Category Archives: Legislation

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.

ABA Intellectual Property Law Section Weighs in on USPTO’s Trademark Misuse Study

by Christina Frangiosa


On February 4, 2011, the Intellectual Property Law (“IPL”) Section of the American Bar Association submitted its formal response to the USPTO’s request for comments (initial request; final request) in support of the study mandated by Trademark Technical Amendments Act (Pub. L. No. 111-146). This study sought information regarding what the Trademark Technical Amendments Act and the USPTO characterized as the potential for small businesses to be disproportionately victimized by the “misuse” of a corporation’s trademarks (with a strong implication that the dispute could be characterized as a “Golaith” taking advantage of a “David”). After the USPTO posted its initial request for comments, the Congress passed an amendment (the Copyright Cleanup, Clarification, and Corrections Act of 2010, Public L. No. 111-295) to the required study, de-emphasizing the large corporation versus small business focus that had characterized the initial study. This amendment removed the assumption that abusive litigation conduct in trademark cases occurred only at the hands of large businesses, but retained the assumption that only small businesses could be harmed.

The USPTO’s final request for comments to the study required responses no later than February 7. In its letter, the ABA IPL Section reported that it had conducted its own study of its members and summarized the results. It also attached copies of the survey questions and responses for further evaluation by the USPTO. The study conducted by the ABA IPL Section suggests that the problem was not so one-sided, and that other parties in litigation could be harmed by a trademark owner’s enforcement activities, but that a one-size fits all remedy “does not appear to be warranted.” The letter further suggested that current sanctions (pursuant to Rule 11 of the Federal Rules of Civil Procedure) available for imposition by courts during litigation could be sufficient to remedy the harm and deter future bad conduct, provided that the Courts were willing to impose them in instances where the litigation conduct of one party in a trademark case qualified as abusive.

The ABA IPL Section further reported that some respondents felt that the USPTO’s study overlooked the fact that property rights in trademarks are based on use in commerce and do not stem only from registration. It also seemed to overlook the trademark owner’s enforcement obligations – even for common law marks which have not achieved registration (which can support litigation based on 15 U.S.C. § 1125). Failing to enforce one’s trademark rights when required may result in a loss of rights to enforce the trademark against other potential infringers. Because there is no guarantee of success in litigation, the presumption that enforcing a common law trademark amounts to “misuse” is, therefore, flawed.

Prior Privacy and IP Law Blog posts about this topic:

* 11/28/10 Copyright Cleanup Bill Clears Congress for Signature by Pres. Obama

* 10/18/10 USPTO Seeks Comments on Potential Trademark Misuse

Neither statute requires that the USPTO publish the comments that it has received in response to its request, but the results of the study are due to be reported to Congress no later than one year after the enactment of Public Law No. 111-146, or by March 17, 2011. As a result, it is possible that we will see some level of detail about the survey results when the report is made.

New Bill Seeks to Eliminate Social Security Numbers as Uniform Identifiers

by Christina Frangiosa


On January 7, 2011, Representative Ron Paul (R-TX) introduced a bill entitled the “Identity Theft Prevention Act of 2011” (H.R. 220). The Bill seeks to address the pervasive use of Social Security Numbers by various federal, state and local government agencies and to prevent identity theft by eliminating any use of those numbers in connection with government services. It prohibits governmental agencies from requiring mandatory or even voluntary disclosure of an individual’s Social Security Number in connection with documents filed by individuals.

The Bill includes amendments to the Social Security Act (42 U.S.C. 405(c)(2)), the Internal Revenue Code (26 U.S.C. §§ 6109(d)), and the Privacy Act of 1974 (5 U.S.C. 552a note, 88 Stat. 1909) in the following notable ways:

