Order Code RL34109
Intellectual Property Rights Violations: Federal
Federal Civil Remedies and Criminal
Penalties Related to
Copyrights, Trademarks,
and Patents
Updated October 31, 2008
Brian T. Yeh
Legislative Attorney
American Law Division
Intellectual Property Rights Violations: Federal Civil
Remedies and Criminal Penalties Related to
Copyrights, Trademarks, and Patents
December 13, 2012
Congressional Research Service
7-5700
www.crs.gov
RL34109
CRS Report for Congress
Prepared for Members and Committees of Congress
Intellectual Property Rights Violations
Summary
This report provides information describing the federal civil remedies and
criminal penalties that
may be available as a consequence of violations of the federal
intellectual property laws: the
Copyright Act of 1976, the Patent Act of 1952, and
the Trademark Act of 1946 (conventionally
known as the Lanham Act). The report
explains the remedies and penalties for the following
intellectual property offenses:
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17 U.S.C. § 501 (copyright infringement);
•
17 U.S.C. § 506(a)(1)(A) and 18 U.S.C. § 2319(b) (criminal
copyright copyright
infringement for profit);
•
17 U.S.C. § 506(1)(B) and 18 U.S.C. § 2319(c) (criminal copyright
infringement infringement
without a profit motive);
•
17 U.S.C. § 506(a)(1)(c) and 18 U.S.C. § 2319(d) (pre-release
distribution of a
copyrighted work over a computer network);
•
17 U.S.C. § 1309 (infringement of a vessel hull or deck design);
•
17 U.S.C. § 1326 (falsely marking an unprotected vessel hull or deck
design with
a protected design notice);
•
17 U.S.C. §§ 1203, 1204 (circumvention of copyright protection);
•
18 U.S.C. § 2319A (bootleg recordings of live musical
performances);
•
18 U.S.C. § 2319B (unauthorized recording of motion pictures in
movie theaters);
movie
theaters);
•
15 U.S.C. § 1114(1) (unauthorized use in commerce of a
reproduction,
counterfeit, or colorable imitation of a federally
registered trademark);
•
15 U.S.C. § 1125(a) (trademark infringement due to false
designation, origin, or
sponsorship);
•
15 U.S.C. § 1125(c) (dilution of famous trademarks);
•
15 U.S.C. §§ 1125(d) and 1129 (cybersquatting and cyberpiracy in
connection connection
with Internet domain names);
•
18 U.S.C. § 2318 (counterfeit/illicit labels and counterfeit
documentation and
packaging for copyrighted works);
•
35 U.S.C. § 271 (patent infringement);
•
35 U.S.C. § 289 (infringement of a design patent);
•
35 U.S.C. § 292 (false marking of patent-related information in
connection with
articles sold to the public);
•
28 U.S.C. § 1498 (unauthorized use of a patented invention by or for
the United
States, or copyright infringement by the United States);
•
19 U.S.C. § 1337 (unfair practices in import trade);
•
18 U.S.C. § 2320 (trafficking in counterfeit trademarks);
Congressional Research Service
Intellectual Property Rights Violations
•
19 U.S.C. § 1526(e), 15 U.S.C. § 1124 (importing merchandise
bearing bearing
counterfeit marks),18 U.S.C. § 2320(h) (transshipment and
exportation of
counterfeit goods);
•
18 U.S.C. § 1831 (trade secret theft to benefit a foreign entity); and
•
18 U.S.C. § 1832 (theft of trade secrets for commercial advantage).
Contents
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Civil Remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Trademark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
Unfair Competition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Trade Secrets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
Criminal Penalties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
Trademark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
Trade Secrets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27
Intellectual Property Rights Violations:
Federal Civil Remedies and Criminal
Penalties Related to Copyrights,
Trademarks, and Patents
This report summarizes the federal civil remedies and criminal penalties that
may be available for violations of the rights granted by the federal intellectual
property laws: the Copyright Act of 1976, the Patent Act of 1952, and the Trademark
Act of 1946 (conventionally known as the Lanham Act).1
Introduction
Intellectual property (IP) law has three major branches, applicable to different
types of subject matter: copyright (original artistic and literary works of authorship),
patent (inventions of processes, machines, manufactures, and compositions of matter
that are useful, new, and nonobvious), and trademark (commercial symbols). The
source of federal copyright and patent law originates with the Copyright and Patent
Clause of the U.S. Constitution, which authorizes Congress “To promote the
Progress of Science and useful Arts, by securing for limited Times to Authors and
Congressional Research Service
Intellectual Property Rights Violations
Contents
Introduction...................................................................................................................................... 1
Civil Remedies................................................................................................................................. 5
Copyright ................................................................................................................................... 5
Trademark.................................................................................................................................. 8
Patent ....................................................................................................................................... 11
Unfair Competition.................................................................................................................. 13
Trade Secrets ........................................................................................................................... 13
Criminal Penalties .......................................................................................................................... 14
Copyright ................................................................................................................................. 14
Trademark................................................................................................................................ 17
Trade Secrets ........................................................................................................................... 18
Contacts
Author Contact Information........................................................................................................... 19
Congressional Research Service
Intellectual Property Rights Violations
T
his report summarizes the federal civil remedies and criminal penalties that may be
available for violations of the rights granted by the federal intellectual property laws: the
Copyright Act of 1976, the Patent Act of 1952, and the Trademark Act of 1946
(conventionally known as the Lanham Act).1
Introduction
Intellectual property (IP) law has three major branches, applicable to different types of subject
matter: copyright (original artistic and literary works of authorship), patent (inventions of
processes, machines, manufactures, and compositions of matter that are useful, new, and
nonobvious), and trademark (commercial symbols). The source of federal copyright and patent
law originates with the Copyright and Patent Clause of the U.S. Constitution, which authorizes
Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”2 By
contrast, the constitutional basis for federal trademark law is the Commerce Clause.3
The Copyright Act, Patent Act, and Lanham Act provide legal protection for
intellectual property
against unauthorized use, theft, and other violations of the rights
granted by those statutes to the
IP owner. The Copyright Act provides copyright
owners with the exclusive right to control
reproduction, distribution, public
performance, and display of their copyrighted works.4 The
Patent Act grants patent holders the right to exclude others from making, using, offering for sale,
or selling their patented invention throughout the United States, or importing the invention into
the United States.5 The Lanham Act allows sellers and producers of goods and services to prevent
a competitor from:
(1) using any counterfeit, copy, or imitation of their trademarks (that have been registered
with the U.S. Patent and Trademark Office), in connection with the sale of any goods or
services in a way that is likely to cause confusion, mistake, or deception,6 or
(2) using in commercial advertising any word, term, name, symbol, or device, or any false or
misleading designation of origin or false or misleading description or representation of fact,
1
Unlike copyright and patent law, trademark rights and remedies for trademark infringement
may arise from both
federal and state law. Although this report focuses exclusively on
federal trademark law, state common law may
provide another source of legal protection for
trademark owners.
2
3
2
U.S. CONST. art. I, § 8, cl. 8.
3
U.S. CONST. art. I, § 8, cl. 3. In the Trade-Mark Cases, 100 U.S. 82, 93-94 (1879), the U.S.
Supreme Court held the
first federal trademark act to be unconstitutional because it was
enacted pursuant to the Copyright and Patent clause:
“Any attempt ... to identify the
essential characteristics of a trade-mark with inventions and discoveries in the arts and
sciences, or with the writings of authors, will show that the effort is surrounded with
insurmountable difficulties.”
Subsequent federal trademark laws avoided this problem
because they were adopted pursuant to Congress’s power to
regulate interstate commerce,
foreign commerce, and commerce with the Indian Tribes.
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performance, and display of their copyrighted works.4 The Patent Act grants patent
holders the right to exclude others from making, using, offering for sale, or selling
their patented invention throughout the United States, or importing the invention into
the United States.5 The Lanham Act allows sellers and producers of goods and
services to prevent a competitor from:
(1) using any counterfeit, copy, or imitation of their trademarks (that have been
registered with the U.S. Patent and Trademark Office), in connection with the
sale of any goods or services in a way that is likely to cause confusion, mistake,
or deception,6 or
(2) using in commercial advertising any word, term, name, symbol, or device, or
any false or misleading designation of origin or false or misleading description
or representation of fact, which: (a) is likely to cause confusion, mistake, or
deception as to affiliation, connection, or association, or as to origin,
sponsorship, or approval, of his or her goods, services, or commercial activities
by another person, or (b) misrepresents the nature, characteristics, qualities, or
4
17 U.S.C. § 106.
5
35 U.S.C. §§ 154(a)(1), 271(a). However, there is no statutory requirement that a patentee must practice the invention;
the patentee is free to license to others the right to make, use, or sell the invention. Rite-Hite Corp. v. Kelley Co., Inc.,
56 F.3d 1538, 1547 (Fed. Cir. 1995). Nor does the grant of a patent give a patent holder an affirmative right to use the
invention, as compliance with other laws may be required before such activity. For example, if a company obtains a
patent on a drug compound, it must still seek the approval of the U.S. Food and Drug Administration in order to market
the drug to consumers.
6
15 U.S.C. § 1114(1).
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Intellectual Property Rights Violations
which: (a) is likely to cause confusion, mistake, or deception as to affiliation, connection, or
association, or as to origin, sponsorship, or approval, of his or her goods, services, or
commercial activities by another person, or (b) misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another person’s goods, services, or
commercial activities.7
In addition, the Lanham Act grants to owners of “famous” trademarks the right to
seek injunctive
relief against another person’s use in commerce of a mark or trade
name if such use causes
dilution by blurring or tarnishment of the distinctive quality
of the famous trademark.8
An alternative to patent law protection may be found in trade secret law, which
protects trade secrets9 from theft and espionage.10 The federal Economic Espionage
4
17 U.S.C. § 106.
5
35 U.S.C. §§ 154(a)(1), 271(a). However, there is no statutory requirement that a patentee
must practice the invention; the patentee is free to license to others the right to make, use,
or sell the invention. Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1547 (Fed. Cir.
1995). Nor does the grant of a patent give a patent holder an affirmative right to use the
invention, as compliance with other laws may be required before such activity. For
example, if a company obtains a patent on a drug compound, it must still seek the approval
of the U.S. Food and Drug Administration in order to market the drug to consumers.
6
15 U.S.C. § 1114(1).
7
15 U.S.C. § 1125(a)(1).
8
15 U.S.C. § 1125(c)(1). For more information about trademark dilution, see CRS Report
RL33393, Protecting Famous, Distinctive Marks: The Trademark Dilution Revision Act of
2006, by Brian T. Yeh.
9
A “trade secret” means all forms and types of financial, business, scientific, technical,
economic, or engineering information, including patterns, plans, compilations, program
devices, formulas, designs, prototypes, methods, techniques, processes, procedures,
programs, or codes, whether tangible or intangible, and whether or how stored, compiled,
or memorialized physically, electronically, graphically, photographically, or in writing if:
(A) the owner thereof has taken reasonable measures to keep such information secret; and
(B) the information derives independent economic value, actual or potential, from not being
generally known to, and not being readily ascertainable through proper means by, the public.
(continued...)
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Act of 199611 provides criminal penalties for the theft or misappropriation12 of trade
secrets in certain circumstances, by domestic and foreign entities.
Enforcement of IP rights may be accomplished by the IP owner bringing a
lawsuit against an alleged infringer. The U.S. Department of Justice may also
criminally prosecute particularly egregious violators of the IP laws in order to impose
greater punishment and possibly deter other would-be violators.13 In certain
circumstances, a variety of federal agencies may become involved in IP rights
enforcement:14 for example, the U.S. Customs and Border Protection agency has the
power to seize counterfeit goods upon their attempted importation in the United
States; the International Trade Commission may investigate and adjudicate
allegations of unfair trade practices due to the importing of goods that infringe U.S.
patents, trademarks, or copyrights; and the U.S. Trade Representative, the U.S.
Department of Commerce’s International Trade Administration, and the U.S. State
Department are all involved in promoting and seeking IP rights enforcement by
trading partners and other foreign countries.15
9
(...continued)
18 U.S.C. § 1839(3).
10
Until 1996, trade secret protection was primarily governed by state law. The Uniform
Trade Secrets Act (UTSA) was published in 1979 by the National Conference of
Commissioners on Uniform State Laws and codifies the common law concerning trade
secrets. The UTSA has been adopted by 40 states and the District of Columbia. For a list
of the states that have adopted the UTSA, see [http://www.nccusl.org/nccusl/uniformact_
factsheets/uniformacts-fs-utsa.asp].
11
P.L. 104-294, §§ 1831-1839, 110 Stat. 3488 (codified at 18 U.S.C. §§ 1831-1839).
12
“Misappropriation” of a trade secret means an acquisition, disclosure, or use of a trade
secret by “improper means.” UNIFORM TRADE SECRETS ACT § 1(2). “Improper means” is
a term that “includes theft, bribery, misrepresentation, breach or inducement of a breach of
a duty to maintain secrecy, or espionage through electronic or other means.” Id. § 1(1).
13
The 94 U.S. Attorneys’ Offices located across the country have primary responsibility for
prosecution of IP offenses. Every office has a Computer Hacking and Intellectual Property
(“CHIP”) Coordinator, who are Assistant U.S. Attorneys with expertise in prosecuting IP
and computer crimes. U.S. DEP’T OF JUSTICE, COMPUTER CRIME & INTELLECTUAL
PROPERTY SECTION, PROSECUTING INTELLECTUAL PROPERTY CRIMES (3rd ed., Sept. 2006),
available at [http://www.usdoj.gov/criminal/cybercrime/ipmanual/01ipma.html].
14
The scope of this report is limited to summarizing the penalties available under federal
law for IP rights violations; the report will not discuss in detail the various foreign, federal
and state entities that may become involved in IP enforcement and prosecution activities.
