Summary of IPEC’s Responsibilities

by Christina Frangiosa

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:[email protected]?subject=Contact%20IPEC.

Reassignment of Judge for Google Book Settlement?

by Christina Frangiosa

On April 22, 2010, the U.S. Senate unanimously confirmed The Honorable Denny Chin (currently sitting in the U.S. District Court for the Southern District of New York) to fill a vacancy on the U.S. Court of Appeals for the Second Circuit. Below is the summary of the legislative action related to his nomination and confirmation:

Nomination: PN1O6O-111

Date Received: October 06, 2009 (111th Congress)
Nominee: Denny Chin, of New York, to be United States Circuit Judge for the Second Circuit, vice Robert D. Sack, retired.
Referred to: Senate Judiciary
Reported by: Senate Judiciary

Legislative Actions
Floor Action: October 06, 2009 – Received in the Senate and referred to the Committee on the Judiciary.
Committee Action: November 18, 2009 – Committee on the Judiciary. Hearings held.
Committee Action: December 10, 2009 – Committee on the Judiciary. Ordered to be reported favorably.
Floor Action: December 10, 2009 – Reported by Senator Leahy, Committee on the Judiciary, without printed report.
Floor Action: December 10, 2009 – Placed on Senate Executive Calendar. Calendar No. 607.
Floor Action: April 15, 2010 – By unanimous consent agreement, the Senate proceed to executive session to consider nomination.
Floor Action: April 15, 2010 – Cloture motion presented In Senate.
Floor Action: April 20, 2010 – Cloture motion withdrawn by unanimous consent In Senate.
Floor Action: April 20, 2010 – By unanimous consent agreement, debate and vote 4-20-10.
Floor Action: April 22, 2010 – Considered by Senate pursuant to an order of April 20, 1010.
Floor Action: April 22, 2010 – By unanimous consent agreement, vote at 12 noon.
Floor Action: April 22, 2010 – Confirmed by the Senate by Yea-Nay Vote. 98 – 0. Record vote Number: 123.

Organization: The Judiciary
Control Number: 111PN0106000

Source: THOMAS (Library of Congress) (Screen clipping taken: 5/7/2010, 3:44 PM)

(Many times, links to the URL for the search results in the Library of Congress’s Thomas site end up not working, so I copied the text and provide it above.) The Congressional Record shows a report of the confirmation here (bottom right of the page).

The Wall Street Journal published a brief bio of Judge Chin when he was nominated in the Fall of 2009, noting that he is best known for “sentencing convicted Ponzi-scheme operator Bernard Madoff to 150 years in prison” earlier in 2009. See also, Benjamin Weiser, “Senate Confirms Federal District Judge for Appeals Court,” The New York Times, City Room (Apr. 22, 2010).

This confirmation is particularly interesting because Judge Chin currently presides over the Google Book Settlement case (Author’s Guild v. Google), which I’ve blogged about in the past. (Prior blog posts can be found archived together.) I have not found any information about when Judge Chin’s term begins on the Second Circuit, but note that he is currently listed as an active judge on the Second Circuit, effective 4/23/2010.

It remains to be seen who will be assigned to the Google Book Settlement once Judge Chin formally takes up his position as a judge of the Second Circuit, but the change will undoubtedly prove to be very interesting and may have a noticeable impact on the proceedings.

New Law in Utah Prohibits Certain Internet Crimes

by Christina Frangiosa

On March 26, 2010, the governor of Utah signed into law the Utah E-Commerce Integrity Act (S.B. 26), which prohibits certain Internet-related conduct, including phishing, pharming, spyware and cybersquatting that involves “a computer, software, or an advertisement located in, sent to, or displayed in” Utah. (Legislative history of the bill, and alternate text versions can be found here.)

Essentially, the bill provides the following:

  • Prohibits the facilitation of “certain types of fraud and injury through use of electronic communications;”
  • “Allows for the removal of domain names and online content by an Internet registrar or [ISP] under certain circumstances;”
  • “Forbids the use of various types of software, commonly called spyware, if used for certain purposes;”
  • “Provides exceptions from spyware provisions for various types of communications and interactions, including authorized diagnostics;”
  • “Prohibits the registration of domain names under certain circumstances, commonly referred to as cybersquatting;” and
  • “Provides civil penalties for a violation of cybersquatting provisions”.

It also prohibits the passage of contrary laws by subdivisions of the state and makes other technical changes.

Key among the provisions are definitions of what activities constitute phishing, pharming, spyware and cybersquatting. Notably, the statute only applies to activities that occur after July 1, 2010 (although for cybersquatting and infringement, the effective date is May 11, 2010).

Any ISP that is “adversely affected by the violation”; “an owner of a web page, computer server or trademark that is used without authorization by the violation;” or 3) the attorney general may file suit to recover damages for phishing or pharming activities. Either actual damages or “a civil penalty not to exceed $150,000” per violation can be awarded.

In the case of spyware, not only are the ISP, attorney general and trademark owner whose mark was used to deceive others able to file suit, but the owner of “a software company that expends resources in good faith assisting authorized users harmed by a violation” of this provision can also sue. The damages awarded in these instances can be actual and liquidated damages of between $1,000 and $1,00,000 as well as attorneys fees and costs. There are certain exceptions to the damages thresholds, depending on the circumstances.

