In a previous post, I mentioned how the Bill (in its original form) will threaten freedom of speech and the problems with US Congress using the in rem jurisdiction - a device that has already manifested its problems within the Anticybersquatting Consumer Protection Act (ACPA). Ideally, I would like to see this Bill getting rejecting; but, we are far from ideal at this stage. The following constitute some proposals/comments that I see relevant and can potentially assist in making this Bill more equitable, fair and in line with due process.
Here is a breakdown under three prongs: scope, due process and remedies.
Purpose: the Bill seeks to takedown, suspend or block those domain names, dedicated to infringing activities.
General thoughts: Senate bill S. 3804 is overly expansive and goes a step beyond other regulatory attempts around the world seeking to address the same issue (counterfeit goods and copyright infringement). The difference between this Bill and other regulatory attempts is both one of degree and substance. S. 3804 attempts, on the one hand, to regulate behaviour extra-territorially and, on the other, fails to take into consideration the ‘internal’ provisions of fair use and free speech/freedom of expression within U.S. copyright and trademark law.
In both France and the United Kingdom, for instance, similar concerns have been addressed through the passage of laws, known as the ‘3 strikes copyright laws’. Despite the fact that both these pieces of legislation have been controversial and have been hastily passed without debate or consultation, still they only address issues of national interests. On the contrary, S. 3804 seeks to regulate online behaviour outside the United States and, by doing so it will be setting a very dangerous precedent to the rest of the world. COICA is taking advantage of the US’s control over the Domain Name System (DNS) and, despite the systematic efforts of the international community over the past few years to the contrary, it clearly demonstrates that the US still claims ownership over the DNS. The DNS belongs to all Internet users; it belongs to the Internet.
Issues with the Bill:
Ø Sec. 2, (a) (2)(A)(i) – it talks about the entire title 17 (Copyright provisions) – this is way too broad, with no explicit mention to the copyright’s provisions on fair use or free speech or freedom of expression. This section needs to eliminated. What S. 3804 is telling us is that prior to any notice to the registrant and prior to any response, the domain name will be taken down. There is no scope within this section for any political speech or any other form of free speech to proliferate.
Ø According to A & M Records, Inc. vs. Napster, Inc., 239 F.3d 1004, 1013 (Ninth Cir. 2001), the copyright holder must prove that s/he owns the infringed copyright and the accused infringer violated one [emphasis added] of the copyright’s exclusive rights. S. 3804 does not make such a distinction. By taking down or blocking the whole domain name with its full content, COICA will potentially be removing protected speech. There is no provision within section 3804 that considers the possibility that the site might contain speech that falls within the freedom of speech parameters. In essence, S. 3804 re-interprets the boundaries and scope of traditional copyright law as well as eliminating fair use and free speech defenses.
Is this, the DMCA on steroids?
B. In Rem –
1. This whole section is far too broad. It is much wider than the in rem provision within ACPA (in ACPA in rem is used when all other jurisdictional options have been exhausted).
According to ACPA:
(2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if--
(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and
(ii) the court finds that the owner--
(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
(II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by--
(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and
(bb) publishing notice of the action as the court may direct promptly after filing the action.
2. “District of Columbia” – why this choice of forum? Within ACPA, situs is clearly defined and certain criteria need to apply: “In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which--
(i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or
(ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.”
This provision facilitates to the creation of an international tribunal within the United States, allowed to adjudicate the rights of foreign registrants.
B. DUE PROCESS
1. “…in which the domain name registrar or domain name registry for at least 1 such domain name is located …”: this part needs to be removed. It provides for an unprecedented ‘jurisdictional discretion’ allowing the removal of all domain names affiliated with one registrant – and is technological unfeasible. Is our reading here correct: can the in rem jurisdiction over one domain name of one foreign registrant really be extended to all domain names of that registrant? How is a registrar to handle such a court order to domain names over which they have no contractual relation or responsibility? A registry?. There is no justification for this and it is totally against due process and justice.
2. Section (c) (1) (B) (i and ii) – the Registrant is not provided with the opportunity of a prompt response. COICA only allows the registrant to react “after the action is filed” which does not serve due process.