15
The “Prioritizing Resources and Organization for Intellectual Property Act of 2008,” P.L.
110-403, created the position of “Intellectual Property Enforcement Coordinator” (IPEC)
to serve within the Executive Office of the President, and established an interagency IP
enforcement advisory committee, chaired by the IPEC and composed of Senate-confirmed
representatives of departments and agencies involved in IP enforcement, including the
Office of Management and Budget, U.S. Patent and Trademark Office, Food and Drug
Administration, Copyright Office, and the Departments of State, Homeland Security,
Agriculture, and Justice. This advisory committee is charged with developing and
implementing a “joint strategic plan” to combat counterfeiting and infringement of IP rights.
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In copyright cases, the statute of limitations for initiating a civil action is within
three years after the claim accrued, while a criminal proceeding must be commenced
within five years after the cause of action arose.16 Although there is no express
federal statute of limitations for civil trademark infringement claims, federal courts
generally follow the limitations period for the most analogous state-law cause of
action from the state in which the claim is heard; courts have also applied the
equitable doctrine of laches to determine whether a trademark infringement claim is
untimely.17 One federal appellate court has determined that criminal trademark
infringement prosecutions are governed by the general five-year statute of limitations
for non-capital offenses under Title 18 of the U.S. Code.18 Although there is no
statute of limitations in patent infringement actions, the Patent Act specifies a time
limit on monetary relief for patent infringement claims: damages are available only
for infringement that occurs within the six years prior to the filing of the complaint
or counterclaim for patent infringement.19
Both the Lanham Act and the Copyright Act have criminal and civil provisions
for violations of their respective provisions,20 while the Patent Act only provides civil
remedies in the event of patent infringement.21 Federal courts determine the civil
remedies in an action for infringement brought by the IP owner.22 If the federal
government chooses to prosecute individuals or organizations for IP violations, the
imprisonment terms are set forth in the substantive statutes describing the particular
IP crime, while the criminal fine amount is determined in conjunction with 18 U.S.C.
§ 3571 (specifies the amount of the fine under Title 18 of the U.S. Code).
Information regarding the civil remedies and criminal penalties for violations
of the copyright, trademark, and patent laws is presented on the following pages in
table-format. These penalties may be imposed upon conviction of the defendant in
the case of a criminal prosecution, and the civil remedies follow a judgment of
16
17 U.S.C. § 507.
17
Ronald J. Nessim, Criminal (and Civil) Trademark Infringement: What Statute of
Limitations Applies?, 76 J. PAT. & TRADEMARK OFF. SOC’Y 933, 937 (Dec. 1994).
18
18 U.S.C. § 3282; see also United States v. Foote, 413 F.3d 1240, 1247 (10th Cir.
2005)(“In the case of the Counterfeit Trademark Act, a criminal statute, Congress has
provided a specific statutory period in § 3282.”).
19
35 U.S.C. § 286. However, the equitable doctrine of laches may be raised as an
affirmative defense to a claim for patent infringement if the patent holder’s delay in bringing
suit is unreasonable and inexcusable, and the alleged infringer suffers material prejudice
attributable to the delay. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d
1020, 1028 (Fed. Cir. 1992) (“A presumption of laches arises where a patentee delays
bringing suit for more than six years after the date the patentee knew or should have known
of the alleged infringer’s activity.”).
20
For copyright, 17 U.S.C. § 501 (civil) and § 506, 18 U.S.C. § 2319 (criminal); for
trademark, 15 U.S.C. § 1114 (civil) and 18 U.S.C. § 2320 (criminal).
21
22
35 U.S.C. § 281.
For copyright infringement civil actions, see 17 U.S.C. §§ 501-505; trademark
infringement claims, see 15 U.S.C. §§ 1114-1121; patent infringement actions, see 35
U.S.C. §§ 281-297.
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infringement reached by a federal judge or jury in a civil action. (Certain injunctive
relief may be available prior to final judgment, such as temporary injunctions or
impounding of infringing articles.) For any offense that provides forfeiture penalties,
criminal forfeiture is available upon the conviction of the owner of the offending
property; civil forfeiture is available if the government establishes that the infringing
goods are subject to confiscation by a preponderance of the evidence.23 Restitution
is available when the defendant is convicted of a criminal property offense.24
23
For more information about forfeiture generally, see CRS Report 97-139, Crime and
Forfeiture, by Charles Doyle.
24
18 U.S.C. § 2323(c) (“When a person is convicted of an offense under section 506 of title
17 or section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90, of this title, the court,
pursuant to sections 3556, 3663A, and 3664 of this title, shall order the person to pay
restitution to any victim of the offense as an offense against property referred to in section
3663A(c)(1)(A)(ii) of this title”). This new section of the U.S. Code was added by the
“Prioritizing Resources and Organization for Intellectual Property Act of 2008,” P.L.
110-403.
CRS-6
Civil Remedies
Copyright
Cause of Action
Description of Violation
Remedies Availablea
Copyright
Infringement, 17
U.S.C. § 501
Violation of any of the exclusive
rights of the copyright owner as
provided by 17 U.S.C. §§ 106122, 602, including the right to
control reproduction, distribution,
public performance, and display
of copyrighted works.
(1) Injunctions, 17 U.S.C. § 502.
(2) Impounding, destruction, or other reasonable disposition of: all copies made in violation of
the copyright owner’s rights; all plates, molds, matrices, masters, tapes, film negatives, or other
articles by means of which such copies may be reproduced; and any records documenting the
manufacture, sale, or receipt of things involved in the violation — the court shall take such
records into custody and shall enter an appropriate protective order (with respect to discovery
and use of the records) that assures that confidential information contained in such records is
not improperly disclosed or used, 17 U.S.C. § 503.
(3) Actual damages suffered by the copyright owner due to the infringement, and any profits of
the infringer attributable to the infringement, 17 U.S.C. § 504(b).
(4) Statutory damages (at the copyright owner’s election to recover in lieu of actual damages
and profits), in the amount of not less than $750 or more than $30,000 as the court deems just,
17 U.S.C. § 504(c)(1). For willful infringement, a court may, in its discretion, increase the
statutory damages award to a sum of not more than $150,000, 17 U.S.C. § 504(c)(2).b
(5) Costs and attorney’s fees, 17 U.S.C. § 505.
CRS-7
Cause of Action
Description of Violation
Remedies Availablea
Infringement of a
Vessel Hull or Deck
Design, 17 U.S.C. §
1309
Violation of any of the rights of
the owner of a vessel hull or deck
design registered with the U.S.
Copyright Office, including the
right to: (1) make, have made, or
import, for sale or for use in
trade, any useful article
embodying the design; and (2)
sell or distribute any useful
article with the design.
(1) Injunctions, 17 U.S.C. § 1322.c
(2) Destruction or other disposition of all infringing articles, and any plates, molds, patterns,
models, or other means specially adapted for making the articles, 17 U.S.C. § 1323(e).
(3) Actual damages suffered by the copyright owner due to the infringement, 17 U.S.C. §
1323(a). The court may increase the damages to such amount, not exceeding $50,000 or $1 per
copy, whichever is greater, as the court determines to be just.
(4) Infringer’s profits (may only be awarded as an alternative to compensatory damages)
resulting from the sale of the copies if the court finds that the infringer’s sales are reasonably
related to the use of the owner’s design, 17 U.S.C. § 1323(b).
(5) Attorney’s fees, 17 U.S.C. § 1323(d).
A seller/distributor who did not
make or import an infringing
article is liable if he induces or
acts in collusion to make/import
the article. A seller/distributor
can also be liable if a design
owner asks where the article
came from and the
seller/distributor refuses to
disclose its source and orders or
reorders the article with the
infringing design after being
notified that the design is
protected.
CRS-8
Cause of Action
Description of Violation
Remedies Availablea
Falsely Marking an
Unprotected Vessel
Hull or Deck Design
with a Protected
Design Notice, 17
U.S.C. § 1326
For the purpose of deceiving the
public, marking or using in
advertising in connection with an
unprotected vessel hull or deck
design (not registered with the
U.S. Copyright Office) a design
notice or other words or symbols
suggesting that the design is
protected, knowing that the
design is not so protected.
(1) A fine of not more than $500 for each such offense, 17 U.S.C. § 1326(a).
(2) Any person may sue for the penalty, in which event one-half shall go to the person suing
and the remainder awarded to the United States, 17 U.S.C. § 1326(b).
CRS-9
Cause of Action
Description of Violation
Remedies Availablea
Circumvention of
Copyright Protection
Systems in Violation
of
§§ 1201 and 1202 of
the Digital
Millennium
Copyright Act
(DMCA), 17 U.S.C. §
1203
(1) 17 U.S.C. § 1201:
Descrambling, decrypting, or
otherwise avoiding, bypassing,
removing, deactivating, or
impairing a technological
measure, without the authority of
the copyright owner, that
effectively controls access to a
copyrighted work.
(1) Temporary and permanent injunctions to prevent or restrain a violation of this offense, but
in no event shall the court impose a prior restraint on free speech or the press protected under
the First Amendment to the Constitution.
(2) At any time while an action is pending, the court may order the impounding of any device or
product that is in the custody or control of the alleged violator and that the court has reasonable
cause to believe was involved in a violation.
(3) Recovery of costs by or against any party other than the United States or an officer thereof.
(4) Reasonable attorney’s fees to the prevailing party.
(5) The court may order the remedial modification or the destruction of any device or product
involved in the violation that is in the custody or control of the violator or that has been
impounded.
(6) Actual damages and any additional profits of the violator that are attributable to the
violation and are not taken into account in computing the actual damages.
(7) Statutory damages (at the election of the complaining party in lieu of actual damages), as
follows:
! For each violation of 17 U.S.C. § 1201, in the sum of not less than $200 or
more than $2,500 per act of circumvention, device, product, component, offer,
or performance of service, as the court considers just.
! For each violation of 17 U.S.C. § 1202, in the sum of not less than $2,500 or
more than $25,000.
(8) For repeated violations: If the injured party proves, and the court finds, that a person has
violated 17 U.S.C. §§ 1201 or 1202 within 3 years after a final judgment was entered against
the person for another such violation, the court may increase the award of damages up to triple
the amount that would otherwise be awarded, as the court considers just.
(9) For innocent violations: The court in its discretion may reduce or remit the total award of
damages in any case in which the violator proves, and the court finds, that the violator was not
aware and had no reason to believe that its acts constituted a violation.
(2) 17 U.S.C. § 1202:
Manufacturing, importing,
offering to the public, providing,
or otherwise trafficking in any
technology, product, service,
device, or component, that is
primarily designed or produced
for the purpose of circumventing
copyright protection measures.
CRS-10
Cause of Action
Description of Violation
Remedies Availablea
Counterfeit or Illicit
Labels and
Counterfeit
Documentation and
Packaging for
Copyrighted Works,
18 U.S.C. § 2318(e)(1)c
Knowingly trafficking in a
counterfeit label or illicit label
affixed to, enclosing, or
accompanying a copyrighted
work, or trafficking in counterfeit
documentation or packaging.
(1) Injunctions, 18 U.S.C. § 2318(e)(2)(A).
(2) Impounding of any article in the custody/control of the alleged violator that the court has
reasonable cause to believe was involved in a violation of this offense, 18 U.S.C. §
2318(e)(2)(B).
(3) Reasonable attorney fees and costs, 18 U.S.C. § 2318(e)(2)(C).
(4) Actual damages and any additional profits of the violator, 18 U.S.C. § 2318(e)(2)(C)(ii)(I).
(5) Statutory damages (at the election of the plaintiff to recover instead of actual damages and
profits), in the amount of not less than $2,500 or more than $25,000, as the court considers
appropriate, 18 U.S.C. §§ 2318(e)(2)(C)(ii)(II), (f)(4).
(6) Treble damages for subsequent violations by an individual within 3 years after a final
judgment was entered against that person for a violation of this offense, 18 U.S.C. §2318(e)(5).
Infringement of a
Copyrighted Work by
the United States,d 28
U.S.C. § 1498(b)
Infringement of a copyrighted
work by the United States
government, by a corporation
owned or controlled by the
United States government, or by
a contractor, subcontractor, or
any person, firm, or corporation
acting for the United States and
with the authorization or consent
of the United States government.
The exclusive remedy is for the copyright owner to commence an action against the United
States in the United States Court of Federal Claims for the recovery of his or her reasonable and
entire compensation as damages for such infringement, including the minimum statutory
damages as set forth in 17 U.S.C. § 504(c). However, before the copyright owner may bring
such an action, the appropriate corporation owned or controlled by the United States or the head
of the appropriate department or agency of the Government, as the case may be, is authorized to
enter into an agreement with the copyright owner for the damages caused by such infringement
and to settle the claim administratively out of available appropriations.
a. Throughout this report, the list of “remedies available” or “authorized penalties” describes the range of remedies and penalties that are associated with the particular violation; whether
some or all the remedies/penalties apply in any given case depends on several factors, including the court’s discretion, the plaintiff’s election of remedy, the defendant’s conduct,
and other factual circumstances of the case.
b. Where an infringer proves that he was not aware and had no reason to believe his acts constituted copyright infringement, the court may, in its discretion, reduce the award of
statutory damages to a sum of not less than $200, 17 U.S.C. § 504(c)(2).
c. While this offense also carries criminal penalties, discussed infra, the statute also provides civil remedies, permitting any copyright owner who is injured, or is threatened with injury
due to this offense, to file suit in an appropriate U.S. district court.
d. Under the Eleventh Amendment to the U.S. Constitution, a state (or instrumentality thereof) enjoys governmental immunity from lawsuits brought by private parties. Therefore,
a state that violates intellectual property rights may not be sued by the intellectual property owner unless the state consents. Congress has attempted to abrogate the states’
sovereign immunity from patent, trademark, or copyright infringement lawsuits, by passing laws in the early 1990s that explicitly required states to submit to suit in federal court
for their intellectual property violations. However, federal courts have held these laws unconstitutional. See Florida Prepaid v. College Savings, 527 U.S. 627 (1999) (invalidating
the Patent and Plant Remedy Clarification Act of 1992); Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000) (invalidating the Copyright Remedy Clarification Act of
1990); Board of Regents of the Univ. of Wisconsin System v. Phoenix Software Int’l, Inc., 565 F.Supp.2d 1007 (W.D. Wis. 2008)(invalidating the Trademark Remedy
Clarification Act of 1992).
