Enforcement of Intellectual Property Rights Act 2008 approved

After the US House of Representatives overwhelmingly passed the proposed Enforcement of Intellectual Property Rights Act of 2008 in May this year, the US Senate’s Committee on the Judiciary, in a 14 to four vote, has approved the bill. The bill’s backers are now expected to push the House and the Senate to iron out any differences in the respective versions of the legislation.
The act combines portions of the Prioritizing Resources and Organization for Intellectual Property Act of 2007 and the Protecting Intellectual Rights Against Theft and Expropriation Act of 2004 (better known as the Pro-IP Act and Pirate Act). It either supplements or replaces existing statutory provisions of the Copyright Act and Lanham Act. In general, the new law will:
  • provide more significant penalties for copyright and trademark counterfeiting; and
  • authorize the Department of Justice (DOJ) and local law enforcement to play a larger role in combating counterfeiting. 
Specifics of the pending legislation include:
  • doubling (to $2 million) the statutory damages for wilful trademark counterfeiting and doubling (to $200,000) the statutory damages for non-wilful counterfeiting;
  • enabling the DOJ to institute civil copyright actions seeking not only injunctive relief, but also statutory damages, actual damages and profits under Section 504 of the Copyright Act;
  • new provisions for forfeiture and destruction of property related to infringing activities covered under Title 18, Paragraphs 2319(A) to 2323;
  • mandatory trebling of damages for intentional trademark counterfeiting (absent extenuating circumstances), including prejudgment interest;
  • the creation of the Office of Intellectual Property Enforcement coordinator; and
  • penalties for those who "traffic" in counterfeit trademarked goods and "knowingly or recklessly" cause bodily injury, including fines or imprisonment for no more than 20 years and, if causing death, possible life imprisonment.
The creation of the Office of Intellectual Property Enforcement coordinator is one of the more high-profile elements of the proposed legislation. The coordinator (part of the executive branch of government) will, among other things, chair an interagency IP enforcement advisory committee made up of, or appointed by, the heads of the Office of Management and Budget, the DOJ, the US Patent and Trademark Office, the US Trade Representative, the Homeland Security, the Food and Drug Administration and the Copyright Office. The primary function of the committee is to develop the so-called 'joint strategic plan' to combat piracy and counterfeiting.
The purpose of the strategic plan is to:
  • reduce counterfeiting (both domestic and international);
  • streamline effective enforcement;
  • share information;
  • take down known counterfeiting networks;
  • assist other nations in enforcing IP rights; and
  • construct processes for consulting with industry.
In addition, the proposed legislation provides that the DOJ shall provide grants to eligible state and local law enforcement to train authorities to prevent and prosecute IP theft and infringement crimes. The DOJ is authorized to appropriate $25 million for each fiscal year for the period from 2009 to 2013. Additional funds are available to the Federal Bureau of Investigation and the attorney general for the criminal division of the DOJ.
Finally, the act creates positions for five IP law enforcement coordinators in addition to those serving in that capacity on the date of enactment. These coordinators will be deployed to countries and regions where their activities can best be carried out.
In short, passage of this legislation will result in the federal government partnering with industry to police serious trademark and copyright counterfeiting violations.
Russell Falconer, Baker Botts LLP, New York

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