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S:\Intellectual Property\Legislative Materials\Legislative Analysis\2005 Leg Proposals for IPTF\11. Final for OMB Clearance 09- 1
SECTION-BY-SECTION ANALYSIS
Section 1
Section 1 provides that the short title of the legislation is the Intellectual Property
Protection Act of 2005.
Section 2
Section 2 amends section 411 of title 17. That section provides that, with certain
exceptions not applicable here, [n]o action for infringement of the copyright in any United
States work shall be instituted until registration of the copyright claim has been made. To
clarify that this rule applies only to civil infringement actions and not to criminal prosecutions,
section 2 amends section 411 to explicitly limit the registration prerequisite to civil actions.
A copyrightable works copyright subsists from [the works] creation. 17 U.S.C. §
302(a). The copyright exists, even if the work is not registered. Registration is largely a
formality, albeit a formality with significant procedural consequences. See 17 U.S.C. §§ 410(a)-
(b) (requiring Register of Copyrights to determine whether work is copyrightable before
registering the work), 410(c) (making a certificate of registration in most cases prima facie
evidence that the works copyright is valid), 411 (conditioning certain suits upon registration),
412 (conditioning certain remedies upon registration). Although this formality has and
should have certain consequences in civil cases, in criminal cases it should not. Prosecutors
do not control whether or when a copyrighted work is registered. Because prosecutors work for
the public good, they should be able to institute an infringement prosecution even if the
copyright has not yet been registered. This is especially true now that a typical criminal
prosecution for copyright piracy over the Internet commonly involves hundreds, if not
thousands, of copyrighted works. The burden of checking whether each work was registered
would substantially slow down investigations and hinder the governments ability to prosecute
these violations, especially infringement of works owned by small businesses that have not had
the time or resources to register.
Because this provision is a clarification, it works no change on existing practice of how
and when prosecutors prove the existence of a copyright in an infringement case, and does not
affect any pending cases. The Department of Justice will, however, continue to advise federal
prosecutors that the recommended course in most cases is to prosecute with a copyright
registration in hand, both as a matter of public policy and as matter of practicality at trial, see 17
U.S.C. § 410(c).
Section 3
Section 3(a) addresses the absence of a provision in copyright law that exists under the
Lanham Act. The Lanham Act provides that under appropriate circumstances, a court may issue
an ex parte order for the seizure of not only counterfeit goods and marks and the means of
making them, but also of records documenting the manufacture, sale, or receipt of things 2
involved in such violation. 15 U.S.C. § 1116(d)(1)(A). However, the Copyright Act does not
contain a parallel provision permitting the seizure of records or evidence, even though the risk
exists in copyright cases as much as in trademark cases that such evidence will be destroyed.
Many potential infringers of trademarks and copyrights are unscrupulous operators who
know full well that their actions are illegal. If they become aware that legal action is being taken
against them, many will disappear or hide or destroy their infringing goods and the evidence of
their infringement.
Accordingly, Congress recognized the need in certain circumstances for right holders to
be able to institute legal actions ex parte. 15 U.S.C. § 1116(d) trademark actions; Fed. R. Civ. P.
65(f) (copyright actions). The legislative history of the Lanham Acts ex parte provision
explains that its purpose is to provide victims of trademark counterfeiting a means of ensuring
court jurisdiction in counterfeiting cases to thwart the practice of destroying or transferring
counterfeit merchandise when court action approaches, while ensuring ample procedural
protections for persons against whom such orders are issued. 130 Cong. Rec. H12076 (Oct. 10,
1984). Although copyright owners may institute ex parte actions under Fed. R. Civ. P. 65(f), the
Copyright Act does not specifically provide for the seizure of evidence as the Lanham Act does.
However, some copyright pirates are just as likely to destroy evidence as trademark
counterfeiters, and in fact, it is not uncommon for copyright pirates to also be engaged in
trademark counterfeiting.
Section 4
Section 4(a) creates a new federal offense of attempting to infringe a copyright. The
completed crime is currently defined in section 506(a) of title 17. Section 4(a) makes no change
to the elements of the offense of copyright infringement. It does, however, criminalize any
attempts to commit this offense.
Section 4(a) is needed because, as with other criminal intellectual property laws, such as
the criminal counterfeit goods and services statute, 18 U.S.C. § 2320, an attempt to violate the
criminal copyright statute should be counted an offense whether it is successful or not. It is a
general tenet of the criminal law that those who attempt to commit a crime but do not complete it
are as morally culpable as those who succeed in doing so.
Although two federal criminal laws generally punish the aiding-and-abetting or
conspiracy to violate any federal crime, 18 U.S.C. §§ 2, 371, no general law does the same for
attempts. Consequently, the problem must be fixed by specifically amending the criminal
copyright statutes. Section 4(a) therefore amends §§ 506(a)(1)(A) and (B) of title 17 to include
attempts. Section 506(a)(1)(C) would not be so amended because that clause includes a number
of elements that would make an attempt difficult to prove or investigate.
A final amendment for the purpose of criminalizing copyright attempts is included in
section 13, which is discussed below. It amends Section 2319 of title 18, which sets forth the 3
penalty for violations of 17 U.S.C. §§ 506(a)(1)(A) and (B), to clarify that the penalties that
apply when the offense consists of reproduction or distribution, also apply when reproduction
or distribution is intended but not completed.
Section 4(b) amends the forfeiture provisions of section 506(b). Large-scale piracy of
copyrighted works relies on the use of various materials and tools to produce and distribute such
works. Although it is important that law enforcement officials be able to seize counterfeit items
and pirated works themselves, effective anti-piracy efforts can be significantly enhanced by
allowing for the seizure and forfeiture of the materials and tools being used to engage in large-
scale piracy.
Current forfeiture laws in the intellectual property area lack uniformity. The items
subject to civil forfeiture vary among different statutes. The procedures for criminal forfeiture
also lack uniformity. While the underlying intellectual property laws for which criminal
penalties are provided, such as those governing trademark, copyright, and trade secrets, vary in
the types of interests they are designed to protect, such distinctions are already reflected in their
differing scopes and their standards for criminal liability. Moreover, all the criminal intellectual
property provisions in U.S. law are designed to serve the common goals of fostering and
protecting creativity, innovation, the integrity of commercial transactions and markets, and
public health and safety. Where intellectual property violations rise to the level of criminal
offenses, a consistent, uniform set of standards governing the seizure and forfeiture of
contraband, facilitating equipment, and proceeds for each variety of intellectual property crime
will enhance law enforcement efforts, as well as reduce confusion and reinforce protections for
innocent third parties and the public.
Section 4(b) subjects to forfeiture any copies of phonorecords manufactured, reproduced,
distributed, sold or otherwise used, intended for use, or possessed with intent to use in violation
of section 506(a). It also subjects to forfeiture any property that constitutes or is derived from
any proceeds obtained directly or indirectly as a result of federal copyright infringement
offenses. Finally, it subjects to forfeiture any property used or intended to be used in any
manner or part to commit or facilitate the commission of a federal copyright infringement
offense, including any plates, molds, matrices, masters, tapes, film negatives, or other articles by
means of which the infringed copies or phonorecords may be reproduced, and any electronic,
mechanical, or other devices