The growth of the digital marketplace has opened up new markets and added great convenience for business and consumers alike. This growth has also brought with it new forms of intellectual property piracy and counterfeiting.
Violations of these intellectual property rights may be enforced in several ways. The owner or these intellectual property rights may bring a lawsuit against an alleged infringer, or, in certain circumstances, a variety of federal agencies may become involved in the IP rights enforcement.
The following YouTube video clip does a good job of capturing the issue:
The National Intellectual Property Rights Coordination Center (IPR Center), led by U.S. Immigration and Customs Enforcement (ICE), combines and coordinates the expertise of 23 investigative organizations such as the Department of Justice, and U.S. Customs and Border Protection, and is a key U.S. Government agency tasked with sharing information, developing initiative, coordinate enforcement actions, and conducting investigations related to intellectual property theft, criminal counterfeiting, and piracy.
In one recent example of IP enforcement, ICE’s Homeland Security Investigations(HSI) seized two Florida-based websites allegedly selling trademark infringing automotive parts. The shuttered websites are: billettechnology.com and custombilletstore.com. These seizures followed an investigation and several undercover purchases from the websites of multiple brand-infringing auto parts, subsequently confirmed as fraudulent with the owers of the infringed marks. These websites listed many different automotive parts available for sale, including aftermarket and custom parts bearing Chrysler trademarks, including radiator covers, power steering covers, and valve covers.
Procedurally, ICE looks at a variety of factors when identifying sites for seizure. Initially, ICE considers the commercial nature of the site, investigating ad revenue, sales, and similar financial factors as well as whether the site is purely engaged in IP infringement. In order to exercise in rem jurisdiction, ICE also looks for a nexus between the site and the U.S., such as whether site owners sell or provide infringing content to U.S. citizens. ICE establishes that the targeted site is engaged in criminal activity by conducting test-buys of infringing content, often assisted by alerts from self-interested parties notifying ICE to the questionable online activity.
Once ICE obtains evidence of IP infringement, ICE agents file applications and affidavits for seizure warrants in a district court asserting seizure pursuant to 18 U.S.C. § 2323 and 981, due to a violation of 17 U.S.C. §506 and 18 U.S.C. §2319 for criminal copyright infringement as well as 18 U.S.C. § 2320 for criminal trademark infringement.
Section 2323 generally provides that any property used, or intended to be used to commit or facilitate criminal copyright infringement or criminal trademark infringement is subject to criminal and civil forfeiture to the U.S. government.
The requirements for civil forfeiture are laid out in 18 U.S.C. §98, namely, a warrant upon a showing of probable cause. The seizure warrant is presented to personnel of the domain name registrars and the domain name registry, who will be directed to restrain and lock the subject domain names, pending transfer of all rights, title, and interest in the subject domain names to the U.S. upon completion of forfeiture proceedings.
Upon seizure, the registry must reroute the domain names to a specific Internet Protocol (IP) address where the government displays a website with a notice that the domain name was seized by ICE – Homeland Security Investigations (“HSI”). Interested parties have sixty days to challenge the forfeiture once ICE files a forfeiture claim. The IPR center may be an effective arrow in the quiver of those seeking to stop online infringement of their intellectual property. For more information on, see https://www.iprcenter.gov.