The Pro-IP Act of 2008

Daniel Wood, Staff Writer, DWood@albanylaw.edu     

     Earlier this month, President Bush signed into law a bill with incredibly broad implications for intellectual property.  The law, Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008, has been confused with a very similar bill by the same name, which began in the House.  To clarify the history of this new law, consider the following timeline of events:

  •  12/05/07 – H.R.4279, Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008 introduced in House by Rep. John Conyers (D-MI).1
  •  05/06/08 – H.R.4279 discussed on the floor of the House.2
  •  05/08/08 – H.R.4279 passed the House by a vote of 408-11.  (Roll no. 300)
  •  05/12/08 – H.R.4279 received in Senate, referred to Committee on the Judiciary.
  •  07/24/08 – S.3325, Enforcement of Intellectual Property Rights Act (EIPRA) of 2008 introduced in Senate by Senator Leahy (D-VT).3
  •  09/11/08 – S.3325 approved by Senate Judiciary Committee by vote of 14-4.  Committee reported out the bill.4
  •  09/26/08 – S.3325 passed Senate by Unanimous Consent.5
  •  09/28/08 – S.3325 passed House by vote of 381 to 41.  (Roll no. 664)
  •  10/13/08 – S.3325 signed by President Bush.6 

     Sometime during its passage from the Senate, through the House, to the President, the bill’s short name changed from “Enforcement of Intellectual Property Rights Act” to the short name of House bill H.R.4279, “Prioritizing Resources and Organization for Intellectual Property Act.”  As shown above, H.R.4279 passed the House more than two months before Senator Leahy introduced S.3325 to the Senate, as a different bill with a different name.  As S.3325 has now stolen both its name and its thunder, and as it has stagnated in the Senate Judiciary Committee since mid-May, we can safely presume that H.R.4279, the original PRO-IP Act, has died in committee.

     One must carefully distinguish between the recent spate of bills addressing this area of law.7  PRO-IP represents the culmination of three years of efforts by various congressmen to beef up intellectual property legal protections.8  Not all incarnations of this movement have been as restrained as the new law, and many bill provisions sparked public unrest.9  In fact, one of the more controversial provisions of H.R.4279 would have allowed judges discretion to consider copying of copyrighted compilations (such as CDs) as a series of discrete acts of infringement for each song on the disc.10 Since current law allows a plaintiff to seek up to $150,000 per work infringed, that would change the potential award for damages from the copying of a 10-song CD from $150,000 to $1.5 million.11

     In response to that particular provision, the U.S. Copyright Office hosted a closed-door meeting of industry groups to discuss the proposed statute.12  The Copyright Office then issued the resulting white paper, which damned the provision of H.R.4279 as undermining the purpose of the so-called “one work” rule.13  Other debate-sparking provisions included section 203 of H.R.4279, which called for the U.S. Sentencing Commission to increase sentences for crimes based on exportation of copyright-infringing items, and the creation of a so-called Internet Czar.14  The IP Enforcement Representative created by H.R.4279 would be empowered to “coordinate the allocation of interagency resources for intellectual property enforcement.”15  This abandoned bill would also have established a robust set of responsibilities, now absent in the new law, including regulatory rulemaking power and the authority to requisition personnel, equipment, or facilities from other agencies.16

     Adding to the confusion is the fact that PRO-IP, as enacted, took much of its language directly from dead H.R.4279, even before it changed its name.17  Therefore it may be useful to explore exactly what this new law accomplishes.

     Titles I and II of the Act effect somewhat minor, and in places cosmetic, changes to pre-existing law.  For instance, in addition to the power under the old law of the courts to impound all copies of infringing material, including molds, plates, negatives, etc., courts may now also impound all records documenting the manufacture, sale, or receipt of “things involved in any such violation.”18  The law also amends § 35(a) of the Trademark Act, doubling the damages available.19  Title II, dealing with criminal IP laws, beefs up the criminal penalties connected to serious bodily harm or death resulting from counterfeiting activities as addressed by the Act.