CRS-11
Trademark
Cause of Action
Description of Violation
Remedies Available
Trademark
Infringement Due to
Unauthorized Use of
Any Reproduction,
Copy, or Colorable
Imitation of a
Federally Registered
Mark, 15 U.S.C.
§ 1114(1)
Unauthorized use in commerce of
any reproduction, copy, or colorable
imitationa of a federally registered
mark in connection with the sale,
offering for sale, distribution, or
advertising of any goods or
services, where such use is likely to
cause consumer confusion, mistake,
or deception.
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) Any damages sustained by the plaintiff, defendant’s profits, and the costs of the action, 15
U.S.C. § 1117(a).
(3) In exceptional cases,b reasonable attorney fees, 15 U.S.C. § 1117(a).
(4) The court may order that any infringing articles bearing the reproduction, copy, or
colorable imitation of a registered mark be destroyed, 15 U.S.C. § 1118.
Trademark
Infringement Due to
Use of a Counterfeit
of a Federally
Registered Mark, 15
U.S.C.
§ 1114(1)
Intentional use in commerce of a
counterfeit mark or designationc, in
either of two circumstances:
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) The court may order that any infringing articles bearing the counterfeit of the registered
mark be destroyed, 15 U.S.C. § 1118.
(3) Seizure of goods and counterfeit marks as ordered by a court upon an ex parte
application, as well as the means of making such marks, and records documenting the
manufacturer, sale, or receipt of things involved in such violation, 15 U.S.C. §
1116(d)(1)(A).
(4) Unless the court finds extenuating circumstances, treble any damages sustained by the
plaintiff or defendant’s profits, whichever is greater, plus reasonable attorneys’ fees, 15
U.S.C. § 1117(b).
(5) Statutory damages (at the election of the plaintiff to recover instead of actual damages
and profits), in the amount of not less than $1,000 or more than $200,000 per counterfeit
mark per type of goods or services sold, offered for sale, or distributed, as the court considers
just, 15 U.S.C. § 1117(c)(1). If the court finds that the use of the counterfeit mark was
willful, the statutory damages award is not more than $2,000,000 per counterfeit mark per
type of goods or services sold, offered for sale, or distributed, as the court considers just, 15
U.S.C. § 1117(c)(2).
(1) in connection with the sale,
offering for sale, or distribution of
goods or services, knowing that
such mark or designation is a
counterfeit mark, or
(2) providing goods or services
necessary to the commission of the
violation described in the first
circumstance above, with the intent
that the recipient of the goods or
services would put the goods or
services to use in committing the
violation.
CRS-12
Cause of Action
Description of Violation
Remedies Available
Trademark
Infringement Due to
False Designation,
Origin, or
Sponsorship, 15
U.S.C. § 1125(a)
Use in connection with any goods or
services of any word, term, name,
symbol, or device, or any false
designation of origin, false or
misleading description of fact, or
false or misleading representation of
fact, which:
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) Any damages sustained by the plaintiff, defendant’s profits, and the costs of the action, 15
U.S.C. § 1117(a).
(3) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(4) The court may order that any infringing articles bearing the word, term, name, symbol, or
device be destroyed, 15 U.S.C. § 1118.
(A) is likely to cause confusion,
mistake, or deception as to the
affiliation, connection, or
association of such person with
another person, or as to the origin,
sponsorship, or approval of his or
her goods, services, or commercial
activities by another person, or
(B) in commercial advertising or
promotion, misrepresents the nature,
characteristics, qualities, or
geographic origin of his or her or
another person’s goods, services, or
commercial activities.
CRS-13
Cause of Action
Description of Violation
Remedies Available
Dilution of Famous
Trademarks, 15
U.S.C. § 1125(c)
Use in commerce of a mark or trade
name if such use causes dilutiond by
blurringe or tarnishmentf of the
distinctive quality of a famous
trademark.
(1) Injunctions, 15 U.S.C. §§ 1116(a), 1125(c)(1).
Under 15 U.S.C. § 1125(c)(5), owners of famous marks may also be entitled to the following
additional remedies listed below if:
the mark or trade name that is likely to cause dilution by blurring or dilution
by tarnishment was first used in commerce by the alleged infringer after
Oct. 6, 2006; and
! (A) in a dilution by blurring action, the person willfully intended to trade on
the recognition of the famous mark; or (B) in a dilution by tarnishment
action, the person willfully intended to harm the reputation of the famous
mark.
!
(2) For a willful violation, any damages sustained by the plaintiff, defendant’s profits, and
the costs of the action, 15 U.S.C. § 1117(a).
(3) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(4) For a willful violation, the court may order that any infringing articles bearing the word,
term, name, symbol, or device be destroyed, 15 U.S.C. § 1118.
CRS-14
Cause of Action
Description of Violation
Remedies Available
Cyberpiracy and
Cybersquatting in
Connection With
Internet Domain
Names, 15 U.S.C. §
1125(d)
Registering of, trafficking in,
offering to sell, or use of an Internet
domain name that is
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) Any damages sustained by the plaintiff, defendant’s profits, and the costs of the action, 15
U.S.C. § 1117(a).
(3) Statutory damages (at the election of the plaintiff to recover instead of actual damages
and profits), in the amount of not less than $1,000 and not more than $100,000 per domain
name, as the court considers just, 15 U.S.C. § 1117(d).
(4) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(5) Forfeiture or cancellation of the domain name or the transfer of the domain name to the
owner of the mark, 15 U.S.C. § 1125(d)(1)(C)
(A) identical or confusingly similar
to a trademark that is distinctive at
the time the domain name is
registered; or
(B) identical, confusingly similar to,
or dilutive of a trademark that is
famous at the time the domain name
is registered,
with a bad faith intent to profit from
the goodwill of another’s
trademark.
Cyberpiracy
Protection for
Individuals, 15 U.S.C.
§ 1129
Registering an Internet domain
name, on or after November 29,
1999, that consists of the name of
another living person, or a name
substantially and confusingly
similar thereto, without that
person’s consent, with the specific
intent to profit from such name by
selling the domain name for
financial gain to that person or any
third party.
If the trademark owner is not able to obtain in personam jurisdiction over a person who
would have been a defendant in this action (for example, the domain name registrant lives in
a foreign country), or is otherwise unable through due diligence to identify the person to
bring such an action, the trademark owner may file an in rem civil action against a domain
name in the judicial district in which the domain name registrar, domain name registry, or
other domain name authority that registered or assigned the domain name is located. In such
an in rem action, the remedies are limited to a court order for the forfeiture or cancellation of
the domain name or the transfer of the domain name to the owner of the mark, 15 U.S.C. §
1125(d)(2).
(1) Injunctive relief, including the forfeiture or cancellation of the domain name or the
transfer of the domain name to the plaintiff, 15 U.S.C. § 1129(2).
(2) Costs and attorneys fees to the prevailing party, at the court’s discretion, 15 U.S.C. §
1129(2).
CRS-15
Cause of Action
Description of Violation
Remedies Available
Importation of
Merchandise Bearing
Counterfeit Mark,19
U.S.C. § 1526(e); 15
U.S.C. §1124
Importing goods bearing infringing
marks or names that are identical
with, or substantially
indistinguishable from, registered
marks, in violation of Section 526
of the Tariff Act of 1930, and
Section 42 of the Lanham Act.g
Transshipment and
Exportation of
Counterfeit Goods
and Services, 18
U.S.C. § 2320(h)
Transshipping through or exporting
from the United States counterfeit
goods or services
(1) Seizure by the U.S. Customs Serviceh and, in the absence of the written consent of the
trademark owner, forfeiture for violations of the customs laws.
(2) Upon seizure of such merchandise, the Secretary of the Department of Homeland
Security shall notify the owner of the trademark, and shall, after forfeiture, destroy the
merchandise. If, however, the merchandise is not unsafe or a hazard to health, and the
trademark owner provides his consent to the Secretary, the Secretary may remove the
trademark (if feasible) and dispose of the seized goods by giving it to federal, state, and local
government agencies or to charitable organizations that the Secretary believes have a need
for such merchandise. If none of these parties have established such a need, and it has been
at least 90 days after the date of forfeiture, the Customs Service may sell the merchandise at
public auction.
(3) Any person who directs, assists financially or otherwise, or aids and abets the importation
of merchandise for sale or public distribution that is seized in violation of this offense is
subject to a civil fine. For the first seizure of such merchandise, the fine shall be not more
than the domestic value of the merchandise as if it had been genuine, according to the
manufacturer’s suggested retail price. For the second seizure and thereafter, the fine shall be
not more than twice the value that the merchandise would have had if it were genuine. The
imposition of this fine is within the discretion of the Customs Service, and is in addition to
any other civil or criminal penalty or other remedy authorized by law, 19 U.S.C. § 1526(f).
a. The term “colorable imitation” includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive. 15 U.S.C. § 1127.
b. Although the Lanham Act does not define what constitutes an “exceptional” case, federal courts have determined that malicious, fraudulent, deliberate, or willful trademark
infringement could qualify for this characterization. See, e.g., United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1232 (10th Cir. 2000).
c. A “counterfeit mark or designation” means: (1) a counterfeit of a mark that is registered on the principal register of the U.S. Patent and Trademark Office, or (2) a spurious
designation that is identical with, or substantially indistinguishable from, a designation relating to the United States Olympic Committee and other sports-related symbols and
names protected under 36 U.S.C. § 220506. 15 U.S.C. § 1116(d).
d. “Dilution” is statutorily defined in 15 U.S.C. § 1127 to mean “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence
or absence of ... (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
e. “Blurring” occurs when the famous mark’s ability to identify its product has been impaired due to an association in the minds of consumers arising from similarity between another
mark and the famous mark. 15 U.S.C. § 1125(c)(2)(B).
f. Tarnishment occurs when the reputation of a famous mark has been harmed by negative associations arising from the similarity between another mark and the famous mark. 15
U.S.C. § 1125(c)(2)(C). Situations in which tarnishment could result are when a famous trademark is “linked to products of shoddy quality, or is portrayed in an unwholesome
or unsavory context, with the result that the public will associate the lack of quality or lack of prestige in the defendant’s goods with the plaintiff’s unrelated goods.” Hormel
Foods Corp. v. Jim Henson Prods., 73 F.3d 497, 507 (2d Cir. 1996) (citations and internal quotations omitted).
g. Under the “personal use exemption,” 19 U.S.C. §1526(d)(1), this restriction does not apply to the importation of one article bearing a protected trademark that accompanies any
traveler arriving in the United States, when such article is for his personal use and not for sale.
CRS-16
h. Pursuant to agency policy, the U.S. Customs Service prioritizes enforcement efforts on trademarks and trade names that are recorded with U.S. Customs Service. U.S. Customs
Directive No. 2310-008A (April 2000), available at [http://www.cbp.gov/linkhandler/cgov/trade/legal/directives/2310-008a.ctt/2310-008a.pdf]. Trademarks registered by the
U.S. Patent and Trademark Office may be recorded with U.S. Customs if the registration is current. 19 C.F.R. § 133.1.
Patent
Cause of Action
Description of Violation
Remedies Available
Patent Infringement,
35 U.S.C. §§ 271; 281297.
(a) Unauthorized making, using, or
selling any patented invention within
the United States or importing into the
United States any patented invention
during the patent term;
(b) Actively inducing patent
infringement;
(c) Selling within the United States or
importing into the United States a
component of a patented invention, for
use in practicing a patented process,
constituting a material part of the
invention, knowing it to be especially
made for use in an infringement of
such patent;
(d) Manufacturing within the United
States the components of a patented
invention and then exporting those
disassembled parts for combination
abroad into an end product.
(1) Injunctions, 35 U.S.C. § 283.
(2) Damages adequate to compensate for the infringement (including lost profits if the
patent holder can demonstrate a causal connection between the infringement and the
unearned profits), but in no event less than a reasonable royalty for the use of the invention
by the infringer, together with interest and costs as determined by the court, 35 U.S.C. §
284. The court may receive expert testimony as an aid to the determination of damages or
of what royalty would be reasonable under the circumstances.
(3) The court in its discretion (for example, in cases of egregious, willful infringement)
may increase the damages up to three times the amount found or assessed by either the
jury or the court, 35 U.S.C. § 284.
(4) In exceptional cases, the court may award reasonable attorney fees to the prevailing
party, 35 U.S.C. § 285.
Unauthorized application of a patented
design (or any colorable imitation
thereof) to any article of manufacture
for the purpose of sale, or the sale of
such article.
(1) The offender is liable to the patent design owner to the extent of his total profit, but in
no event less than $250, recoverable in any U.S. district court having jurisdiction of the
parties.
(2) The remedies for patent infringement described in the box immediately above may also
be available to the owner of a design patent infringed in this manner, but he is not allowed
to twice recover the profit made from the infringement, 35 U.S.C. § 289.
Infringement of a
Design Patent, 35
U.S.C. § 289
NOTE: Monetary damages shall not be awarded for any infringement committed more
than 6 years prior to the filing of the complaint or counterclaim for infringement, 35
U.S.C. § 286.
