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To Intellectual Property, With Love

The Prioritizing Resources and Organization for Intellectual Property Act of 2008

November 18, 2008
Ryan J. Udell, Esq. and Shari G. Pressman, Esq.

Intellectual property creation, development and commercialization is and will continue to be a key driver of the United States economy.  According to a recent report of the United States Chamber of Commerce, intellectual property from industries such as entertainment, biopharmaceuticals, and information technology is valued at more than $5 trillion, accounts for more than one half of all U.S. exports, and contributes to 40 percent of all U.S. economic growth.  In addition, it is estimated that approximately 18 million Americans are employed by intellectual property intensive industries.  However, this vital national resource is increasingly under attack both domestically and abroad.  Indeed, the FBI estimates that hundreds of billions of dollars in sales are lost each year to counterfeiting and piracy of intellectual property.  Despite this imminent and significant threat to the U.S. economy, until very recently, there was no formal coordination among the various Federal agencies charged with safeguarding and protecting intellectual property. 

Recognizing a need to more vigorously protect and defend U.S. intellectual property, Congress passed the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (PRO-IP Act), which became law in mid-October.  The PRO-IP Act provides law enforcement and intellectual property owners with significant additional weapons and resources to combat counterfeiting and piracy.  Additionally, and perhaps more importantly, the Act creates a new cabinet level position, the (IPEC) also known as the “Copyright Czar,” whose charge is to foster a coordinated strategy among the various Federal agencies involved with protecting and enforcing intellectual property rights. 

Some of the more important changes to existing intellectual property protections implemented by the    PRO-IP Act include, (i) availability of treble damages and attorneys’ fees in trademark counterfeiting cases against so called “contributory infringers” (i.e., those who knowingly provide the goods or services used to engage in trademark counterfeiting); (ii) increasing the maximum statutory damages award that a plaintiff may receive (in lieu of having to prove actual damages) in trademark counterfeiting cases if use of the mark to produce counterfeit goods or services was willful from not more than $1 million to not more than $2 million per mark per type of good or service sold and increasing the minimum for other violations from $500 to $1000 per mark per type of good or service sold; and (iii) clarification that exportation of copyrighted works from the United States (through any kind of media) is a violation of their holders’ exclusive right to distribute copies of their works.  The PRO-IP Act also authorizes appropriations of an additional $35 million per year for fiscal years 2009 through 2013 to federal, state and local law enforcement for intellectual property enforcement and prosecution and an additional $20 million per year for fiscal years 2009 through 2013 for hiring and training law enforcement officers and procurement of advanced forensic science tools and expert computer forensic assistance. 

The primary role of the Copyright Czar will be to chair the Interagency Intellectual Property Enforcement Advisory Committee (IPEA), comprised of representatives from the Office of Management and Budget, Department of Justice (including the FBI), United States Patent and Trademark Office, United States Trade Representative, Department of State, U.S. Agency for International Development, Bureau of International Narcotics Law Enforcement, Department of Homeland Security, U.S. Customs and Border Protection, U.S. Immigration and Customs Enforcement, Food and Drug Administration, Department of Agriculture, and the Register of Copyrights.  Specifically, the Committee will be tasked with reducing counterfeit and infringing goods in both the domestic and international marketplace, identifying weaknesses and impediments to law enforcement actions, sharing information among government agencies so as to aid in the arrest and prosecution of individuals and entities who are knowingly financing, producing, trafficking or selling counterfeit or infringed goods, and working with the international community to establish uniform standards and policies for protection and enforcement of intellectual property rights.

Through a two-headed approach of further empowering intellectual property owners and governmental activism, the PRO-IP Act is a step in the right direction of protecting and preserving our most abundant and important resource. 

This correspondence should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult a lawyer concerning your own situation and legal questions.
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