     Titles III and IV contain the real meat of the Act.  Title III creates the Intellectual Property Enforcement Coordinator (IPEC), who is appointed by the President, confirmed by the Senate, and reports to both the President and Congress as to the various IP enforcement programs.20  Under the Act, IPEC replaces the National Intellectual Property Law Enforcement Coordination Council (NIPLECC).21  Interestingly, the statute also explicitly limits the IPEC’s authority; the IPEC cannot direct any law enforcement agency in the exercise of its investigative or prosecutorial authority.22  This starkly contrasts the powers of the Enforcement Representative proposed under H.R.4279, and would seem to denote congressional response to outcry over the original provisions.

     Title III also creates an “Interagency IP Enforcement Advisory Committee,” to be chaired by IPEC.23  The Advisory Committee will include members from the following:  OMB, relevant units within DOJ, the FBI, the PTO, the office of U.S. Trade Representative, Department of State, the Agency for International Development, the Bureau of International Narcotics Law Enforcement, DHS, Customs, Immigration, the FDA, the USDA, and any additional agencies the President thinks appropriate.24  The Advisory Committee will also include either the Register of Copyrights, or a senior Copyright Office representative appointed by the Register.25

     One of the primary duties of IPEC and the Advisory Committee will be to formulate the Joint Strategic Plan.26  The Plan aims at “disrupting and eliminating domestic and international counterfeiting and infringement networks,” and will act as a sort of IP enforcement policy bible.27  It is worth noting that the Act offers no definition for these “networks.”  The Advisory Committee must generate its initial Joint Strategic Plan within 12 months, and will update the Plan no less than once every three years; IPEC will submit each Plan to the Judiciary and Appropriations committees of both the House and Senate.28  Also of interest, the Plan, under § 303(a)(7)(C), must build a formal process by which the Advisory Committee will work directly with organized interest groups.29  Too few statutes affecting civil and criminal penalties allow for, much less mandate, involvement of industry and private interest groups at a policy level.  This particular provision, one would hope, ought to quiet some of the resistance which has met legislative efforts in this area.

     Critics should also take comfort from the fact that the Act requires the Plan to include financial transparency and accountability, along with requiring all relevant agencies and departments to share information and to cooperate with the Advisory Committee.30  In fact, generally, the Act requires quite a lot of reporting to Congress and the President, with full disclosure and dissemination to the population.31  By and large, the Act creates very little new authority, restricts few additional activities, and generally merely allows centralization and coordination of our nation-wide law enforcement efforts.

     The most troubling aspect of the Act updates the Computer Crime Enforcement Act (42 U.S.C. § 3713):  for purposes of using federal grant money given to state and local authorities, “computer crime” now includes “infringement of copyrighted works over the internet.”32  Though this might seem to further the push for criminalizing questionable internet activity – a subject that has drawn much public debate since the early days of Napster – one should note that the Act only broadens the definition of computer crime for the purposes of handing out federal grant money.

     In the end, PRO-IP contains far less objectionable content than its evolutionary predecessors, and as a practical matter looks like it might actually help enforcement of our laws against those who damage our artists and innovators.  Better yet, it will do so while casting a considerably smaller shadow over the average internet user than was once feared.  

Tanya Davis & Eric Schillinger, editors

____________________________________________________________

1  153 Cong. Rec. H14249 (daily ed. Dec. 5, 2007).  A copy of the bill as introduced may be found at http://files.statesurge.com/file/153325.

2  154 Cong. Rec. H3067-74 (daily ed. May 6, 2008).

3  154 Cong. Rec. S7278 (daily ed. July 24, 2008).  A copy of the bill as introduced may be found at http://files.statesurge.com/file/769372.

4  Press Release, Senator Patrick Leahy, Judiciary Committee Reports Intellectual Property Rights Enforcement Legislation (Sept. 11, 2008), available at http://leahy.senate.gov/press/200809/091108d.html.

5  154 Cong. Rec. S9583-91 (daily ed. Sept. 26, 2008).

6  PRO-IP Act of 2008, Pub. L. No. 110-403, 122 Stat. 4256 (to be codified as amended in scattered sections of titles 15, 17, 18, 19, 42 U.S.C.).

7  For instance, introduced long before even H.R.4279, S.522 (introduced Feb. 7, 2007 by Senators Bayh and Voinovich), bore some similarities to the two more recent bills, but also carried more alarmist language and provisions.  See Intellectual Property Rights Enforcement Act, S.522, 110th Cong. § 2 (2007), available at http://files.statesurge.com/file/120950.

