Intellectual Property Protection and Courts Amendments Act of 2004

118 STAT. 3912 PUBLIC LAW 108–482—DEC. 23, 2004
Public Law 108–482
108th Congress
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) I NGENERAL .—Section 2318 of title 18, United States Code,
is amended—
(1) by striking the section heading and inserting the fol-
lowing:
‘‘§ 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 sub-
section (c), knowingly traffics in—
‘‘(1) a counterfeit label or illicit label affixed to, enclosing,
or accompanying, or designed to be affixed to, enclose, oraccompany—
‘‘(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 than5 years, or both.’’;
(3) in subsection (b)—18 USC 2311note.Anti-
counterfeitingAmendments Actof 2004.15 USC 1051
note.Intellectual
PropertyProtection andCourtsAmendments Actof 2004.Dec. 23, 2004
[H.R. 3632]
VerDate 11-MAY-2000 13:54 Nov 10, 2005 Jkt 029194 PO 00000 Frm 00446 Fmt 6580 Sfmt 6581 C:STATUTES200429194PT4.001 APPS10 PsN: 29194P T4118 STAT. 3913 PUBLIC LAW 108–482—DEC. 23, 2004
(A) in paragraph (2), by striking ‘‘and’’ after the semi-
colon;
(B) in paragraph (3)—
(i) by striking ‘‘and ‘audiovisual work’ have’’ and
inserting the following: ‘‘ ‘audiovisual work’, ‘literarywork’, ‘pictorial, graphic, or sculptural work’, ‘soundrecording’, ‘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 labelingcomponent—
‘‘(A) that is used by the copyright owner to verify
that a phonorecord, a copy of a computer program, a copyof a motion picture or other audiovisual work, a copy ofa literary work, a copy of a pictorial, graphic, or sculpturalwork, a work of visual art, or documentation or packagingis 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 ofvisual art to which such labeling component wasintended to be affixed by the respective copyrightowner; or
‘‘(ii) in connection with a genuine certificate or
licensing document, knowingly falsified in order to des-ignate a higher number of licensed users or copiesthan authorized by the copyright owner, unless thatcertificate or document is used by the copyright ownersolely for the purpose of monitoring or tracking thecopyright owner’s distribution channel and not for thepurpose of verifying that a copy or phonorecord isnoninfringing;
‘‘(5) the term ‘documentation or packaging’ means docu-
mentation or packaging, in physical form, for a phonorecord,copy of a computer program, copy of a motion picture or otheraudiovisual 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 fol-
lowing:‘‘(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;
VerDate 11-MAY-2000 13:54 Nov 10, 2005 Jkt 029194 PO 00000 Frm 00447 Fmt 6580 Sfmt 6581 C:STATUTES200429194PT4.001 APPS10 PsN: 29194P T4118 STAT. 3914 PUBLIC LAW 108–482—DEC. 23, 2004
‘‘(F) a work of visual art; or
‘‘(G) copyrighted documentation or packaging; or’’; and(B) in paragraph (4), by striking ‘‘for a computer pro-
gram’’; 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 fol-
lowing: ‘‘, and of any equipment, device, or material usedto manufacture, reproduce, or assemble the counterfeitlabels or illicit labels’’.
(b) C
IVIL REMEDIES .—Section 2318 of title 18, United States
Code, is further amended by adding at the end the following:
‘‘(f) C IVILREMEDIES .—
‘‘(1) I N 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 districtcourt.
‘‘(2) D
ISCRETION 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 bereasonable 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 deter-mines to be reasonable, of any article that is in the custodyor control of the alleged violator and that the court hasreasonable cause to believe was involved in a violationof 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) A
CTUAL DAMAGES AND PROFITS .—
‘‘(A) I N 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), asprovided 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 intoaccount in computing the actual damages.‘‘(B) C
ALCULATION OF DAMAGES .—The court shall cal-
culate actual damages by multiplying—
‘‘(i) the value of the phonorecords, copies, or works
of visual art which are, or are intended to be, affixedwith, enclosed in, or accompanied by any counterfeitlabels, illicit labels, or counterfeit documentation orpackaging, by
‘‘(ii) the number of phonorecords, copies, or works
of visual art which are, or are intended to be, affixedwith, enclosed in, or accompanied by any counterfeitlabels, illicit labels, or counterfeit documentation orpackaging.
