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: Continue reading
On Oct. 31, 2012, Rosetta Stone and Google announced their decision to settle their trademark infringement case relating to the sale and use of AdWords in Google’s search engine results. Rosetta Stone’s 10/31/12 Press Release. The companies have agreed to work together to “combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” Id. The companies hope that by working together, they can “improve detection methods, and better protect from abuse brands like Rosetta Stone, advertising platforms like Google AdWords, and ultimately consumers on the Internet.” Id.
As a consequence of the settlement, the lawsuit Rosetta Stone Ltd. v. Google, Inc., Civ. A. No. 1:09-cv-00736-GBL-TCB (filed July 10, 2009) has been dismissed. Doc # 238 (Oct. 31, 2012) (Order and Stipulation to Dismiss), available on Justia. The complaint originally alleged claims of direct trademark infringement (15 U.S.C. § 1114(1)(a)); contributory trademark infringement; vicarious trademark infringement; trademark dilution (15 U.S.C. § 1125(c)(1)); and unjust enrichment.
- Rosetta Stone’s Policy on AntiPiracy: http://www.rosettastone.com/anti-piracy
- Google’s Transparency Report (reporting on copyright notice & takedown requests): http://www.google.com/transparencyreport/removals/copyright/
- Business Software Alliance on Anti-Piracy: http://www.bsa.org/country/anti-piracy.aspx
- Entertainment Software Association on Anti-Piracy: http://www.theesa.com/policy/antipiracy.asp
- The FBI’s Anti-Piracy Warning Seal: http://www.fbi.gov/about-us/investigate/white_collar/ipr/anti-piracy
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.)
This is part two in a series. For other posts in this series, click here.
In the past few months, there have been several public debates over whether ISPs could be – or should be – ordered to block access by any user in the United States to a website that is accused of copyright infringement (in this context, it’s generally referred to as “piracy,” although that term is not defined in the Copyright Act) or trademark counterfeiting (as that term is defined by 15 U.S.C. § 1116). This topic was considered by the Senate Judiciary Committee during its February 16, 2011 hearing on “Targeting Websites Dedicated to Stealing American IP,” including in testimony delivered by Thomas M. Dailey of Verizon. Mr. Dailey recommended that the ability to obtain a court order directing ISPs to prevent an IP address from resolving should be limited to actions undertaken by the Attorney General’s office, so that private litigants would not “drain” ISP resources. Testimony at 2.
Recall that the proposed Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (“PROTECT IP Act” or “PIPA”) (S. 968) and Stop Online Piracy Act (“SOPA”) (H.R. 3261) foundered upon a fairly widespread opposition launched in mid-January 2012 to certain terms believed to be in the bills, including provisions for DNS blocking. Interestingly, only the Attorney General had the right – in both of these bills – to seek a court order mandating an ISP to block certain websites (as well as against three other types of intermediaries: financial payment processors, search engines and Internet advertisers). Under both bills, private rights holders were restricted to seeking court orders requiring actions to be undertaken by payment processors and Internet advertisers alone.
As a result of dramatic public pressure, proponents of the bill removed the so-called “DNS blocking provisions” before final markup sessions had occurred. See e.g., Press Release, “Smith to Remove DNS Blocking from SOPA, Retains Strong Provisions to Protect American Technology and Consumers,” Jan. 13, 2012 (“After consultation with industry groups across the country, I feel we should remove Domain Name System blocking from the Stop Online Piracy Act so that the Committee can further examine the issues surrounding this provision. We will continue to look for ways to ensure that foreign websites cannot sell and distribute illegal content to U.S. consumers.”); see also Center for Democracy and Technology (“CDT”), “Copyright Bill Advances, But Draws Plenty of Criticism,” May 26, 2011; CDT, “The Open Internet Fights Back,” Jan. 16, 2012.
As a result, proposals to require ISPs to block content in U.S. civil actions – even with a court order in hand – have essentially become dormant.
Nonetheless, it’s an interesting exercise to explore what other jurisdictions have done in this regard.
Orders Requiring ISPs to Block Access to Sites Providing Infringing Content (UK)
For instance, at least three opinions issued in U.K. cases relatively recently required ISPs to block access to websites that facilitated file sharing or other infringement of copyrighted materials. They are:
- Twentieth Century Fox Film Corp. v. British Telecomm. PLC,  EWHC 1981 (Ch) (Eng. & Wales High Court (CH) July 28, 2011) – granting website blocking order pursuant to Digital Economy Act of 2010 (pdf here) § 97A – the first opinion to do so in the UK [¶ 5]
- L’Oreal v. eBay, Case No. C-324/09 (Court of Justice of the EU July, 12, 2011) — recommending blocking order based on Senior Courts Act 1981 § 37(1) and based on an analysis of the CJEU’s Enforcement Directive (2004/48/EC), at Art. 11.
* “Second, L’Oréal submits that eBay is liable for the use of L’Oréal trade marks where those marks are displayed on eBay’s website and where sponsored links triggered by the use of keywords corresponding to the trade marks are displayed on the websites of search engine operators, such as Google.” [Id. ¶ 38]
Dramatico Enter. Ltd v. British Sky Broad.,  EWHC 268 (Ch) (Eng. & Wales High Court (CH) Feb. 20, 2012) – concluding that both the users and operators of the Pirate Bay infringed the copyright owner’s rights [¶ 84]; also provides a summary of an expert opinion describing how BitTorrent works [¶¶ 19-20]; summarizes several orders requiring the URL blocking or “blackholing” of the infringing site [¶¶ 3-4].
European Commission, Report on EU Customs Enforcement of Intellectual Property Rights, Results at the EU Border, 2011 (released July 24, 2012) (press release) (facts and figures): This report provides summaries of relevant data about seizures by EU customs, broken down by member country or by types of goods, but also reaches conclusions about the impact and nature of the infringement. For instance, it explains, “Counterfeiters do not concern themselves with product development costs, garantees [sic] or advertising. Profit is maximised by the theft and copying of an original idea, often with cheaper materials. Nevertheless, IPR infringing goods are increasingly sold at a price similar to that of the original goods and effectively substitute them on the market.” [at pages 13-14.]
EU Information Society Directive (2001/29/EC)
The European Observatory on Online Piracy and Counterfeiting, established in 2008.
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
Victoria Espinel, Intellectual Property Enforcement Coordinator (IPEC)
- U.S. Chamber of Commerce: Intellectual Property “Issue” Page
US Trade Representative, Intellectual Property Initiative
- US Patent & Trademark Office, Intellectual Property Rights (IPR) Attaché Program
I look forward to seeing you in August.