President Signs the Trade Facilitation and Trade Enforcement Act of 2015: IPR Owners Should Ensure Implementation
Earlier this month, I wrote that President Obama planned to sign the Trade Facilitation and Trade Enforcement Act of 2015. Since that piece was posted, the President signed the Act, and now trademark and copyright owners have won a significant battle to protect their intellectual property.
The Act specifies the information U.S. Customs and Border Protection (CBP) may disclose to trademark and copyright owners who have recorded their trademarks and copyrights with the agency. Also, the statutory language should eliminate some of the friction that has existed since 1998 between intellectual property owners and CBP.
In 1998, CBP made regulatory changes regarding information disclosure in cases involving trademark and copyright violations. In practice, the implementation of the changes were inconsistent. Industry criticism during Congressional hearings described CBP disclosure practices that made it impossible for industry to determine if imported goods were infringing.
The newly-signed Act creates a new section in the Tariff Act (19 U.S.C. §1628A: Exchange of Information Related to Trade Enforcement) stating that in cases of imported goods suspected of bearing counterfeit marks or infringing copyrights, CBP may provide to copyright and trademark owners unredacted images of merchandise, packages, labels and samples for examination and testing. The new disclosure section should eliminate most of the problems that were associated with the 1998 regulations regarding inconsistent implementation.
Furthermore, CBP will have the authority to share information with copyright owners when the agency suspects an attempt to import circumvention devices as it does in cases involving counterfeit trademarks and copyright piracy.
Intellectual property rights owners should be aware that CBP issued disclosure regulations in September 2015 for cases involving counterfeit marks. The trademark disclosure regulations may change minimally, if at all, even with the President’s signature on the Act. .
The trademark disclosure regulations have already provided that during the detention period, CBP may disclose to the trademark owner “information that appears on the detained merchandise and/or its retail packaging, including unredacted photographs, images, or samples…”
The disclosure regulation further specifies that:
CBP may disclose information appearing on the merchandise and/or its retail packaging (including labels), images (including photographs) of the merchandise and/or its retail packaging in its condition as presented for examination (i.e., an unredacted condition), or a sample of the merchandise and/or its retail packaging in its condition as presented for examination. The release of a sample will be in accordance with, and subject to, the bond and return requirements of paragraph (c) of this section. The disclosure may include any serial numbers, dates of manufacture, lot codes, batch numbers, universal product codes, or other identifying marks appearing on the merchandise or its retail packaging (including labels), in alphanumeric or other formats.
The last sentence is key as it adds greater clarity to what CBP will disclose, which is a major departure from past practice when such details were not shared with trademark owners.
Trademark owners should be aware of a significant procedural difference between cases in the detention phase and cases that have proceeded to seizure of the counterfeit goods. Section 133.21(f) states that, “At any time following a seizure of merchandise bearing a counterfeit mark under this section, and upon receipt of a proper request from the owner of the mark, CBP may provide, if available, photographs, images, or a sample of the seized merchandise and its retail packaging, in its condition as presented for examination, to the owner of the mark.”
Thus, trademark owners, having previously received notice of detention of goods suspected of infringing their marks, should ask CBP about the actual form of the request that needs to be submitted in order to have additional information disclosed.
At present, copyright owners have no similar disclosure provisions that would apply in cases involving copyright infringement. Therefore, the President’s signing of the Act should result in CBP’s promulgation of regulations that will be similar to those that were implemented in September and are applicable to cases involving counterfeit trademarks. Copyright owners who hope to have the benefit of information disclosure similar to the details found in the trademark regulations should begin to monitor how CBP will draft and implement regulations consistent with the Act that authorizes disclosure in copyright infringement cases as well as cases involving attempts to import circumvention devices.
Ultimately, trademark and copyright owners are in the best position to monitor and ensure that CBP complies with the new disclosure law and implements the law. More importantly, trademark and copyright owners, and associations that represent them, who seek effective CBP enforcement should engage the agency in order to ensure that the disclosures are consistently applied in practice at the field level where shipments are inspected and stopped in order to take full advantage of these beneficial changes.
Finally, while the new disclosure provision is a very welcome development, trademark and copyright owners should remain mindful of the importance of providing training to CBP regarding their trademarks and copyrights as well as the latest devices in the market aimed at circumvention.
Effective enforcement against infringement at the border, whether in the U.S. or abroad, is a cooperative effort between intellectual property owners and customs officers and works best when information sharing, training, disclosure and other elements of cooperation are pursued. An effective intellectual property enforcement strategy should have a customs or border enforcement component and, to be effective, should be an active component that engages customs on an ongoing and regular basis.
For more on the Trade Facilitation and Trade Enforcement Act of 2015, please refer to the latest edition of Customs Enforcement of Intellectual Property Rights, from my coauthor Vicki Allums and published by Thomson Reuters.
This post was written by Timothy Trainer, coauthor of Customs Enforcement of Intellectual Property Rights. Trainer also is the founder of the Global Intellectual Property Strategy Center, P.C., a consulting firm representing domestic and international clients, in Washington, D.C.