CRS-17
Cause of Action
Description of Violation
Remedies Available
False Marking of
Patent-related
Information in
Connection with
Articles Sold to the
Public, 35 U.S.C. §
292
(1) Unauthorized use in connection
with anything made, used, or sold
within the United States, or imported
into the United States, of the name of a
patent owner, patent number, or the
words “patent” or “patentee,” with the
intent of counterfeiting the mark of the
patentee, or of deceiving the public;
(2) Marking any unpatented article
with the word “patent” or any word or
number, for the purpose of deceiving
the public; or
(3) Using the words “patent applied
for,” “patent pending,” or any word
falsely suggesting that a patent
application has been made or is
pending, for the purpose of deceiving
the public.
(1) A fine of not more than $500 for every such offense, 35 U.S.C. § 392(a).
(2) Any person may sue for the penalty, in which event one-half shall go to the person
suing and the other to the use of the United States, 35 U.S.C. § 392(b).
Unauthorized Use or
Manufacture of a
Patented Invention by
or for the United
States,a28 U.S.C. §
1498(a)
(1) Use or manufacture of a patented
invention by or for the United States
government without the patent
owner’s authorization.
(1) An action against the United States in the United States Court of Federal Claims for the
recovery of the patent holder’s reasonable and entire compensation for such use and
manufacture.
(2) Reasonable and entire compensation shall include the owner’s reasonable costs,
including reasonable fees for expert witnesses and attorneys, in pursuing the action if the
patent owner is an independent inventor, a nonprofit organization, or an entity that had no
more than 500 employees at any time during the 5-year period preceding the use or
manufacture of the patented invention by or for the United States. However, unless the
action has been pending for more than 10 years from the time of filing to the time that the
owner applies for such costs and fees, reasonable and entire compensation shall not
include such costs and fees if the court finds that the position of the United States was
substantially justified or that special circumstances make an award unjust.
a. A state (or instrumentality thereof) that infringes a patent may not be sued by the patent holder because of the Eleventh Amendment to the U.S. Constitution. Legislation that would
have abrogated the states’ sovereign immunity from patent infringement lawsuits was invalidated by the U.S. Supreme Court in the late 1990s. See Florida Prepaid v. College
Savings, 527 U.S. 627 (1999).
CRS-18
Unfair Competition
Cause of Action
Description of Violation
Remedies Available
Unfair Practices in
Import Trade, 19
U.S.C. § 1337a
Infringement by importing
counterfeit and infringing products
into the United States.
(1) General or limited exclusion orders issued by the ITC barring the importation of
infringing products into the United States (enforced by the U.S. Bureau of Customs and
Border Protection).
(2) Cease and desist orders issued by the ITC to specific U.S. persons to prohibit the use or
purchase of such infringing products from abroad (enforced by the ITC), 19 U.S.C. §§
1337(d)-(f).
(3) Monetary damages are not available in a Section 337 proceeding, although the
intellectual property owner can seek such monetary relief by filing a suit in federal district
court.
(4) Civil forfeiture is authorized if the owner or importer of the infringing article previously
attempted to import the article into the United States, 19 U.S.C. § 1337(i).
(5) Anyone who violates an order of the ITC must pay to the United States a civil penalty
for each day on which an importation of articles, or their sale, occurs in violation of the
order. The amount of the civil penalty is to be not more than the greater of $100,000 or
twice the domestic value of the articles entered or sold on such day in violation of the ITC’s
order. To recover the civil penalty, the ITC may bring a civil action in the U.S. District
Court for the District of Columbia or in the district in which the violation occurs, 19 U.S.C.
§ 1337(f)(2).
Section 337 of the Tariff Act of 1930
grants intellectual property rights
holders the right to seek relief from
the United States International Trade
Commission (ITC), for the
importation of goods that infringe a
trademark, patent, or copyright. To
initiate a “Section 337 action,”
intellectual property rights owners
must file a complaint with the ITC to
allege unfair acts in the importation
of infringing goods into the United
States.
a. While the majority of Section 337 cases usually involve a claim of patent infringement, the statute expressly allows trademark and copyright owners to seek relief, 19 U.S.C. §
1337(a)(1)(B)(i) (registered copyrighted work), 19 U.S.C. § 1337(a)(1)(C) (registered U.S. trademark).
CRS-19
Trade Secrets
Cause of Action
Description of Violation
Remedies Available
Theft of a Trade
Secret to Benefit a
Foreign Entity, 18
U.S.C. § 1831
With intent or knowledge that the offense
will benefit any foreign government, foreign
instrumentality, or foreign agent, knowingly:
(1) stealing or without authorization taking
or obtaining a trade secret; (2) without
authorization copying, destroying, or
transmitting a trade secret; (3) receiving,
buying, or possessing a trade secret, knowing
it to have been stolen or obtained without
authorization; (4) attempting to commit any
offense described above; (5) conspiring with
one or more other persons to commit any
offense described above, and one or more of
such persons do any act to effect the object
of the conspiracy.
The Attorney General of the United States may, in a civil action brought in a U.S.
district court, obtain appropriate injunctive relief, 18 U.S.C. § 1836.
Theft of Trade Secrets
for Commercial
Advantage, 18 U.S.C.
§ 1832
With intent to convert a trade secret related
to a product that is placed in interstate or
foreign commerce, to the economic benefit
of anyone other than the owner thereof, and
intending or knowing that the offense will
injure any owner of that trade secret,
knowingly: (1) stealing, or without
authorization taking or obtaining such
information; (2) without authorization
copying, destroying, or communicating a
trade secret; (3) receiving, buying, or
possessing a trade secret, knowing it to have
been stolen or obtained without
authorization; (4) attempting to commit any
offense described above; (5) conspiring with
one or more other persons to commit any
offense described above, and one or more of
such persons do any act to effect the object
of the conspiracy.
The Attorney General of the United States may, in a civil action brought in a U.S.
district court, obtain appropriate injunctive relief, 18 U.S.C. § 1836.
CRS-20
Criminal Penalties
Copyright
Criminal Law
Description of Offense
Authorized Penalties
Copyright
Infringement for
Profit, 17 U.S.C. §
506(a)(1)(A), 18
U.S.C. § 2319(b)
Willful infringement of
copyright for purposes of
commercial advantage or
private financial gain.
(1) If the offense consists of the reproduction or distribution (including by electronic means)
during any 180-day period of at least 10 copies of one or more copyrighted works, which have a
total retail value of more than $2,500, an imprisonment sentence of not more than 5 years, or a
fine in the amount of up to $250,000, or both (for corporate offenders or an organization, up to a
$500,000 fine is permitted), 18 U.S.C. § 2319(b)(1).
(2) If the offense is a felony and is a second or subsequent offense, the maximum imprisonment
term is doubled to 10 years, or a fine of up to $250,000 ($500,000 for organizations), or both, 18
U.S.C. § 2319(b)(2).
(3) Anyone who commits this offense in any other case is subject to an imprisonment sentence of
not more than 1 year, or a fine of up to $100,000 ($200,000 for organizations), or both, 18 U.S.C.
§ 2319(b)(3).
(4) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited
by this offense), any property used (or intended to be used) in any manner or part to commit or
facilitate the commission of this offense, and any property derived constituting or derived from
any proceeds obtained directly or indirectly as a result of the commission of the offense, 17
U.S.C. § 506(b), 18 U.S.C. § 2323.
(5) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-21
Criminal Law
Description of Offense
Authorized Penalties
Copyright
Infringement Without
Profit Motive, 17
U.S.C. § 506(a)(1)(B),
18 U.S.C. § 2319(c)
Willful infringement of a
copyright by reproducing or
distributing, including by
electronic means, during any
180-day period, one or more
copies of one or more
copyrighted works which have a
total retail value of more than
$1,000.
(1) If the offense consists of the reproduction or distribution of 10 or more copies of 1 or more
copyrighted works, which have a total retail value of $2,500 or more, a statutory maximum
penalty of 3 years imprisonment, or a fine of up to $250,000 ($500,000 for organizations), or
both, 18 U.S.C. § 2319(c)(1).
(2) If the offense is a felony and is a second or subsequent offense, the maximum imprisonment
term is 6 years, or a fine of up to $250,000 ($500,000 for organizations), or both, 18 U.S.C. §
2319(c)(2).
(3) If the offense consists of the reproduction or distribution of 1 or more copies of 1 or more
copyrighted works, which have a total retail value of more than $1,000, an imprisonment
sentence of not more than 1 year, or a fine of up to $100,000 ($200,000 for organizations), or
both, 18 U.S.C. § 2319(c)(3).
(4) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited
by this offense), any property used (or intended to be used) in any manner or part to commit or
facilitate the commission of this offense, and any property derived constituting or derived from
any proceeds obtained directly or indirectly as a result of the commission of the offense, 17
U.S.C. § 506(b), 18 U.S.C. § 2323.
(5) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-22
Criminal Law
Description of Offense
Authorized Penalties
Pre-Release
Distribution of a
Copyrighted Work
Over a PubliclyAccessible Computer
Network,
17 U.S.C.
§ 506(a)(1)(C), 18
U.S.C. § 2319(d)
Distributing a copyrighted work
being prepared for commercial
distribution, by making it
available on a publiclyaccessible computer network, if
the infringer knew or should
have known that the work was
intended for commercial
distribution.
If infringement committed for commercial
purpose:
(1) Imprisonment of not more than 5 years, or
a fine of up to $250,000 ($500,000 for
organizations), or both, 18 U.S.C. §
2319(d)(2). If the offense is a felony and is a
second or subsequent offense, the maximum
imprisonment term is 10 years, or a fine of up
to $250,000 ($500,000 for organizations), or
both, 18 U.S.C. § 2319(d)(4).
(2) Civil and criminal forfeiture of any article
(the making or trafficking of which is
prohibited by this offense), any property used
(or intended to be used) in any manner or part
to commit or facilitate the commission of this
offense, and any property derived constituting
or derived from any proceeds obtained directly
or indirectly as a result of the commission of
the offense, 17 U.S.C. § 506(b), 18 U.S.C. §
2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
If infringement has no commercial purpose:
(1) For a first offense, imprisonment of not
more than 3 years, or a fine of up to $250,000
($500,000 for organizations), or both, 18
U.S.C. § 2319(d)(1).
(2) If the offense is a felony and is a second or
subsequent offense, the maximum
imprisonment term is 6 years, or a fine of up to
$250,000 ($500,000 for organizations), or
both, 18 U.S.C. § 2319(d)(3).
(3) Civil and criminal forfeiture of any article
(the making or trafficking of which is
prohibited by this offense), any property used
(or intended to be used) in any manner or part
to commit or facilitate the commission of this
offense, and any property derived constituting
or derived from any proceeds obtained directly
or indirectly as a result of the commission of
the offense, 17 U.S.C. § 506(b), 18 U.S.C. §
2323.
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-23
Criminal Law
Description of Offense
Authorized Penalties
Circumvention of
Copyright Protection
Systems in Violation
of the Digital
Millennium
Copyright Act
(DMCA), 17 U.S.C. §
1204
Willfully and for purposes of
commercial advantage or
private financial gain:
(1) For a first offense: imprisonment for not more than 5 years, or a fine of not more than
$500,000,a or both.
(2) For the second or subsequent offense: imprisonment for not more than 10 years, or a fine of
not more than $1,000,000, or both.
(1) Descrambling, decrypting,
or otherwise avoiding,
bypassing, removing,
deactivating, or impairing a
technological measure, without
the authority of the copyright
owner, that effectively controls
access to a copyrighted work; or
(2) Manufacturing, importing,
offering to the public,
providing, or otherwise
trafficking in any technology,
product, service, device, or
component, that is primarily
designed or produced for the
purpose of circumventing
copyright protection measures.
CRS-24
Criminal Law
Description of Offense
Authorized Penalties
Bootleg Recordings of
Live Musical
Performances, 18
U.S.C.
§ 2319A
Knowingly and for purposes of
commercial advantage or
private financial gain:
(1) For a first offense, imprisonment of up to 5 years, or a fine of up to $250,000 ($500,000 for
organizations), or both.
(2) For a second or subsequent offense, the maximum imprisonment sentence doubles to 10 years
(with the same fine amounts as the first offense).
(3) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited
by this offense), any property used (or intended to be used) in any manner or part to commit or
facilitate the commission of this offense, and any property derived constituting or derived from
any proceeds obtained directly or indirectly as a result of the commission of the offense, 18
U.S.C. §§ 2319A(b), 2323.
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
Unauthorized
Recording of Motion
Pictures in a Movie
Theater
(Camcording), 18
U.S.C.
§ 2319B
Knowingly using an audiovisual
recording device to transmit or
make a copy of a motion picture
from a performance of such
work in a movie theater.
(1) making an unauthorized
recording of sounds or
sounds/images of a live musical
performance, or copies of such
recording; (2) transmitting or
other communication to the
public of such sounds and/or
images of a live musical
performance; or (3) distribution,
sale, or trafficking in any copy
of an unauthorized live musical
performance recording (whether
or not such recording was done
in the United States).
(1) For a first offense, imprisonment of not more than 3 years, or a fine of up to $250,000
($500,000 for organizations).
(2) For a second or subsequent offense, the maximum imprisonment sentence doubles to 6 years
(with the same fine amounts as the first offense).
(3) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited
by this offense), any property used (or intended to be used) in any manner or part to commit or
facilitate the commission of this offense, and any property derived constituting or derived from
any proceeds obtained directly or indirectly as a result of the commission of the offense, 18
U.S.C. §§ 2319B(b), 2323
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-25
Criminal Law
Description of Offense
Authorized Penalties
Counterfeit or Illicit
Labels and
Counterfeit
Documentation and
Packaging for
Copyrighted Works,
18 U.S.C. § 2318
Knowingly trafficking in a
counterfeit label or illicit label
affixed to, enclosing, or
accompanying a copyrighted
work, or trafficking in
counterfeit documentation or
packaging.
(1) Imprisonment of not more than 5 years, a fine of up to $250,000 ($500,000 for
organizations), or both.