  • Social Security Act – H.R. 220 §§ 2(b) and (d)(2):
    • Requires that Social Security Account Numbers be randomly generated instead of confirming to a specific numbering system (the Social Security Numbering Scheme is described in detail on the Social Security Administration’s archive);
    • Provides that the Social Security Account Number be owned by the individual;
    • Prohibits the Social Security Administration from divulging that number to anyone (other than the account holder himself/herself); and
    • Requires that any pre-existing Social Security Numbers be declared null and void and reissued within 5 years of enactment of the Bill in accordance with the new “random generation” rules. Certain cross-references to the old numbers may be made, but these are limited.
  • Internal Revenue Code – § 2(c)(1):
  • Privacy Act – H.R. 220 § 3:
    • Section 7 of the Privacy Act (5 U.S.C. § 552a (note)) currently reads as follows:
      Sec. 7(a) (1) It shall be unlawful for any Federal, State or local government agency to deny to any individual any right, benefit, or privilege provided by law because of such individual’s refusal to disclose his social security account number.
      (2) the provisions of paragraph (1) of this subsection shall not apply with respect to—
      (A) any disclosure which is required by Federal statute, or
      (B) any disclosure of a social security number to any Federal, State, or local agency maintaining a system of records in existence and operating before January 1, 1975, if such disclosure was required under statute or regulation adopted prior to such date to verify the identity of an individual.
      (b) Any Federal, State or local government agency which requests an individual to disclose his social security account number shall inform that individual whether that disclosure is mandatory or voluntary, by what statutory or other authority such number is solicited, and what uses will be made of it.
    • Pursuant to H.R. 220, these provisions would be amended to read as follows:
      Sec. 7(a) (1) It shall be unlawful for any Federal, State or local government agency to deny to any individual any right, benefit, or privilege provided by law because of such individual’s refusal to disclose his social security account number.
      (2) The provisions of paragraph (1) of this subsection shall not apply with respect to any disclosure which is required under regulations of the Commissioner of Social Security pursuant to section 205(c)(2) of the Social Security Act or under regulations of the Secretary of the Treasury pursuant to section 6109(d) of the Internal Revenue Code of 1986.
      (b) Except with respect to disclosures described in subsection (a)(2), no agency or instrumentality of the Federal Government, a State, a political subdivision of a State, or any combination of the foregoing may request an individual to disclose his social security account number, on either a mandatory or voluntary basis.

The Bill also prohibits “Government Wide Uniform Identifying Numbers” (Section 4) and “Government Established Identifiers” (Section 5). These two prohibitions would go into effect on January 1, 2012.

Under Section 4, the Bill provides that “any two agencies or instrumentalities of the Federal Government may not implement the same identifying number with respect to any individual” except where authorized by 42 U.S.C. 405(c)(2) [the Social Security Act sections described above]. Id. § 4(a).

Under Section 5, the Bill prohibits any two federal agencies from implementing the same numbering system to assign individual identification numbers to any individual and from conditioning the receipt of any federal grant, contract, or funding on the adoption of a uniform numbering system by a state or local government entity or agency. The Bill makes it clear that “administrative simplification” cannot be the stated purpose in establishing or mandating a uniform standard for identification purposes. Id. § 5(b)(2).

Initial Purpose of Social Security Numbers

As initially implemented, the Social Security Numbering system was not intended as a universal numbering system, and indeed, was not adopted by other agencies as such until at least 1943, when an Executive Order mandated that if a numbering system was required to keep records on individuals, that the Social Security Numbering system be used. Executive Order 9397 (3 CFR (1943-1948 Comp.) 283-284). An interesting chronology of the history of policy changes to the Social Security Numbering System can be found at the Social Security Administration’s web site and the explanation of the meaning of each section of the Social Security Number can be found here.

Status of Legislation
Following its introduction on January 7, 2011, the Bill was referred to the House Ways and Means Committee and the House Oversight and Government Reform Committee.

Basic information about the Bill (except for the actual text) can be found through Thomas (Congress’s legislative portal) at this specific link. The actual text can be found here in a variety of formats, including text, XML and PDF.

Copyright Cleanup Bill Clears Congress for Signature by Pres. Obama

by Christina Frangiosa


The Copyright Cleanup, Clarification, and Corrections Act of 2010 (S. 3689), proposed by Sen. Leahy to make certain technical amendments to both copyright and trademark law, cleared both chambers of Congress and was sent to the White House on November 19, 2010 for review and signature. The final bill, as enrolled, can be found here.

Easily missed in this Bill is a provision modifying the Trademark Technical Amendments Act (“TTAA,” now Pub. L. No. 111-146), and in particular, the study that the Department of Commerce is obligated to perform relating to trademark misuse. The TTAA currently requires the Department to study:

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.”

Pub. L. No. 111-146 § 4(a). The modification in S. 3689 states, “(h) TRADEMARK TECHNICAL AMENDMENTS ACT.—Section 4(a)(1) of Public Law 111–146 is amended by striking ”by corporations attempting” and inserting ”the purpose of which is”.”

In my initial blog posting about this Bill, I had posited that Congress would not reach S. 3689 because it had been proposed so late in the session. Pundits have argued that the remaining term of this Congress would be spent drafting and passing a budget, since one had not been proposed to date. However, it appears that this amendment may be enacted before the new year. The impact of this amendment, in fact, may be minimal because the mandated study has already begun, with comments due to the USTPO before January 7, 2011.