IPEC Victoria Espinel Steps Down

Intellectual Property Enforcement Coordinator, Victoria Espinel, has stepped down from her position, effective Friday, August 9, 2013. Andrew Ramonas, "White House IP Chief Victoria Espinel Steps Down," Corporate Counsel, Aug. 13, 2013. Until a new IPEC is officially named, Howard Shelanski, administrator of the U.S. Office of Information and Regulatory Affairs, will act as Interim IPEC. Id.
According to Corporate Counsel, "Congress created the intellectual property enforcement coordinator post in the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (text), and the Senate confirmed Espinel as the coordinator in December 2009. She previously was an IP law professor at George Mason University School of Law and the first assistant U.S. trade representative for intellectual property and innovation." Id.
    
It has been suggested that Ms. Espinel will be moving over to the Business Software Alliance, although no formal announcement has yet been made. See, e.g., Alex Byers, "Where will Victoria Espinel land? - NYT: NSA leaks hurt cyber plan's chances - Senators step up Bitcoin scrutiny," Politico Morning Tech, Aug. 13, 2013; The Deadline Team, "Nation's First IP Czar Steps Down," Deadline, Aug. 12, 2013; Jennifer Martinez, "Obama's intellectual property chief steps down," Hillicon Valley (The Hill's Technology Blog), Aug. 12, 2013. 
 
Updates from the IPEC's Office can be found here: http://www.whitehouse.gov/omb/intellectualproperty. Interestingly, this site still lists Ms. Espinel as serving as the IPEC.

Prior Posts on the Privacy and IP Law Blog about the IPEC and its reports can be found here: http://privacyandip.blogspot.com/search/label/IPEC.

USPTO Extends Deadline for Voluntary Best Practices Study

The USPTO recently requested comment from the public on the topic of "processes, data metrics, and methodologies that could be used to assess the effectiveness of cooperative agreements and other voluntary initiatives to reduce intellectual property infringement that occurs on-line—such as copyright piracy and trademark counterfeiting." See Prior Blog Post, White House Releases Second Joint Strategic Plan for IP Enforcement (June 20, 2013). The original deadline for comment was July 22, 2013.

On July 17, 2013, the USPTO extended the deadline until August 21, 2013.

Interested parties should respond to the current regulation (Fed. Reg. No. 2013-17166, see explanation in "Voluntary Best Practices Study; Extension of Comment Period") and include the information itemized in the original request (Fed. Reg. No. 2013-37210).

Online Piracy and Counterfeiting: Ad Networks Adopt New “Best Practices Guidelines”

On July 15, 2013, the US Intellectual Property Enforcement Coordinator (IPEC), Victoria Espinel, announced the adoption of best practices for online advertising, with an aim to reduce the influx of counterfeiting or pirating conduct. The IPEC explained that these practices are aimed at "reducing the flow of ad revenue to operators of sites engaged in significant piracy and counterfeiting." Victoria Espinel, "Coming Together to Combat Online Piracy and Counterfeiting," Office of Management and Budget (July 15, 2013). The participants in this program – at least at the outset, are 24/7 Media, AOL, Conde Nast, Google, Microsoft, SpotXchange and Yahoo! Id.   While supporting and encouraging initiatives like this, the IPEC also cautioned that these activities be undertaken in the context of other interests in the Internet marketplace:

"It is critical that such efforts be undertaken in a manner that is consistent with all applicable laws and with the Administration's broader Internet policy principles emphasizing privacy, free speech, fair process, and competition. We encourage the companies participating to continue to work with all interested stakeholders, including creators, rightholders, and public interest groups, to ensure that their practices are transparent and fully consistent with the democratic values that have helped the Internet to flourish. We also encourage other participants in the online advertising space to consider adopting voluntary initiatives that protect ad networks, publishers, advertisers, creators, rightholders, and above all, consumers."

Id. The IPEC's blog post includes links to the public statements made by AOL, Google, Microsoft and Yahoo! about these best practices. A copy of the best practices themselves can be found here.

Earlier Online Advertising Initiatives

In March 2012, the IPEC announced another best practices initiative: IPEC, "Advertisers and Advertising Agencies Address Online Infringement Through Best Practices," Spotlight at 3 (Mar. 2012). Specifically, the American Association of Advertisers ("4As") and the Association of National Advertisers ("ANA") strongly encouraged their members to take affirmative steps to prevent U.S. advertisers from placing their ads on predatory foreign websites ("PFWs") – those websites based outside U.S. borders that target U.S. consumers and offer predominantly counterfeit products or pirated content. Press Release, "ANA, 4As Release Statement of Best Practices Addressing Online Piracy and Counterfeiting" (undated); Member Bulletin, "Media Matters: Statement of Best Practices to Address Online Piracy and Counterfeiting," (June 1, 2012). 

These affirmative steps include, for example, insertion of language in ad placement contracts that requires ad networks and other intermediaries involved in U.S.-originated advertising campaigns to take commercially reasonable measures to prevent ads from appearing on PFWs.  Member Bulletin (June 1, 2012). Other steps include requiring intermediaries involved in the serving of an advertisement to respond expeditiously to complaints by rights holders or advertisers and to provide remediation to advertisers whose ads have been misplaced on PFWs. Id.

Conclusions

The problem of online counterfeiting and piracy undertaken by PFWs causes serious damage to the U.S. economy and U.S. businesses. See, e.g., StopFakes.com, "Top 10 Ways to Protect Yourself From Counterfeiting and Piracy" (undated). Every initiative aimed at reducing the impact of these activities is welcome, assuming that other rights (such as First Amendment, privacy, competition and fundamental due process) are not sacrificed. Hopefully, we will see more initiatives from other key players in the Internet ecosystem that are not only aimed at reducing online piracy and counterfeiting, but also at effectively eliminating the incentive for PFWs to capitalize on U.S. intellectual property rights. By eliminating the incentive, perhaps the "cost" to offer pirated content and counterfeited goods will simply be too high, and these entities will choose to no longer offer them.

White House Releases Second Joint Strategic Plan for IP Enforcement

Today, the IPEC (Intellectual Property Enforcement Coordinator) announced that the White House has released its second Strategic Plan for IP Enforcement. The IPEC's blog provides more information about what is included in the update: http://www.whitehouse.gov/blog/2013/06/20/intellectual-property-key-driver-our-economy. Among the myriad updates in this report are the following:

• Report on private sector "voluntary" agreements to combat counterfeiting and piracy:
  1) Center for Safe Internet Pharmacies (jointly established by American Express, Discover, eNom, Facebook, GoDaddy, Google, MasterCard, Microsoft, Neustar, PayPal, Visa and Yahoo!);
  2) Joint initiative by AT&T, Cablevision, Comcast, Time Warner Cable, and Verizon along with music labels and movie studios to voluntarily reduce online piracy;
  3) Creation of best practices by payment processors such as American Express, Discovery, MasterCard, PayPal and Visa to withdraw payment services for online sales of counterfeit and pirated goods; and
  4) The Association of National Advertisers' and American Association of Advertising Agencies' joint leadership pledge not to support online piracy and counterfeiting with advertising revenue (see MPAA's report about the issuance of this pledge);
• Of the 20 legislative recommendations made in the Administration's March 2011 White Paper on Intellectual Property Enforcement Legislative Recommendations, seven of them have become law.