VerDate 11-MAY-2000 13:54 Nov 10, 2005 Jkt 029194 PO 00000 Frm 00448 Fmt 6580 Sfmt 6581 C:STATUTES200429194PT4.001 APPS10 PsN: 29194P T4118 STAT. 3915 PUBLIC LAW 108–482—DEC. 23, 2004
‘‘(C) D EFINITION .—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 anauthorized phonorecord of that sound recording ormusical work;
‘‘(ii) in the case of a copyrighted computer program,
the retail value of an authorized copy of that computerprogram;
‘‘(iii) in the case of a copyrighted motion picture
or other audiovisual work, the retail value of an author-ized 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 literarywork;
‘‘(v) in the case of a pictorial, graphic, or sculptural
work, the retail value of an authorized copy of thatwork; and
‘‘(vi) in the case of a work of visual art, the retail
value of that work.
‘‘(4) S
TATUTORY 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 statutorydamages for each violation of subsection (a) in a sum of notless than $2,500 or more than $25,000, as the court considersappropriate.
‘‘(5) S
UBSEQUENT VIOLATION .—The court may increase an
award of damages under this subsection by 3 times the amountthat would otherwise be awarded, as the court considers appro-priate, if the court finds that a person has subsequently violatedsubsection (a) within 3 years after a final judgment was enteredagainst that person for a violation of that subsection.
‘‘(6) L
IMITATION ON ACTIONS .—A civil action may not be
commenced under section unless it is commenced within 3years after the date on which the claimant discovers the viola-tion of subsection (a).’’.(c) C
ONFORMING AMENDMENT .—The item relating to section
2318 in the table of sections for chapter 113 of title 18, UnitedStates 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) C HAPTERS 5 AND 12 OFTITLE 17; E LECTRONIC TRANS –
MISSIONS .—The amendments made by this title—
(1) shall not enlarge, diminish, or otherwise affect any
liability or limitations on liability under sections 512, 1201or 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 packagingdescribed in paragraph (4) or (5) of section 2318(b) oftitle 18, United States Code, as amended by this title;and18 USC 2318
note.
VerDate 11-MAY-2000 13:54 Nov 10, 2005 Jkt 029194 PO 00000 Frm 00449 Fmt 6580 Sfmt 6581 C:STATUTES200429194PT4.001 APPS10 PsN: 29194P T4118 STAT. 3916 PUBLIC LAW 108–482—DEC. 23, 2004
(B) in the case of a civil action under section 2318(f)
of title 18, United States Code, to the electronic trans-mission of a counterfeit label or counterfeit documentationor packaging defined in paragraph (1) or (6) of section2318(b) of title 18, United States Code.
(b) F
AIRUSE.—The amendments made by this title shall not
affect the fair use, under section 107 of title 17, United StatesCode, of a genuine certificate, licensing document, registration card,similar labeling component, or documentation or packagingdescribed 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 registra-
tion and protection of trademarks used in commerce, to carry outthe provisions of certain international conventions, and for otherpurposes’’, approved July 5, 1946 (commonly referred to as the‘‘Trademark Act of 1946’’; 15 U.S.C. 1117), is amended by addingat 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 forpurposes of determining relief if the violator, or a person actingin concert with the violator, knowingly provided or knowinglycaused to be provided materially false contact information to adomain name registrar, domain name registry, or other domainname registration authority in registering, maintaining, or renewinga domain name used in connection with the violation. Nothingin this subsection limits what may be considered a willful violationunder 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 willfullyfor purposes of determining relief if the violator, or a personacting in concert with the violator, knowingly provided or know-ingly caused to be provided materially false contact informationto a domain name registrar, domain name registry, or otherdomain name registration authority in registering, maintaining,or renewing a domain name used in connection with theinfringement.
