[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[S. 1255 Introduced in Senate (IS)]
106th CONGRESS
1st Session
S. 1255
To protect consumers and promote electronic commerce by amending
certain trademark infringement, dilution, and counterfeiting laws, and
for other purposes.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
June 21, 1999
Mr. Abraham (for himself, Mr. Torricelli, Mr. Hatch, and Mr. McCain)
introduced the following bill; which was read twice and referred to the
Committee on the Judiciary
_______________________________________________________________________
A BILL
To protect consumers and promote electronic commerce by amending
certain trademark infringement, dilution, and counterfeiting laws, 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 ``Anticybersquatting Consumer
Protection Act''.
SEC. 2. FINDINGS.
Congress finds that the unauthorized registration or use of
trademarks as Internet domain names or other identifiers of online
locations (commonly known as ``cybersquatting'')--
(1) results in consumer fraud and public confusion as to
the true source or sponsorship of products and services;
(2) impairs electronic commerce, which is important to the
economy of the United States; and
(3) deprives owners of trademarks of substantial revenues
and consumer goodwill.
SEC. 3. TRADEMARK REMEDIES.
(a) Recovery for Violation of Rights.--Section 35 of 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, (commonly referred to as the ``Trademark Act of 1946'') (15
U.S.C. 1117) is amended by adding at the end the following:
``(d)(1) In this subsection, 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)).
``(2)(A) In a case involving the registration or use of an
identifier described in subparagraph (B), the plaintiff may elect, at
any time before final judgment is rendered by the trial court, to
recover, instead of actual damages and profits under subsection (a)--
``(i) an award of statutory damages in the amount of--
``(I) not less than $1,000 or more than $100,000
per trademark per identifier, as the court considers
just; or
``(II) if the court finds that the registration or
use of the registered trademark as an identifier was
willful, not less than $3,000 or more than $300,000 per
trademark per identifier, as the court considers just;
and
``(ii) full costs and reasonable attorney's fees.
``(B) An identifier referred to in subparagraph (A) is an Internet
domain name or other identifier of an online location that is--
``(i) the trademark of a person or entity other than the
person or entity registering or using the identifier; or
``(ii) sufficiently similar to a trademark of a person or
entity other than the person or entity registering or using the
identifier as to be likely to--
``(I) cause confusion or mistake;
``(II) deceive; or
``(III) cause dilution of the distinctive quality
of a famous trademark.''.
(b) Remedies for Dilution of Famous Marks.--Section 43(c)(2) of 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, (commonly referred to as the ``Trademark Act of 1946'') (15
U.S.C. 1125(c)(2)) is amended by striking ``35(a)'' and inserting ``35
(a) and (d)''.
SEC. 4. CRIMINAL USE OF COUNTERFEIT TRADEMARK.
(a) In General.--Section 2320(a) of title 18, United States Code,
is amended--
(1) by inserting ``(1)'' after ``(a)'';
(2) by striking ``section that occurs'' and inserting
``paragraph that occurs''; and
(3) by adding at the end the following:
``(2)(A) In this paragraph, 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)).
``(B)(i) Except as provided in clause (ii), whoever knowingly and
fraudulently or in bad faith registers or uses an identifier described
in subparagraph (C) shall be guilty of a Class B misdemeanor.
``(ii) In the case of an offense by a person under this paragraph
that occurs after that person is convicted of another offense under
this section, that person shall be guilty of a Class E felony.
``(C) An identifier referred to in subparagraph (B) is an Internet
domain name or other identifier of an online location that is--
``(i) the trademark of a person or entity other than the
person or entity registering or using the identifier; or
``(ii) sufficiently similar to a trademark of a person or
entity other than the person or entity registering or using the
identifier as to be likely to--
``(I) cause confusion or mistake;
``(II) deceive; or
``(III) cause dilution of the distinctive quality
of a famous trademark.
``(D)(i) For the purposes of a prosecution under this paragraph, if
all of the conditions described in clause (ii) apply to the
registration or use of an identifier described in subparagraph (C) by a
defendant, those conditions shall constitute prima facie evidence that
the registration or use was fraudulent or in bad faith.
``(ii) The conditions referred to in clause (i) are as follows:
``(I) The defendant registered or used an identifier
described in subparagraph (C)--
``(aa) with intent to cause confusion or mistake,
deceive, or cause dilution of the distinctive quality
of a famous trademark; or
``(bb) with the intention of diverting consumers
from the domain or other online location of the person
or entity who is the owner of a trademark described in
subparagraph (C) to the domain or other online location
of the defendant.
``(II) The defendant--
``(aa) provided false information in the
defendant's application to register the identifier; or
``(bb) offered to transfer the registration of the
identifier to the trademark owner or another person or
entity in consideration for any thing of value.
``(III) The identifier is not--
``(aa) the defendant's legal first name or surname;
or
``(bb) a trademark of the defendant used in
legitimate commerce before the earlier of the first use
of the registered trademark referred to in subparagraph
(C) or the effective date of the registration of that
trademark.
``(iii) The application of this subparagraph shall not be
exclusive. Nothing in this subparagraph may be construed to limit the
applicability of subparagraph (B).''.
(b) Sentencing Guidelines.--
(1) In general.--Pursuant to the authority granted to the
United States Sentencing Commission under section 994(p) of
title 28, United States Code, the United States Sentencing
Commission shall--
(A) review the Federal sentencing guidelines for
crimes against intellectual property (including
offenses under section 2320 of title 18, United States
Code); and
(B) promulgate such amendments to the Federal
Sentencing Guidelines as are necessary to ensure that
the applicable sentence for a defendant convicted of a
crime against intellectual property is sufficiently
stringent to deter such a crime.
(2) Factors for consideration.--In carrying out this
subsection, the United States Sentencing Commission shall--
(A) take into account the findings under section 2;
and
(B) ensure that the amendments promulgated under
paragraph (1)(B) adequately provide for sentencing for
crimes described in paragraph (2) of section 2320(a) of
title 18, United States Code, as added by subsection
(a).
SEC. 5. LIMITATION OF LIABILITY.
Section 39 of 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, (commonly referred to as the
``Trademark Act of 1946'') (15 U.S.C. 1121) is amended by adding at the
end the following:
``(c)(1) In this subsection, 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)).
``(2)(A) An Internet service provider, domain name registrar, or
registry described in subparagraph (B) shall not be liable for monetary
relief to any person for a removal or transfer described in that
subparagraph, without regard to whether the domain name or other
identifier is ultimately determined to be infringing or dilutive.
``(B) An Internet service provider, domain name registrar, or
registry referred to in subparagraph (A) is a provider, registrar, or
registry that, upon receipt of a written notice from the owner of a
trademark registered in the Patent and Trademark Office, removes from
domain name service (DNS) service or registration, or transfers to the
trademark owner, an Internet domain name or other identifier of an
online location alleged to be infringing or dilutive, in compliance
with--
``(i) a court order; or
``(ii) the reasonable implementation of a policy
prohibiting the unauthorized registration or use of another's
registered trademark as an Internet domain name or other
identifier of an online location.''.
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