Haynes and Boone's Newsroom

Pro-IP Act Signed into Law
10/15/2008
Andrew S. Ehmke, Gavin D. George

President Bush enacted a new intellectual property law yesterday.

The Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO-IP Act”) increases civil and criminal penalties for trademark and copyright infringement and creates the post of Intellectual Property Enforcement Coordinator (“IPEC”) within the Executive Office of the President.

Harmless Error during Copyright Registration Process

The PRO-IP Act offers protection for copyright owners that commit a “harmless error” during the copyright registration process. The PRO-IP Act states that a Certificate of Copyright Registration that contains inaccurate information will nevertheless satisfy the registration requirements unless the inaccurate information was included with knowledge that it was inaccurate, and the inaccuracy of the information, if known, would have caused the Copyright Office to refuse registration.

Seizure of Records Related to Infringement

Prior to the PRO-IP Act, after an infringement suit had been filed by a copyright holder, a court could impound the defendant’s infringing copies, molds, negatives and the reproduction equipment used to commit the infringement. Now, under the PRO-IP Act, a court can also impound all of the defendant’s records and documents related to the manufacture, sale or receipt of the infringing materials.

Tougher Sentences for Criminal Copyright Infringers

The PRO-IP Act relaxes the standards under which extended prison terms of up to ten years can be given to repeat felony copyright infringers. A person commits felony infringement if (i) he or she makes ten or more copies of one or more copyrighted works with a retail value of $2500 or more during any 180-day period; or (ii) he or she distributes a copyrighted work being prepared for commercial distribution by making it available on a computer network, if such person knew or should have known that the work was intended for commercial distribution. Previously, the Copyright Act required that an infringer commit the same type of felony copyright infringement twice to qualify for an extended prison term. Now, extended prison terms can be given to any repeat felony copyright infringer, regardless of the type of previous felony copyright infringement.

New Criminal Copyright Infringement Penalties

The PRO-IP Act requires courts to enforce stiffer forfeiture penalties against convicted criminal (misdemeanor or felony) copyright infringers. Courts are required to order a convicted copyright infringer to forfeit to the U.S. Government (i) any article, the making or trafficking of which is prohibited by the Copyright Act; (ii) any article used to willfully infringe a copyright for the purposes of financial gain; (iii) any property used or intended to be used in any manner to facilitate the infringement; and (iv) any property derived from proceeds obtained directly or indirectly from the infringement.