The cybersquatting provisions are structured similarly to the AntiCybersquatting Consumer Protection Act (15 USC § 1125(d)), and permit the transfer of an affected domain name in the case of a successful judgment against the defendant, but also differ in certain ways from the federal provisions. Specifically, they allow personal names to be included in the scope of protection under the act and exempt domain name registrars from legal action except in cases of bad faith or reckless disregard. There are other differences as well, but these were the most obvious.

Top 10 Ways to Preserve Your Trademarks

by Christina Frangiosa

On Friday (April 16), during the Pennsylvania Bar Institute‘s Fourth Annual IP Institute, I delivered a presentation on Top 10 Ways to Preserve Your Trademark, co-presented with Rex A. Donnelly of RatnerPrestia in its Wilmington, DE office.

I will be uploading both the article and PowerPoint presentation that we co-developed to my firm’s web site as quickly as feasible, and you are welcome to review them there. In sum, however, the topics we covered were:

  1. Choose a Mark You Can Protect
  2. Register Your Mark
  3. Be Truthful with the Trademark Office
  4. Keep Using Your Mark
  5. Maintain Your Registration
  6. Update Your Protection
  7. Use Your Mark Correctly
  8. Make Sure Others Use Your Mark Correctly
  9. Police for Infringement and Dilution
  10. License Your Mark Wisely

(I had responsibility for topics 3,4,5,7 and 9 – and wrote the sections for topics 3,4,6,7 and 9 in the article (Mr. Donnelly and I swapped topics 5 and 6 the morning of our presentation)). I also attended many of the presentations by my colleagues, and was particularly impressed with the “Mock” hearings (Mock Markman Hearing, Mock Preliminary Injunction Argument, Mock TTAB Cancellation Hearing), which were all presided over by judges currently sitting on the bench. I hope the course planners expand those sessions to additional topics next year.

I welcome your comments.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm’s web site. The direct links are here: “Top 10 Ways to Preserve Your Trademark,” Pennsylvania Bar Institute’s Fourth Annual IP Institute (April 16, 2010), co-written with Rex A. Donnelly of RatnerPrestia – (with presentation slides).

Fraud on the PTO – A Trademark Perspective

by Christina Frangiosa

Last Friday (April 9), during the American Bar Association Intellectual Property Law Section conference, I delivered a presentation on Trademark Prosecution Ethics, and in particular, the history and current status of the fraud in the procurement theory used to cancel registrations (or oppose applications) when material misrepresentations have been made to the Patent & Trademark Office during the application or renewal process.

I plan to upload both my article and my PowerPoint presentation to my firm’s web site as quickly as feasible, and you are welcome to review them there. In sum, however, my conclusions were as follows:

“While the test for determining that an applicant’s or registrant’s conduct in filing an application or maintaining trademark registrations was fraudulent has become more stringent, applicants, registrants and their counsel still face some pitfalls in the process. Indeed, although certain amendments of an inaccurate filing may be accepted (provided that no challenge to the validity of the application or registration has yet been filed), it is clear that both the TTAB and the Federal Circuit discourage carelessness in preparing these filings.

Accordingly, applicants and registrants are strongly encouraged to do at least the following to avoid increasing the risk of claims or counterclaims of fraud on the USPTO, and thus, loss of a pending application or a particular registration:

  • Conduct appropriate due diligence to ensure that the marks sought to be registered (or renewed) qualify as “in use” or validly subject to the “intent to use” process;
  • Ensure that the intended signatory for the declaration has the appropriate level of personal knowledge to support the allegations of use or intent to use, exclusive right to use the mark and other averments of fact;
  • Ensure that any licensees upon whose use the applicant/registrant will rely to maintain the registration properly use the mark in commerce and provide sufficient evidence to the applicant/registrant to support the maintenance filing; and
  • Undertake proper due diligence before filing an Opposition or Cancellation proceeding to ensure that the trademark or service mark forming the basis of a challenge to another application or registration does not have any exposure to a counterclaim for fraud on the USPTO and thus at risk for cancellation during the pendency of the proceeding.

Note that undertaking these preparations cannot completely moot claims of fraud on the USPTO, but they lend support and reasonableness to a potential response that no “intent to deceive” can be demonstrated by clear and convincing evidence. Finally, this entire line of cases confirms that the USPTO, TTAB and Federal Circuit Court of Appeals have strong interests in ensuring that the trademark Register be kept current and accurate, and demonstrates a disfavor of carelessly filed and unreliable factual statements about the use or non-use of trademarks and services marks in active use in U.S. commerce.

I welcome your comments.

UPDATE on 4/20/10: The slides from the presentation can be found on the ABA’s IPL Section site.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm’s web site. The direct links are here: “Ethics in Trademark Application Prosecution: Alleging ‘Fraud in the PTO’ After In re Bose,” ABA Intellectual Property Law Section 25th Annual Conference (April 9, 2010) – (with presentation slides).