[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.''.
                                 <all>