Lanham Act § 32(2), as amended
Lanham Act § 32(2), as amended (inter alia) by Intellectual
Property and Communications Omnibus Reform Act of 1999, Title III (Trademark
Cyberpiracy Prevention), § 3004, Pub. L. No. 106-113, Division B,
Appendix I (S.1948), 106th Cong., 1st Sess., 113 Stat. 1501A-549 through
1501A-550 (Nov. 29, 1999):
(2) Notwithstanding any other provision of this Act, the remedies
given to the owner of a right infringed under this Act or to a person
bringing an action under section 43(a) or (d) [15 U.S.C. §1125(a)
or (d)] shall be limited as follows:
(A) Where an infringer or violator is engaged solely in the business
of printing the mark or violating matter for others and establishes
that he or she was an innocent infringer or innocent violator, the owner
of the right infringed or person bringing the action under section 43(a)
[15 U.S.C. § 1125(a)] shall be entitled as against such infringer
or violator only to an injunction against future printing.
(B) Where the infringement or violation complained of is contained
in or is part of paid advertising matter in a newspaper, magazine, or
other similar periodical or in an electronic communication as defined
in section 2510(12) of title 18, United States Code, the remedies of
the owner of the right infringed or person bringing the action under
section 43(a) [15 U.S.C. § 1125(a)] as against the publisher or
distributor of such newspaper, magazine, or other similar periodical
or electronic communication shall be limited to an injunction against
the presentation of such advertising matter in future issues of such
newspapers, magazines, or other similar periodicals or in future transmissions
of such electronic communications. The limitations of this subparagraph
shall apply only to innocent infringers and innocent violators.
(C) Injunctive relief shall not be available to the owner of the
right infringed or person bringing the action under section 43(a) [15
U.S.C. § 1125(a)] with respect to an issue of a newspaper, magazine,
or other similar periodical or an electronic communication containing
infringing matter or violating matter where restraining the dissemination
of such infringing matter or violating matter in any particular issue
of such periodical or in an electronic communication would delay the
delivery of such issue or transmission of such electronic communication
after the regular time for such delivery or transmission, and such delay
would be due to the method by which publication and distribution of
such periodical or transmission of such electronic communication is
customarily conducted in accordance with sound business practice, and
not due to any method or device adopted to evade this section or to
prevent or delay the issuance of an injunction or restraining orderwith
respect to such infringing matter or violating matter.
(D)
(i)
(I) A domain name registrar, a domain name registry, or other
domain name registration authority that takes any action described
under clause (ii) affecting a domain name shall not be liable for
monetary relief or, except as provided in subclause (II), for injunctive
relief, to any person for such action, regardless of whether the
domain name is finally determined to infringe or dilute the mark.
(II) A domain name registrar, domain name registry, or other
domain name registration authority described in subclause (I) may
be subject to injunctive relief only if such registrar, registry,
or other registration authority has—
(aa) not expeditiously deposited with a court, in which an action
has been filed regarding the disposition of the domain name, documents
sufficient for the court to establish the court's control and
authority regarding the disposition of the registration and use
of the domain name;
(bb) transferred, suspended, or otherwise modified the domain
name during the pendency of the action, except upon order of the
court; or
(cc) willfully failed to comply with any such court order.
(ii) An action referred to under clause (i)(I) is any action
of refusing to register, removing from registration, transferring,
temporarily disabling, or permanently canceling a domain name—
(I) in compliance with a court order under section 43(d) [15 USCS
§ 1125(d)]; or
(II) in the implementation of a reasonable policy by such registrar,
registry, or authority prohibiting the registration of a domain
name that is identical to, confusingly similar to, or dilutive of
another's mark.
(iii) A domain name registrar, a domain name registry, or other
domain name registration authority shall not be liable for damages
under this section for the registration or maintenance of a domain
name for another absent a showing of bad faith intent to profit from
such registration or maintenance of the domain name.
(iv) If a registrar, registry, or other registration authority
takes an action described under clause (ii) based on a knowing and
material misrepresentation by any other person that a domain name
is identical to, confusingly similar to, or dilutive of a mark, the
person making the knowing and material misrepresentation shall be
liable for any damages, including costs and attorney's fees, incurred
by the domain name registrant as a result of such action. The
court may also grant injunctive relief to the domain name registrant,
including the reactivation of the domain name or the transfer of the
domain name to the domain name registrant.
(v) A domain name registrant whose domain name has been suspended,
disabled, or transferred under a policy described under clause (ii)(II)
may, upon notice to the mark owner, file a civil action to establish
that the registration or use of the domain name by such registrant
is not unlawful under this Act. The court may grant injunctive
relief to the domain name registrant, includingthe reactivation of
the domain name or transfer of the domain name to the domain name
registrant.
(E) As used in this paragraph—
(i) the term "violator" means a person who violates section
43(a) [15 U.S.C. § 1125(a)]; and
(ii) the term "violating matter" means matter that is the
subject of a violation under section 43(a) [15 USCS § 1125(a)].
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