U. S. Intellectual Property Enforcement Coordinator moves from Commerce to White House - Kirsten M. Koepsel
The Kenneth J. Germeshausen Center, created in 1985 through the generosity of Kenneth J. and Pauline Germeshausen, is the umbrella organization for Pierce Law's intellectual property specializations. Today the Germeshausen Center is a driving force in the study of international and national intellectual property law and the transfer of technology. It acts as a resource to business as well as scientific, legal and governmental interests in patent, trademark, trade secret, licensing, copyright, computer law and related fields.
The Center bears the name of its benefactor Kenneth J. Germeshausen, one of New England's pioneering inventors and professor of electrical engineering at Massachusetts Institute of Technology. Germeshausen was also co-founder of the international high technology firm of EG&G.
U. S. Intellectual Property Enforcement Coordinator moves from Commerce to White House - Kirsten M. Koepsel
Customs data for fiscal year 2008 (FY08) show that the number of intellectual property commodities seized by the U.S. Customs and Border Protection and the U.S. Immigration and Customs Enforcement continues to rise despite international efforts to combat counterfeiting and piracy. In FY08, 14,992 intellectual property right (IPR) seizures with a domestic value of $272,728,879 were recorded.[i] The top five commodities seized were footwear, handbags/wallets/backpacks, pharmaceuticals, wearing apparel, and consumer electronics.[ii] The top five trading partners for IPR seizures were China, India, Hong Kong, Taiwan, and Korea.[iii] FY08 seizures represent a 9% increase over FY07 seizures and an increase of 110% since FY03.[iv] The domestic value of seizures has risen 109% since FY03.[v]
But, on October 13, 2008, former President Bush signed into law the PROIP Act.[vi] The PROIP Act is the latest in a line of legislation dealing with counterfeiting and piracy. It enhances current civil and criminal intellectual property laws, authorizes an increase in federal funding to fight intellectual property crime especially by state and local law enforcement, and creates an Intellectual Property Enforcement Coordinator (IPEC).[vii]
Enhancement of current civil and criminal law includes changes to civil remedies for infringement (17 U.S.C. § 503(a)), treble damages and statutory damages in counterfeiting cases (15 U.S.C. § 1117(b)), criminal copyright infringement (17 U.S.C. § 506(b)), and forfeiture, destruction and restitution (18 U.S.C. § 2323).[viii]
State or local law enforcement entities can apply for grants for training, prevention, enforcement, and prosecution of intellectual property theft and infringement crimes (IP-TIC grants) under the Office of Justice Programs of the Department of Justice.[ix] The grants will enable state or local law enforcement entities to enforce state and local criminal laws on anti-infringement, anti-counterfeiting, and unlawful acts. Id. Funds authorized to be appropriated for the grants were $25 million for each of the fiscal years 2009-2013.[x] Funds were also authorized to be appropriated to increase the investigative and forensic resources for enforcing intellectual property crime laws as well as resources to investigate and prosecute intellectual property crime and other criminal activity involving computers.[xi]
One of the most interesting aspects, if not controversial, of the PROIP Act was the creation of an Intellectual Property Enforcement Coordinator (IPEC) to be appointed by the President with the advice and consent of the Senate. The IPEC is to serve within the Executive Office of the President (EOP).[xii] Duties of the IPEC include chairing an interagency advisory committee, developing a Joint Strategic Plan against counterfeiting and infringement, and assisting in the implementation of the Joint Strategic Plan.[xiii] The interagency advisory committee will include representatives from various departments and agencies, including the Office of Management and Budget, the Department of Justice, the Department of Homeland Security, the United States Patent and Trademark Office, the United States Trade Representative, and the Food and Drug Administration.[xiv] Objectives of the Joint Strategic Plan are to include a reduction of counterfeit and infringing goods in the domestic and international supply chain, sharing of information, and establishing standards and policies for effective protection and enforcement of intellectual property rights (IPR) and protection of IPR overseas.[xv] Congress made it clear that creation of the IPEC does not:
[A]lter the authority of any department or agency of the United States . . . that relates to
(1) the investigation and prosecution of violations of laws that protect intellectual property rights;
(2) the administrative enforcement, at the borders of the United States, of laws that protect intellectual property rights; or
(3) the United States trade agreements program or international trade.[xvi]
The National Intellectual Property Law Enforcement Coordination Council (NIPLECC) will be repealed effective upon confirmation of the IPEC.[xvii] NIPLECC was established in 2000 to coordinate domestic and international intellectual property law enforcement among federal and foreign entities.[xviii] The members of NIPLECC are the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Assistant Attorney General for the Criminal Division, Under Secretary of State for Economic and Agricultural Affairs, Deputy United States Trade Representative, Commissioner of Customs, and the Under Secretary of Commerce for International Trade. The duties of NIPLECC were to coordinate domestic and international intellectual property law enforcement among federal and foreign entities.[xix]