(2) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited
by this offense), any property used (or intended to be used) in any manner or part to commit or
facilitate the commission of this offense, and any property derived constituting or derived from
any proceeds obtained directly or indirectly as a result of the commission of the offense, 18
U.S.C. §§ 2318(d), 2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
a. The fines listed in this box are the same for an individual or for organizations.
CRS-26
Trademark
Criminal Law
Description of Offense
Authorized Penalties
Trafficking in
Counterfeit
Trademarks, Service
Marks, and
Certification Marks,
18 U.S.C. § 2320
(1) Intentionally trafficking or attempting to
traffic in goods or services and knowingly
using a counterfeit marka on or in connection
with such goods or services;
(1) For a first offense, imprisonment of not more than 10 years, or a fine of not
more than $2,000,000 ($5,000,000 for organizations), or both.
(2) For a second or subsequent offense, the maximum imprisonment term doubles
to 20 years, and the maximum fines increase to $5,000,000 ($15,000,000 for
organizations).
(3) If the offender knowingly or recklessly causes or attempts to cause serious
bodily injury from conduct in violation of this offense, imprisonment of not more
than 20 years, a fine of up to $250,000 ($500,000 for organizations), or both, 18
U.S.C. § 2320(a)(2)(A).
(4) If the offender knowingly or recklessly causes or attempts to cause death from
conduct in violation of this offense, imprisonment for any term of years up to life,
or a fine of up to $250,000 ($500,000 for organizations), or both, 18 U.S.C. §
2320(a)(2)(B).
(5) Civil and criminal forfeiture of any article (the making or trafficking of which
is prohibited by this offense), any property used (or intended to be used) in any
manner or part to commit or facilitate the commission of this offense, and any
property derived constituting or derived from any proceeds obtained directly or
indirectly as a result of the commission of the offense, 18 U.S.C. §§ 2320(b), 2323.
(6) Mandatory restitution, 18 U.S.C. §§ 2320(b), 2323(c).
(2) Intentionally trafficking or attempting to
traffic in labels, patches, stickers, wrappers,
badges, emblems, medallions, charms, boxes,
containers, cans, cases, hangtags,
documentation, or packaging of any type or
nature, knowing that a counterfeit mark has
been applied thereto, the use of which is likely
to cause confusion, to cause mistake, or to
deceive.
a. 18 U.S.C. § 2320(e) defines “counterfeit mark” for the purposes of this offense as a spurious mark that: (1) is used in connection with trafficking in any goods, services, labels,
patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging of any type or nature; (2) is identical
with, or substantially indistinguishable from, a mark registered on the principal register in the United States Patent and Trademark Office and in use, whether or not the defendant
knew such mark was so registered; (3) is applied to or used in connection with the goods or services for which the mark is registered with the United States Patent and Trademark
Office, or is applied to or consists of a label, patch, sticker, wrapper, badge, emblem, medallion, charm, box, container, can, case, hangtag, documentation, or packaging of any
type or nature that is designed, marketed, or otherwise intended to be used on or in connection with the goods or services for which the mark is registered in the United States
Patent and Trademark Office; and (4) the use of which is likely to cause confusion, to cause mistake, or to deceive.
CRS-27
Trade Secrets
Criminal Law
Description of Offense
Authorized Penalties
Trade Secret Theft to
Benefit a Foreign
Entity, 18 U.S.C. §
1831
With intent or knowledge that the offense will benefit
any foreign government, foreign instrumentality, or
foreign agent, knowingly: (1) stealing or without
authorization taking or obtaining a trade secret; (2)
without authorization copying, destroying, or
transmitting a trade secret; (3) receiving, buying, or
possessing a trade secret, knowing it to have been
stolen or obtained without authorization; (4)
attempting to commit any offense described above;
(5) conspiring with one or more other persons to
commit any offense described above, and one or more
of such persons do any act to effect the object of the
conspiracy.
(1) Imprisonment of up to 15 years, or a fine of up to $500,000
($10,000,000 for organizations), or both.
(2) Civil and criminal forfeiture of any article (the making or trafficking of
which is prohibited by this offense), any property used (or intended to be
used) in any manner or part to commit or facilitate the commission of this
offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the
offense, 18 U.S.C. §§ 1834, 2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
Theft of Trade Secrets
for Commercial
Advantage, 18 U.S.C.
§ 1832
With intent to convert a trade secret related to a
product that is placed in interstate or foreign
commerce, to the economic benefit of anyone other
than the owner thereof, and intending or knowing that
the offense will injure any owner of that trade secret,
knowingly: (1) stealing, or without authorization
taking or obtaining such information; (2) without
authorization copying, destroying, or communicating
a trade secret; (3) receiving, buying, or possessing a
trade secret, knowing it to have been stolen or
obtained without authorization; (4) attempting to
commit any offense described above; (5) conspiring
with one or more other persons to commit any offense
described above, and one or more of such persons do
any act to effect the object of the conspiracy.
(1) Imprisonment of up to 10 years, or a fine of up to $250,000 ($5,000,000
for organizations), or both.
(2) Civil and criminal forfeiture of any article (the making or trafficking of
which is prohibited by this offense), any property used (or intended to be
used) in any manner or part to commit or facilitate the commission of this
offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the
offense, 18 U.S.C. §§ 1834, 2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
secrets9 from theft and espionage.10 The federal Economic Espionage Act of 199611 provides
criminal penalties for the theft or misappropriation12 of trade secrets in certain circumstances, by
domestic and foreign entities.
Enforcement of IP rights may be accomplished by the IP owner bringing a lawsuit against an
alleged infringer. The U.S. Department of Justice may also criminally prosecute particularly
egregious violators of the IP laws in order to impose greater punishment and possibly deter other
would-be violators.13 In certain circumstances, a variety of federal agencies may become involved
in IP rights enforcement:14 for example, the U.S. Customs and Border Protection agency has the
power to seize counterfeit goods upon their attempted importation in the United States; the
International Trade Commission may investigate and adjudicate allegations of unfair trade
practices due to the importing of goods that infringe U.S. patents, trademarks, or copyrights; and
the U.S. Trade Representative, the U.S. Department of Commerce’s International Trade
7
15 U.S.C. § 1125(a)(1).
15 U.S.C. § 1125(c)(1). For more information about trademark dilution, see CRS Report RL33393, Protecting
Famous, Distinctive Marks: The Trademark Dilution Revision Act of 2006, by Brian T. Yeh.
9
A “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering
information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods,
techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored,
compiled, or memorialized physically, electronically, graphically, photographically, or in writing if: (A) the owner
thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent
economic value, actual or potential, from not being generally known to, and not being readily ascertainable through
proper means by, the public. 18 U.S.C. § 1839(3).
10
Until 1996, trade secret protection was primarily governed by state law. The Uniform Trade Secrets Act (UTSA) was
published in 1979 by the National Conference of Commissioners on Uniform State Laws and codifies the common law
concerning trade secrets. The UTSA has been adopted by 40 states and the District of Columbia. For a list of the states
that have adopted the UTSA, see http://www.nccusl.org/nccusl/uniformact_factsheets/uniformacts-fs-utsa.asp.
11
P.L. 104-294, §§ 1831-1839, 110 Stat. 3488 (codified at 18 U.S.C. §§ 1831-1839).
12
“Misappropriation” of a trade secret means an acquisition, disclosure, or use of a trade secret by “improper means.”
UNIFORM TRADE SECRETS ACT § 1(2). “Improper means” is a term that “includes theft, bribery, misrepresentation,
breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.” Id. §
1(1).
13
The 94 U.S. Attorneys’ Offices located across the country have primary responsibility for prosecution of IP offenses.
Every office has a Computer Hacking and Intellectual Property (“CHIP”) Coordinator, who are Assistant U.S.
Attorneys with expertise in prosecuting IP and computer crimes. U.S. DEP’T OF JUSTICE, COMPUTER CRIME &
INTELLECTUAL PROPERTY SECTION, PROSECUTING INTELLECTUAL PROPERTY CRIMES (3rd ed., Sept. 2006), available at
http://www.usdoj.gov/criminal/cybercrime/ipmanual/01ipma.html.
14
The scope of this report is limited to summarizing the penalties available under federal law for IP rights violations;
the report will not discuss in detail the various foreign, federal and state entities that may become involved in IP
enforcement and prosecution activities.
8
Congressional Research Service
2
Intellectual Property Rights Violations
Administration, and the U.S. State Department are all involved in promoting and seeking IP rights
enforcement by trading partners and other foreign countries.15
In copyright cases, the statute of limitations for initiating a civil action is within three years after
the claim accrued, while a criminal proceeding must be commenced within five years after the
cause of action arose.16 Although there is no express federal statute of limitations for civil
trademark infringement claims, federal courts generally follow the limitations period for the most
analogous state-law cause of action from the state in which the claim is heard; courts have also
applied the equitable doctrine of laches to determine whether a trademark infringement claim is
untimely.17 One federal appellate court has determined that criminal trademark infringement
prosecutions are governed by the general five-year statute of limitations for non-capital offenses
under Title 18 of the U.S. Code.18 Although there is no statute of limitations in patent
infringement actions, the Patent Act specifies a time limit on monetary relief for patent
infringement claims: damages are available only for infringement that occurs within the six years
prior to the filing of the complaint or counterclaim for patent infringement.19
Both the Lanham Act and the Copyright Act have criminal and civil provisions for violations of
their respective provisions,20 while the Patent Act only provides civil remedies in the event of
patent infringement.21 Federal courts determine the civil remedies in an action for infringement
brought by the IP owner.22 If the federal government chooses to prosecute individuals or
organizations for IP violations, the imprisonment terms are set forth in the substantive statutes
describing the particular IP crime, while the criminal fine amount is determined in conjunction
with 18 U.S.C. § 3571 (specifies the amount of the fine under Title 18 of the U.S. Code).
Information regarding the civil remedies and criminal penalties for violations of the copyright,
trademark, and patent laws is presented on the following pages in table-format. These penalties
may be imposed upon conviction of the defendant in the case of a criminal prosecution, and the
civil remedies follow a judgment of infringement reached by a federal judge or jury in a civil
15
The “Prioritizing Resources and Organization for Intellectual Property Act of 2008,” P.L. 110-403, created the
position of “Intellectual Property Enforcement Coordinator” (IPEC) to serve within the Executive Office of the
President, and established an interagency IP enforcement advisory committee, chaired by the IPEC and composed of
Senate-confirmed representatives of departments and agencies involved in IP enforcement, including the Office of
Management and Budget, U.S. Patent and Trademark Office, Food and Drug Administration, Copyright Office, and the
Departments of State, Homeland Security, Agriculture, and Justice. This advisory committee is charged with
developing and implementing a “joint strategic plan” to combat counterfeiting and infringement of IP rights.
16
17 U.S.C. § 507.
17
Ronald J. Nessim, Criminal (and Civil) Trademark Infringement: What Statute of Limitations Applies?, 76 J. PAT. &
TRADEMARK OFF. SOC’Y 933, 937 (Dec. 1994).
18
18 U.S.C. § 3282; see also United States v. Foote, 413 F.3d 1240, 1247 (10th Cir. 2005)(“In the case of the
Counterfeit Trademark Act, a criminal statute, Congress has provided a specific statutory period in § 3282.”).
19
35 U.S.C. § 286. However, the equitable doctrine of laches may be raised as an affirmative defense to a claim for
patent infringement if the patent holder’s delay in bringing suit is unreasonable and inexcusable, and the alleged
infringer suffers material prejudice attributable to the delay. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960
F.2d 1020, 1028 (Fed. Cir. 1992) (“A presumption of laches arises where a patentee delays bringing suit for more than
six years after the date the patentee knew or should have known of the alleged infringer’s activity.”).
20
For copyright, 17 U.S.C. § 501 (civil) and § 506, 18 U.S.C. § 2319 (criminal); for trademark, 15 U.S.C. § 1114
(civil) and 18 U.S.C. § 2320 (criminal).
21
35 U.S.C. § 281.
22
For copyright infringement civil actions, see 17 U.S.C. §§ 501-505; trademark infringement claims, see 15 U.S.C. §§
1114-1121; patent infringement actions, see 35 U.S.C. §§ 281-297.
Congressional Research Service
3
Intellectual Property Rights Violations
action. (Certain injunctive relief may be available prior to final judgment, such as temporary
injunctions or impounding of infringing articles.) For any offense that provides forfeiture
penalties, criminal forfeiture is available upon the conviction of the owner of the offending
property; civil forfeiture is available if the government establishes that the infringing goods are
subject to confiscation by a preponderance of the evidence.23 Restitution is available when the
defendant is convicted of a criminal property offense.24
23
For more information about forfeiture generally, see CRS Report 97-139, Crime and Forfeiture, by Charles Doyle.
18 U.S.C. § 2323(c) (“When a person is convicted of an offense under section 506 of title 17 or section 2318, 2319,
2319A, 2319B, or 2320, or chapter 90, of this title, the court, pursuant to sections 3556, 3663A, and 3664 of this title,
shall order the person to pay restitution to any victim of the offense as an offense against property referred to in section
3663A(c)(1)(A)(ii) of this title”). This new section of the U.S. Code was added by the “Prioritizing Resources and
Organization for Intellectual Property Act of 2008,” P.L. 110-403.
24
Congressional Research Service
4
Civil Remedies
Copyright
Cause of Action
Description of Violation
Remedies Availablea
Copyright
Infringement, 17
U.S.C. § 501
Violation of any of the exclusive rights of the copyright owner
as provided by 17 U.S.C. §§ 106-122, 602, including the right
to control reproduction, distribution, public performance, and
display of copyrighted works.
(1) Injunctions, 17 U.S.C. § 502.