The Administration re-articulated its continuing concerns about the following areas: 1) abusive patent litigation tactics that pose "a significant and growing challenge to innovation" and is seeking introduction and passage of various patent reform recommendations; 2) efforts by foreign governments to require the transfer of trade secrets or other proprietary business information as a condition of market access or the ability to do business in that country; and 3) changes in technology, social norms, business models and global distribution models that further complicate IP enforcement concerns (such as cloud computing, mobile computing, data storage, information security and 3D printing). It reports having made strides already to address these concerns, but recognizes that more work remains to be done.

The USPTO simultaneously issued a request for public comment about Voluntary Best Practices to curb online counterfeiting and piracy. A summary of the Notice and its components can be found here: http://www.regulations.gov/#!documentDetail;D=PTO-C-2013-0036-0001; the actual Federal Register Notice is here: http://www.regulations.gov/contentStreamer?objectId=09000064813341ca&disposition=attachment&contentType=pdf. According to the Notice, comments must be submitted by July 22, 2013.

The first Strategic Plan was announced in 2010. Prior Privacy and IP Law Blog posts about the IPEC and other IP enforcement initiatives/updates can be found here: IPEC.

Congressional Joint Economic Committee Published Report on Impacts of IP Theft

On August 6, 2012, the Joint Economic Committee issued its report on "The Impact of Intellectual Property Theft on the Economy." (Press release; report). In summary, the report explains:
 

"IP infringement harms companies through lost revenue, the costs of IP protection, damage to brand, and decreased incentives to innovate because of potential theft.[FN3] Consumers are harmed when they purchase counterfeit goods of lower quality, some of which, such as counterfeit medicines, may pose health or safety risks. Governments lose tax revenue and bear enforcement costs. Decreased incentives to innovate resulting from IP infringement reduce economic growth, weaken the nation's competitiveness, and decrease job creation." (Report at 1)
 

Each of these items of harm are detailed in the report, which cites statistics about seizures by various government agencies, both U.S. and abroad. In addition, it singles out China as a major source of "pirated goods seized at the U.S. border." (Id.) 

The report also posits that small businesses are less likely to be able to combat such infringement, or actively enforce their IP rights, because they lack the resources to pursue enforcement actions.  The report explains that this conclusion derives directly from statistics about filing habits in judicial fora:  "Data on investigations initiated and completed by the U.S. ITC [International Trade Commission] show that while small businesses represent 79.0 percent of all businesses in the U.S., they comprise only 10.5% of firms filing complaints regarding intellectual property infringement." (Id. at 3) (footnote omitted). Indeed, 78.9% of the firms that seek to enforce their rights through this mechanism are apparently large or public firms. (Id.)  

Finally, the report concludes that the Intellectual Property Enforcement Coordinator (IPEC) is preparing a new Joint Strategic Plan on Intellectual Property Enforcement, which presents an opportunity to improve protections for U.S. IP rights holders. (The IPEC's June 2012 Report on the Joint Strategic Plan (2 Year Anniversary Report) is the most current version available online.)

Open Forum at ABA Annual Meeting on Online Piracy and Counterfeiting

In August 2012, the Intellectual Property Law (IPL) Section of the American Bar Association (ABA) will be hosting an open forum during the ABA Annual Meeting in Chicago on online piracy and counterfeiting. I will be moderating one panel (on the scope and severity of the problem) and one of my co-chairs of the Joint Task Force on Online Piracy and Counterfeiting, Chris Katopis, will be moderating the other (essentially, on the U.S. government's response and remedies). During these panels, and through the work of the Task Force, we are focusing on conduct by entities offshore – essentially foreign sites that currently are beyond U.S. jurisdiction, but who may be engaged in significant copyright piracy of U.S. works and/or trademark counterfeiting of U.S. trademarks.
 
More details about the panels can be found on the ABA's Annual Meeting Site, and in particular, the Intellectual Property Law Section's description of the IPL programs that will occur during the meeting.

This panel follows a similar panel that I moderated in March, during the IPL Section's Annual Meeting in Washington, D.C. (page 9). We had excellent attendance and feedback after the program. I am hoping for a similar result from the Chicago panel discussion, and look forward to getting feedback and input from the attendees about these issues.

In the meantime, here are some governmental resources that identify some of the concerns, and the impacts on the U.S. economy of piracy & counterfeiting that originates outside our borders, but is directed to a U.S. audience:

• Customs & Border Protection (CBP) Annual Reports
  
• Immigration and Customs Enforcement
  • CBP/ICE FY 2011 seizure statistics,
• Victoria Espinel, Intellectual Property Enforcement Coordinator (IPEC)
  • IPEC's Spotlight Newsletter, various editions
  • Sign up to get updated notifications from IPEC through email: Send an email to IntellectualProperty@omb.eop.gov, and include as your subject: "Intellectual Property Spotlight Subscription Request."
• U.S. Chamber of Commerce: Intellectual Property "Issue" Page
• US Trade Representative, Intellectual Property Initiative
• USTR Special 301 report for 2012 
• USTR Notorious Markets reports
• US Patent & Trademark Office, Intellectual Property Rights (IPR) Attaché Program

I look forward to seeing you in August.

‘Tis the Season for . . . Anti-Counterfeiting Legislation?

In the past several weeks, several major legislative proposals have been introduced in both the House and the Senate to provide additional anti-counterfeiting enforcement tools for law enforcement and private rights holders alike. Two of these bills – the PROTECT IP Act (S. 968) and the Stop Online Piracy Act (H.R. 3261) – have already been discussed in detail in this blog. (See posts under the Online Piracy tag.)

