The White House issued a memorandum on April 3, 2019, noting that the consuming public is being subjected to the dangers posed by counterfeit and pirated goods that are imported and placed in the stream of commerce. The memorandum focuses on the role of online third-party marketplaces and third-party intermediaries that facilitate the trade in counterfeit and pirated goods.

The overall theme of the memorandum is that U.S. federal government agencies must improve coordination of efforts to combat the entry of counterfeit and pirated goods into the U.S. The memorandum expressly states that “preventing the manufacture, importation, and sale of counterfeit and pirated goods is a priority for Federal law enforcement agencies.” (emphasis added).

The internet’s role in facilitating trade in counterfeit and pirated goods has been recognized by the U.S. for years in its annual Notorious Markets reports issued by the Office of the U.S. Trade Representative. Nevertheless, the April 3 memorandum expresses the Administration’s view that existing efforts to combat online trafficking in counterfeit and pirated goods should be expanded and enhanced to combat the problem and there are many potential private sector partners (e.g., online market places, payment providers, carriers, vendors and others), who could be enlisted to assist this effort.

Based upon the broad scope of intellectual property (IP) enforcement issues mentioned in the memorandum, some of the recommendations may be “simple” to the extent that they may not require any changes to legislation or regulations, but may be about the need for more effective implementation and enforcement of existing legislative and regulatory provisions. As an example, are IP owners seeing effective implementation of the information sharing provisions that were the result of the Trade Facilitation and Trade Enforcement Act of 2015?

In view of the objectives stated in the memorandum, a possible result of the consultative process might include U.S. government efforts to adopt provisions in future free trade agreement provisions regarding what would constitute “commercial” quantities subject to administrative or criminal enforcement in view of the lack of specificity in current agreements.

Regarding the issue of “preventing the manufacture” of counterfeit and pirated goods, this problem is often a challenge in other countries. It requires U.S. entities to apply for and acquire IP rights in foreign jurisdictions subject to protection under foreign laws, especially as they relate to trademarks, patents, designs, and geographical indications. This requires foreign governments to be more active in combating that activity in order for the IP protections to be effective. The result of the consultative process might list specific enforcement or legislative actions the U.S. expects from its trading partners, although some of these are already part of the annual Special 301 process.

In view of the memorandum’s emphasis on U.S. agencies’ efforts to reduce the importation and sale of counterfeit and pirated goods, one possible step may be prioritizing and integrating IP protection and enforcement issues into U.S. government agencies involved in capacity building and technical assistance programs.

The memorandum instructs various agencies, including the departments of Homeland Security and Commerce working with other agencies, to consult with IP owners and other stakeholders. The inter-agency and government-private sector consultations are aimed at reporting on the extent to which third-party marketplaces and other third-party intermediaries facilitate the importation and sale of counterfeit and pirated goods and factors that contribute to the trade in such goods.

The memorandum states that information collected in the consultative process could result in changes to legislative, regulatory or policy changes. It is not clear how federal government agencies will solicit inputs from IP owners, but the usual process of soliciting comments and public input has been by announcing comment periods in the Federal Register with instructions on when the public may submit comments and to whom the comments should be addressed.

The memorandum directs the Secretary of Homeland Security to issue a report 210 days from the date of the memorandum. Within that period, the Secretary is directed to consult with other agencies, and “intellectual property rights holders, third-party intermediaries, and other stakeholders”. Because it is unclear how the Secretary of Homeland Security will “consult” and obtain inputs, monitoring various agency public announcements will be important if IP owners wish to contribute to this report preparation process.

This post was written by Timothy Trainer, a co-author of Customs Enforcement of Intellectual Property Rights, published by Thomson Reuters.

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