The Protect IP Act : A Powerful Tool, A Powerful Controversy

The Protect IP Act¹ is a proposed bill making its way through the Senate as S. 978 that aims to curb online counterfeiting, among other things.  Congress is attempting again to pass legislation after COICA² failed to pass during the previous session.  While the Protect IP Act's stated goals are beyond dispute — to prevent the online sale of counterfeit goods — the means toward achieving those goals remains ripe for debate.

Act Overview

The Protect IP Act uniquely authorizes both the attorney general and individual rights holders to bring a cause of action against the registrant of an Internet site dedicated to infringing activities ("Infringing Site"),³ its owner/operator, or to proceed directly against the domain name in an in rem action.  The in rem remedy aims to provide a tool in the arsenal of brand owners seeking to attack overseas websites, although the courts arguably already have these inherent powers under the Lanham Act.⁴