Details about the remaining legislative proposals follow (listed chronologically):

• Protect American Innovation Act of 2011 – introduced in the Senate on November 8, 2011 as S. 1830 by Sen. Deborah A. Stabenow (D-Mich.)
  • Focuses on the Treasury Department, and particularly U.S. Customs and Border Protection ("CBP") and U.S. Immigration and Customs Enforcement ("ICE")
  • Contains provisions relating to coordinating IP rights enforcement, enhancing training in the Treasury Department and amending 19 U.S.C. § 1526 (Tariff Act; Merchandise Bearing American Trademark) to expand prohibitions on importation, exportation and transshipment of counterfeit or pirated goods.
  • Of particular note are the following provisions:
    • Coordination of IP Rights Enforcement (Subtitle B)
      • Requires coordination of CBP and ICE IP enforcement efforts through a new Director of IP Rights Enforcement (within the U.S. Department of the Treasury) (§ 111)
    • Regulatory and Policy Improvements re Combating Counterfeiting and Piracy (Subtitle C)
      • Allows CBP to set up regulations about making information and samples of seized goods available to IP owners for purposes of inspection and analysis. (§ 123)
      • Creates a system to identify "low risk importers" who could be subject to reduced inspections by CBP. (There would be a self-certification and third-party verification process put in place.) (§ 125)
      • Creates a "watch list" database of participants in import, export and transshipment process "whose activities [CBP] determines merit special scrutiny at ports of entry because of the risk of importation or transshipment of goods that violate" IP rights or exclusion orders. (The Secretary of the Treasury will have 180 days from enactment to develop a plan to implement the database.) (§ 126)
      • Provides that civil fines imposed by 19 U.S.C. § 1526(f) may not be mitigated, dismissed or vacated except in extraordinary cases or when ordered by the court. (§ 127)
    • New Legal Tools for Border Enforcement (Subtitle E)
      • Amending 19 U.S.C. § 1526 (Tariff Act) to apply the definition of counterfeiting that comes from the crimes code (18 U.S.C. § 2320) and to provide for enhanced penalties for counterfeiting (§ 141)
      • Makes conforming amendments to copyright law to include "exports and transshipments" along with imports as regulatable conduct (§ 141(b)).
      • Enhances the requirements for declarations required under the Tariff Act (§ 142)
      • Permits the seizure and forfeiture of devices designed to circumvent intellectual property rights protections (§ 143)
    • Administrative Provisions (Subtitle F)
      • Requires establishment of an advisory committee to provide advice to the Secretary of the Department of Treasury, to CBP and ICE on all matters involving the enforcement of import safety standards and IP rights by CBP and ICE (§ 151)
      • Requires the advisory committee to submit an annual report describing the operations of the Committee in the past year and set forth any recommendations about the enforcement of import safety standards and IP rights by CBP and ICE (§ 151).
      • Allows for staffing enhancements at both CBP and ICE (§§ 152 and 153)
    • Title II – Increased Penalties for Certain Unfair Trade Practices
      • Expands the exclusion orders. In addition to banning the importation of certain goods into the U.S. this provision also provides that the Secretary of State shall deny a visa to the U.S. and the Secretary for Homeland Security shall exclude from the U.S. "any alien that is an officer or member of the board of directors of the person that violated this section or an exclusion order under this section." (§ 201)
      • Enhances penalties for each day on which the importation or sale of counterfeited goods occurred (19 U.S.C. § 1337(f)) from "$100,000 or twice [the domestic value of the articles entered or sold on such day in violation of the cease and desist order]" to "$500,000 or three times [the same domestic value]." (§201(b))
  • Status: Referred to the Committee on Finance on November 8, 2011.
     
• American Growth, Recovery, Empowerment and Entrepreneurship Act ("AGREE Act") – introduced on November 15, 2011 in the Senate as S. 1866 by Sen. Chris Coons (D-Del.) (text, as introduced, is here) and on November 18, 2011 in the House as H.R. 3476 by Rep. Richard L. Hanna (R-NY) (text, as introduced, is here).
• Amends the Trade Secrets Act to explicitly allow U.S. Customs and Border Patrol to share suspected counterfeit materials with rights holders in order to determine authenticity.
• Specifically, these bills provide:
  • if U.S. Customs and Border Protection ("CBP") suspects a product of being imported or exported in violation of 15 U.S.C. § 1124, the Secretary of Homeland Security would be authorized to "share information on, and unredacted samples of, products and their packaging and labels, or photos of such products, packaging and labels, with the rightholders (sic) of the trademark suspected of being copied or simulated, for purposes of determining whether the products are prohibited from importation under that section." § 601(1).
  • Further, once items are seized by CBP under 17 U.S.C. § 1201(a)(2) or (b) (both relating to devices allowing users to circumvent digital rights management information), the Secretary of Homeland Security is "authorized to share information about, and provide samples to affected parties, as to the seizure of material designed to circumvent technological measures or protection afforded by a technological measure that controls access to or protects the owner's work protected by copyright under such title." § 601(2).
  • Both of these provisions are made "subject to applicable bonding requirements."
• Under current law, these materials could not be disclosed for any purpose to rights holders.
• Current Status of Each Bill:
• The Senate Bill was referred to the Committee on Finance on November 15, 2011. Senator Coons' remarks in introducing the Bill appear in the Congressional Record at pages S7594-7596.
• The House Bill was referred to the House Committee on Ways and Means, Committee on the Judiciary and Committee on Financial Services for consideration. No hearings have yet been announced.
   
• National Defense Authorization Act for Fiscal Year 2012 – introduced in the Senate on November 15, 2011 as S. 1867 (H.R. 1540 in the House). (Text of the current version of the Senate bill as passed has not been published yet.)
• The majority
  of this Bill has nothing to do with counterfeiting, and in fact is an appropriations bill relating to military spending.
• However, Amendment No. 1092 (text available here at S7966-7967) was agreed to in the Senate by Unanimous Consent on November 29. This Amendment inserted a provision (based closely on S. 1228 (Combating Military Counterfeits Act of 2011), which was reported favorably by the Senate Judiciary Committee in July) entitled "Detection and Avoidance of Counterfeit Electronic Parts."
• Among other provisions, this Amendment adds the following requirements:
  • Secretary of Homeland Security shall "establish a risk-based methodology for the enhanced targeting of electronic parts imported from any country . . ." (§ 848(b)(1) – S7966).
  • If CBP "suspects a product of being imported or exported in violation of section 42 of the Lanham Act [15 U.S.C. § 1124], and subject to applicable bonding requirements, the Secretary of the Treasury is authorized to share information appearing on, and unredacted samples of, products and their packaging and labels, or photographs of such products, packaging and labels, with the rightholders of trademarks suspected of being copied or simulated, for purpose of determining whether the products are prohibited from importation pursuant to such section." (§ 848(b)(2) – S7966).
  • Amends 18 U.S.C. § 2320 by adding provisions relating to military goods or services such that
    • If a qualifying offense is committed (by trafficking or attempting to traffic in goods or services and knowingly uses a counterfeit mark, the use of which is likely to cause confusion, to cause mistake or to deceive), AND
    • The good or service "malfunctioned, failed or was compromised" AND
    • Could reasonably be foreseen to cause serious bodily injury or death, disclosure of classified information, impairment of combat operations or other significant harm to a member of the Armed Forces or to national security AND
    • The offender had knowledge that the good or service was falsely identified as meeting military standards or is intended for use in a military or national security application;
    • THEN the following penalties will apply:
      
      • Maximum fines increased from $2 million to $5 million or maximum sentence is increase from no more than 10 years to no more than 20 years, or both (for individuals)
      • For subsequent offenses, individuals would be subject to fines up to $15 million, imprisoned for not more than 30 years, or both.
      • Or, if the offender is other than an individual, the maximum fine remains at $15 million.
      • For subsequent offenses, non-individual offenders would be subject to a fine of up to $30 million.
  • Sentencing Commission required to determine whether Federal Sentencing Guidelines should be amended to reflect the "intent of Congress that penalties for such offenses be increased for defendants that sell infringing products to, or for the use by or for, the Armed Forces" or law enforcement or "for use in critical infrastructure or in national security applications." § 848(f)(2).
  • This Bill did not provide a definition for "counterfeit electronic part," instead requiring the Secretary of Defense to provide such definition. § 848(g)(1).
• Status: S. 1867 as amended was agreed to in the Senate by a vote of 93-7 on December 1, 2011.
   
