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INTELLECTUAL PROPERTY PROTECTION AND COURTS AMENDMENTS ACT OF 2004
[[Page 118 STAT. 3912]]
Public Law 108-482
108th Congress
An Act
To prevent and punish counterfeiting of copyrighted copies and
phonorecords, and for other purposes. <<NOTE: Dec. 23, 2004 - [H.R.
3632]>>
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress <<NOTE: Intellectual Property
Protection and Courts Amendments Act of 2004.>> assembled,
SECTION 1. <<NOTE: 15 USC 1051 note.>> SHORT TITLE.
This Act may be cited as the ``Intellectual Property Protection and
Courts Amendments Act of 2004''.
TITLE <<NOTE: Anti-counterfeiting Amendments Act of 2004.>> I--ANTI-
COUNTERFEITING PROVISIONS
SEC. 101. SHORT <<NOTE: 18 USC 2311 note.>> 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:
``Sec. 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)--
[[Page 118 STAT. 3913]]
(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;
[[Page 118 STAT. 3914]]
``(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.
[[Page 118 STAT. 3915]]
``(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 <<NOTE: 18 USC 2318 note.>> 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
[[Page 118 STAT. 3916]]
(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 <<NOTE: Fraudulent Online Identity Sanctions
Act.>> ONLINE IDENTITY SANCTIONS
SEC. 201. SHORT <<NOTE: 15 USC 1051 note.>> 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'
[[Page 118 STAT. 3917]]
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 <<NOTE: 28 USC 994
note.>> Commission.--
(1) Directive.--Pursuant <<NOTE: Guidelines.>> 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. <<NOTE: 15 USC 1117 note.>> 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.
[[Page 118 STAT. 3918]]
(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,''.
Approved December 23, 2004.
LEGISLATIVE HISTORY--H.R. 3632 (S. 2227):
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HOUSE REPORTS: No. 108-600 (Comm. on the Judiciary).
CONGRESSIONAL RECORD, Vol. 150 (2004):
Sept. 21, considered and passed House.
Dec. 8, considered and passed Senate.
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