Protect-IP Act: Powerful In Rem Remedies for Private Plaintiffs Against Offshore Infringers

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Last week the Senate Judiciary Committee voted the Protect-IP Act out of committee.  Sen. Ron Wyden put a hold on it on Thursday.   I read it and my comment focus on the aspects of interest to the civil litigator.

Section 4 "Eliminating the Financial Incentive to Steal Intellectual Property Online" of the Protect-IP Act would let a private attorney, on behalf of a copyright or trademark owner, commence an in personam action against a registrant or owner of an "Internet site dedicated to infringing activities".   If these folks cannot be found or don't have addresses within the U.S., the private plaintiff could bring an in rem action against the domain name itself.    As part of the remedies authorized, you would be able to get a court to order any company processing financial transactions with the domain to stop, as well as any company advertising on the domain name.

Invoking these provisions would subject a plaintiff to a fairly high standard of proof.   Critics have focused on other aspects of the bill giving the Attorney General sweeping powers (see links below).   For a U.S. IP owner facing an offshore scofflaw who is doing business in the United States, Section 4 of the bill seems to be a fairly sensible and well-balanced remedy.
A copy of the full text of the Protect-IP Act passed by the Senate Judiciary Committee last week here.

The Electronic Frontier Foundation' criticisms of the bill here.

Last Thursday, Senator Ron Wyden of Oregon blocked this "internet censorship" bill, story here.

Larry Downes' take at Forbes here.   Techdirt on Larry Downes here.

The 1709 Blog reports Google's defiance of search-engine blocking provisions here.


 http://www.dunnington.com/rdowd_bio.html
 Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

Pleading Copyright Claims: Israeli Copyrights, the Berne Convention and Protecting Cracked Software

In Waves Audio Ltd v. Uptime Inc., 2010 WL 308301 (S.D.N.Y. Jan 22, 2010), Judge Naomi Reice Buchwald dealt with an unusual case:  a copyright infringement action that had already spent two years in litigation in New York State Supreme Court.  Plaintiff Waves distributes an audio software and alleged that Uptime Studios used a cracked/pirated copy.  The plaintiffs voluntarily dismissed the state claims and refiled a federal action.   Judge Buchwald considered the issue of whether the plaintiffs should be allowed to amend a FOURTH time in the federal action to allege the copyrights they owned and to add claims to unspecified Israeli copyrights under the Berne Convention.

Judge Buchwald told Waves that a fourth bite at the apple (too many amendments after numerous warnings about the complaint's lack of specificity) was too much and didn't let the plaintiff add the Israeli copyrights.

Lots of litigation recently regarding the Berne Convention see my recent post here.  Software sellers having a nightmare figuring out who owns all that code?  Lots more cases like this to come.

International Copyright CLE Program Online

I recently participated in a continuing legal education program at the New York County Lawyers' Association called International Copyright: What the U.S. Practitioner Needs To Know.

The CLE session is available on DVD from NYCLA or online at Lawline here. We had a great panel, moderated by Jay Kogan of D.C. Comics that included Axel Nordemann and Christian Czychowski from Boehmert & Boehmert in Germany, Johnny Chen of Divx, and Mario Sorensen Garcia from Brazil. Faculty bios here.

The program covered not only the legal concepts of international copyright and interpreting the treaties, but had a number of "real life" stories about how businesses working internationally protect and enforce copyrights.

My topic was "Foreign Copyrights in U.S. Courts".

The course description below:

Since United States copyrights are a major export, many practitioners are called upon to protect clients’ interests worldwide and negotiate licensing agreements requiring a knowledge of copyright regimes around the world. In-house counsel and outside counsel are also often called upon to assist U.S. clients in solving copyright problems worldwide.
This program identified the problems that arise for U.S. clients and provided drafting tips, together with a survey of the analytical tools and resources necessary for a U.S. practitioner to effectively craft practical solutions.