• Counterfeit Drug Penalty Enhancement Act of 2011 – introduced in the Senate on November 17, 2011 as S. 1886 by Sen. Patrick J. Leahy (D-Vt.) (text, as introduced, is here) and in the House as H.R. 3468 by Rep. Patrick L. Meehan (R-Pa.)
  (text, as introduced, is here)
  
  • Amends 18 U.S.C. § 2320(a) to double the maximum fine to be assessed for trafficking in "counterfeit drugs" (defined under the Food, Drug and Cosmetic Act, 21 U.S.C. § 321(g)(2) to the following: 1) $4 million for individual defendants; and 2) $10 million for "persons other than individuals" (e.g., entities of any sort, including corporations, companies, associations and organizations).
  • Both bills provide that repeat offenses incur increased penalties of $8 million, with a 20 year prison term (individuals) and $20 million (entities), respectively.
  • Differences between the House and Senate Bills
    • The Senate Bill recommends increasing the maximum prison sentence of 20 years, and mandates that the U.S. Sentencing Committee re-evaluate the recommended sentences for all counterfeiting crimes.
    • The House bill recommends that the prison sentence be increased to "life or any term of years." The House bill does not direct any evaluation by the Sentencing Commission.
  • Current law provides that these limits are 1) $2 million with a maximum prison sentence of 10 years for individuals; and 2) $5 million for entities. Repeat offenders incur a maximum fine of $5 million and 20 years imprisonment for individuals, and $15 million for entities. 18 U.S.C. § 2320.
  • Current Status of Each Bill
    • The Senate Bill is scheduled to be considered by the Senate Judiciary Committee on December 8, 2011, at 10:00am in SD-226. (Hearing notice is here – with a link to the webcast, when it's prepared.)
    • The House Bill has been referred to the House Committee on the Judiciary, but a hearing has not yet been scheduled.

Clearly, both houses of Congress have "counterfeiting" on the mind, and it will be interesting to see where these various proposals go. Of course, only if one can keep up.

Stop Online Piracy Act Introduced to Combat Online Piracy and Counterfeiting

This is the second in a series, discussing the two new Bills proposed in Congress to deal with online pirates and counterfeiters. (View the first article relating to the PROTECT IP Act here.)

On October 26, 2011, Representative Lamar Smith introduced the Stop Online Piracy Act (H.R. 3261) ("SOPA"). Other sponsors of the Bill upon its introduction were Ranking Member John Conyers, IP Subcommittee Chairman Bob Goodlatte, Rep. Howard Berman, Rep. Marsha Blackburn, Rep. Mary Bono-Mack, Rep. Steve Chabot, Rep. Ted Deutch, Rep. Elton Gallegly, Rep. Tim Griffin, Rep. Dennis Ross, and Rep. Lee Terry.

The Bill followed several public hearings this year alone (one in the Senate and two in the House), each focused on the problems created by unfettered counterfeiting and piracy, including by foreign web sites, of U.S. rights holders' marks and copyrighted works and aimed at crafting mechanisms to combat that significant loss in U.S. income.

SOPA proposes two additional sections that were not included in the PROTECT IP Act. First, it provides "savings clauses" that mandate that this bill should not be construed to enlarge or diminish the legal obligations or liabilities imposed by 1) the First Amendment; or 2) copyright law (Title 17 of the U.S. Code). Notably absent is a similar provision relating to trademark law (Title 15 of the U.S. Code).

Second, it provides a new mechanism to require qualifying plaintiffs seeking to initiate a private action against the piratical/counterfeiting web site to provide pre-suit notification to certain Internet intermediaries. (More on this is below, in the section on the private right of action.)

INJUNCTIONS PERMITTED

The SOPA provides for injunctions against any continued activities by an owner of a domain name used by an Internet site found to be engaging in prohibited activities. Under the Attorney General's cause of action, this site must be a "foreign infringing site" while under the private right of action, this site must be "dedicated to the theft of U.S. property." There are different tests for each type of site that must be analyzed separately. Once an order is obtained declaring the Internet site in question to qualify for action under this Bill, the order can be served upon the owner, operator or registrant of the site, but also upon certain Internet intermediaries requiring them to stop doing business with these sites.

Under the private right of action section, qualifying plaintiffs must provide pre-suit notification (which recipients are required to act on within 5 days), followed by a formal complaint and a motion for an injunction.  This pre-suit notification can only be provided to two of the four intermediaries:  Internet advertisers or payment network providers.

ATTORNEY GENERAL'S ACTION (Section 102)

The U.S. Attorney General may only obtain injunctions against "foreign infringing sites," which are: 1) "U.S.-directed sites used by users in the United States," 2) have owners/operators who: traffic in counterfeit or illicit labels, or counterfeit documentation/packaging; commit criminal copyright infringement; traffic in counterfeit goods or services; or steal trade secrets in violation of the Economic Espionage Act; and 3) would be subject to seizure if they were domestic.

Once the Attorney General obtains an injunction against a site deemed to be a foreign infringing site, it may serve the injunction order on service providers (i.e., domain name registrars), Internet search engines (called "information location tools" under the PROTECT IP Act), payment network providers (i.e., MasterCard, Visa or PayPal, called "financial transaction providers" under the PROTECT IP Act), and Internet advertising services (i.e., Google or Yahoo!) requiring that they prevent access by subscribers located within the U.S., prevent the site from being served as a direct hyperlink in a search result, refuse to process payments from users of the site, or decline to distribute advertising to U.S.-based Internet users.

PRIVATE RIGHT OF ACTION (Section 103)

The most notable difference between the PROTECT IP Act and SOPA is the pre-suit notification requirement in order to invoke a private right of action. Under SOPA, a qualifying plaintiff must provide advanced notification to the designated agent of a payment network provider or Internet advertising service before filing suit. The payment network provider and Internet advertising service then has 5 days in which to disable payment transactions from U.S. users or refuse to deliver advertising relating to the Internet site in question to U.S. users.

There is a counter-notification system that allows a defendant to accept jurisdiction in a U.S. court and then to proceed to litigation. If no counter-notification is received, the qualifying plaintiff may simply file suit against the registrant (although if he/she cannot be located, the qualifying plaintiff may take action directly against the web site in an in rem action).

Private rightsholders can obtain injunctions against either foreign or domestic sites, but may only serve the resulting court orders on payment network providers and Internet advertisers as well as the owner, operator or registrant of the domain name – and only after the notification/counter-notification process has been completed.