8  One of S.3325’s prime co-sponsors, Sen. Evan Bayh (D-IN), had previously introduced his own bill, S.522, in early 2007 (available here).  That bill never made it out of committee.  Apparently Senator Bayh felt that his efforts entitled him to claim S.3325 as his own.  See Press Release, Senator Evan Bayh, Senator Bayh’s Anti-Piracy Bill Becomes Law (Oct. 14, 2008), available at http://bayh.senate.gov/news/press/release/?id=60888d93-0131-4420-b9ad-e30f50a4cc89Sen. George Voinovich (R-OH), another co-sponsor of both bills, simultaneously claimed credit for S.3325.  Press Release, Senator Voinovich, President Bush Signs Sen. Voinovich’s Intellectual Property Rights Bill Into Law (Oct. 14, 2008), available at http://voinovich.senate.gov/public/index.cfm?FuseAction=NewsCenter.PressReleases (follow link for 10/14/08 press release here).

9  See, e.g., Eric Bangeman, PRO-IP Act is Dangerous and Unnecessary, Say Industry Groups, Ars Technica, Feb. 5, 2008, http://arstechnica.com/news.ars/post/20080205-white-paper-pro-ip-acts-damage-increases-are-dangerous.html; Cyndy Aleo-Carreira, Even the Bush Administration Thinks the RIAA is Going Too Far, Industry Standard, Sept. 25, 2008, http://www.thestandard.com/news/2008/09/25/even-bush-administration-thinks-riaa-going-too-far.

10  PRO-IP Act of 2007, H.R.4279, 110th Cong. § 104 (2007), available at http://files.statesurge.com/file/153325.

11  See 17 U.S.C. § 504(c)(2).

12  Gigi Sohn, Roundtable on Copyright Damages Takes Place Tomorrow, PublicKnowledge.org, Jan. 24, 2008, http://www.publicknowledge.org/node/1365; Sherwin Siy, Roundtable on Copyright Damages:  “What Are We Doing Here?”, PublicKnowledge.org, Jan. 28, 2008, http://www.publicknowledge.org/node/1369.

13  U.S. Copyright Office, The Threat Posed by Inflated Statutory Damages, Jan. 25, 2008, available at http://www.publicknowledge.org/pdf/joint-sec104-20080201.pdf.

14  H.R.4279 § 203, available at http://files.statesurge.com/file/153325; see H.R.4279 title III (establishing the Office of the U.S. Intellectual Property Enforcement Representative); see also Jared Fallon, Welcoming the New Internet Czar, State Surge, Sept. 29, 2008, http://www.statesurge.com/news/federal/internet-czar-s3325.

15  H.R.4279 § 301(d)(1).

16  Id. at § 301(f).

17  Compare PRO-IP § 303, 15 U.S.C. § 8113 (establishing the Joint Strategic Plan to be coordinated by IPEC), with H.R.4279 § 321.

18  PRO-IP § 102(a), 17 U.S.C. § 503(a).

19  PRO-IP § 104, 15 U.S.C. 1117(c)(1).

20  PRO-IP § 301, 15 U.S.C. § 8111.

21  PRO-IP § 305, 15 U.S.C. § 1128.

22  PRO-IP § 301(b)(2), 15 U.S.C. § 8111(b)(2).

23  PRO-IP § 301(b)(3), 15 U.S.C. § 8111(b)(3).

24  Id.

25  Id.

26  PRO-IP § 303, 15 U.S.C. § 8113.

27  PRO-IP § 303(a)(4), 15 U.S.C. § 8113(a)(4).

28  PRO-IP § 303(b), 15 U.S.C. § 8113(b).

29  PRO-IP § 303(a)(7)(C), 15 U.S.C. § 8113(a)(7)(C).

30  PRO-IP § 303(d)(2), 15 U.S.C. § 8113(d)(2); PRO-IP § 303(e), 15 U.S.C. § 8113(e).

31  See PRO-IP §§ 303(b), 303(g), 304(a), 15 U.S.C. §§ 8113(b), 8113(g), 8114(a).

32  PRO-IP § 401(a), 42 U.S.C. § 3713.

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