H. R. 3632

One Hundred Eighth Congress

of the

United States of America

AT THE SECOND SESSION

Begun and held at the City of Washington on Tuesday,

the twentieth day of January, two thousand and four

An Act

To prevent and punish counterfeiting of copyrighted copies and phonorecords, and

for other purposes.

Be it enacted by the Senate and House of Representatives of

the United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

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

and Courts Amendments Act of 2004’’.

TITLE I—ANTI-COUNTERFEITING

PROVISIONS

SEC. 101. SHORT TITLE.

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

Act of 2004’’.

SEC. 102. PROHIBITION AGAINST TRAFFICKING IN COUNTERFEIT

COMPONENTS.

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

is amended—

(1) by striking the section heading and inserting the following:

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

counterfeit documentation or packaging’’;

(2) by striking subsection (a) and inserting the following:

‘‘(a) Whoever, in any of the circumstances described in subsection (c), knowingly traffics in—

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

or accompanying, or designed to be affixed to, enclose, or

accompany—

‘‘(A) a phonorecord;

‘‘(B) a copy of a computer program;

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

work;

‘‘(D) a copy of a literary work;

‘‘(E) a copy of a pictorial, graphic, or sculptural work;

‘‘(F) a work of visual art; or

‘‘(G) documentation or packaging; or

‘‘(2) counterfeit documentation or packaging,

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

5 years, or both.’’;

(3) in subsection (b)—
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(A) in paragraph (2), by striking ‘‘and’’ after the semicolon;

(B) in paragraph (3)—

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

inserting the following: ‘‘ ‘audiovisual work’, ‘literary

work’, ‘pictorial, graphic, or sculptural work’, ‘sound

recording’, ‘work of visual art’, and ‘copyright owner’

have’’; and

(ii) by striking the period at the end and inserting

a semicolon; and

(C) by adding at the end the following:

‘‘(4) the term ‘illicit label’ means a genuine certificate,

licensing document, registration card, or similar labeling

component—

‘‘(A) that is used by the copyright owner to verify

that a phonorecord, a copy of a computer program, a copy

of a motion picture or other audiovisual work, a copy of

a literary work, a copy of a pictorial, graphic, or sculptural

work, a work of visual art, or documentation or packaging

is not counterfeit or infringing of any copyright; and

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

owner—

‘‘(i) distributed or intended for distribution not in

connection with the copy, phonorecord, or work of

visual art to which such labeling component was

intended to be affixed by the respective copyright

owner; or

‘‘(ii) in connection with a genuine certificate or

licensing document, knowingly falsified in order to designate a higher number of licensed users or copies

than authorized by the copyright owner, unless that

certificate or document is used by the copyright owner

solely for the purpose of monitoring or tracking the

copyright owner’s distribution channel and not for the

purpose of verifying that a copy or phonorecord is

noninfringing;

‘‘(5) the term ‘documentation or packaging’ means documentation or packaging, in physical form, for a phonorecord,

copy of a computer program, copy of a motion picture or other

audiovisual work, copy of a literary work, copy of a pictorial,

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

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

means documentation or packaging that appears to be genuine,

but is not.’’;

(4) in subsection (c)—

(A) by striking paragraph (3) and inserting the following:

‘‘(3) the counterfeit label or illicit label is affixed to,

encloses, or accompanies, or is designed to be affixed to, enclose,

or accompany—

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

or copyrighted musical work;

‘‘(B) a copy of a copyrighted computer program;

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

audiovisual work;

‘‘(D) a copy of a literary work;

‘‘(E) a copy of a pictorial, graphic, or sculptural work;
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‘‘(F) a work of visual art; or

‘‘(G) copyrighted documentation or packaging; or’’; and

(B) in paragraph (4), by striking ‘‘for a computer program’’; and

(5) in subsection (d)—

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

labels’’ each place it appears; and

(B) by inserting before the period at the end the following: ‘‘, and of any equipment, device, or material used

to manufacture, reproduce, or assemble the counterfeit

labels or illicit labels’’.

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

Code, is further amended by adding at the end the following:

‘‘(f) CIVIL REMEDIES.—

‘‘(1) IN GENERAL.—Any copyright owner who is injured,

or is threatened with injury, by a violation of subsection (a)

may bring a civil action in an appropriate United States district

court.

