New gTLDs, Updating Copyright Laws Among Challenges For IPR Enforcement

Law enforcement needs the right tools and resources to sustain its efforts to protect intellectual property rights (IPR), said Erik Barnett, assistant deputy director of U.S. Immigration and Customs Enforcement. There are blog sites “advising individuals how to avoid domain name seizures by ICE and DOJ,” he said. “Ultimately, those sites will continue.” Due to the advantages of the Internet and more broadband penetration, the problem has exploded, said Chun Wright, an IP enforcement lawyer. Law enforcement has tools but “not quite the robust mechanisms to get after the problem,” she said.

A change in the No Electronic Theft Act (NET Act) is needed to criminalize infringing content that’s streamed, said a representative of the Justice Department’s Computer Crime & Intellectual Property Section (CCIPS). The law provides felony penalties for reproduction and distribution, said Jason Gull, senior counsel for CCIPS. When it comes to streaming of content, “it’s unclear whether we can show a violation of the distribution right or the reproduction right,” he said. “In court, it’s not clear that we can do that.” However, the government still has the authority to charge these incidents as misdemeanors, he said. The Combating Online Infringement and Counterfeits Act, introduced last year, and proposals from various parts of government and industry contain possible solutions, Gull added. They include provisions “that would clarify or change the law to make clear that public performance, public display [and] other violations of exclusive rights under copyright can be punished as a felony,” he said.

The Association of American Publishers is looking forward to legislation to help combat sites that offer infringed e-books, said Luisa Simpson, AAP’s executive director of international copyright enforcement and trade policy. That legislation should “take into account the manner in which these pirate sites make a profit off illegal material,” she said. The framework should include a provision that ensures that those who profit from infringed materials aren’t granted access to payment processors, she said. “If there’s no revenue, they'll have no reason for being.” However, having only one tool, like legislation, will not solve the entire problem, Simpson added.

While some panelists consider legislation to be an effective tool, others cautioned against tougher regulation. “Before you make additional felonies, before you increase the penalties, let’s make sure that you're not attracting an end-user who may not even know that they're infringing,” said David McClure, president of the U.S. Internet Industry Association (USIIA). More transparency is needed throughout the legislative process, he said. “Very often this legislation appears out of nowhere, it’s shoved through a committee very quickly, we have to scramble an eight-alarm fire just to beat them down and to get some common sense,” like with the Anti-Counterfeiting Trade Agreement, he said. It “is being shoved down the throats of other countries by the U.S.,” he said.

The availability of new gTLDs concerns federal law enforcement and IPR advocates. Managing the current domain names is already difficult, said Simpson. “Having another top level out there basically just expands your field.” The move will only add to an already costly task for rightsholders to monitor and protect their brands, McClure said. They will have to register and maintain “untold thousands of trade names just in order to protect themselves,” he said. “The cost to these companies is tremendous and the advantage it gives to infringers is enormous."

ICANN released the latest draft of its applicant guidebook last month. The ICANN board plans to vote and consider approval of the guidebook June 20 (WID May 5 p2). If the domain names are distributed, a balance is critical to protect legitimate rightsholders and help law enforcement in legal processes, Gull said. Having a “whole new universe of registries” will be a big issue, he said. “We'd like ICANN and industry to be vigilant about making sure that these registries are providing records that they are legitimate entities in themselves and they can provide some accountability for their domain space.” Also, there must be a way for law enforcement to obtain evidence and identify domain owners in legal investigations, he added.