108TH CONGRESS
2D SESSION
H. R. 3632
AN ACT
To prevent and punish counterfeiting of copy-
righted copies and phonorecords, and for other
purposes.
108TH CONGRESS
2D SESSION
H. R. 3632
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 Representa-
tives 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 COUN-
TERFEIT COMPONENTS.
(a) IN GENERAL.—Section 2318 of title 18, United
States Code, is amended—
(1) by striking the section heading and insert-
ing the following:
‘‘§ 2318. Trafficking in counterfeit labels, illicit labels,
or counterfeit documentation or pack-
aging’’;
(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 af-
fixed 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)—
(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: ‘‘ ‘audio-
visual work’, ‘literary work’, ‘pictorial,
graphic, or sculptural work’, ‘sound record-
ing’, ‘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 cer-
tificate, 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 com-
puter program, a copy of a motion picture or
other audiovisual work, a copy of a literary
work, a copy of a pictorial, graphic, or sculp-
tural work, a work of visual art, or documenta-
tion or packaging is not counterfeit or infring-
ing of any copyright; and
‘‘(B) that is, without the authorization of
the copyright owner—
‘‘(i) distributed or intended for dis-
tribution 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 cer-
tificate 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 own-
er’s distribution channel and not for the
purpose of verifying that a copy or phono-
record is noninfringing;
‘‘(5) the term ‘documentation or packaging’
means documentation or packaging, in physical
form, for a phonorecord, copy of a computer pro-
gram, 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 insert-
ing the following:
‘‘(3) the counterfeit label or illicit label is af-
fixed 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 pic-
ture 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) copyrighted documentation or pack-
aging; 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, de-
vice, or material used to manufacture, repro-
duce, 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 viola-
tion 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 pend-
ing, 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 reason-
able 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 addi-
tional 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 subpara-
graph (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 com-
puting 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 la-
bels, illicit labels, or counterfeit docu-
mentation or packaging, by
‘‘(ii) the number of phonorecords, cop-
ies, or works of visual art which are, or are
intended to be, affixed with, enclosed in, or
accompanied by any counterfeit labels, il-
licit labels, or counterfeit documentation or
packaging.
‘‘(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 pho-
norecord of that sound recording or musi-
cal work;
‘‘(ii) in the case of a copyrighted com-
puter program, the retail value of an au-
thorized copy of that computer program;
‘‘(iii) in the case of a copyrighted mo-
tion 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 lit-
erary work, the retail value of an author-
ized 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 ren-
dered, to recover, instead of actual damages and
profits, an award of statutory damages for each vio-
lation 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 documenta-
tion 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 af-
fect any liability or limitations on liability under sec-
tions 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 trans-
mission of a genuine certificate, licensing docu-
ment, registration card, similar labeling compo-
nent, 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
(B) in the case of a civil action under sec-
tion 2318(f) of title 18, United States Code, to
the electronic transmission of a counterfeit label
or counterfeit documentation or packaging de-
fined 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 doc-
ument, 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 com-
merce, 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 sec-
tion, 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, do-
main name registry, or other domain name registration
authority in registering, maintaining, or renewing a do-
main 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 para-
graph:
‘‘(3) (A) In a case of infringement, it shall be
a rebuttable presumption that the infringement was
committed willfully for purposes of determining re-
lief 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 reg-
istering, 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’
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 reg-
istered a domain name and knowingly used that domain
name in the course of that offense, the maximum impris-
onment 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 pro-
visions 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 state-
ments to ensure that the applicable guideline range
for a defendant convicted of any felony offense car-
ried 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 sub-
section, the Sentencing Commission shall provide
sentencing enhancements for anyone convicted of
any felony offense furthered through knowingly pro-
viding or knowingly causing to be provided materi-
ally false contact information to a domain name reg-
istrar, 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 sub-
section, 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 pro-
visions 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 RE-
LIEF.—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.
(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.