(2) Impounding, destruction, or other reasonable disposition of: all copies made in
violation of the copyright owner’s rights; all plates, molds, matrices, masters, tapes,
film negatives, or other articles by means of which such copies may be reproduced;
and any records documenting the manufacture, sale, or receipt of things involved in
the violation—the court shall take such records into custody and shall enter an
appropriate protective order (with respect to discovery and use of the records) that
assures that confidential information contained in such records is not improperly
disclosed or used, 17 U.S.C. § 503.
(3) Actual damages suffered by the copyright owner due to the infringement, and
any profits of the infringer attributable to the infringement, 17 U.S.C. § 504(b).
(4) Statutory damages (at the copyright owner’s election to recover in lieu of actual
damages and profits), in the amount of not less than $750 or more than $30,000 as
the court deems just, 17 U.S.C. § 504(c)(1). For willful infringement, a court may, in
its discretion, increase the statutory damages award to a sum of not more than
$150,000, 17 U.S.C. § 504(c)(2).b
(5) Costs and attorney’s fees, 17 U.S.C. § 505.
Infringement of a
Vessel Hull or Deck
Design, 17 U.S.C. §
1309
Violation of any of the rights of the owner of a vessel hull or
deck design registered with the U.S. Copyright Office,
including the right to: (1) make, have made, or import, for sale
or for use in trade, any useful article embodying the design;
and (2) sell or distribute any useful article with the design.
A seller/distributor who did not make or import an infringing
article is liable if he induces or acts in collusion to
make/import the article. A seller/distributor can also be liable
if a design owner asks where the article came from and the
seller/distributor refuses to disclose its source and orders or
reorders the article with the infringing design after being
notified that the design is protected.
(1) Injunctions, 17 U.S.C. § 1322.c
(2) Destruction or other disposition of all infringing articles, and any plates, molds,
patterns, models, or other means specially adapted for making the articles, 17 U.S.C.
§ 1323(e).
(3) Actual damages suffered by the copyright owner due to the infringement, 17
U.S.C. § 1323(a). The court may increase the damages to such amount, not
exceeding $50,000 or $1 per copy, whichever is greater, as the court determines to
be just.
(4) Infringer’s profits (may only be awarded as an alternative to compensatory
damages) resulting from the sale of the copies if the court finds that the infringer’s
sales are reasonably related to the use of the owner’s design, 17 U.S.C. § 1323(b).
(5) Attorney’s fees, 17 U.S.C. § 1323(d).
CRS-5
Cause of Action
Description of Violation
Remedies Available
Falsely Marking an
Unprotected Vessel Hull or
Deck Design with a
Protected Design Notice,
17 U.S.C. § 1326
For the purpose of deceiving the public, marking or using in
advertising in connection with an unprotected vessel hull or
deck design (not registered with the U.S. Copyright Office) a
design notice or other words or symbols suggesting that the
design is protected, knowing that the design is not so
protected.
(1) A fine of not more than $500 for each such offense, 17 U.S.C. § 1326(a).
(2) Any person may sue for the penalty, in which event one-half shall go to
the person suing and the remainder awarded to the United States, 17
U.S.C. § 1326(b).
Circumvention of
Copyright Protection
Systems in Violation of §§
1201 and 1202 of the
Digital Millennium
Copyright Act (DMCA),
17 U.S.C. § 1203
(1) 17 U.S.C. § 1201: Descrambling, decrypting, or otherwise
avoiding, bypassing, removing, deactivating, or impairing a
technological measure, without the authority of the copyright
owner, that effectively controls access to a copyrighted work.
(2) 17 U.S.C. § 1202: Manufacturing, importing, offering to the
public, providing, or otherwise trafficking in any technology,
product, service, device, or component, that is primarily
designed or produced for the purpose of circumventing
copyright protection measures.
(1) Temporary and permanent injunctions to prevent or restrain a violation
of this offense, but in no event shall the court impose a prior restraint on
free speech or the press protected under the First Amendment to the
Constitution.
(2) At any time while an action is pending, the court may order the
impounding of any device or product that is in the custody or control of
the alleged violator and that the court has reasonable cause to believe was
involved in a violation.
(3) Recovery of costs by or against any party other than the United States
or an officer thereof.
(4) Reasonable attorney’s fees to the prevailing party.
(5) The court may order the remedial modification or the destruction of
any device or product involved in the violation that is in the custody or
control of the violator or that has been impounded.
(6) Actual damages and any additional profits of the violator that are
attributable to the violation and are not taken into account in computing
the actual damages.
(7) Statutory damages (at the election of the complaining party in lieu of
actual damages), as follows:
For each violation of 17 U.S.C. § 1201, in the sum of not less than $200 or
more than $2,500 per act of circumvention, device, product, component,
offer, or performance of service, as the court considers just.
For each violation of 17 U.S.C. § 1202, in the sum of not less than $2,500
or more than $25,000.
(8) For repeated violations: If the injured party proves, and the court finds,
that a person has violated 17 U.S.C. §§ 1201 or 1202 within 3 years after a
final judgment was entered against the person for another such violation,
the court may increase the award of damages up to triple the amount that
would otherwise be awarded, as the court considers just.
(9) For innocent violations: The court in its discretion may reduce or remit
the total award of damages in any case in which the violator proves, and the
court finds, that the violator was not aware and had no reason to believe
that its acts constituted a violation.
CRS-6
Cause of Action
Description of Violation
Remedies Available
Counterfeit or Illicit Labels
and Counterfeit
Documentation and
Packaging for Copyrighted
Works, 18 U.S.C. §
2318(e)(1)c
Knowingly trafficking in a counterfeit label or illicit label affixed
to, enclosing, or accompanying a copyrighted work, or
trafficking in counterfeit documentation or packaging.
(1) Injunctions, 18 U.S.C. § 2318(e)(2)(A).
(2) Impounding of any article in the custody/control of the alleged violator
that the court has reasonable cause to believe was involved in a violation of
this offense, 18 U.S.C. § 2318(e)(2)(B).
(3) Reasonable attorney fees and costs, 18 U.S.C. § 2318(e)(2)(C).
(4) Actual damages and any additional profits of the violator, 18 U.S.C. §
2318(e)(2)(C)(ii)(I).
(5) Statutory damages (at the election of the plaintiff to recover instead of
actual damages and profits), in the amount of not less than $2,500 or more
than $25,000, as the court considers appropriate, 18 U.S.C. §§
2318(e)(2)(C)(ii)(II), (f)(4).
(6) Treble damages for subsequent violations by an individual within 3 years
after a final judgment was entered against that person for a violation of this
offense, 18 U.S.C. §2318(e)(5).
Infringement of a
Copyrighted Work by the
United States,d 28 U.S.C. §
1498(b)
Infringement of a copyrighted work by the United States
government, by a corporation owned or controlled by the
United States government, or by a contractor, subcontractor,
or any person, firm, or corporation acting for the United
States and with the authorization or consent of the United
States government.
The exclusive remedy is for the copyright owner to commence an action
against the United States in the United States Court of Federal Claims for
the recovery of his or her reasonable and entire compensation as damages
for such infringement, including the minimum statutory damages as set forth
in 17 U.S.C. § 504(c). However, before the copyright owner may bring such
an action, the appropriate corporation owned or controlled by the United
States or the head of the appropriate department or agency of the
Government, as the case may be, is authorized to enter into an agreement
with the copyright owner for the damages caused by such infringement and
to settle the claim administratively out of available appropriations.
a.
Throughout this report, the list of “remedies available” or “authorized penalties” describes the range of remedies and penalties that are associated with the particular
violation; whether some or all the remedies/penalties apply in any given case depends on several factors, including the court’s discretion, the plaintiff’s election of
remedy, the defendant’s conduct, and other factual circumstances of the case.
b.
Where an infringer proves that he was not aware and had no reason to believe his acts constituted copyright infringement, the court may, in its discretion, reduce the
award of statutory damages to a sum of not less than $200, 17 U.S.C. § 504(c)(2).
c.
While this offense also carries criminal penalties, discussed infra, the statute also provides civil remedies, permitting any copyright owner who is injured, or is
threatened with injury due to this offense, to file suit in an appropriate U.S. district court.
d.
Under the Eleventh Amendment to the U.S. Constitution, a state (or instrumentality thereof) enjoys governmental immunity from lawsuits brought by private parties.
Therefore, a state that violates intellectual property rights may not be sued by the intellectual property owner unless the state consents. Congress has attempted to
abrogate the states’ sovereign immunity from patent, trademark, or copyright infringement lawsuits, by passing laws in the early 1990s that explicitly required states to
submit to suit in federal court for their intellectual property violations. However, federal courts have held these laws unconstitutional. See Florida Prepaid v. College
Savings, 527 U.S. 627 (1999) (invalidating the Patent and Plant Remedy Clarification Act of 1992); Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000)
(invalidating the Copyright Remedy Clarification Act of 1990); Board of Regents of the Univ. of Wisconsin System v. Phoenix Software Int’l, Inc., 565 F.Supp.2d 1007
(W.D. Wis. 2008)(invalidating the Trademark Remedy Clarification Act of 1992).
CRS-7
Trademark
Cause of Action
Description of Violation
Remedies Available
Trademark
Infringement Due to
Unauthorized Use of
Any Reproduction,
Copy, or Colorable
Imitation of a Federally
Registered Mark, 15
U.S.C. § 1114(1)
Unauthorized use in commerce of any reproduction, copy, or
colorable imitatione of a federally registered mark in connection with
the sale, offering for sale, distribution, or advertising of any goods or
services, where such use is likely to cause consumer confusion,
mistake, or deception.
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) Any damages sustained by the plaintiff, defendant’s profits, and the
costs of the action, 15 U.S.C. § 1117(a).
(3) In exceptional cases,f reasonable attorney fees, 15 U.S.C. § 1117(a).
(4) The court may order that any infringing articles bearing the
reproduction, copy, or colorable imitation of a registered mark be
destroyed, 15 U.S.C. § 1118.
Trademark
Infringement Due to
Use of a Counterfeit of
a Federally Registered
Mark, 15 U.S.C. § 1114(1)
Intentional use in commerce of a counterfeit mark or designationg, in
either of two circumstances:
(1) in connection with the sale, offering for sale, or distribution of
goods or services, knowing that such mark or designation is a
counterfeit mark, or
(2) providing goods or services necessary to the commission of the
violation described in the first circumstance above, with the intent
that the recipient of the goods or services would put the goods or
services to use in committing the violation.
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) The court may order that any infringing articles bearing the
counterfeit of the registered mark be destroyed, 15 U.S.C. § 1118.
(3) Seizure of goods and counterfeit marks as ordered by a court upon
an ex parte application, as well as the means of making such marks, and
records documenting the manufacturer, sale, or receipt of things involved
in such violation, 15 U.S.C. § 1116(d)(1)(A).
(4) Unless the court finds extenuating circumstances, treble any damages
sustained by the plaintiff or defendant’s profits, whichever is greater, plus
reasonable attorneys’ fees, 15 U.S.C. § 1117(b).
(5) Statutory damages (at the election of the plaintiff to recover instead
of actual damages and profits), in the amount of not less than $1,000 or
more than $200,000 per counterfeit mark per type of goods or services
sold, offered for sale, or distributed, as the court considers just, 15
U.S.C. § 1117(c)(1). If the court finds that the use of the counterfeit mark
was willful, the statutory damages award is not more than $2,000,000 per
counterfeit mark per type of goods or services sold, offered for sale, or
distributed, as the court considers just, 15 U.S.C. § 1117(c)(2).
Trademark
Infringement Due to
False Designation,
Origin, or Sponsorship,
15 U.S.C. § 1125(a)
Use in connection with any goods or services of any word, term,
name, symbol, or device, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of
fact, which:
(A) is likely to cause confusion, mistake, or deception as to the
affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or her or
another person’s goods, services, or commercial activities.
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) Any damages sustained by the plaintiff, defendant’s profits, and the
costs of the action, 15 U.S.C. § 1117(a).
(3) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(4) The court may order that any infringing articles bearing the word,
term, name, symbol, or device be destroyed, 15 U.S.C. § 1118.
CRS-8
Cause of Action
Description of Violation
Remedies Available
Dilution of Famous
Trademarks, 15 U.S.C. §
1125(c)
Use in commerce of a mark or trade name if such use causes
dilutionh by blurringi or tarnishmentj of the distinctive quality of a
famous trademark.
(1) Injunctions, 15 U.S.C. §§ 1116(a), 1125(c)(1).
Under 15 U.S.C. § 1125(c)(5), owners of famous marks may also be
entitled to the following additional remedies listed below if:
the mark or trade name that is likely to cause dilution by blurring or
dilution by tarnishment was first used in commerce by the alleged
infringer after Oct. 6, 2006; and
(A) in a dilution by blurring action, the person willfully intended to trade
on the recognition of the famous mark; or (B) in a dilution by
tarnishment action, the person willfully intended to harm the reputation
of the famous mark.
(2) For a willful violation, any damages sustained by the plaintiff,
defendant’s profits, and the costs of the action, 15 U.S.C. § 1117(a).
(3) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(4) For a willful violation, the court may order that any infringing articles
bearing the word, term, name, symbol, or device be destroyed, 15 U.S.C.
§ 1118.
Cyberpiracy and
Cybersquatting in
Connection With
Internet Domain
Names, 15 U.S.C. §
1125(d)
Registering of, trafficking in, offering to sell, or use of an Internet
domain name that is
(A) identical or confusingly similar to a trademark that is distinctive at
the time the domain name is registered; or
(B) identical, confusingly similar to, or dilutive of a trademark that is
famous at the time the domain name is registered, with a bad faith
intent to profit from the goodwill of another’s trademark.
(1) Injunctions, 15 U.S.C. § 1116(a).
(2) Any damages sustained by the plaintiff, defendant’s profits, and the
costs of the action, 15 U.S.C. § 1117(a).
