Category Archives: Government Oversight

IP Enforcement Coordinator Seeks Public Comments about Counterfeiting

by Christina Frangiosa


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 ([email protected]).

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.

Senate Judiciary Committee Hearing Tomorrow on IPEC Oversight

by Christina Frangiosa


The Senate Judiciary Committee has scheduled a hearing tomorrow entitled, “Oversight of Intellectual Property Law Enforcement Efforts” beginning at 10:00am in the Dirksen Senate Office Building.

The witness list includes: 

  • The Honorable Victoria A. Espinel, Intellectual Property Enforcement Coordinator, Office of Management and Budget
     
  • Jason Weinstein, Deputy Assistant Attorney General, Criminal Division,U.S. Department of Justice
     
  • Gordon M. Snow, Assistant Director, Cyber Division, Federal Bureau of Investigation
     
  • Allen Gina, Assistant Commissioner, Office of International Trade, U.S. Customs and Border Protection
     
  • Erik Barnett, Assistant Deputy Director, U.S. Immigration and Customs Enforcement 

The session is scheduled to be webcast, with a link to the broadcast available in the Committee’s hearing notice.

Department of Commerce Issued Report on Trademark Litigation Tactics

by Christina Frangiosa


The U.S. Department of Congress issued its Report to Congress on Trademark Litigation Tactics on April 27, 2011. See also USPTO’s summary of its requests for comment. The report provided an excellent summary of trademark rights and trademark owners’ duties to enforce their rights or risk losing them. It also summarized the comments that the USPTO received during its two requests for public comment. In its formal Recommendations the Department proposed that it: 1) “engage the private sector about providing free or low-cost legal advice to small businesses via pro bono programs and IPR clinics;” 2) “engage the private sector about offering continuing legal education programs focused on trademark policing measures and tactics;” and 3) enhance Federal agency educational outreach programs by identifying resources that enable small businesses to further their understanding of trademark rights, enforcement measures, and available resources for protecting and enforcing trademarks.” Report at 26.

After having received comments from stakeholders and others during the comment periods, the Department conceded that it was “unclear whether small businesses are disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner’s rights,” id., which the Department had been tasked to explore. This analysis matches the conclusion of at least one of the bar associations that submitted comments – specifically, the American Bar Association’s Intellectual Property Law Section. See Feb. 4, 2011 Letter from the ABA IPL Section at 2 (“Although there is no consensus, as would be expected considering the diversity of the Section, the results reflect that trademark abuse is not limited to small businesses but can be experienced by any party defending a trademark suit.”).

The Department’s Report further concluded that “because trademark enforcement is a private property rights litigation issue, if abusive tactics are a problem, such tactics may best be addressed by the existing safeguards in the litigation system and by private sector outreach, support and education relating to these issues.” Report at 26. Again, the ABA IPL Letter made a similar point: based on a survey that the IPL Section had conducted, “The responses indicate that there is no consensus about many of these issues, lending further support to the conclusion that determining litigation misconduct – in a trademark case or otherwise – requires a fact-intensive analysis that cannot be addressed by a single, catch-all legislative solution.” Feb. 4, 2011 Letter at 4.

At the end of the Report, the Department provided several resources that small businesses could consult to assist it in its enforcement efforts. See Report at 22-25 (narrative discussion); and Appendix A (USG Resource Contact Information Sheet). The links in the Appendix are listed below for ease of reference (the descriptions of each reference below is verbatim from the report. Note that copying this information does not violate a copyright, since government works are not subject to the Copyright Law. 17 U.S.C. § 105):

  • STOP Hotline at 1-866-999-HALT.
  • “SME IP Training Tutorial” an online training tool for SMEs: http://www.StopFakes.gov/525/menu/index.htm.
  • “APEC Intellectual Property Explorer,” tool helps businesses identify their intellectual property assets, http://www.stopfakes.gov/.
  • “Experts’ Advice for Small Businesses Seeking Foreign Patents” (GAO Report), http://www.gao.gov/new.items/d03910.pdf.
  • USPTO Inventors Assistance, http://www.uspto.gov/inventors/iac/index.jsp; FAQs, http://www.uspto.gov/inventors/independent/index.jsp; and computer-based training, “From Concept to Protection,” http://www.uspto.gov/inventors/index.jsp
  • USPTO “TMIN,” the Trademark Information Network, which features broadcast-style videos that cover important topics and application filing tips, http://www.uspto.gov/trademarks/process/TMIN.jsp
  • “International IP Advisory Program”, through which U.S. small businesses can obtain one hour of free legal advice on their IP issues in various countries, http://www.stopfakes.gov/int_ipr_ap.asp
  • U.S. Copyright Office website for registration and general information (including Circular 1, “Copyright Basics”): http://www.copyright.gov,
  • USITC’s Trade Remedy Assistance Office (TRAO): online www.usitc.gov/trade_remedy/trao , by telephone at (800) 343-9822 or (202) 205-2200, or by fax at (202) 205-2139

More information about the statutes that commissioned the study as well as analysis of the ABA IPL Section’s letter can be found in prior posts within this blog.

White House Releases Recommendations for IP Enforcement

by Christina Frangiosa


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

by Christina Frangiosa


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.