Counterfeit Law Blog

I was recently asked to write a column for the UK publication "World Trademark Review" about Rep. Conyers pending bill, HR 4279, titled Protecting Intellectual Property ("PRO-IP").  The official summary of the bill can be found here.  The PRO-IP bill generated considerable controversy when introduced in December 2007, primarily because of the proposed revision of the statutory damage provision of the Copyright Act. which has been referred to as “gluttonous” by William Patry, Senior Copyright Counsel for Google.  Currently,  the Copyright Act provides that, for purposes of calculating statutory damages, “all the parts of a compilation or derivative work constitute one work.”   Applying this limitation the Fourth Circuit Court of Appeals in Xoom v. Imageline limited the clip art distributor Imageline, which had published two compilation CDs containing thousands of clip art images, to only two statutory damage awards against a competitor that had allegedly copied a multitude of Imageline’s images from the two CDs.  PRO-IP would amend the Copyright Act so that the court (or jury, in a jury trial) has the discretion to make “either one or multiple awards of statutory damages” with respect to infringement of a compilation such as Imageline's CDs.  In a case like Xoom, this would give the court the discretion to award multiple statutory damage awards instead of being limited by the number of compilations infringed.  However, the magazine and consumer electronics industries, as well as some commentators and law professors have raised concerns that providing such discretion will inhibit innovation and result in disproportionate damage awards.  Others fear that its passage would prompt the recording industry to threaten individuals who engage in P2P piracy with astronomical damage awards.  Interestingly, at the preliminary House Subcommittee hearings on PRO-IP, Congressman Rick Boucher, a founder of the House Internet Caucus, suggested  that, to avoid chilling innovation, the statutory damage scheme for copyright may need to be overhauled to decouple damages available against willful direct infringers – such as organized software pirates – from those available against device manufacturers accused of indirect secondary infringement. Others have also suggested that damage awards against individuals engaged in P2P file sharing should be separately addressed by the Copyright Act.  It will be interesting to see whether such alternative proposals gain any traction when the bill comes up in Committee for mark-up in March.

Congressmen Mike Rogers (R-MI) and Gene Green (D-TX) sponsored a congressional briefing last Thursday to promote H.R. 780, their bill designed to combat the proliferation of fake medicines. H.R. 780 mandates tougher criminal penalties for persons who engage in the illegal production, distribution and sale of counterfeit medicines. The bill has been referred to the Subcommittee on Crime, Terrorism, and Homeland Security.

On February 7, Senators George Voinovich (R-OH) and Evan Bayh (D-IN) introduced S. 522, the Intellectual Property Rights Enforcement Act.  The text of the bill is not yet available from the Government Printing Office, but, once posted, should be viewable here. According to Senator Voinovich's press release, the bill would:

• Create a single interagency enforcement unit to combat IP theft that would facilitate the sharing of information
• Establish formal processes for consulting with small and medium sized businesses, industry associations and other interested groups and to develop resources to assist such stakeholders in protecting their intellectual property
• Establish an international task force of foreign countries to track and identify IP criminals;
• Encourage reliable trading partners to join the task force
• Require a Strategic Plan to identify the objectives of the Intellectual Property Rights Enforcement Act and the methods for achieving those objectives.

 A similar bill, S. 1984, was introduced in late 2005, but was not enacted.