The PROIP Act, introduced on July 24, 2008 as S. 3325, The Enforcement of Intellectual Property Rights Act of 2008, was not without controversy. The July version of S. 3325 included a provision that would allow the U.S. Attorney General to commence a civil action in the appropriate United States district court against any person who engages in conduct constituting an offense under 506 and such person shall be subject to a civil penalty which would be awarded as restitution to the copyright owner aggrieved by the conduct.[xx] Counsels for the U.S. Department of Justice and the U.S. Department of Commerce sent a letter to Senators Leahy and Specter expressing concerns about S. 3325.[xxi] The provision would have given the Department of Justice civil enforcement authority similar to their current criminal authority for infringement. The Department of Justice and the Department of Commerce were concerned that this provision would undermine existing intellectual property enforcement efforts by diminishing the effective use of limited criminal resources and creating unnecessary bureaucracy.[xxii] Copyright holders already have legal tools under 17 U.S.C. §§ 502–505 to enforce their copyright. The Counsels were also concerned that the Department of Justice prosecutors would be serving as pro bono lawyers for private copyright holders regardless of their resources or taxpayer-supported Department lawyers would pursue lawsuits for copyright holders, with monetary recovery going to industry.[xxiii] This provision was removed in the final version.
Another concern the Counsels expressed in the letter was the creation of the Intellectual Property Enforcement Coordinator who would move from the Department of Commerce to the Executive Office of the President.[xxiv] The Counsels' opposition was that the statutory creation of an EOP coordinator with the duties described in the bill constitutes a legislative intrusion into the internal structure and composition of the President's Administration. This provision is therefore objectionable on constitutional separation of powers grounds.[xxv]
Other provisions in the bill include a study by the Government Accountability Office to help determine how the Federal Government could better protect the intellectual property of manufacturers by quantification of the impacts of imported and domestic counterfeit goods on . . . the manufacturing industry in the United States[] and . . . the overall economy of the United States.[xxvi] An often unnoticed portion of the bill is Section 503, titled Sense of Congress, which advises the Attorney General that with respect to all crimes related to the theft of intellectual property priority shall be given to cases with a nexus to terrorism and organized crime.[xxvii] Section 503 also advises the Attorney General to give priority to certain criminal counterfeiting and infringement crimes of computer software such as ones involving the willful threat of intellectual property for a commercial advantage or private financial gain or where the counterfeited or infringing goods or services enables the enterprise to unfairly compete against the legitimate rights holder.[xxviii]
With the creation of an IPEC, it remains to be seen what effects moving the office from the Department of Commerce to the Executive Office of the President cabinet level position have on the enforcement of intellectual property rights nationally and internationally. The position has already been dubbed an IP czar.[xxix] Will the PROIP Act reduce the amount of amount of counterfeit and pirated product moving into the United States? Mr. Tom Donohue, President and CEO of the U.S. Chamber of Commerce, stated in a press release recognizing the signing by President Bush: By becoming law, the PROIP Act sends the message to IP criminals everywhere that the U.S. will go the extra mile to protect American innovation. Congress and President Bush have done their part to support America's innovators, workers and consumers, who all depend on intellectual property.[xxx] Senator Evan Bayh, who along with Senator George Voinovich originally authored Title IV of the legislation creating the IPEC, stated upon the signing: This is an enormous victory for this country's innovators and a wake-up call for foreign counterfeiters who believe they can steal our ideas with impunity . . . American businesses lose $250 billion every year because of intellectual property theft. The U.S. auto industry estimates it could hire an additional 200,000 workers if we eliminated the trafficking of counterfeit auto parts. This new enforcement regime will treat the theft of American ideas as the serious threat to our economy that it is.[xxxi] On December 3, 2009, Victoria Espinel was confirmed as the first Intellectual Property Enforcement Coordinator.[xxxii]
Kirsten M. Koepsel joined AIA as the director of intellectual property and tax after finishing her LLM at Franklin Pierce Law Center. Some of the issues that she has worked include counterfeiting and piracy, insider threat, and protection of data submitted to the US government. Prior to her LLM, she worked for the Texas Manufacturing Assistance Center/University of Texas at Arlington leading implementation of environmental management systems and improving manufacturing processes.