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

paragraph (1), the court— ‘‘(A) may grant 1 or more temporary or permanent

injunctions on such terms as the court determines to be

reasonable to prevent or restrain a violation of subsection

(a);

‘‘(B) at any time while the action is pending, may

order the impounding, on such terms as the court determines to be reasonable, of any article that is in the custody

or control of the alleged violator and that the court has

reasonable cause to believe was involved in a violation

of subsection (a); and

‘‘(C) may award to the injured party—

‘‘(i) reasonable attorney fees and costs; and

‘‘(ii)(I) actual damages and any additional profits

of the violator, as provided in paragraph (3); or

‘‘(II) statutory damages, as provided in paragraph

(4).

‘‘(3) ACTUAL DAMAGES AND PROFITS.— ‘‘(A) IN GENERAL.—The injured party is entitled to

recover—

‘‘(i) the actual damages suffered by the injured

party as a result of a violation of subsection (a), as

provided in subparagraph (B) of this paragraph; and ‘‘(ii) any profits of the violator that are attributable

to a violation of subsection (a) and are not taken into

account in computing the actual damages.

‘‘(B) CALCULATION OF DAMAGES.—The court shall calculate actual damages by multiplying—

‘‘(i) the value of the phonorecords, copies, or works

of visual art which are, or are intended to be, affixed

with, enclosed in, or accompanied by any counterfeit

labels, illicit labels, or counterfeit documentation or

packaging, by

‘‘(ii) the number of phonorecords, copies, or works

of visual art which are, or are intended to be, affixed

with, enclosed in, or accompanied by any counterfeit

labels, illicit labels, or counterfeit documentation or

packaging.
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‘‘(C) DEFINITION.—For purposes of this paragraph, the

‘value’ of a phonorecord, copy, or work of visual art is—

‘‘(i) in the case of a copyrighted sound recording

or copyrighted musical work, the retail value of an

authorized phonorecord of that sound recording or

musical work;

‘‘(ii) in the case of a copyrighted computer program,

the retail value of an authorized copy of that computer

program;

‘‘(iii) in the case of a copyrighted motion picture

or other audiovisual work, the retail value of an authorized copy of that motion picture or audiovisual work;

‘‘(iv) in the case of a copyrighted literary work,

the retail value of an authorized copy of that literary

work;

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

work, the retail value of an authorized copy of that

work; and

‘‘(vi) in the case of a work of visual art, the retail

value of that work.

‘‘(4) STATUTORY DAMAGES.—The injured party may elect,

at any time before final judgment is rendered, to recover,

instead of actual damages and profits, an award of statutory

damages for each violation of subsection (a) in a sum of not

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

appropriate.

‘‘(5) SUBSEQUENT VIOLATION.—The court may increase an

award of damages under this subsection by 3 times the amount

that would otherwise be awarded, as the court considers appropriate, if the court finds that a person has subsequently violated

subsection (a) within 3 years after a final judgment was entered

against that person for a violation of that subsection.

‘‘(6) LIMITATION ON ACTIONS.—A civil action may not be

commenced under section unless it is commenced within 3

years after the date on which the claimant discovers the violation of subsection (a).’’.

(c) CONFORMING AMENDMENT.—The item relating to section

2318 in the table of sections for chapter 113 of title 18, United

States Code, is amended to read as follows:

‘‘2318. Trafficking in counterfeit labels, illicit labels, or counterfeit documentation

or packaging.’’.

SEC. 103. OTHER RIGHTS NOT AFFECTED.

(a) CHAPTERS 5 AND 12 OF TITLE 17; ELECTRONIC TRANSMISSIONS.—The amendments made by this title—

(1) shall not enlarge, diminish, or otherwise affect any

liability or limitations on liability under sections 512, 1201

or 1202 of title 17, United States Code; and

(2) shall not be construed to apply—

(A) in any case, to the electronic transmission of a

genuine certificate, licensing document, registration card,

similar labeling component, or documentation or packaging

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

title 18, United States Code, as amended by this title;

and
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(B) in the case of a civil action under section 2318(f)

of title 18, United States Code, to the electronic transmission of a counterfeit label or counterfeit documentation

or packaging defined in paragraph (1) or (6) of section

2318(b) of title 18, United States Code.