‘‘(B) Nothing in this paragraph limits what may be consid-
ered 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 theAct entitled ‘An Act to provide for the registration and protec-tion of trademarks used in commerce, to carry out the provisionsof certain international conventions, and for other purposes’15 USC 1051note.Fraudulent
Online IdentitySanctions Act.
VerDate 11-MAY-2000 13:54 Nov 10, 2005 Jkt 029194 PO 00000 Frm 00450 Fmt 6580 Sfmt 6581 C:STATUTES200429194PT4.001 APPS10 PsN: 29194P T4118 STAT. 3917 PUBLIC LAW 108–482—DEC. 23, 2004
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) S ENTENCING 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 adomain name) knowingly falsely registered a domain name andknowingly used that domain name in the course of that offense,the maximum imprisonment otherwise provided by law for thatoffense shall be doubled or increased by 7 years, whichever isless.
‘‘(2) As used in this section—
‘‘(A) the term ‘falsely registers’ means registers in a manner
that prevents the effective identification of or contact withthe 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 forthe 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 (commonlyreferred to as the ‘Trademark Act of 1946’) (15 U.S.C. 1127).’’.(b) U
NITED STATES SENTENCING COMMISSION .—
(1) D IRECTIVE .—Pursuant to its authority under section
994(p) of title 28, United States Code, and in accordance withthis section, the United States Sentencing Commission shallreview and amend the sentencing guidelines and policy state-ments to ensure that the applicable guideline range for adefendant convicted of any felony offense carried out onlinethat may be facilitated through the use of a domain nameregistered with materially false contact information is suffi-ciently stringent to deter commission of such acts.
(2) R
EQUIREMENTS .—In carrying out this subsection, the
Sentencing Commission shall provide sentencing enhancementsfor anyone convicted of any felony offense furthered throughknowingly providing or knowingly causing to be provided mate-rially false contact information to a domain name registrar,domain name registry, or other domain name registrationauthority in registering, maintaining, or renewing a domainname used in connection with the violation.
(3) D
EFINITION .—For purposes of this subsection, the term
‘‘domain name’’ has the meaning given that term in section45 of the Act entitled ‘‘An Act to provide for the registrationand protection of trademarks used in commerce, to carry outthe provisions of certain international conventions, and forother purposes’’, approved July 5, 1946 (commonly referredto as the ‘‘Trademark Act of 1946’’; 15 U.S.C. 1127).
SEC. 205. CONSTRUCTION.
(a) F REESPEECH AND PRESS .—Nothing in this title shall enlarge
or diminish any rights of free speech or of the press for activitiesrelated to the registration or use of domain names.
(b) D
ISCRETION OF COURTS IN DETERMINING RELIEF .—Nothing
in this title shall restrict the discretion of a court in determiningdamages or other relief to be assessed against a person foundliable for the infringement of intellectual property rights.15 USC 1117note.Guidelines.28 USC 994 note.
VerDate 11-MAY-2000 13:54 Nov 10, 2005 Jkt 029194 PO 00000 Frm 00451 Fmt 6580 Sfmt 6581 C:STATUTES200429194PT4.001 APPS10 PsN: 29194P T4118 STAT. 3918 PUBLIC LAW 108–482—DEC. 23, 2004
LEGISLATIVE HISTORY—H.R. 3632 (S. 2227):
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.(c) D ISCRETION OF COURTS IN DETERMINING TERMS OF IMPRIS –
ONMENT .—Nothing in this title shall be construed to limit the
discretion of a court to determine the appropriate term of imprison-ment 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.
VerDate 11-MAY-2000 13:54 Nov 10, 2005 Jkt 029194 PO 00000 Frm 00452 Fmt 6580 Sfmt 6580 C:STATUTES200429194PT4.001 APPS10 PsN: 29194P T4