[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[S. 1255 Engrossed Amendment House (EAH)]


  1st Session

                                S. 1255

_______________________________________________________________________

                               AMENDMENTS
                In the House of Representatives, U. S.,

                                                      October 26, 1999.

    Resolved, That the bill from the Senate (S. 1255) entitled ``An Act to 
protect consumers and promote electronic commerce by amending certain trademark 
infringement, dilution, and counterfeiting laws, and for other purposes'', do 
pass with the following

                              AMENDMENTS:

            Strike out all after the enacting clause and insert:

SECTION 1. SHORT TITLE; REFERENCES.

    (a) Short Title.--This Act may be cited as the ``Trademark 
Cyberpiracy Prevention Act''.
    (b) References to the Trademark Act of 1946.--Any reference in this 
Act to the Trademark Act of 1946 shall be a reference to the Act 
entitled ``An Act to provide for the registration and protection of 
trade-marks used in commerce, to carry out the provisions of certain 
international conventions, and for other purposes'', approved July 5, 
1946 (15 U.S.C. 1051 et seq.).

SEC. 2. CYBERPIRACY PREVENTION.

    (a) In General.--Section 43 of the Trademark Act of 1946 (15 U.S.C. 
1125) is amended by inserting at the end the following:
    ``(d)(1)(A) A person shall be liable in a civil action by the owner 
of a mark, including a famous personal name which is protected under 
this section, if, without regard to the goods or services of the 
parties, that person--
            ``(i) has a bad faith intent to profit from that mark, 
        including a famous personal name which is protected under this 
        section; and
            ``(ii) registers, traffics in, or uses a domain name that--
                    ``(I) in the case of a mark that is distinctive at 
                the time of registration of the domain name, is 
                identical or confusingly similar to that mark;
                    ``(II) in the case of a famous mark that is famous 
                at the time of registration of the domain name, is 
                dilutive of that mark; or
                    ``(III) is a trademark, word, or name protected by 
                reason of section 706 of title 18, United States Code, 
                or section 220506 of title 36, United States Code.
    ``(B) In determining whether there is a bad-faith intent described 
under subparagraph (A), a court may consider factors such as, but not 
limited to--
            ``(i) the trademark or other intellectual property rights 
        of the person, if any, in the domain name;
            ``(ii) the extent to which the domain name consists of the 
        legal name of the person or a name that is otherwise commonly 
        used to identify that person;
            ``(iii) the person's prior lawful use, if any, of the 
        domain name in connection with the bona fide offering of any 
        goods or services;
            ``(iv) the person's lawful noncommercial or fair use of the 
        mark in a site accessible under the domain name;
            ``(v) the person's intent to divert consumers from the mark 
        owner's online location to a site accessible under the domain 
        name that could harm the goodwill represented by the mark, 
        either for commercial gain or with the intent to tarnish or 
        disparage the mark, by creating a likelihood of confusion as to 
        the source, sponsorship, affiliation, or endorsement of the 
        site;
            ``(vi) the person's offer to transfer, sell, or otherwise 
        assign the domain name to the mark owner or any third party for 
        financial gain without having used, or having an intent to use, 
        the domain name in the bona fide offering of any goods or 
        services;
            ``(vii) the person's provision of material and misleading 
        false contact information when applying for the registration of 
        the domain name or the person's intentional failure to maintain 
        accurate contact information;
            ``(viii) the person's registration or acquisition of 
        multiple domain names which the person knows are identical or 
        confusingly similar to marks of others that are distinctive at 
        the time of registration of such domain names, or dilutive of 
        famous marks of others that are famous at the time of 
        registration of such domain names, without regard to the goods 
        or services of such persons;
            ``(ix) the person's history of offering to transfer, sell, 
        or otherwise assign domain names incorporating marks of others 
        to the mark owners or any third party for consideration without 
        having used, or having an intent to use, the domain names in 
        the bona fide offering of any goods and services;
            ``(x) the person's history of providing material and 
        misleading false contact information when applying for the 
        registration of other domain names which incorporate marks, or 
        the person's history of using aliases in the registration of 
        domain names which incorporate marks of others; and
            ``(xi) the extent to which the mark incorporated in the 
        person's domain name registration is distinctive and famous 
        within the meaning of subsection (c)(1) of section 43 of the 
        Trademark Act of 1946 (15 U.S.C. 1125).
    ``(C) In any civil action involving the registration, trafficking, 
or use of a domain name under this paragraph, a court may order the 
forfeiture or cancellation of the domain name or the transfer of the 
domain name to the owner of the mark.
    ``(D) A person shall be liable for using a domain name under 
subparagraph (A)(ii) only if that person is the domain name registrant 
or that registrant's authorized licensee.
    ``(E) As used in this paragraph, the term `traffics in' refers to 
transactions that include, but are not limited to, sales, purchases, 
loans, pledges, licenses, exchanges of currency, and any other transfer 
for consideration or receipt in exchange for consideration.
    ``(2)(A) In addition to any other jurisdiction that otherwise 
exists, whether in rem or in personam, the owner of a mark may file an 
in rem civil action against a domain name in the judicial district in 
which the domain name registrar, domain name registry, or other domain 
name authority that registered or assigned the domain name is located, 
if--
            ``(i) the domain name violates any right of the owner of 
        the mark; and
            ``(ii) the owner--
                    ``(I) has sent a copy of the summons and complaint 
                to the registrant of the domain name at the postal and 
                e-mail address provided by the registrant to the 
                registrar; and
                    ``(II) has published notice of the action as the 
                court may direct promptly after filing the action.
        The actions under clause (ii) shall constitute service of 
        process.
    ``(B) In an in rem action under this paragraph, a domain name shall 
be deemed to have its situs in the judicial district in which--
            ``(i) the domain name registrar, registry, or other domain 
        name authority that registered or assigned the domain name is 
        located; or
            ``(ii) documents sufficient to establish control and 
        authority regarding the disposition of the registration and use 
        of the domain name are deposited with the court.
    ``(C) The remedies of an in rem action under this paragraph shall 
be limited to a court order for the forfeiture or cancellation of the 
domain name or the transfer of the domain name to the owner of the 
mark. Upon receipt of written notification of a filed, stamped copy of 
a complaint filed by the owner of a mark in a United States district 
court under this paragraph, the domain name registrar, domain name 
registry, or other domain name authority shall--
            ``(i) expeditiously deposit with the court documents 
        sufficient to establish the court's control and authority 
        regarding the disposition of the registration and use of the 
        domain name to the court; and
            ``(ii) not transfer or otherwise modify the domain name 
        during the pendency of the action, except upon order of the 
        court.
The domain name registrar or registry or other domain name authority 
shall not be liable for injunctive or monetary relief under this 
paragraph except in the case of bad faith or reckless disregard, which 
includes a willful failure to comply with any such court order.
    ``(3) The civil action established under paragraph (1) and the in 
rem action established under paragraph (2), and any remedy available 
under either such action, shall be in addition to any other civil 
action or remedy otherwise applicable.''.

