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[wg-b] Cyberpiracy Legislation

For those who may not be aware, it appears that the U.S. Congress is
very close to passing a "cyberpiracy" law.  The article below (reprinted
with permission) is being posted for general information only, and not
in support of or in opposition to any particular position in the current vote.

Otho Ross
Attorney, New York, NY
(Private practice, Internet & IP Law)


"House Panels Take Quick Action On Bill to Combat 'Cyberpiracy'.

The House Judiciary Committee on Oct. 13 approved a week-old bill
(H.R. 3028) to curb "cyberpirates" who register Internet domain names
resembling famous trademarks to extort money from or defame the
trademark owner.  The "Trademark Cyberpiracy Prevention Act" is
substantially similar to a bill (S. 1255) that was passed by the Senate
in August.  H.R. 3028 was introduced Oct. 6 by Rep. Jim Rogan
(R-Calif.) and Rep. Rick Boucher (D-Va.).  It was taken up the next
day by the House Subcommittee on Courts and Intellectual Property,
which approved it on a voice vote.  The Judiciary Committee on Oct. 13
approved an amendment in the nature of a substitute offered by Rogan
and Rep. Howard Coble (R-N.C.).  The Senate counterpart cyberpiracy
bill, S. 1255 was introduced in June by Sen. Spencer Abraham (R-Mich.)
... and was passed by the Senate on Aug. 5....  Boucher ... anticipates
... floor action on the [House] measure within a week.  Domain registrars
are very reluctant to suspend offending domain names because they think
they'll be liable, Boucher said.  "This bill provides a rapid mechanism to
get the name suspended while leaving the registrar immune from liability,"
he said.  Discussion at the Oct. 7 subcommittee markup of H.R. 3028
revealed bipartisan support for the measure, although Rep. Zoe Lofgren
(D-Calif.) cautioned lawmakers against over-legislating to accommodate
electronic commerce on the Internet.  She stressed that the cyberpiracy
bill "doesn't change trademark law," but simply clarifies enforcement
remedies in the Internet environment....  Like the Senate-passed bill,
H.R. 3028 would add a new Section 43(d) of the Lanham Act, 15 U.S.C.
Sec. 1125(d). That provision creates a cause of action against anyone
who, with a bad faith intent to profit from the goodwill of another's
trademark or service mark, "registers, traffics in, or uses a domain name
that is identical to, confusingly similar to, or dilutive of such trademark or
service mark, without regard to the goods or services of the parties."
Unlike S. 1255, the House version of the legislation would also discourage 
cyberpiracy of the "Olympic" and "Red Cross" trademarks, which enjoy
statutory protection under Titles 36 and 18 of the U.S. Code, rather than
under the Lanham Act.  The "uses" targeted by the bill's new Section
43(d) are limited to uses by the domain name registrant.  Thus, the bill
does not address other uses, such as in hypertext links, directory
publishing, or search engines.  Furthermore, trademark dilution actions
under the bill are actionable only where the mark that is harmed has
achieved the status of a "famous" mark.  The legislation outlines a list
of factors for determining bad-faith intent....  The legislation also
establishes in rem jurisdiction in cyberpiracy actions.  Thus, it allows
a mark owner to file a Section 43 (d) action against the domain name
itself, rather than against the cyberpirate.  A district court recently
dismissed such an action for lack of jurisdiction in Porsche Cars
North America Inc. v. Porsch.com....  A significant problem faced by
trademark owners is that cyberpirates register their domain names
under aliases and are otherwise difficult to identify.  H.R. 3028 and
its Senate-passed counterpart allow in rem actions where the
trademark owner has demonstrated due diligence but is unable to
find the cyberpirate.  H.R. 3028 further limits those actions to ones
in which personal jurisdiction cannot be established over the cyberpirate.
The in rem action remedies in both bills are limited to cancellation of
the domain name or transfer of it to the trademark owner.  Like the
Senate bill, H.R. 3028 also encourages domain name registrars to
prevent cyberpiracy by limiting their liability when they cancel or transfer
a domain name pursuant to a court order.  Both bills, however, impose
liability on trademark owners who knowingly misrepresent to the
registrar that a domain name is infringing.  The trademark owner would
thus be liable to the domain name owner for damages resulting from the
cancellation or transfer of a domain name.  The reform also limits the
secondary liability of registrars for the act of registering a domain name."

BNA PTCJ  [Patent, TM & Copyright J.], Vol. 58, No. 1445, pp. 780-81. 

"We are pleased to grant our permission for one-time use.  We require
only that you use the following credit line on the reprinted material:
'Reprinted with permission from BNA's Patent, Trademark & Copyright
Journal, Vol. 58, No. 1445,  pp. 780-781 (Oct. 14, 1999). Copyright 1999
by The Bureau of National Affairs, Inc. (800-372-1033)  <http://www.bna.com>