Some immunity is provided to insulate these Internet intermediaries from liability for certain voluntary enforcement efforts. Monetary damages against either the intermediary or the web site owner/operator/registrant are not available, and monetary sanctions are not available if an intermediary ignores the initial court order and continues doing business with the site named in the court order.

This notification provision mirrors closely § 512 of the Digital Millennium Copyright Act (DMCA), but leaves out certain safe harbors that had been carefully negotiated as part of the drafting of the DMCA over a decade ago. For this reason alone, many copyright practitioners, copyright owners, educators and businesses have opposed the introduction of SOPA, claiming that the bill as currently drafted undermines the protections that have been part of copyright law for the last decade. Some have also claimed that the notification provisions fail to impose certain safeguards that could prevent frivolous litigation or blatantly baseless claims – yet still require the intermediaries to disable access within 5 days of receipt of the notification, perhaps leading to the irreversible loss of income and consumer goodwill by a U.S.-based commercial web site engaged in legitimate operations.

ADDITIONAL PROVISIONS (Title II)

SOPA also provides that unauthorized streaming of copyrighted works qualifies as a crime under Title XVIII, and provides enhanced criminal penalties for such infringement. The Bill also contains provisions relating to inherently dangerous goods (such as military counterfeits) and counterfeit pharmaceuticals. It also mandates the appointment of additional foreign service officers to aid in the enforcement of U.S. intellectual property rights around the world.

STUDY REQUIRED (Section 106)

Under SOPA, the Register of Copyrights, working together with other agencies, is required to issue a report on "the enforcement and effectiveness of this title and on any need to amend the provisions of this title to adapt to emerging technologies." (Note that the Director of the U.S. Patent and Trademark Office is not included specifically – although participation is implied because it would be one of the "other agencies" – in the development of the study.) This report is due to the judiciary committees of both the House and the Senate within two years of the enactment of this legislation.

NOTORIOUS INFRINGERS (Section 107)

SOPA also provides that the Intellectual Property Enforcement Coordinator ("IPEC") shall "conduct an analysis of notorious foreign infringers whose activities cause significant harm to holders of intellectual property rights in the United States." The IPEC shall "solicit" public input "and give consideration to the views and recommendations of members of the public." The IPEC shall provide the results of this analysis to the judiciary committees of both the House and the Senate within six months of enactment of this bill.

This report shall include the following:

(1) An analysis of notorious foreign infringers and a discussion of how these infringers violate industry norms regarding the protection of intellectual property.

(2) An analysis of the significant harm inflicted by notorious foreign infringers on consumers, businesses, and intellectual property industries in the United States and abroad.

(3) An examination of whether notorious foreign infringers have attempted to or succeeded in accessing capital markets in the United States for funding or public offerings.

(4) An analysis of the adequacy of relying upon foreign governments to pursue legal action against notorious foreign infringers.

(5) A discussion of specific policy recommendations to deter the activities of notorious foreign infringers and encourage foreign businesses industry norms that promote the protection of intellectual property globally, including addressing—

(A) whether notorious foreign infringers that engage in significant infringing should be prohibited by the laws of the States from seeking to raise capital United States, including offering stock to the public; and

(B) whether the United States Government should initiate a process to identify designate foreign entities from a list of notorious foreign infringers that would be prohibited raising capital in the United States.

HOUSE HEARINGS PRIOR TO INTRODUCTION OF BILL 

The House of Representatives Committee on the Judiciary, Subcommittee on Intellectual Property, Competition and the Internet has held two hearings on this topic. The first was held on March 14, 2011 entitled "Promoting Investment and Protecting Commerce Online:  Legitimate Sites v. Parasites, Part I." The testifying witnesses were (hyperlinks link to prepared statements provided by each witness in advance of the hearing):

• Maria A. Pallante, then-Acting Register of Copyrights, U.S. Copyright Office
• David Sohn, Senior Policy Counsel, Center for Democracy and Technology (CDT)
• Daniel Castro, Senior Analyst, Information Technology and Innovation Foundation (ITIF)
• Frederick Huntsberry (Chief Operating Officer, Paramount Pictures). 

The second hearing (entitled conveniently "Promoting Investment and Protecting Commerce Online: Legitimate Sites v. Parasites, Part II") was held on April 6, 2011. Testifying witnesses during this hearing included:

·        Hon. John Morton, Director of the U.S. Immigration and Customs Enforcement

·        Floyd Abrams, a First Amendment expert who testified on his own behalf

·        Kent Walker, Senior Vice President and General Counsel for Google

·        Christine Jones, Executive Vice President and General Counsel for the GoDaddy Group.   

Chairman Lamar Smith's prepared remarks were published at the end of the hearing. A webcast of the hearing is available on the Senate Judiciary Committee's site.

HOUSE HEARING TO CONSIDER MODIFICATIONS TO BILL

The House Committee on the Judiciary also held a third hearing to consider the Bill on November 16, 2011, which lasted about three and a half hours. The webcast is still available on the Committee on the Judiciary's web site. The witnesses were:

• Maria Pallante, Register of Copyrights, U.S. Library of Congress
• John Clark, Chief Security Officer and VP of Global Security, Pfizer
• Michael O'Leary, Senior Executive Vice President, Global Policy and External Affairs, Motion Picture Association of America (MPAA)
• Linda Kirkpatrick, Group Head, Customer Performance Integrity, MasterCard
• Katherine Oyama, Policy Counsel, Google
• Paul Almeida, President, Dept. of Professional Employees, AFL-CIO

MasterCard was thanked repeatedly for its voluntary efforts at combating these criminals. Google was frequently lambasted for what the various legislators described as Google's participation in the counterfeiting system for its own financial gain.

The overall take-away from the session was that the efforts to involve various Internet intermediaries in the enforcement of U.S. intellectual property rights were a good start. Legislators asked the panelists for recommendations of specific fixes to the current bill, noting that the more participation by affected industries or businesses in the drafting process, the better the bill would end up being. For instance, Rep. Goodlatte asked Google, through Ms. Oyama, its Policy Counsel, to work with the technology committee to help fix the bill rather than referring broadly to alleged technical problems that the bill created.

He and others lamented the broad challenges to the bill that merely complained that the bill would "break the Internet" without providing any specifics about how it would be broken so that the Congressmen could address those issue. The congressmen overwhelmingly agreed that they did not want to break the Internet, but requested specific details so that they could redraft where appropriate and avoid any disruption to service.

It remains to be seen how the bill will be amended, but it seems as if the legislators are intent on "getting it right" before the bill is enacted so that the dual goals of the bill are effectuated: 1) enforcing U.S. intellectual property rights against erosion by criminals (both foreign and domestic) and 2) ensuring that due process of law and other U.S. constitutional rights are not abrogated by the effort. At the conclusion of the hearing, Chairman Smith indicated that a new version of the bill would be introduced as soon as possible, and would take into account the testimony given during the hearing as well as other comments received to date.