She also worked for over 11 years at General Dynamics and Lockheed Martin Tactical Aircraft Systems as an engineer in both research and development and manufacturing and for various aircraft programs.
[i] Intellectual Property Rights Seizure Statistics: FY 2008, http://www.cbp.gov/linkhandler/cgov/trade/priority_trade/ ipr/seizure/fy08_final_stat.ctt/fy08_final_stat.pdf.
[ii] Id. at 8.
[iii] Id. at 14.
[iv] Yearly Comparisons: Seizure Statistics for Intellectual Property Rights, http://www.cbp.gov/xp/cgov/trade/priority _trade/ipr/seizure/seizure_stats.xml (last visited Nov. 13, 2009).
[v] Id.
[vi] See Prioritizing Resources and Organization for Intellectual Property Act of 2008, Pub. L. No. 110-403, 122 Stat. 4256 (2008).
[vii] Id.
[viii] Id.
[ix] 42 U.S.C. § 3713(a) (2008).
[x] 42 U.S.C. § 3713(b)(4) (2008).
[xi] 42 U.S.C. § 3713(c) (2008).
[xii] 15 U.S.C. § 8111(a) (2008).
[xiii] 15 U.S.C. § 8111(b) (2008).
[xiv] 15 U.S.C. § 8111(b)(3) (2008).
[xv] 15 U.S.C. § 8113(a) (2008).
[xvi] 15 U.S.C. § 8115(b) (2008).
[xvii] 15 U.S.C. § 8115(a) (2008).
[xviii] See Treasury and General Government Appropriations Act of 2000, Pub. L. No. 106-58, 113 Stat. 430 (1999).
[xix] 15 U.S.C. § 1128(b) (2000).
[xx] 154 Cong. Rec. S7280, 7282 (daily ed. July 24, 2008) (statement of Sen. Leahy).
[xxi] Letter from Keith B. Nelson & Lily Fu Claffee to Sen. Patrick Leahy & Sen. Arlen Specter (Sept. 23, 2008), available at http://www.usdoj.gov/olp/pdf/comm-ip-enforcement-s3325.pdf.
[xxii] Id.
[xxiii] Id.
[xxiv] Id.
[xxv] Id.
[xxvi] See Prioritizing Resources and Organization for Intellectual Property Act of 2008, Pub. L. No. 110-403, 122 Stat. 4256, 4277–78 (2008).
[xxvii] Id. at 4279 (emphasis added).
[xxviii] Id.
[xxix] Andrew Noyes, U.S. Chamber Wants IP Czar In First 100 Days, NationalJournal.com, Dec. 11, 2008, http://lostintransition.nationaljournal.com/2008/12/us-chamber-ip-czar-o....
[xxx] Press Release, U.S. Chamber of Commerce, U.S. Chamber Celebrates Enactment of Intellectual Property Law (Oct. 13, 2008), http://www.uschamber.com/press/releases/2008/october/081013_enactment.htm.
[xxxi] Press Release, U.S. Sen. Evan Bayh, Senator Bayh's AntiPiracy Bill Becomes Law (Oct. 14, 2008), http://bayh.senate.gov/news/press/release/?id=60888D93-0131-4420-B9AD-E3....
[xxxii] U.S. Senate Legislation & Records, Nominations Confirmed (Civilian), http://www.senate.gov/pagelayout/legislative/one_item_and_teasers/nom_co... (last visited Jan. 20, 2010).
Kirsten M. Koepsel (JD '92/LLM '03) is an Adjunct Professor and Director of Intellectual Property and Tax at Aerospace Industries Association working on counterfeiting, piracy, insider threat, and protection of data submitted to the US government.