(3) Statutory damages (at the election of the plaintiff to recover instead
of actual damages and profits), in the amount of not less than $1,000 and
not more than $100,000 per domain name, as the court considers just,
15 U.S.C. § 1117(d).
(4) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(5) Forfeiture or cancellation of the domain name or the transfer of the
domain name to the owner of the mark, 15 U.S.C. § 1125(d)(1)(C)
If the trademark owner is not able to obtain in personam jurisdiction
over a person who would have been a defendant in this action (for
example, the domain name registrant lives in a foreign country), or is
otherwise unable through due diligence to identify the person to bring
such an action, the trademark owner may file an in rem civil action
against a domain name in the judicial district in which the domain name
registrar, domain name registry, or other domain name authority that
registered or assigned the domain name is located. In such an in rem
action, the remedies are limited to a court order for the forfeiture or
cancellation of the domain name or the transfer of the domain name to
the owner of the mark, 15 U.S.C. § 1125(d)(2).
CRS-9
Cause of Action
Description of Violation
Remedies Available
Cyberpiracy Protection
for Individuals, 15 U.S.C.
§ 1129
Registering an Internet domain name, on or after November 29,
1999, that consists of the name of another living person, or a name
substantially and confusingly similar thereto, without that person’s
consent, with the specific intent to profit from such name by selling
the domain name for financial gain to that person or any third party.
(1) Injunctive relief, including the forfeiture or cancellation of the domain
name or the transfer of the domain name to the plaintiff, 15 U.S.C. §
1129(2).
(2) Costs and attorneys’ fees to the prevailing party, at the court’s
discretion, 15 U.S.C. § 1129(2).
Importation of
Merchandise Bearing
Counterfeit Mark,19
U.S.C. § 1526(e); 15 U.S.C.
§1124
Transshipment and
Exportation of
Counterfeit Goods and
Services, 18 U.S.C. §
2320(h)
Importing goods bearing infringing marks or names that are identical
with, or substantially indistinguishable from, registered marks, in
violation of Section 526 of the Tariff Act of 1930, and Section 42 of
the Lanham Act.k
Transshipping through or exporting from the United States
counterfeit goods or services
(1) Seizure by the U.S. Customs Servicel and, in the absence of the
written consent of the trademark owner, forfeiture for violations of the
customs laws.
(2) Upon seizure of such merchandise, the Secretary of the Department
of Homeland Security shall notify the owner of the trademark, and shall,
after forfeiture, destroy the merchandise. If, however, the merchandise is
not unsafe or a hazard to health, and the trademark owner provides his
consent to the Secretary, the Secretary may remove the trademark (if
feasible) and dispose of the seized goods by giving it to federal, state, and
local government agencies or to charitable organizations that the
Secretary believes have a need for such merchandise. If none of these
parties have established such a need, and it has been at least 90 days after
the date of forfeiture, the Customs Service may sell the merchandise at
public auction.
(3) Any person who directs, assists financially or otherwise, or aids and
abets the importation of merchandise for sale or public distribution that
is seized in violation of this offense is subject to a civil fine. For the first
seizure of such merchandise, the fine shall be not more than the
domestic value of the merchandise as if it had been genuine, according to
the manufacturer’s suggested retail price. For the second seizure and
thereafter, the fine shall be not more than twice the value that the
merchandise would have had if it were genuine. The imposition of this
fine is within the discretion of the Customs Service, and is in addition to
any other civil or criminal penalty or other remedy authorized by law, 19
U.S.C. § 1526(f).
e.
The term “colorable imitation” includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive. 15 U.S.C. § 1127.
f.
Although the Lanham Act does not define what constitutes an “exceptional” case, federal courts have determined that malicious, fraudulent, deliberate, or willful
trademark infringement could qualify for this characterization. See, e.g., United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1232 (10th Cir. 2000).
g.
A “counterfeit mark or designation” means: (1) a counterfeit of a mark that is registered on the principal register of the U.S. Patent and Trademark Office, or (2) a
spurious designation that is identical with, or substantially indistinguishable from, a designation relating to the United States Olympic Committee and other sportsrelated symbols and names protected under 36 U.S.C. § 220506. 15 U.S.C. § 1116(d).
h.
“Dilution” is statutorily defined in 15 U.S.C. § 1127 to mean “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of
the presence or absence of ... (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
CRS-10
i.
“Blurring” occurs when the famous mark’s ability to identify its product has been impaired due to an association in the minds of consumers arising from similarity
between another mark and the famous mark. 15 U.S.C. § 1125(c)(2)(B).
j.
Tarnishment occurs when the reputation of a famous mark has been harmed by negative associations arising from the similarity between another mark and the famous
mark. 15 U.S.C. § 1125(c)(2)(C). Situations in which tarnishment could result are when a famous trademark is “linked to products of shoddy quality, or is portrayed in
an unwholesome or unsavory context, with the result that the public will associate the lack of quality or lack of prestige in the defendant’s goods with the plaintiff’s
unrelated goods.” Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497, 507 (2d Cir. 1996) (citations and internal quotations omitted).
k.
Under the “personal use exemption,” 19 U.S.C. §1526(d)(1), this restriction does not apply to the importation of one article bearing a protected trademark that
accompanies any traveler arriving in the United States, when such article is for his personal use and not for sale.
l.
Pursuant to agency policy, the U.S. Customs Service prioritizes enforcement efforts on trademarks and trade names that are recorded with U.S. Customs Service. U.S.
Customs Directive No. 2310-008A (April 2000), available at http://www.cbp.gov/linkhandler/cgov/trade/legal/directives/2310-008a.ctt/2310-008a.pdf. Trademarks
registered by the U.S. Patent and Trademark Office may be recorded with U.S. Customs if the registration is current. 19 C.F.R. § 133.1.
Patent
Cause of Action
Description of Violation
Remedies Available
Patent
Infringement, 35
U.S.C. §§ 271; 281297.
(a) Unauthorized making, using, or selling any patented invention within the
United States or importing into the United States any patented invention
during the patent term;
(b) Actively inducing patent infringement;
(c) Selling within the United States or importing into the United States a
component of a patented invention, for use in practicing a patented process,
constituting a material part of the invention, knowing it to be especially made
for use in an infringement of such patent;
(d) Manufacturing within the United States the components of a patented
invention and then exporting those disassembled parts for combination abroad
into an end product.
(1) Injunctions, 35 U.S.C. § 283.
(2) Damages adequate to compensate for the infringement (including
lost profits if the patent holder can demonstrate a causal connection
between the infringement and the unearned profits), but in no event
less than a reasonable royalty for the use of the invention by the
infringer, together with interest and costs as determined by the court,
35 U.S.C. § 284. The court may receive expert testimony as an aid to
the determination of damages or of what royalty would be reasonable
under the circumstances.
(3) The court in its discretion (for example, in cases of egregious,
willful infringement) may increase the damages up to three times the
amount found or assessed by either the jury or the court, 35 U.S.C. §
284.
(4) In exceptional cases, the court may award reasonable attorney fees
to the prevailing party, 35 U.S.C. § 285.
NOTE: Monetary damages shall not be awarded for any infringement
committed more than 6 years prior to the filing of the complaint or
counterclaim for infringement, 35 U.S.C. § 286.
Infringement of a
Design Patent, 35
U.S.C. § 289
Unauthorized application of a patented design (or any colorable imitation
thereof) to any article of manufacture for the purpose of sale, or the sale of
such article.
(1) The offender is liable to the patent design owner to the extent of
his total profit, but in no event less than $250, recoverable in any U.S.
district court having jurisdiction of the parties.
(2) The remedies for patent infringement described in the box
immediately above may also be available to the owner of a design
patent infringed in this manner, but he is not allowed to twice recover
the profit made from the infringement, 35 U.S.C. § 289.
CRS-11
Cause of Action
Description of Violation
Remedies Available
False Marking of
Patent-related
Information in
Connection with
Articles Sold to
the Public, 35
U.S.C. § 292
(1) Unauthorized use in connection with anything made, used, or sold within
the United States, or imported into the United States, of the name of a patent
owner, patent number, or the words “patent” or “patentee,” with the intent of
counterfeiting the mark of the patentee, or of deceiving the public;
(2) Marking any unpatented article with the word “patent” or any word or
number, for the purpose of deceiving the public; or
(3) Using the words “patent applied for,” “patent pending,” or any word falsely
suggesting that a patent application has been made or is pending, for the
purpose of deceiving the public.
(1) A fine of not more than $500 for every such offense, 35 U.S.C. §
292(a). Only the United States government may sue for this penalty.
(2) Any person who has suffered a competitive injury as a result of this
offense may file a civil action to recover damages adequate to
compensate for the injury. 35 U.S.C. § 292(b).m
Unauthorized
Use or
Manufacture of a
Patented
Invention by or
for the United
States,m 28 U.S.C.
§ 1498(a)
(1) Use or manufacture of a patented invention by or for the United States
government without the patent owner’s authorization.
(1) An action against the United States in the United States Court of
Federal Claims for the recovery of the patent holder’s reasonable and
entire compensation for such use and manufacture.
(2) Reasonable and entire compensation shall include the owner’s
reasonable costs, including reasonable fees for expert witnesses and
attorneys, in pursuing the action if the patent owner is an independent
inventor, a nonprofit organization, or an entity that had no more than
500 employees at any time during the 5-year period preceding the use
or manufacture of the patented invention by or for the United States.
However, unless the action has been pending for more than 10 years
from the time of filing to the time that the owner applies for such costs
and fees, reasonable and entire compensation shall not include such
costs and fees if the court finds that the position of the United States
was substantially justified or that special circumstances make an award
unjust.
m.
Prior to September 16, 2011, the Patent Act’s false marking provision allowed for so-called “qui tam” civil actions (that is, any member of the public could have sued a
false marking offender on behalf of the federal government, in which event the fine was shared evenly between the person bringing the suit and the United States). In
an effort to curb the proliferation of false patent marking suits in 2010 and 2011, the 112th Congress enacted legislation that eliminated qui tam false marking suits.
Section 16(b) of the Leahy-Smith America Invents Act, P.L. 112-29, amended the false marking offense to require that the person bringing a false marking suit must
have suffered a competitive injury as a result of the violation; the new law also limited the damages available in such a lawsuit. For more information about these
changes, see CRS Report R41418, False Patent Marking: Litigation and Legislation, by Brian T. Yeh.
n.
A state (or instrumentality thereof) that infringes a patent may not be sued by the patent holder because of the Eleventh Amendment to the U.S. Constitution.
Legislation that would have abrogated the states’ sovereign immunity from patent infringement lawsuits was invalidated by the U.S. Supreme Court in the late 1990s.
See Florida Prepaid v. College Savings, 527 U.S. 627 (1999).
CRS-12
Unfair Competition
Cause of Action
Description of Violation
Remedies Available
Unfair Practices in
Import Trade, 19
U.S.C. § 1337o
Infringement by importing counterfeit and infringing products into the
United States.
Section 337 of the Tariff Act of 1930 grants intellectual property rights
holders the right to seek relief from the United States International
Trade Commission (ITC), for the importation of goods that infringe a
trademark, patent, or copyright. To initiate a “Section 337 action,”
intellectual property rights owners must file a complaint with the ITC
to allege unfair acts in the importation of infringing goods into the
United States.
(1) General or limited exclusion orders issued by the ITC barring the
importation of infringing products into the United States (enforced by the
U.S. Bureau of Customs and Border Protection).
(2) Cease and desist orders issued by the ITC to specific U.S. persons to
prohibit the use or purchase of such infringing products from abroad
(enforced by the ITC), 19 U.S.C. §§ 1337(d)-(f).
(3) Monetary damages are not available in a Section 337 proceeding,
although the intellectual property owner can seek such monetary relief by
filing a suit in federal district court.
(4) Civil forfeiture is authorized if the owner or importer of the infringing
article previously attempted to import the article into the United States, 19
U.S.C. § 1337(i).
(5) Anyone who violates an order of the ITC must pay to the United States
a civil penalty for each day on which an importation of articles, or their sale,
occurs in violation of the order. The amount of the civil penalty is to be not
more than the greater of $100,000 or twice the domestic value of the
articles entered or sold on such day in violation of the ITC’s order. To
recover the civil penalty, the ITC may bring a civil action in the U.S. District
Court for the District of Columbia or in the district in which the violation
occurs, 19 U.S.C. § 1337(f)(2).
o.
While the majority of Section 337 cases usually involve a claim of patent infringement, the statute expressly allows trademark and copyright owners to seek relief, 19
U.S.C. § 1337(a)(1)(B)(i) (registered copyrighted work), 19 U.S.C. § 1337(a)(1)(C) (registered U.S. trademark).
Trade Secrets
Cause of Action
Description of Violation
Remedies Available
Theft of a Trade
Secret to Benefit a
Foreign Entity, 18
U.S.C. § 1831
With intent or knowledge that the offense will benefit any foreign
government, foreign instrumentality, or foreign agent, knowingly: (1)
stealing or without authorization taking or obtaining a trade secret; (2)
without authorization copying, destroying, or transmitting a trade
secret; (3) receiving, buying, or possessing a trade secret, knowing it to
have been stolen or obtained without authorization; (4) attempting to
commit any offense described above; (5) conspiring with one or more
other persons to commit any offense described above, and one or
more of such persons do any act to effect the object of the conspiracy.
The Attorney General of the United States may, in a civil action brought in
a U.S. district court, obtain appropriate injunctive relief, 18 U.S.C. § 1836.
CRS-13
Cause of Action
Description of Violation
Remedies Available
Theft of Trade
Secrets for
Commercial
Advantage, 18
U.S.C. § 1832
With intent to convert a trade secret related to a product that is
placed in interstate or foreign commerce, to the economic benefit
of anyone other than the owner thereof, and intending or knowing
that the offense will injure any owner of that trade secret,
knowingly: (1) stealing, or without authorization taking or
obtaining such information; (2) without authorization copying,
destroying, or communicating a trade secret; (3) receiving, buying,
or possessing a trade secret, knowing it to have been stolen or
obtained without authorization; (4) attempting to commit any
offense described above; (5) conspiring with one or more other
persons to commit any offense described above, and one or more
of such persons do any act to effect the object of the conspiracy.
