David Carney provides an excellent summary and background of the Pro-IP Act at his Tech Law Journal site, which I reproduce below with his permission. (The TLJ site, which I highly recommend, is subscription only for current content - all becomes public after 30 days)

*         *         * 

The Senate amended and passed by unanimous consent S 3325 [LOC | WW], the "Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008" on September 26, 2008. The House passed this bill on September 28, 2008, by a vote of 381-41. See, Roll Call No. 664. The bill is ready for the signature of President Bush.

The Senate amendment, among other things, changed the title from "Enforcement of Intellectual Property Rights Act" to "PRO-IP Act". A similar bill, HR 4279 [LOC | WW], which is not the bill passed by the Congress, was also titled "PRO-IP Act".

This bill addresses remedies for infringement and counterfeiting, and the organization and funding of government efforts to enforce intellectual property rights (IPR).

Legislative History. Both the House and Senate worked on IPR enforcement bills in the 110th Congress. S 3325 is the Senate bill, while HR 4279 was the House bill.

Rep. John Conyers (D-MI) introduced HR 4279 on December 5, 2007. See, story titled "Representatives Introduce PRO IP Act" in TLJ Daily E-Mail Alert No. 1,683, December 5, 2008.

On March 6, 2008, the House Judiciary Committee's (HJC) Subcommittee on Courts, the Internet and Intellecual Property amended and approved this bill. See, story titled "House Subcommittee Amends PRO-IP Act" in TLJ Daily E-Mail Alert No. 1,727, March 5, 2008.

On April 30, 2008, the HJC amended and approved the bill. See, story titled "House Judiciary Committee Approves PRO IP Act" in TLJ Daily E-Mail Alert No. 1,758, May 1, 2008.

On May 7, 2008, the House approved the bill by a vote of 410-11. See, Roll Call No. 300. See also, story titled "House Passes PRO IP Act" in TLJ Daily E-Mail Alert No. 1,763, May 8, 2008.

The Senate, however, did not take up this House bill.

Sen. Patrick Leahy (D-VT) introduced S 3325 on July 24, 2008. On September 11, 2008, the Senate Judiciary Committee (SJC) amended and approved the bill. See, story titled "Senate Judiciary Committee Approves IP Enforcement Bill" in TLJ Daily E-Mail Alert No. 1,824, September 12, 2008.

On September 26 the full Senate amended and approved the bill.

The House then approved the Senate bill, without further amendment, on Sunday, September 29, 2008, by a vote of 381-41. The voting was nonpartisan.

Rep. Rick Boucher (D-VA), who tends to advocate a weakening, rather than a strengthening of IP rights and enforcement, voted against the bill.

Some of the votes against the bill were cast by members from northern California, Oregon, Washington and Utah, including Rep. Zoe Lofgren (D-CA), Rep. John Doolittle (R-CA), Rep. Mike Thompson (D-CA) Rep. Lynn Woolsey (D-CA), Rep. Mike Honda (D-CA), Barbara Lee (D-CA), Rep. Earl Blumenauer (D-OR), Rep. David Wu (D-OR), Rep. Brian Baird (D-WA), Rep. Jim McDermott (D-WA), Rep. Chris Cannon (R-UT), and Rep. Rob Bishop (R-UT).

Bill Summary. Previous versions had contained language that would have enabled the Department of Justice (DOJ) to bring civil actions for copyright infringement. Currently, the government can only bring criminal actions, pursuant to 17 U.S.C. § 506, or decline to take action. However, this language was removed from the bill by its amendment in the Senate on September 26.

Title I of the bill as passed addresses civil remedies. Section 101 contains a copyright registration harmless error exception. That is, it would amend 17 U.S.C. § 411 to provide that "A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless -- (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration."

Section 102 amends 17 U.S.C. § 503, regarding "Remedies for infringement: Impounding and disposition of infringing articles" to allow a court to order the impounding of "records documenting the manufacture, sale, or receipt of things involved" in a violation. Currently, only infringing items, and things used to make infringing items can be impounded.

