Domain Seizures: Taking Prisoners on the IP Battlefield

Last year, as part of a broad enforcement campaign, U.S. Immigration and Customs Enforcement (ICE) began seizing the domain names of websites involved in copyright infringement and the sale of counterfeit goods. ICE, a division of the Department of Homeland Security, carried out the first phase of Operation In Our Sites in June 2010 when it seized the domain names of nine websites allegedly offering pirated movies.

On November 29, 2010 — the day now commonly known in the United States as “Cyber Monday” — ICE carried out the second round of Operation In Our Sites by seizing 82 domain names from websites allegedly selling counterfeit goods and dealing in copyright-protected movies and music.

In February of this year, prior to the Super Bowl, ICE seized the domain names of numerous websites allegedly offering unauthorized access to streaming video of sporting events.

On Valentine’s Day, ICE seized 18 more domain names in Operation Broken Hearted. The last round of seizures focused on websites dealing in counterfeit luxury products, including products bearing the Chanel, Gucci, Louis Vuitton and Prada brands.

Whack-A-Mole Game

The legal authority for these actions comes from the seizure and forfeiture laws of 18 U.S.C. Sections 981 and 2323 — the same laws used in narcotics and other criminal cases. Under Section 2323, property used to a commit federal crime, such as criminal trademark or copyright infringement, is subject to forfeiture to the U.S. government. Under Section 981, the government can apply to a federal court for a warrant to seize that property.

To obtain the warrant, the government must show there is probable cause that the website violates federal criminal law. The owner of the domain name may challenge the seizure warrant in the district court that issued it. During a later forfeiture proceeding, the owner also may challenge the basis for forfeiture.

The ICE seizures, particularly the seizures of several music and sports sites, have garnered substantial public attention. While rights owners are generally supportive of ICE’s actions, the seizures have prompted questions regarding due process, fair use, and the role of informal permission to use copyrighted works.

For example, during the Cyber Monday raid, ICE seized the domains of the music blogs that also provided downloadable songs, including dajaz1.com and OnSmash.com. Following the seizure, press reports noted that at least some of the songs listed in the warrant application had been provided to the sites directly from the recording artists and record labels to publicize the music.

As of now, it appears that neither site has formally objected to the seizure order or moved to overturn the warrant. The websites continue to bear the takedown notices declaring “This domain name has been seized by ICE.”

ICE’s February round of seizures may also implicate international copyright issues. Prior to the Super Bowl, ICE seized the domain name for rojadirecta.org, a site that compiles links to broadcasts of sports events, on the basis that links on the site lead to infringing content.

In contrast, a Spanish court recently ruled that this same website was not liable for copyright infringement. Specifically, the Spanish court held that rojadirecta.org was not liable for copyright infringement under Spanish law because, in part, the site did not charge users for access to the content and merely provided links to other P2P sites where the infringing content was stored. Following the February seizure by ICE, rojadirecta reemerged under country-code domain names, including .me (Montenegro), .in (India), and .es (Spain).

Muddy Waters

ICE’s domain-seizure efforts have also prompted action in Congress. Last year, Sen. Patrick Leahy, D-Vt., introduced the Combating Online Infringement and Counterfeits Act (COICA). According to the committee report, the purpose of the legislation is to provide law enforcement with a tailored procedure for targeting the domain names of infringing websites. It allows the Justice Department to pursue a civil action against sites “dedicated to infringing activities” and attempts to target the “worst of the worst” sites.

In addition, COICA addresses some of the unique aspects of copyright law, such as authorization and fair use, and authorizes action against both U.S.-based registries and non-U.S.-based registries. COICA was unanimously approved by the Senate Judiciary Committee last fall, but did not receive a vote by the full Senate prior to the end of the 111th Congress. Sen. Leahy has indicated that he intends to introduce similar legislation in the current Congress.

Among those who have voiced concerns about ICE’s actions and COICA are Sen. Ron Wyden, D-Ore., and Rep. Zoe Lofgren, D-Calif. Wyden has questioned the legitimacy of the process used by ICE to select domain names to target; whether site owners are given due process; whether seizing domain names that are deemed legal in other countries is consistent with U.S. foreign policy; and the effect those seizures may have on free speech.

In addition to the points raised by Wyden, Lofgren has questioned whether the seizures supplant the notice and takedown scheme of the Digital Millennium Copyright Act. She also voiced reservations regarding whether ICE’s domain name seizure efforts give website owners sufficient opportunity to present the copyright-specific arguments of authorization, fair use and substantial non-infringing use. Commentators have noted that like Rojadirecta, many sites will simply re-emerge under different names or move offshore.

John Morton, the ICE director, has responded to some of these objections to Operation In Our Sites. First, he asserts that website owners receive due process because they have the opportunity to challenge the seizure warrant in the district court that issued it. According to Victoria Espinel, the White House’s intellectual property enforcement coordinator, no site has thus far challenged the seizures, despite having the opportunity to do so.

Morton has also sought to dispel the concern that the seized cites would simply re-emerge under different names or ccTLDs. While two targeted sites have re-emerged, he said, the vast majority have not. Morton has also confirmed that ICE intends to pursue Operation In Our Sites through 2011.

As ICE continues its domain name seizure operations and public attention to ICE’s efforts grows, issues to follow include: 1) whether an owner of a seized website challenges a seizure, and on what grounds; 2) whether COICA is passed in this Congress; 3) whether ICE modifies Operation In Our Sites in response to the criticism levied by Wyden and Lofgren; and 4) what, if any, impact the seizures will have on international cooperation regarding intellectual property protection.

Margaret A. Esquenet & Justin A. Hendrix are attorneys with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Esquenet focuses on all aspects of copyright law, advising clients regarding registration, licensing, enforcement, rights-clearance and litigation. Hendrix focuses his practice on patent prosecution, counseling, and litigation in mechanical and electrical technologies.

1 Comment

  • Another concern of American consumers, particularly those without health insurance, is that U.S. actions conducted under the guise of intellectual property protection will take down safe and affordable online pharmacies based outside the United States. Despite the technical illegality of personal drug importation, for the last decade, millions of uninsured Americans, many who cannot afford drugs in the Untied States, have purchased genuine lower cost medication pursuant to a valid prescription from Canadian and other online pharmacies.

    Such international mail order pharmacy occurs because the FDA does not prosecute individuals for personal prescription orders of non-controlled medication, and due the numbers of imported goods the FDA does not have the resources to stop them. It is feared that the ICE and the Office of the Intellectual Property Enforcement Coordinator will use its crackdown against online infringement and dangerous online pharmacies to stop safe personal drug importation by blocking access to safe international online pharmacies. That would be wrong and detrimental to the public health, as fewer people would get the medications they need.

    Gabriel Levitt

    PharmacyChecker.com

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