SEC. 3. DAMAGES AND REMEDIES.

    (a) Remedies in Cases of Domain Name Piracy.--
            (1) Injunctions.--Section 34(a) of the Trademark Act of 
        1946 (15 U.S.C. 1116(a)) is amended in the first sentence by 
        striking ``(a) or (c)'' and inserting ``(a), (c), or (d)''.
            (2) Damages.--Section 35(a) of the Trademark Act of 1946 
        (15 U.S.C. 1117(a)) is amended in the first sentence by 
        inserting ``, (c), or (d)'' after ``section 43(a)''.
    (b) Statutory Damages.--Section 35 of the Trademark Act of 1946 (15 
U.S.C. 1117) is amended by adding at the end the following:
    ``(d) In a case involving a violation of section 43(d)(1), the 
plaintiff may elect, at any time before final judgment is rendered by 
the trial court, to recover, instead of actual damages and profits, an 
award of statutory damages in the amount of not less than $1,000 and 
not more than $100,000 per domain name, as the court considers just. 
The court may remit statutory damages in any case in which the court 
finds that an infringer believed and had reasonable grounds to believe 
that use of the domain name by the infringer was a fair or otherwise 
lawful use.''.

SEC. 4. LIMITATION ON LIABILITY.

    Section 32(2) of the Trademark Act of 1946 (15 U.S.C. 1114) is 
amended--
            (1) in the matter preceding subparagraph (A) by striking 
        ``under section 43(a)'' and inserting ``under section 43(a) or 
        (d)''; and
            (2) by redesignating subparagraph (D) as subparagraph (E) 
        and inserting after subparagraph (C) the following:
            ``(D)(i) A domain name registrar, a domain name registry, 
        or other domain name registration authority that takes any 
        action described under clause (ii) affecting a domain name 
        shall not be liable for monetary or injunctive relief to any 
        person for such action, regardless of whether the domain name 
        is finally determined to infringe or dilute the mark.
            ``(ii) An action referred to under clause (i) is any action 
        of refusing to register, removing from registration, 
        transferring, temporarily disabling, or permanently canceling a 
        domain name--
                    ``(I) in compliance with a court order under 
                section 43(d); or
                    ``(II) in the implementation of a reasonable policy 
                by such registrar, registry, or authority prohibiting 
                the registration of a domain name that is identical to, 
                confusingly similar to, or dilutive of another's mark.
            ``(iii) A domain name registrar, a domain name registry, or 
        other domain name registration authority shall not be liable 
        for damages under this section for the registration or 
        maintenance of a domain name for another absent a showing of 
        bad faith intent to profit from such registration or 
        maintenance of the domain name.
            ``(iv) If a registrar, registry, or other registration 
        authority takes an action described under clause (ii) based on 
        a knowing and material misrepresentation by any other person 
        that a domain name is identical to, confusingly similar to, or 
        dilutive of a mark, the person making the knowing and material 
        misrepresentation shall be liable for any damages, including 
        costs and attorney's fees, incurred by the domain name 
        registrant as a result of such action. The court may also grant 
        injunctive relief to the domain name registrant, including the 
        reactivation of the domain name or the transfer of the domain 
        name to the domain name registrant.''.