The Attorney General of the United States may, in a civil action brought in a U.S.
district court, obtain appropriate injunctive relief, 18 U.S.C. § 1836.
Criminal Penalties
Copyright
Criminal Law
Description of Offense
Authorized Penalties
Copyright
Infringement for
Profit, 17 U.S.C. §
506(a)(1)(A), 18
U.S.C. § 2319(b)
Willful infringement of copyright for purposes of commercial
advantage or private financial gain.
(1) If the offense consists of the reproduction or distribution (including by electronic
means) during any 180-day period of at least 10 copies of one or more copyrighted
works, which have a total retail value of more than $2,500, an imprisonment
sentence of not more than 5 years, or a fine in the amount of up to $250,000, or
both (for corporate offenders or an organization, up to a $500,000 fine is permitted),
18 U.S.C. § 2319(b)(1).
(2) If the offense is a felony and is a second or subsequent offense, the maximum
imprisonment term is doubled to 10 years, or a fine of up to $250,000 ($500,000 for
organizations), or both, 18 U.S.C. § 2319(b)(2).
(3) Anyone who commits this offense in any other case is subject to an imprisonment
sentence of not more than 1 year, or a fine of up to $100,000 ($200,000 for
organizations), or both, 18 U.S.C. § 2319(b)(3).
(4) Civil and criminal forfeiture of any article (the making or trafficking of which is
prohibited by this offense), any property used (or intended to be used) in any manner
or part to commit or facilitate the commission of this offense, and any property
derived constituting or derived from any proceeds obtained directly or indirectly as a
result of the commission of the offense, 17 U.S.C. § 506(b), 18 U.S.C. § 2323.
(5) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-14
Criminal Law
Description of Offense
Authorized Penalties
Copyright
Infringement
Without Profit
Motive, 17 U.S.C. §
506(a)(1)(B), 18
U.S.C. § 2319(c)
Willful infringement of a copyright by
reproducing or distributing, including
by electronic means, during any 180day period, one or more copies of
one or more copyrighted works
which have a total retail value of
more than $1,000.
(1) If the offense consists of the reproduction or distribution of 10 or more copies of 1 or more copyrighted
works, which have a total retail value of $2,500 or more, a statutory maximum penalty of 3 years imprisonment, or
a fine of up to $250,000 ($500,000 for organizations), or both, 18 U.S.C. § 2319(c)(1).
(2) If the offense is a felony and is a second or subsequent offense, the maximum imprisonment term is 6 years, or
a fine of up to $250,000 ($500,000 for organizations), or both, 18 U.S.C. § 2319(c)(2).
(3) If the offense consists of the reproduction or distribution of 1 or more copies of 1 or more copyrighted works,
which have a total retail value of more than $1,000, an imprisonment sentence of not more than 1 year, or a fine
of up to $100,000 ($200,000 for organizations), or both, 18 U.S.C. § 2319(c)(3).
(4) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited by this offense), any
property used (or intended to be used) in any manner or part to commit or facilitate the commission of this
offense, and any property derived constituting or derived from any proceeds obtained directly or indirectly as a
result of the commission of the offense, 17 U.S.C. § 506(b), 18 U.S.C. § 2323.
(5) Mandatory restitution, 18 U.S.C. § 2323(c).
Pre-Release
Distribution of a
Copyrighted
Work Over a
PubliclyAccessible
Computer
Network, 17 U.S.C.
§ 506(a)(1)(C), 18
U.S.C. § 2319(d)
Distributing a copyrighted work
being prepared for commercial
distribution, by making it available on
a publicly-accessible computer
network, if the infringer knew or
should have known that the work
was intended for commercial
distribution.
If infringement committed for commercial purpose:
(1) Imprisonment of not more than 5 years, or a fine
of up to $250,000 ($500,000 for organizations), or
both, 18 U.S.C. § 2319(d)(2). If the offense is a felony
and is a second or subsequent offense, the maximum
imprisonment term is 10 years, or a fine of up to
$250,000 ($500,000 for organizations), or both, 18
U.S.C. § 2319(d)(4).
(2) Civil and criminal forfeiture of any article (the
making or trafficking of which is prohibited by this
offense), any property used (or intended to be used)
in any manner or part to commit or facilitate the
commission of this offense, and any property derived
constituting or derived from any proceeds obtained
directly or indirectly as a result of the commission of
the offense, 17 U.S.C. § 506(b), 18 U.S.C. § 2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-15
If infringement has no commercial purpose:
(1) For a first offense, imprisonment of not more than 3
years, or a fine of up to $250,000 ($500,000 for
organizations), or both, 18 U.S.C. § 2319(d)(1).
(2) If the offense is a felony and is a second or subsequent
offense, the maximum imprisonment term is 6 years, or a
fine of up to $250,000 ($500,000 for organizations), or
both, 18 U.S.C. § 2319(d)(3).
(3) Civil and criminal forfeiture of any article (the making
or trafficking of which is prohibited by this offense), any
property used (or intended to be used) in any manner or
part to commit or facilitate the commission of this offense,
and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the
commission of the offense, 17 U.S.C. § 506(b), 18 U.S.C. §
2323.
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
Criminal Law
Description of Offense
Authorized Penalties
Circumvention of
Copyright Protection
Systems in Violation of
the Digital Millennium
Copyright Act (DMCA),
17 U.S.C. § 1204
Willfully and for purposes of commercial advantage or private
financial gain:
(1) Descrambling, decrypting, or otherwise avoiding, bypassing,
removing, deactivating, or impairing a technological measure, without
the authority of the copyright owner, that effectively controls access
to a copyrighted work; or
(2) Manufacturing, importing, offering to the public, providing, or
otherwise trafficking in any technology, product, service, device, or
component, that is primarily designed or produced for the purpose
of circumventing copyright protection measures.
(1) For a first offense: imprisonment for not more than 5 years, or a fine of
not more than $500,000,p or both.
(2) For the second or subsequent offense: imprisonment for not more than
10 years, or a fine of not more than $1,000,000, or both.
Bootleg Recordings of
Live Musical
Performances, 18 U.S.C.
§ 2319A
Knowingly and for purposes of commercial advantage or private
financial gain:
(1) making an unauthorized recording of sounds or sounds/images of
a live musical performance, or copies of such recording; (2)
transmitting or other communication to the public of such sounds
and/or images of a live musical performance; or (3) distribution, sale,
or trafficking in any copy of an unauthorized live musical performance
recording (whether or not such recording was done in the United
States).
(1) For a first offense, imprisonment of up to 5 years, or a fine of up to
$250,000 ($500,000 for organizations), or both.
(2) For a second or subsequent offense, the maximum imprisonment
sentence doubles to 10 years (with the same fine amounts as the first
offense).
(3) Civil and criminal forfeiture of any article (the making or trafficking of
which is prohibited by this offense), any property used (or intended to be
used) in any manner or part to commit or facilitate the commission of this
offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the
offense, 18 U.S.C. §§ 2319A(b), 2323.
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
Unauthorized
Recording of Motion
Pictures in a Movie
Theater (Camcording),
18 U.S.C. § 2319B
Knowingly using an audiovisual recording device to transmit or make
a copy of a motion picture from a performance of such work in a
movie theater.
(1) For a first offense, imprisonment of not more than 3 years, or a fine of
up to $250,000 ($500,000 for organizations).
(2) For a second or subsequent offense, the maximum imprisonment
sentence doubles to 6 years (with the same fine amounts as the first
offense).
(3) Civil and criminal forfeiture of any article (the making or trafficking of
which is prohibited by this offense), any property used (or intended to be
used) in any manner or part to commit or facilitate the commission of this
offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the
offense, 18 U.S.C. §§ 2319B(b), 2323
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-16
Criminal Law
Description of Offense
Authorized Penalties
Counterfeit or Illicit
Labels and Counterfeit
Documentation and
Packaging for
Copyrighted Works, 18
U.S.C. § 2318
Knowingly trafficking in a counterfeit label or
illicit label affixed to, enclosing, or
accompanying a copyrighted work, or
trafficking in counterfeit documentation or
packaging.
(1) Imprisonment of not more than 5 years, a fine of up to $250,000 ($500,000 for organizations),
or both.
(2) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited by this
offense), any property used (or intended to be used) in any manner or part to commit or facilitate
the commission of this offense, and any property derived constituting or derived from any proceeds
obtained directly or indirectly as a result of the commission of the offense, 18 U.S.C. §§ 2318(d),
2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
p.
The fines listed in this box are the same for an individual or for organizations.
Trademark
Criminal Law
Description of Offense
Authorized Penalties
Trafficking in
Counterfeit
Trademarks, Service
Marks, and
Certification Marks,
18 U.S.C. § 2320
(1) Intentionally trafficking or attempting to
traffic in goods or services and knowingly
using a counterfeit markq on or in connection
with such goods or services;
(2) Intentionally trafficking or attempting to
traffic in labels, patches, stickers, wrappers,
badges, emblems, medallions, charms, boxes,
containers, cans, cases, hangtags,
documentation, or packaging of any type or
nature, knowing that a counterfeit mark has
been applied thereto, the use of which is
likely to cause confusion, to cause mistake, or
to deceive.
(1) For a first offense, imprisonment of not more than 10 years, or a fine of not more than
$2,000,000 ($5,000,000 for organizations), or both.
(2) For a second or subsequent offense, the maximum imprisonment term doubles to 20 years, and
the maximum fines increase to $5,000,000 ($15,000,000 for organizations).
(3) If the offender knowingly or recklessly causes or attempts to cause serious bodily injury from
conduct in violation of this offense, imprisonment of not more than 20 years, a fine of up to
$250,000 ($500,000 for organizations), or both, 18 U.S.C. § 2320(a)(2)(A).
(4) If the offender knowingly or recklessly causes or attempts to cause death from conduct in
violation of this offense, imprisonment for any term of years up to life, or a fine of up to $250,000
($500,000 for organizations), or both, 18 U.S.C. § 2320(a)(2)(B).
(5) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited by
this offense), any property used (or intended to be used) in any manner or part to commit or
facilitate the commission of this offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the offense, 18 U.S.C. §§
2320(b), 2323.
(6) Mandatory restitution, 18 U.S.C. §§ 2320(b), 2323(c).
q.
CRS-17
18 U.S.C. § 2320(e) defines “counterfeit mark” for the purposes of this offense as a spurious mark that: (1) is used in connection with trafficking in any goods, services,
labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging of any type or nature;
(2) is identical with, or substantially indistinguishable from, a mark registered on the principal register in the United States Patent and Trademark Office and in use,
whether or not the defendant knew such mark was so registered; (3) is applied to or used in connection with the goods or services for which the mark is registered
with the United States Patent and Trademark Office, or is applied to or consists of a label, patch, sticker, wrapper, badge, emblem, medallion, charm, box, container,
can, case, hangtag, documentation, or packaging of any type or nature that is designed, marketed, or otherwise intended to be used on or in connection with the goods
or services for which the mark is registered in the United States Patent and Trademark Office; and (4) the use of which is likely to cause confusion, to cause mistake,
or to deceive.
Trade Secrets
Criminal Law
Description of Offense
Authorized Penalties
Trade Secret Theft
to Benefit a Foreign
Entity, 18 U.S.C. §
1831
With intent or knowledge that the offense will benefit any foreign
government, foreign instrumentality, or foreign agent, knowingly: (1) stealing
or without authorization taking or obtaining a trade secret; (2) without
authorization copying, destroying, or transmitting a trade secret; (3)
receiving, buying, or possessing a trade secret, knowing it to have been
stolen or obtained without authorization; (4) attempting to commit any
offense described above; (5) conspiring with one or more other persons to
commit any offense described above, and one or more of such persons do
any act to effect the object of the conspiracy.
(1) Imprisonment of up to 15 years, or a fine of up to $500,000
($10,000,000 for organizations), or both.
(2) Civil and criminal forfeiture of any article (the making or trafficking
of which is prohibited by this offense), any property used (or intended
to be used) in any manner or part to commit or facilitate the
commission of this offense, and any property derived constituting or
derived from any proceeds obtained directly or indirectly as a result of
the commission of the offense, 18 U.S.C. §§ 1834, 2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
Theft of Trade
Secrets for
Commercial
Advantage, 18 U.S.C.
§ 1832
With intent to convert a trade secret related to a product that is placed in
interstate or foreign commerce, to the economic benefit of anyone other
than the owner thereof, and intending or knowing that the offense will
injure any owner of that trade secret, knowingly: (1) stealing, or without
authorization taking or obtaining such information; (2) without authorization
copying, destroying, or communicating a trade secret; (3) receiving, buying,
or possessing a trade secret, knowing it to have been stolen or obtained
without authorization; (4) attempting to commit any offense described
above; (5) conspiring with one or more other persons to commit any
offense described above, and one or more of such persons do any act to
effect the object of the conspiracy.
(1) Imprisonment of up to 10 years, or a fine of up to $250,000
($5,000,000 for organizations), or both.
(2) Civil and criminal forfeiture of any article (the making or trafficking
of which is prohibited by this offense), any property used (or intended
to be used) in any manner or part to commit or facilitate the
commission of this offense, and any property derived constituting or
derived from any proceeds obtained directly or indirectly as a result of
the commission of the offense, 18 U.S.C. §§ 1834, 2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-18
Intellectual Property Rights Violations
Author Contact Information
Brian T. Yeh
Legislative Attorney
byeh@crs.loc.gov, 7-5182
Congressional Research Service
19