US Trade Representative Seeks Comments on 2011 Notorious Markets List

The U.S. Trade Representative today released a request for public comment regarding its Special 301 Out-of-Cycle Review of Notorious Markets. 76 Fed. Reg. 184 (published Sept. 22, 2011). In its summary of the request, the USTR explained:

"In 2010 the Office of the United States Trade Representative (USTR) began publishing the notorious market list as an 'Out of Cycle Review' separately from the annual Special 301 report. This review of Notorious Markets ('Notorious Markets List') results in the publication of examples of Internet and physical markets that have been the subject of enforcement action or that may merit further investigation for possible intellectual property infringements. The Notorious Markets List does not represent a finding of violation of law, but rather is a summary of information that serves to highlight the problem of marketplaces that deal in infringing goods and which help sustain global piracy and counterfeiting. USTR is hereby requesting written submissions from the public identifying potential Internet and physical notorious markets that exist outside the United States and that may be included in the 2011 Notorious Markets List.
 

See summary (emphasis added).

The first Out-of-Cycle review of Notorious Markets was published in February 2011, following a similar request for public comments, and is available on the USTR site. The 2011 Annual Report (published in April 2011 with country reports and a watch list) is also available.

The deadline to respond with comments is October 26, 2011. Specifically, the USTR is looking for detailed information about potential markets "where counterfeit or pirated products are prevalent to such a degree that the market exemplifies the problem of marketplaces that deal in infringing goods and help sustain global piracy and counterfeiting." Id. ¶ 2a. If possible, the USTR would like to see location of the market, principal owners/operators (if known), types of products sold, distributed or otherwise made available, volume of traffic of the website (such as the Alexa ranking), and any known enforcement activity against it (including any requests for takedown of infringing content and the site's response). Id. ¶ 2b.

The USTR will maintain a docket of public comments received about these markets, which will be open for public inspection, except for certain confidential business information, pursuant to 15 C.F.R. § 2006.13. This docket should be available here. (My apologies in advance if this link doesn't work – there were no comments posted when I tested it, but I think the link will be active soon. As an alternative, visit http://www.regulations.gov/, search for public submission and enter "USTR-2011-0012" in the Keyword or ID field.)

IP Enforcement Coordinator Seeks Public Comments about Counterfeiting

The Office of the Intellectual Property Enforcement Coordinator seeks public comment about "how the U.S. Government can prevent counterfeits products from entering its supply chain." In a recent press release circulated on August 9, IPEC Victoria Espinel confirmed that her office is leading a "U.S. Government anti-counterfeiting working group" comprising fourteen government agencies which have been tasked to provide legislative, regulatory and policy recommendations to address this problem.

Submissions are due by September 16, 2011 at 5 p.m. (presumably Eastern time, although no time zone is specified in the notice) and should be filed electronically at http://www.regulations.gov/ docket number OMB-2011-0003. If you are unable to submit your comments through this form, you can call James Schuelke (202/395-1808) to make arrangements for an alternate submission. You can also submit confidential materials in support of a public comment to Michael Lewis (intellectualproperty@omb.eop.gov).

The original Federal Register notice can be found here. It explains that the purpose of this request for comments is to "solicit feedback and best practices from industry, academia, research laboratories, and other stakeholders on issues related to identifying areas of common interest and compare progress and best practices to ultimately eliminating counterfeits in Federal Government supply chains." 76 Fed. Reg. 153 at 48906.

The Notice identifies six objectives of the working group, along with six categories of questions to be addressed in submitted comments (covering the first five of the specific objectives and a sixth "general" area. The sixth objective is not specifically included in the enumerated questions). These six objectives are:

• Objective #1—Develop procedures for program managers to identify items at risk for counterfeiting or requiring authentication of legitimacy. These procedures will, to the greatest extent practicable, utilize current industry standards.
 

• Objective #2—Examine whether additional administrative actions, including regulatory actions, are needed to require suppliers to take stronger anti-counterfeiting measures.
 

• Objective #3—Examine when and how product and package traceability, reporting and marking processes can be used by prime contractors, their suppliers, Federal government personnel and potentially other customers to confirm production authority by the original manufacturer of at-risk items.
 

• Objective #4—Examine government/industry evaluation capabilities and determine whether improvement is needed.
 

• Objective #5—Develop an anticounterfeiting training and outreach strategy for the Federal workforce.
 

• Objective #6—Examine whether additional measures are needed to protect the rights and interests of the United States, recoup costs and prosecute offenders.
 

76 Fed. Reg. 153 at 48905.  The notice also explains that the working group is charged with "reviewing current industry standards, the ability of prime contractors and their suppliers to authenticate or trace at-risk items to the original manufacturer, government evaluation and detection capabilities and limitations, and contractual enforcement authority."  Id.

White House Releases Recommendations for IP Enforcement

On March 15, 2011, Victoria Espinel, the U.S. Intellectual Property Enforcement Coordinator (IPEC) released the Administration's "White Paper" making recommendations about changes to existing legislation that it believes are required in order to protect intellectual property rightsholders and consumers from counterfeit or illegal products and from economic espionage. The Administration's White Paper can be found here and its blog post summarizing its conclusions can be found here.

The White Paper targeted several areas for modification: 1) increasing statutory maximum penalties for economic espionage (18 U.S.C. § 1831) and for drug offenses under the Federal Food, Drug & Cosmetic Act; 2) increasing U.S. Sentencing Guidelines for intellectual property offenses; 3) enhancing specific enforcement powers of the Department of Homeland Security (DHS) and its "component" U.S. Customs & Border Protection (CBP); 4) permitting DHS to share information with rightsholders about seizures of infringing goods and/or circumvention devices; 5) increasing enforcement tools regarding counterfeit pharmaceuticals and illegal online pharmacies; and 6) increasing certain administrative penalties that the CBP can impose.

Many of the recommendations focused on conforming available penalties for particular crimes involving intellectual property and counterfeit drugs, rather than focusing on enhancing private rightsholders' abilities to address and combat specific infringing acts. As a result, these initiatives seem to have little impact on U.S. companies' efforts to self-police. Perhaps there is more to come on this point.

The White Paper also acknowledged the Senate's efforts to prepare and introduce a new version of COICA (the Combating Online Infringement and Counterfeits Act, previously introduced as S. 3804 in the previous Congress), for which the Senate Judiciary Committee held a hearing on February 16, 2011 (webcast available).  More information about COICA as originally introduced and the recent Senate Hearing is described here.

Specifically, the White Paper acknowledges:

"Piracy and counterfeiting in the online environment are significant concerns for the Administration. They cause economic harm and threaten the health and safety of American consumers. Foreign-based and foreign-controlled websites and web services raise particular concerns for U.S. enforcement efforts. We are aware that members of Congress share our goal of reducing online infringement and are considering measures to increase law enforcement authority to combat websites that are used to distribute or provide access to infringing products. We look forward to working with Congress on those efforts and the recommendations contained in this paper in the coming year."