(b) FAIR USE.—The amendments made by this title shall not

affect the fair use, under section 107 of title 17, United States

Code, of a genuine certificate, licensing document, registration card,

similar labeling component, or documentation or packaging

described in paragraph (4) or (5) of section 2318(b) of title 18,

United States Code, as amended by this title.

TITLE II—FRAUDULENT ONLINE

IDENTITY SANCTIONS

SEC. 201. SHORT TITLE.

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

Sanctions Act’’.

SEC. 202. AMENDMENT TO TRADEMARK ACT OF 1946.

Section 35 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 referred to as the

‘‘Trademark Act of 1946’’; 15 U.S.C. 1117), is amended by adding

at the end the following new subsection:

‘‘(e) In the case of a violation referred to in this section, it

shall be a rebuttable presumption that the violation is willful for

purposes of determining relief if the violator, or a person acting

in concert with the violator, knowingly provided or knowingly

caused to be provided materially false contact information to a

domain name registrar, domain name registry, or other domain

name registration authority in registering, maintaining, or renewing

a domain name used in connection with the violation. Nothing

in this subsection limits what may be considered a willful violation

under this section.’’.

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

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

by adding at the end the following new paragraph: ‘‘(3) (A) In a case of infringement, it shall be a rebuttable

presumption that the infringement was committed willfully

for purposes of determining relief if the violator, or a person

acting in concert with the violator, knowingly provided or knowingly caused to be provided materially false contact information

to a domain name registrar, domain name registry, or other

domain name registration authority in registering, maintaining,

or renewing a domain name used in connection with the

infringement.

‘‘(B) Nothing in this paragraph limits what may be considered willful infringement under this subsection.

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

name’ has the meaning given that term in section 45 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’
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approved July 5, 1946 (commonly referred to as the ‘Trademark

Act of 1946’; 15 U.S.C. 1127).’’.

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

(a) SENTENCING ENHANCEMENT.—Section 3559 of title 18,

United States Code, is amended by adding at the end the following:

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

than offense of which an element is the false registration of a

domain name) knowingly falsely registered a domain name and

knowingly used that domain name in the course of that offense,

the maximum imprisonment otherwise provided by law for that

offense shall be doubled or increased by 7 years, whichever is

less.

‘‘(2) As used in this section—

‘‘(A) the term ‘falsely registers’ means registers in a manner

that prevents the effective identification of or contact with

the person who registers; and

‘‘(B) the term ‘domain name’ has the meaning given that

term is section 45 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

referred to as the ‘Trademark Act of 1946’) (15 U.S.C. 1127).’’.

(b) UNITED STATES SENTENCING COMMISSION.—

(1) DIRECTIVE.—Pursuant to its authority under section

994(p) of title 28, United States Code, and in accordance with

this section, the United States Sentencing Commission shall

review and amend the sentencing guidelines and policy statements to ensure that the applicable guideline range for a

defendant convicted of any felony offense carried out online

that may be facilitated through the use of a domain name

registered with materially false contact information is sufficiently stringent to deter commission of such acts.

(2) REQUIREMENTS.—In carrying out this subsection, the

Sentencing Commission shall provide sentencing enhancements

for anyone convicted of any felony offense furthered through

knowingly providing or knowingly causing to be provided materially false contact information to a domain name registrar,

domain name registry, or other domain name registration

authority in registering, maintaining, or renewing a domain

name used in connection with the violation.

(3) DEFINITION.—For purposes of this subsection, the term

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

45 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 referred

to as the ‘‘Trademark Act of 1946’’; 15 U.S.C. 1127).

SEC. 205. CONSTRUCTION.

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

or diminish any rights of free speech or of the press for activities

related to the registration or use of domain names.

(b) DISCRETION OF COURTS IN DETERMINING RELIEF.—Nothing

in this title shall restrict the discretion of a court in determining

damages or other relief to be assessed against a person found

liable for the infringement of intellectual property rights.
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(c) DISCRETION OF COURTS IN DETERMINING TERMS OF IMPRISONMENT.—Nothing in this title shall be construed to limit the

discretion of a court to determine the appropriate term of imprisonment for an offense under applicable law.

TITLE III—COURTS

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

OF COLORADO.

Section 85 of title 28, United States Code, is amended by

inserting ‘‘Colorado Springs,’’ after ‘‘Boulder,’’.

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

OF NEW YORK.

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

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

Speaker of the House of Representatives.

Vice President of the United States and

President of the Senate.