3. Section 3 – required actions by AG: This warrants expansion as it fails to consider the Registrants and the individual users. More precisely:
a. The Attorney General (AG) shall also publish procedures developed in consultation with the International and National Registrant Community and with the public.
b. The AG shall also provide guidelines to registrants about what safe harbor and protection mechanisms are in place.
c. The AG shall also provide guidance to registrants concerning their fair use, free speech and freedom of expression rights and ways in which they can legitimately, fully and timely respond to the accusations against their domain names, webpages and speech.
d. The AG shall also authorise the creation of entities that seek to support and advise registrants. (A similar concept exists within the European Union for consumers. Consumer protection regional offices exist throughout the countries of the EU).
4. Situs: Section (2) (d) (2) – Domains for which the Registry or Registrar is not located domestically: This whole section sounds as if the US is imposing its laws unilaterally around the world and the international registrant community, setting a very bad precedent. The language is so broad that in any given situation, section 2(d)(2)(A)(i) and (ii) will apply. The US is claiming ownership upon all domain name registrations.
5. Publication of Orders: Section (2)(f) does not provide the Registrant with the opportunity of a response. The Registrant should be allowed to respond prior to publication of the order.
1. Section 2(a)(2)(A)(i) and (ii) does not include a fair use, free speech provision. A number (iii) should be added along the following lines: (iii) the Attorney General, before issuing the order, shall exempt from consideration the internalised fair use and freedom of speech provisions of copyright and trademark law.
2. Service of Court Order:
a. Section 2(e)(2)(B)(i) - This is a blocking provision. Considering the implications and effects of blocking, this provision opens a Pandora’s box. It paves the way for the possible and arbitrary blocking of other websites and the enforcement of other content restrictions.
b. Section (2)(e)(2)(B)(i) currently reads: “a service provider, as that term is defined in section 512(k)(1) of title 17, United States Code, or any other operator of a nonauthoritative [emphasis added] domain name system server …”. What does ‘nonauthoritative’ mean? It is technically ambiguous. The definitions of a ‘service provider’ and ‘nonauthoritative domain name system server’ should be clear and unambiguous.
3. Communication with users: Section (2)(e)(3): It provides wide discretion at the expense of users. Communication to users should be prompt and clear.
4. Immunity. Section (2)(e)(5)(A) is too broad. Under this section the entities doing the blocking and takedowns are completely immune. This type of absolute immunity can be twisted and abused by ISP, for example, which will proceed in controlling Internet content.
5. Voluntary Actions. Section (2)(e)(5)(A) gives carte blance to providers to control determine which content is permissible.
6. Section on Modification or Vacation of Orders: the existing Defense clauses in this section are limited and should be expanded to include fair use, free speech and freedom of speech as exist within copyright and trademark statutes.
Discussion on In Rem Jurisdictional Provision
There are 3 types:
Ø true in rem (property rights constitute the subject of the dispute
Ø quasi in rem I (property rights directly relate to a specific individual
Ø quasi in rem II (property rights are related to a specific person, yet the underlying claim is unrelated to the res that justifies jurisdiction.
So, in rem is an already wide provision. COICA is making use of all these types of in rem.
1. True in Rem: COICA will apply it in cases where the domain names are registered and hosted domestically.
2. Quasi in rem I: COICA will apply it when the registrant is a US citizen
3. Quasi in rem II: this is the provision to catch Registrants and speech located outside the US. This is also the most problematic. For quasi in rem II to exist, one needs to prove that some minimum contacts exist (International Shoe and Shaffer). The existence of minimum contacts and the requirements is not happening in this Bill.
Traditionally, this requirement meant that contacts should be consistent, systematic and continuous. This sets of requirements is anathema to the new in rem jurisdiction defined in this Bill for domain names. ACPA started the slippery slope, transferring domain names arbitrarily (Cable News Network vs. cnnews.com). Applying the in rem in ACPA has been proven problematic.
The traditional minimum contacts requirement standard cannot apply in the case of domain names. In order for the minimum contacts requirement to make sense in domain names we need to re-evaluate the criteria. For example, we have to determine that the standard is not only minimum contacts but also that these contacts have to be perpetual and substantial and clearly directed to the forum, claiming jurisdiction.