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Controlling Online Piracy and Counterfeiting

In 2011, Congress proposed two relatively similar bills—House of Representatives’ Stop Online Piracy Act (SOPA) and Senate’s Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (PIPA)—that legislators and lobbyists hailed as providing important protections against piracy and counterfeiting online. Yet, this apparently strong support was quickly withdrawn when a massive online protest in January 2012 sparked intense and ultimately fatal opposition to the bills.

Despite the strong public disapproval and lack of Congressional support, in July 2014 the Intellectual Property Law (IPL) Section of the ABA issued a white paper proposing that Congress enact legislation allowing essentially the same private copyright infringement suits against allegedly infringing foreign websites as those provided for in SOPA and PIPA, and suggesting that those protections be extended to trademarks as well.

How Does the ABA’s Proposal Differ From Previously Rejected Legislation?

To be sure, the ABA noted and attempted to avoid the more controversial provisions of the previously rejected legislation. For instance, the white paper proposes that intellectual property owners, as opposed to Internet service providers, should bear the burden of policing against infringement. In addition, unlike SOPA and PIPA, the white paper suggests notifying foreign websites of alleged infringement and offering them a chance to defend themselves. Furthermore, the proposed remedies are less harsh than those suggested by SOPA, as they do not include blocking allegedly infringing websites.

Why Might This Newly Proposed Regulation Be Rejected?

Although, the ABA’s white paper addresses a few key concerns of those who opposed SOPA and PIPA, critics caution that it suffers from some of the same fundamental pitfalls as the failed legislation; specifically, the proposal fails to address issues relating to: (i) due process, (ii) injunctive relief against third parties, and (iii) freedom of speech. For instance, a foreign website owner’s due process rights may be violated if that company is required to defend itself in a court of the plaintiff’s choice in the United States. In addition, the white paper’s permission of injunctions against innocent third parties directly conflicts with U.S. civil procedure law. Moreover, the white paper raises free speech censorship concerns as it fails to establish how, and by whom, the dispositive determination of whether a foreign website is to be considered “predatory” will be made.

In sum, considering the undeniable similarities between the white paper and the strongly opposed SOPA/PIPA legislation, Congress is understandably reluctant to follow the IPL Section’s advice. However, online piracy and counterfeiting remains a significant problem that legislators will inevitably be forced to address. The ABA acknowledged this need for anti-infringement legislation by making some necessary changes to the previously rejected Congressional bills. Thus, if nothing else, Congress may be able to use the white paper as a starting point when it decides to revisit the challenge of enacting acceptable protections against online copyright and trademark infringements.

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