The Pro-IP Act of 2008: Copyright and Trademark Enforcement

On October 13, President Bush signed into law the Prioritizing Resources and Organization of Intellectual Property (PRO-IP) Act. The bill was introduced by Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.).

The legislation was vigorously opposed by the Department of Justice, find their position here courtesy of the EFF. The main objection is that the DOJ will now have the power to bring civil actions and is forced to turn the proceeds over to private industry, essentially making what is now a private system of enforcing copyright and trademark laws a government function. The DOJ also felt that appointment of an IP Czar with the duties described in the legislation would violate the principle of separation of powers between the Executive and Legislative branches of government.

An excerpt from Senator Leahy's website:

Title I
· Title I enhances civil intellectual property rights laws and improves remedies. First, it adds a harmless error provision to the registration requirement for instituting a suit, so that an infringer cannot avoid liability based on a harmless error in a registration.
· Second, it gives copyright owners the same rights as trademark owners to impound records documenting the infringement, while including protections to ensure a court will issue an appropriate protective order.
· Third, title I increases statutory damages in counterfeiting cases and applies them not only to those who intentionally use a counterfeit mark, but also to those who supply goods necessary to the commission of a violation of the Trademark Act, if they intend that the recipient of the goods or services would put the goods or services to use in committing that violation.
· Finally, Title I applies the copyright laws not only to imported goods, but also to exported items.
Title II
· Title II improves and harmonizes the forfeiture laws governing intellectual property rights violations. It creates a new forfeiture section for both civil and criminal forfeiture, building off the model in the Protecting American Goods and Services Act passed in the 109th Congress. It protects against the possibility that third party information may be disclosed by including protections to ensure a court will issue an appropriate protective order with respect to information found on items seized.

[there is a fuller description on Sen. Leahy's site]

Here is the text of the Senate version of S.3325 courtesy of Wired. From the private litigant's perspective, note that 17 U.S.C. Section 411 is amended to permit infringements where the registration has certain inaccuracies, 17 U.S.C. Section 503 now permits seizure of the books and records of an infringer (subject to a mandatory court-issued protective order), a weapon that trademark plaintiffs have long had. For trademark cases, 15 U.S.C. 1117 has been amended to enhance statutory damages and to treble damages plus attorneys fees and prejudgment interest. Section 602 is amended to make exporting infringing goods a violation.

The press has picked up on the aspect of the legislation that appoints an Cabinet-level IP Czar called an IPEC. There are also extensive governmental agency reporting requirements on programs to exhort state and federal law enforcement authorities to learn and enforce IP laws.

Copyright is an area of the law in which federal law has completely preempted state law. Copyright and trademark laws have real teeth. Law enforcement officials and private practitioners are highly skilled in working together on these issues, particularly in combating piracy in the domestic U.S. IP laws are very confusing and hard to follow for people who do not have serious training. Senator Leahy should not be sending state troopers onto this well-trodden ground.

Let's hope the new President has a sensible approach to these issues.