SEC. 5. DEFINITIONS.

    Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended 
by inserting after the undesignated paragraph defining the term 
``counterfeit'' the following:
    ``The term `domain name' means any alphanumeric designation which 
is registered with or assigned by any domain name registrar, domain 
name registry, or other domain name registration authority as part of 
an electronic address on the Internet.
    ``The term `Internet' has the meaning given that term in section 
230(f)(1) of the Communications Act of 1934 (47 U.S.C. 230(f)(1)).''.

SEC. 6. SAVINGS CLAUSE.

    Nothing in this Act shall affect any defense available to a 
defendant under the Trademark Act of 1946 (including any defense under 
section 43(c)(4) of such Act or relating to fair use) or a person's 
right of free speech or expression under the first amendment of the 
United States Constitution.

SEC. 7. EFFECTIVE DATE.

    Sections 2 through 6 of this Act shall apply to all domain names 
registered before, on, or after the date of the enactment of this Act, 
except that damages under subsection (a) or (d) of section 35 of the 
Trademark Act of 1946 (15 U.S.C. 1117), as amended by section 3 of this 
Act, shall not be available with respect to the registration, 
trafficking, or use of a domain name that occurs before the date of the 
enactment of this Act.

SEC. 8. ADJUSTMENT OF CERTAIN TRADEMARK AND PATENT FEES.

    (a) Trademark Fees.--Notwithstanding the second sentence of section 
31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)), the 
Commissioner of Patents and Trademarks is authorized in fiscal year 
2000 to adjust trademark fees without regard to fluctuations in the 
Consumer Price Index during the preceding 12 months.
    (b) Patent Fees.--
            (1) Original filing fee.--Section 41(a)(1)(A) of title 35, 
        United States Code, relating to the fee for filing an original 
        patent application, is amended by striking ``$760'' and 
        inserting ``$690''.
            (2) Reissue fee.--Section 41(a)(4)(A) of title 35, United 
        States Code, relating to the fee for filing for a reissue of a 
        patent, is amended by striking ``$760'' and inserting ``$690''.
            (3) National fee for certain international applications.--
        Section 41(a)(10) of title 35, United States Code, relating to 
        the national fee for certain international applications, is 
        amended by striking ``$760'' and inserting ``$690''.
            (4) Maintenance fees.--Section 41(b)(1) of title 35, United 
        States Code, relating to certain maintenance fees, is amended 
        by striking ``$940'' and inserting ``$830''.
    (c) Effective Date.--Subsection (a) shall take effect on the date 
of the enactment of this Act. The amendments made by subsection (b) 
shall take effect 30 days after the date of the enactment of this Act.

SEC. 9. DOMAIN NAME FOR PRESIDENT, MEMBERS OF CONGRESS, SNF POLITICAL 
              OFFICE HOLDERS AND CANDIDATES.

    (a) In General.--The Secretary of Commerce shall require the 
registry administrator for the .us top level domain to establish a 2nd 
level domain name for the purpose of registering only domain names of 
the President, Members of Congress, United States Senators, and other 
current holders of, and official candidates and potential official 
candidates for, Federal, State, or local political office in the United 
States.
    (b) Guidelines.--The Secretary of Commerce, in consultation with 
the Federal Election Commission, shall establish guidelines and 
procedures under which individuals may register a domain name in the 
2nd level domain name established pursuant to subsection (a).
    (c) Eligible Registrants.--The Federal Election Commission shall 
establish and maintain a list of individuals eligible, under the 
guidelines established pursuant to subsection (b), to register a domain 
name in the 2nd level domain name established pursuant to subsection 
(a).
    (d) Fees.--The registry administrator and registrars for the .us 
top level domain may charge individuals reasonable fees for registering 
domain names pursuant to subsection (a).
    (e) Definition.--As used in this section, the term ``Member of 
Congress'' means a Representative in, or a delegate or Resident 
Commissioner to, the Congress.
    (f) Effective Date.--Registration of domain names in accordance 
with this section shall begin no later than December 31, 2000.

SEC. 10. HISTORIC PRESERVATION.

    Section 101(a)(1)(A) of the National Historic Preservation Act (16 
U.S.C. 470a(a)(1)(A)) is amended by adding at the end the following: 
``Notwithstanding section 43(c) of the Act commonly known as the 
`Trademark Act of 1946' (15 U.S.C. 1125(c)), buildings and structures 
meeting the criteria for the National Register of Historic Places under 
paragraph (2) may retain the name by which they are listed on the 
Register, if that name is the historical name associated with the 
building or structure.''.
    Amend the title so as to read: ``An Act to amend certain trademark 
laws to prevent the misappropriation of marks.''.
            Attest:

                                                                          Clerk.