White Paper at 1.  The blog also highlights a combined effort of several private companies (including Google, GoDaddy, and MasterCard) to create a non-profit organization to fight illegal online pharmacies. A prior blog post (February 7, 2011) identifies additional details about the "Voluntary Private Sector Action", with an additional list of participants (American Express, eNom, GoDaddy, Google, MasterCard, Microsoft, PayPal, Neustar, Visa, and Yahoo!) and notes that "By preventing criminal actors from gaining access to consumers and attaining legitimacy through the use of online payment processors, the purchase of ad space or a registered domain name, these private companies can play a critical role in combating illegal online pharmacies that put American consumers at risk." This effort is laudable in that it seeks to prevent particularly dangerous counterfeits with substantial health risks from entering the U.S. market, but its limitation to such a narrow window of counterfeiting means that companies are still left to their own devices to police markets for counterfeit products and grey goods on their own, and create their own enforcement tools.

Finally, the White Paper suggests changes to Copyright law, to permit illegal streaming to qualify as a felony. Thus, the Administration advocates updating criminal enforcement tools to take into account new technologies as they are developed. Again, this is a laudable effort, but does not provide private rightsholders with any additional mechanism to combat infringement and counterfeiting outside of criminal investigations involving an already overloaded criminal justice system.

Senate Judiciary Committee Considering New COICA Bill

On February 16, 2011, the Senate Judiciary Committee held a public hearing entitled "Targeting Websites Dedicated to Stealing American IP." Witnesses testifying before the Committee included Tom Adams (President and CEO, Rosetta Stone), Scott Turow (President, Authors Guild), Christine N. Jones (EVP, General Counsel and Corporate Secretary, The Go Daddy Group, Inc.), Thomas M. Dailey (Vice President and Deputy General Counsel, Verizon), and Denise Yee (Senior Trademark Counsel, Visa, Inc.). Representatives for both Google and Yahoo were invited to attend, but declined to appear. As of this writing, a webcast (lasting the entire 2 hours of the hearing) is still available.

Based on the remarks made during the hearing, it appears that the Committee is considering introducing a modified version of the Combating Online Infringement and Counterfeits Act (COICA) that had been introduced in the last term as S. 3804 (and passed the Committee on a 19-0 vote). The Second Session of the 111th Congress ended before further action was taken on this Bill. (Summary of the status of the bill can be found here, along with a copy of the related Committee Report submitted by Sen. Leahy on December 17, 2010.)

By congressional rules, this Bill must be re-introduced in this Congress (the 112th Congress) before any further action can be taken on it. Given the amount of public comment that the Committee received in connection with the most recent version of the Bill, and given the tenor of the comments during the February 16 hearing, it is likely that the re-introduced Bill will have some important differences from last term's Bill. Some of the issues that may be addressed in this Bill could be a private right of action, removal of a "black list" onto which "bad" websites could be placed and some measure of safe harbor provided for the ISPs and/or other service providers who comply with the regulatory provisions of the new Bill. (For more comments on some of these provisions and their expected impact, see the comments of the Electronic Frontier Foundation (as well as additional links provided on their page) and the Center for Democracy and Technology (again, including some of the cross links within their blog relating to Digital Copyright). Of course, without seeing an actual draft yet, it is difficult to predict which provisions will end up in a new version of the Bill, if introduced this term.

During the hearing, several Senators referred to a second round of questions/comments on this initiative, which suggests that the Committee may hold a follow-up hearing. As of this writing, I could not find a scheduled hearing to re-address a potential COICA draft. At the end of the hearing, Senator Leahy commented that COICA in the last term had bipartisan support and passed in the Committee on a vote of 19-0. He closed with a promise that some version of this Bill will be reintroduced in the current term.

After the hearing concluded, Senator Leahy posted a press release that identified some of the comments that both he and other Committee members have received in support of a bill to stop counterfeiting on the Internet. (Copies of the submissions were also provided in the press release and can be found separately here.) Ranking Member Sen. Grassley's prepared remarks can be found on the hearing summary page, and also in his own list of press releases.

IPEC Releases Joint Strategic Plan on Intellectual Property Enforcement

Last week (on June 22), the Intellectual Property Enforcement Coordinator (IPEC) Victoria Espinel published the Joint Strategic Plan mandated by the PRO-IP Act. (For prior posts about the IPEC's duties and responsibilities, see my June 1, 2010 post.) A full copy of the Plan can be found on the IPEC's site and remarks about the program can be found on the White House's Blog, (IPEC's announcement of the Plan's availability and some general remarks about the program).
This report outlines 33 "enforcement strategy action items", divided into six categories: 1) leading by example; 2) increasing transparency; 3) ensuring efficiency and coordination; 4) enforcing our rights internationally; 5) securing our supply chain; and 6) building a data-driven government. Listed below are just some of the highlights – not a full list or explanation of each of the 33 action items.

• A "government-wide working group" will be established to determine how best to ensure that the U.S. government does not obtain counterfeit parts in connection with its government contracts. This group would be required to submit a formal report within 180 days after its first meeting that details its findings and issues remaining for determination. (Page 7)
• The U.S. government "will review its practices and policies" to ensure that it is not purchasing pirated software so that it can "set an example to our trading partners." In this regard, the IPEC will propose legislative amendments necessary to implement a 1998 Executive Order. (Page 7)
• Enhance communications with rightsholders and victims of IP infringement/crimes/piracy, to inform them about how to report IP crime, which types of cases are generally accepted by the U.S. government for prosecution, and the types of information victims could provide to support an enforcement action. (Page 8-9)
• The U.S. Trade Representative is currently responsible – through its Special 301 process – for providing a Notorious Markets list (defined in the Plan as "a combination of examples of Internet and physical markets that have been the subject of enforcement action or that may merit further investigation for possible intellectual property infringements.") (Page 9)
• The U.S. government will create a database (or combination of databases that function as a unitary whole) that contains information about IP cases, case-specific information about pending investigations. The database "need not" include sensitive IP information such as national security information, trade secrets or grand jury investigation that cannot be disclosed under the Federal Rules of Criminal Procedure (Rule 6(e)). (Page 11)
• The U.S. Customs and Border Protection will provide samples of allegedly infringing products to rightsholders for testing, provided that a bond is posted for each sample "to cover the potential loss or damage to the sample if the products are ultimately found to be non-infringing." In this Plan, the IPEC described a streamlined bond option that allows the posting of a single bond to cover multiple samples released by CBP. (Page 17).
• The U.S. government broadly encourages cooperation in the private sector to police infringing activity and to enforce existing IP rights: "the Administration encourages actions by the private sector to effectively address repeated acts of infringement, while preserving the norms of legitimate competition, free speech, fair process and the privacy of users." (Page 17)
• Google, Yahoo and Bing were lauded specifically for their development of "voluntary protocols to prevent the sale of sponsored results for unlawful businesses selling counterfeit medications on-line." Their list of so-called "unlawful businesses" is based, in part, on verification by the National Association of Boards of Pharmacy's Verified Internet Pharmacy Practice Sites and/or certifications from the original manufacturers of legitimate and FDA-approved pharmaceuticals. (Page 18) – See also Pharmaceutical Security Institute (PSI) and the Partnership for Safe Medicines. (Page 53).
• The IPEC will initiate and coordinate a process of reviewing existing IP laws and their penalties (whether civil or criminal) to determine whether their reach is far enough, or whether there are modifications required to "enhance enforcement efforts." (Page 19).

