The PRO-IP Act: Greater Protection for Trademark and Copyright Owners

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March 30, 2009
Kristin L.C. Haugen

The Prioritizing Resources and Organization for Intellectual Property Act of 2008 (PRO-IP Act) became law on October 13, 2008. It recognizes the need for the United States to more effectively help businesses protect vital intellectual property by establishing increased damages for copyright and trademark infringement, and increasing funding and manpower for enforcement, oversight, and policy-making.

Under the PRO-IP Act, trademark and copyright owners are better able to enforce their rights by responding to infringements faster and by recovering increased damages. The Act gives courts discretion, at the start of a lawsuit, to order the impoundment of infringing materials, property used to make the infringing materials, and all records documenting the violations. To protect against disclosure of any confidential, proprietary, or privileged information contained in seized materials, the court must issue a protective order. The PRO-IP Act also expands existing prohibitions against importation of infringing items to now apply to exportation as well.

The PRO-IP Act significantly increases the remedies available to trademark owners in counterfeiting cases. The new range of statutory damages has been doubled to $1,000 to $200,000 per counterfeit mark per type of goods sold, offered for sale or distributed. The class of persons potentially liable for treble damages and attorneys' fees was expanded to include those who provide goods or services necessary to the commission of a violation with the intent that they be used to commit a violation.

The PRO-IP Act also expanded forfeiture provisions for criminal copyright infringement and trafficking in counterfeit goods or services. Property used in the commission of an offense, as well as property constituting or derived from proceeds obtained directly or indirectly as a result of the commission of an offense, may be ordered forfeited and destroyed. The court may also order that restitution be paid.

The PRO-IP Act prioritizes the protection of intellectual property with the creation of an Intellectual Property Enforcement Coordinator (IPEC), referred to colloquially as the "IP Czar." Appointed by the President and confirmed by Congress, the IP Czar is charged with chairing an interagency enforcement Advisory Committee, coordinating and developing a Joint Strategic Plan against counterfeiting and infringement, and advising the President on domestic and international intellectual property enforcement policy.

While in the past there have been intellectual property-focused interagency efforts involving fewer agencies, the new Advisory Committee represents a broader, more comprehensive approach. It is composed of members from the OMB, DOJ, USPTO, Office of the U.S. Trade Representative, State Department, U.S. Agency for International Development, Bureau of International Narcotics Law Enforcement, Homeland Security, Customs and Border Protection, Immigration and Customs Enforcement, FDA, Agriculture Department, and the Register of Copyrights. This represents a more pragmatic view of the global nature of intellectual property and the need to timely process and share information.

The Advisory Committee is charged with developing a Joint Strategic Plan, which must focus on the following:

  1. Reducing counterfeit and infringing goods in the domestic and international supply chain;
  2. Identifying and addressing structural weaknesses, systemic flaws or other unjustified impediments to effective enforcement action;
  3. Ensuring that information is identified and shared among the relevant departments and agencies;
  4. Disrupting and eliminating domestic and international counterfeiting and infringement networks;
  5. Strengthening the capacity of other countries to protect and enforce intellectual property rights;
  6. Working with other countries to establish international standards and policies; and
  7. Protecting foreign intellectual property rights.

The federal government will spend $429 million over the 2009-2013 period to carry out the mandates of the Act. The Act recognizes the need for additional FBI agents and DOJ attorneys to carry out its mission, and $25 million per year has been earmarked for grants to local law enforcement for the training, prevention, enforcement and prosecution of intellectual property theft and infringement crimes. The PRO-IP Act reflects an overall heightened commitment to IP owners’ rights with a more comprehensive approach to protection and the authorization of necessary funding to succeed.