Senate's Customs Reauthorization Bill Would Strengthen IPR Enforcement

According to Senator Baucus, S. 1631 would direct Customs and Border Protection and Immigration and Customs Enforcement to make customs facilitation and trade enforcement a priority again. And it would provide the agencies with the tools and resources that they need to fully discharge those duties.

Highlights of the intellectual property rights (IPR)-related provisions in S. 1631 include:

IPR Violators Would be Listed and Subject to Targeting by CBP

CBP would be required to identify and maintain a confidential list of persons¹ that have a history of attempting to import goods that infringe IPR² into the U.S. (S. 1631 also provides a procedure for a person to be removed from the list.)

CBP's new Commercial Targeting Division would also have to consider the list when establishing its targeted risk assessment methodologies and standards.

Physical Samples Would be Provided to Copyright/Trademark Owners, Others

CBP would be allowed to provide a sample of merchandise detained or seized by CBP because the merchandise may infringe a copyright or trademark to the owner of the copyright or trademark to conduct physical examination or testing to determine if the merchandise is infringing.

Circumvention devices. CBP would also be allowed to provide a sample of merchandise detained or seized by CBP because the importation of the merchandise may be prohibited by 17 USC 1201(a)(2) or (b)(1), to any person who may be injured by the importation of the merchandise to conduct physical examination or testing to determine if the importation of the merchandise is prohibited.

(17 USC 1201(a)(2) and (b)(1) pertain to devices, technology, etc. primarily designed or produced for the purpose of circumventing a technological measure that controls access to a protected work or circumventing protection afforded by a technological measure that protects a right of a copyright owner, respectively.)

Bond requirement. If the value of a sample of merchandise is more than $100, CBP would require the person requesting such a sample to furnish a bond in the form and amount specified by the port director where the merchandise entered the U.S.

Early CBP Recordation Process for Pending Copyright Applications

S. 1631 would amend 19 USC 1526 by adding a new subsection (f) covering the recordation of works for which a copyright is pending. Highlights of new subsection (f) include:

CBP recordation of pending copyrights may be requested. A person who submits an application to the Library of Congress' Copyright Office for registration of a copyright under 17 USC, with respect to an eligible work³ would be allowed to request that CBP record the application, and enforce the copyright to the same extent and in the same manner as if the copyright was registered with the Copyright Office.

Proof of subsequent recordation required. Persons who record an application with CBP would be required to provide CBP with proof of copyright registration or denial 30 days after the Copyright Office registers or denies the copyright registration. Applicants would also be required to update CBP annually regarding the status of the copyright application pending before the Copyright Office.

CBP could cancel recordation under certain circumstances. CBP would be allowed to cancel the recordation of an application for a copyright if (i) the person who requested that CBP record the application for the copyright fails to submit proof of the copyright's registration or notice that the copyright remains pending by the required date; or (ii) CBP receives notice that the Copyright Office denied the application.

Seizure of Circumvention Devices

S. 1631 would amend 19 USC 1595a(c)(2) by adding a new subparagraph (G) which would allow the seizure or forfeiture of merchandise determined by CBP to be a technology, product, service, device, component, or part thereof whose importation is prohibited under 17 USC 1201(a)(2) or (b)(1).

The bill would require CBP, within 15 days after seizing merchandise, to publish on its Web site information regarding the seized merchandise to permit any person to identify the merchandise and determine whether the merchandise is an inadmissible circumvention device.

Not later than 30 days after publishing the seizure information, any person that determines that the seized merchandise is merchandise that infringes a right of the person (or an agent of such a person) may submit to CBP an application requesting the disclosure of the date of importation, the U.S. port of entry, merchandise description, quantity, country of origin, name/address of foreign manufacturer, exporter, and importer.

Report on Average Time to Make an IPR Infringement Determination

S. 1631 would require CBP to submit to specified congressional committees a report estimating the average time required by its Office of Rulings and Regulations to make a determination with respect to whether goods detained by CBP infringe IPR, distinguishing among types of IPR.

Congress Urges CBP to Work with PTO, Etc. on Simultaneous Registration, Recordation Processes

S. 1631 expresses the sense of Congress that CBP should work with the U.S. Patent and Trademark Office and the Library of Congress' Register of Copyrights to consider a system under which a trademark or a copyright may be recorded with CBP simultaneously with the issuance of a trademark or registration of a copyright.

CBP Must Ensure Sufficient Personnel to Enforce IPR

S. 1631 would require CBP to ensure that sufficient personnel are assigned throughout the agency (including at the ports) who have responsibility for preventing the importation of goods into the U.S. that infringe IPR.

IPR Enforcement Training

S. 1631 requires CBP to (i) effectively train its port personnel to detect and identify IPR infringing imported goods, (ii) work with the private sector to identify cost-effective technologies to detect and identify IPR infringing imported goods and cost-effective programs for training CBP personnel. S. 1631 would also permit CBP to receive donations of technology to improve IPR enforcement.

National Intellectual Property Rights Coordination Center

DHS would be required to establish within ICE a National Intellectual Property Rights Coordination Center to (partial list): (i) coordinate the investigation of sources of imported goods that infringe IPR; (ii) coordinate training for domestic and international law enforcement agencies to improve IPR enforcement; (iii) coordinate U.S. activities to prevent the importation or exportation of IPR infringing goods; (iv) support the interdiction of U.S. imports that infringe IPR; and (v) collect, integrate, and disseminate information regarding infringements.

IPR Enforcement Information Must be Included in Joint Strategic Plan

S. 1631 would require CBP and ICE to include in a Joint Strategic Plan information on DHS' IPR enforcement efforts, a list of 10 U.S. ports where CBP has seized the most goods for IPR infringements, and a recommendation for the optimal allocation of persons, resources, and technology for CBP and ICE to adequately enforce IPR.

International Cooperation on IPR Enforcement

DHS would be required to coordinate with the competent law enforcement authorities of foreign governments, including by sharing information relevant to enforcement actions, to enhance the efforts of U.S. and foreign law enforcement agencies to enforce IPR. DHS would also be required, to the extent practicable and appropriate, to provide technical assistance to foreign governments to enhance their ability to enforce IPR.

¹S. 1631 defines such persons as persons involved in the entry of goods into the U.S., including intermodal transportation system providers, contract logistics providers, air, land, and sea carriers, customs brokers, importers, and forwarders.

²the term intellectual property rights' refers to copyrights, trademarks, and other forms of intellectual property rights that are enforced by CBP.

³Eligible works are recordings, motion pictures, or similar works otherwise eligible for registration under 17 USC.

(See ITT's Online Archives or 08/07/09, 08/13/09, 08/14/09, 08/19/09 news, 09080715, 09081305, 09081405, and 09081920, for previous BP summaries on S. 1631.)

Senate Finance Committee press release (dated 08/06/09) available at http://finance.senate.gov/press/Bpress/2009press/prb080609.pdf.

Senate Finance Committees section-by-section summary available at http://finance.senate.gov/sitepages/leg/LEG%202009/080609%20Customs%20Section%20by%20Section.pdf.

S. 1631 available at http://finance.senate.gov/sitepages/leg/LEG%202009/080609%20Customs%20Reauthorization%20Bill.pdf.

Senator Baucus' floor statement on S. 1631 (dated 08/07/09) available at http://finance.senate.gov/press/Bpress/2009press/prb080709.pdf.