The Plan also summarizes various Federal Agencies' enforcement activities in 2010 (to date) (Page 35).
Please comment below about other portions of the Plan if there are other points that should not be overlooked here.

Summary of IPEC’s Responsibilities

On October 13, 2008, President Bush signed into law the Prioritizing Resources and Organization for Intellectual Property Act of 2008 ("PRO-IP Act of 2008"). Pub. L. No. 110-403, 122 Stat. 4256 (2008). While the Act principally targets copyright issues, it also increases civil penalties for trademark counterfeiting (including for direct as well as for certain types of contributory infringement), enhances criminal penalties for trafficking in counterfeit goods bearing others' trademarks and provides additional anti-piracy tools at the executive branch level in the form of an Intellectual Property Enforcement Coordinator (IPEC). It took a full year before someone was appointed to fill the IPEC role (see my October 2009 post describing Ms. Victoria Espinel, the current IPEC).

Since Ms. Espinel's appointment, however, a number of projects have been assigned to her office. The purpose of this blog post is to summarize briefly those projects and provide links for more information. I also commend to you an article published on CNET shortly after the PRO-IP Act was enacted by Congress (but before the President signed it into law) that provides a basic outline of the position.

As Assigned by the PRO-IP Act

From the outset, the IPEC was tasked with coordinating the development and implementation of a Joint Strategic Plan against counterfeiting and infringement and to facilitate the issuance of policy guidance to other U.S. government agencies and departments relating to domestic and international intellectual property enforcement programs. Pub. L. No. 110-403 § 301. This position appears to be directed to correct a flaw in the "lack of permanent and effective leadership in coordinating" IP enforcement efforts. Prioritizing Resources and Organization for Intellectual Property Act of 2008, House Report 110-617, May 5, 2008 ("House Report"), at 26. As enacted, however, this position does not have any independent prosecutorial or other law enforcement authority, and appears to only have "advisory" duties. Pub. L. No. 110-403
§ 301(b)(2).

Among the IPEC's initial advisory responsibilities were the following:

1) chair an "interagency intellectual property enforcement advisory committee";

2) coordinate the Joint Strategic Plan (the "Plan");

3) assist, when requested, in the implementation of the Plan;

4) facilitate the issuance of policy guidance on "basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law;"

5) report to the President and to Congress about IP enforcement programs;

6) report to Congress about the implementation of the Plan; and

7) "carry out such other functions as the President may direct." Id. § 301(b)(1).

So, where is this Joint Strategic Plan? On February 23, 2010, the IPEC requested public comment about the proposed content of a Joint Strategic Plan. Coordination and Strategic Planning of the Federal Effort Against Intellectual Property Infringement: Request of the Intellectual Property Enforcement Coordinator for Public Comments Regarding the Joint Strategic Plan, 75 Fed. Reg. 8137 (Feb. 23, 2010). Comments were due by March 24, 2010, and can be found on the IPEC's web site.

As Assigned by the Trademark Technical and Conforming Amendment Act of 2010

On January 26, 2010, Representatives John Conyers, Jr. (MI) and Lamar Smith (TX) co-sponsored a bill (H.R. 4515) intended to "make certain technical and conforming amendments to the Lanham Act." Similarly, on January 28, 2010, Senators Patrick Leahy (VT) and Jeff Sessions (AL) co-sponsored an identical bill in the Senate (S. 2968) which was passed without amendment by Unanimous Consent the same day. These bills have now been enacted. See Pub. L. No. 111-146 (enacted Mar. 17, 2010).

In addition, the Act requires the IPEC to conduct a one-year study and prepare a substantive report on two subjects: 1) "the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;" and 2) "the best use of Federal Government services to protect trademarks and prevent counterfeiting." The IPEC's report would be due within one year after the enactment of the Bill, or no later than March 17, 2011.

For More Information

The Official Site for the IPEC's Office is http://www.whitehouse.gov/omb/intellectualproperty/. Should you wish to contact the IPEC, the official e-mail address is mailto:intellectualproperty@omb.eop.gov?subject=Contact%20IPEC.

White House appoints IP Enforcement Coordinator

On September 25, 2009, President Obama appointed Victoria A. Espinel as IP Enforcement Coordinator (“IPEC”). This position was mandated by the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO-IP Act”) S. 3325, Public Law No. 110-403, signed into law by President George W. Bush on October 13, 2008. See Current Status of the House Bill and of the Senate Bill.

The Act governs enforcement of IP infringement matters, particularly counterfeiting of copyrighted works and trademarks. With respect to trademarks, the Act increases civil penalties for trademark counterfeiting, including for direct as well as for certain types of contributory infringement and enhances criminal penalties for trafficking in counterfeit goods bearing others’ trademarks.

The IPEC is a cabinet-level position in the Executive Office focused on combating counterfeiting and IP infringement.

Under the Act, the IPEC will be an advisor only, not a prosecutor or other law enforcement officer. Specifically, the IPEC is charged with chairing an “interagency intellectual property enforcement advisory committee”, coordinating a Joint Strategic Plan (defined with more specificity in the Act) against counterfeiting and infringement, assist (when requested) in the implementation of the Plan, facilitate the issuance of policy guidance on “basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law,” report to the President and to Congress about IP enforcement programs, report to Congress about the implementation of the Plan, and “carry out such other functions as the President may direct.” Public Law No. 110-403 § 301(b)(1).

Note that the Act was signed into law nearly a year ago. Under the precise terms of the PRO-IP Act, the Joint Strategic Plan described in the Act was due to be completed and submitted to various House and Senate committees no later than October 13, 2009 – in other words, two days ago!

However, given that the appointment has just been made for the IPEC, the various deadlines set forth in the act must be modified in some manner. It will be interesting to see how much the deadlines change.

For more information, see the following:

* White House Press Release, “President Obama Announces More Key Administration Posts,” September 25, 2009. The press release describes Ms. Espinel’s background and qualifications for the position.

* Official Summary of the Senate version of the bill (which ultimately was signed by Pres. Bush in 2008)

* Wikipedia’s description of the PRO-IP Act

* “FAQ: What to expect from a new IP cabinet position,” CNET News, Sept. 30, 2008 (just before the Act was signed into law).

Ms. Espinel’s nomination was received in the Senate on September 29, and the matter has been referred to the Senate Committee on the Judiciary. Nomination PN1027-111. It does not appear that a confirmation hearing has yet been scheduled.