1oz61wa

Private Enforcement Actions
labeled as a PFW (and resulting liability) and the cutoff of financial support from U.S. intermediaries.
Assuming such a procedure in fact strikes the appropriate balance between the rights of
rightsholders, the rights of accused PFWs and the rights of the site’s intermediaries, the question
then becomes whether there should be additional limitations on such private enforcement actions. 14
D. Limitations on Court Orders against Intermediaries
As noted above, absent guidance from Congress, courts have crafted their own set of court orders
compelling intermediaries. Frequently these court orders have proceeded on an ex parte basis,
often even before notice was provided to defendant parties. The IPL Section also believes that
intermediaries subject to these orders should be able to defend against the orders on the basis of
burden, technical feasibility and effectiveness, just as they could have had under SOPA and PIPA,
as well as under §512(j) of the DMCA, or Article 8(3) in the EU.
Beyond these limitations, the IPL Section believes that the usual rules for civil litigation under the
F.R.C.P. should apply, e.g., with respect to each side bearing its own costs and expenses (i.e., no feeshifting),
and with the intermediary bearing any costs associated with compliance with a court’s
order. 15
IV.
CONCLUSIONS
Based on the analysis explained above, the IPL Section recommends that a private right of action
be included in any legislative solution that is proposed in the House or in the Senate to redress
online piracy and/or counterfeiting undertaken by PFWs.
Notes
1. Both SOPA and PIPA provided for private rights of action as well as for actions by federal enforcement
agencies, albeit not for all of the new causes of action enabled by the bills. See §4 of PIPA and §103 of SOPA
(each providing for private rights of action with respect to payment processors and advertising networks, but not
ISPs and search engines). The predecessor COICA bill, however, provided only for actions by the Department
of Justice, a feature that was praised in some congressional testimony. See, e.g., Statement of Thomas M. Dailey,
Vice President and Deputy General Counsel, Verizon Communications, Inc. Before the U.S. Senate Committee
on the Judiciary, Senate Hr’g 112-47 “Targeting Websites Dedicated to Stealing American Intellectual Property,”
at 10 (Feb. 16, 2011) (“[W]e think the limitation [in COICA] that ISPs will be required to take action only
pursuant to a judicial order issued in a lawsuit filed by the Department of Justice will help ensure COICA is
narrowly invoked.”) (available at http://www.gpo.gov/fdsys/pkg/CHRG-112shrg67443/pdf/CHRG-
112shrg67443.pdf).
2. See, e.g., Section 4(a) of the Clayton Act, 15 U.S.C. §15 (2012) (providing standing for “any person
who shall be injured in his business or property by reason of anything forbidden in the antitrust laws” to sue for
treble damages); 15 U.S.C.§77k (2012) (providing standing for any purchaser of a security offered pursuant to
an initial public offering with respect to which its registration statement contained an untrue statement of a
material fact or omitted to state a material fact required to be stated therein or necessary to make the statements
therein not misleading, to sue for single damages); 18 U.S.C. §1964 (2012) (providing standing to sue for treble
damages for “any person injured in his business or property” by reason of anything actionable under the RICO
statutes, subject to certain exceptions). The Supreme Court has described Congress’ purpose in making such
grants of standing as follows: “By offering potential litigants the prospect of a recovery in three times the
amount of their damages, Congress encouraged these persons to serve as ‘private attorneys general.’” Hawaii v.
Standard Oil Co. of California, 405 U.S. 251, 262 (1972) (available at http://supreme.justia.com/cases/federal/
us/405/251/case.html).
3. See Combating Online Infringements Act (“COICA”), S. 3804, 111th Cong., §2 (2010) (available at
http://www.gpo.gov/fdsys/pkg/BILLS-111s3804rs/pdf/BILLS-111s3804rs.pdf).
4. See, e.g., Testimony of Scott Turow, President of the Author’s Guild, Before the U.S. Senate Committee
on the Judiciary, at S. Hrg. 112-47 “Targeting Websites Dedicated to Stealing American Intellectual Property,” at
49