting in concert with the violator, knowingly

20 provided or knowingly caused to be provided materially

21 false contact information to a domain name registrar, do22 main name registry, or other domain name registration

23 authority in registering, maintaining, or renewing a do24 main name used in connection with the violation. Nothing
13

•HR 3632 EH

1 in this subsection limits what may be considered a willful

2 violation under this section.’’.

3 SEC. 203. AMENDMENT TO TITLE 17, UNITED STATES CODE.

4 Section 504(c) of title 17, United States Code, is

5 amended by adding at the end the following new para6 graph:

7 ‘‘(3) (A) In a case of infringement, it shall be

8 a rebuttable presumption that the infringement was

9 committed willfully for purposes of determining re10 lief if the violator, or a person acting in concert with

11 the violator, knowingly provided or knowingly caused

12 to be provided materially false contact information

13 to a domain name registrar, domain name registry,

14 or other domain name registration authority in reg15 istering, maintaining, or renewing a domain name

16 used in connection with the infringement.

17 ‘‘(B) Nothing in this paragraph limits what

18 may be considered willful infringement under this

19 subsection.

20 ‘‘(C) For purposes of this paragraph, the term

21 ‘domain name’ has the meaning given that term in

22 section 45 of the Act entitled ‘An Act to provide for

23 the registration and protection of trademarks used

24 in commerce, to carry out the provisions of certain

25 international conventions, and for other purposes’
14

•HR 3632 EH

1 approved July 5, 1946 (commonly referred to as the

2 ‘Trademark Act of 1946’; 15 U.S.C. 1127).’’.

3 SEC. 204. AMENDMENT TO TITLE 18, UNITED STATES CODE.

4 (a) SENTENCING ENHANCEMENT.—Section 3559 of

5 title 18, United States Code, is amended by adding at the

6 end the following:

7 ‘‘(f)(1) If a defendant who is convicted of a felony

8 offense (other than offense of which an element is the false

9 registration of a domain name) knowingly falsely reg10 istered a domain name and knowingly used that domain

11 name in the course of that offense, the maximum impris12 onment otherwise provided by law for that offense shall

13 be doubled or increased by 7 years, whichever is less.

14 ‘‘(2) As used in this section—

15 ‘‘(A) the term ‘falsely registers’ means registers

16 in a manner that prevents the effective identification

17 of or contact with the person who registers; and

18 ‘‘(B) the term ‘domain name’ has the meaning

19 given that term is section 45 of the Act entitled ‘An

20 Act to provide for the registration and protection of

21 trademarks used in commerce, to carry out the pro22 visions of certain international conventions, and for

23 other purposes’ approved July 5, 1946 (commonly

24 referred to as the ‘Trademark Act of 1946’) (15

25 U.S.C. 1127).’’.
15

•HR 3632 EH

1 (b) UNITED STATES SENTENCING COMMISSION.—

2 (1) DIRECTIVE.—Pursuant to its authority

3 under section 994(p) of title 28, United States Code,

4 and in accordance with this section, the United

5 States Sentencing Commission shall review and

6 amend the sentencing guidelines and policy state7 ments to ensure that the applicable guideline range

8 for a defendant convicted of any felony offense car9 ried out online that may be facilitated through the

10 use of a domain name registered with materially

11 false contact information is sufficiently stringent to

12 deter commission of such acts.

13 (2) REQUIREMENTS.—In carrying out this sub14 section, the Sentencing Commission shall provide

15 sentencing enhancements for anyone convicted of

16 any felony offense furthered through knowingly pro17 viding or knowingly causing to be provided materi18 ally false contact information to a domain name reg19 istrar, domain name registry, or other domain name

20 registration authority in registering, maintaining, or

21 renewing a domain name used in connection with the

22 violation.

23 (3) DEFINITION.—For purposes of this sub24 section, the term ‘‘domain name’’ has the meaning

25 given that term in section 45 of the Act entitled ‘‘An
16

•HR 3632 EH

1 Act to provide for the registration and protection of

2 trademarks used in commerce, to carry out the pro3 visions of certain international conventions, and for

4 other purposes’’, approved July 5, 1946 (commonly

5 referred to as the ‘‘Trademark Act of 1946’’; 15

6 U.S.C. 1127).

7 SEC. 205. CONSTRUCTION.

8 (a) FREE SPEECH AND PRESS.—Nothing in this title

9 shall enlarge or diminish any rights of free speech or of

10 the press for activities related to the registration or use

11 of domain names.

12 (b) DISCRETION OF COURTS IN DETERMINING RE13 LIEF.—Nothing in this title shall restrict the discretion

14 of a court in determining damages or other relief to be

15 assessed against a person found liable for the infringement

16 of intellectual property rights.

17 (c) DISCRETION OF COURTS IN DETERMINING

18 TERMS OF IMPRISONMENT.—Nothing in this title shall be

19 construed to limit the discretion of a court to determine

20 the appropriate term of imprisonment for an offense under

21 applicable law.
17

•HR 3632 EH

1 TITLE III—COURTS

2 SEC. 301. ADDITIONAL PLACE OF HOLDING COURT IN THE

3 DISTRICT OF COLORADO.

4 Section 85 of title 28, United States Code, is amend5 ed by inserting ‘‘Colorado Springs,’’ after ‘‘Boulder,’’.

6 SEC. 302. PLACE OF HOLDING COURT IN THE NORTHERN

7 DISTRICT OF NEW YORK.

8 Section 112(a) of title 28, United States Code, is

9 amended by inserting ‘‘Plattsburgh,’’ after ‘‘Malone,’’.

Passed the House of Representatives September 21,

2004.

Attest:

Clerk.