This section then adds language to protect individual privacy. It adds that "For impoundments of records ... the court shall enter an appropriate protective order with respect to discovery and use of any records or information that has been impounded. The protective order shall provide for appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in such records is not improperly disclosed or used."

Section 103 amends the Trademark Act to allow for the award of treble profits or damages for use of a counterfeit mark or designation.

Section 104 amends the Trademark Act, at 15 U.S.C. § 1117, to increase statutory damages in counterfeiting cases

Section 105 would amend the Trademark Act, at 15 U.S.C. § 1124, which currently pertains to "Importation of goods bearing infringing marks or names forbidden", to also cover transshipment and exportation.

Title II of the bill contains changes to statutes related to criminal enforcement of IP laws by the DOJ.

One provision in Title II that is opposed by some members of the House allows the federal government to obtain by civil forfeiture "(A) Any article, the making or trafficking of which is, prohibited under section 506 of title 17, or section 2318, 2319, 2319A, 2319B, or 2320, or chapter 90, of this title" and "Any property used, or intended to be used, in any manner or part to commit or facilitate the commission of an offense referred to in subparagraph (A) ..."

Title III, the longest title of the bill, creates a new Intellectual Property Enforcement Coordinator (IPEC) in the executive branch. The IPEC would be appointed by the President, and confirmed by the Senate.

Title IV provides for grants to local law enforcement, authorizes $25 Million for each of fiscal years 2009 through 2013, provides improved investigative and forensic resources and funding, and imposes detailed reporting requirements by the DOJ.

Title V requires Government Accountability Office (GAO) reports and audits. It also articulates numerous "Sense of the Congress" statements.

Senate Debate. There was little Senate debate on the bill. Supporters discussed the importance of IP industries to the U.S. economy, and the harm caused by infringement and counterfeiting.

Sen. Leahy stated in the Senate on September 26 that "Intellectual property is the lifeblood of our economy, and protecting that property from theft and misappropriation is important to preserving our place at the economic forefront of the world. Combatting intellectual property offenses can help us save jobs for Americans, increase tax revenues from legitimate businesses, and bolster our productivity, with all the gains that come from that."

He said that "Some of the provisions in this bill authorize significant resources to the Department of Justice and the Federal Bureau of Investigation to better take on the tasks of battling intellectual property crimes."

Sen. Tom Coburn (R-OK), another supporter, said that "It is necessary for the Federal Government to protect and enforce intellectual property rights domestically and internationally. I believe we are on the way to achieving this goal with S. 3325, but we have to ensure that the agencies this bill tasks with enforcement of intellectual property rights are held responsible."

Sen. Leahy responded that "I am committed to vigorous oversight of the Justice Department in all its functions, and as the champion of S. 3325, I am especially interested in ensuring that these programs are effectively and efficiently managed." He is the Chairman of the SJC, which oversees the DOJ and FBI.

House Debate. On September 27, Rep. Conyers (at left) stated that "I think this bill retains most of the most basic and fundamental reforms that we accomplished, including changes to civil and criminal IP laws that will afford rights holders more protection and the enhancements in penalties for IP violators who endanger public health and safety."

Rep. Howard Coble (R-NC) said that "The version of the PRO-IP bill that was written by the House Judiciary Committee and passed this body by an overwhelming bipartisan vote of 410-11 in May contained a number of new initiatives and authorities that I would have preferred to see included in this bill. That said, the glass is by no means half empty. Its enactment will help our law enforcement agencies better detect, prosecute, and deter counterfeiters."

Rep. Lamar Smith (R-TX) and Rep. Sheila Lee (D-TX) also spoke in support of the bill.

Rep. Chris Cannon (R-UT) and Rep. Zoe Lofgren (D-CA) spoke in opposition. They were particularly concerned about the differences in the forfeiture language between the original House bill and the bill just passed.

Rep. Cannon voted for HR 4279 in May, but voted against S 3325 on September 28. He explained that the House bill was "a very good bill", but "the bill that has come back is dramatically different from the bill that went over to the Senate."

He continued that "the Senate has included in this bill the power for Federal law enforcement agencies to seize equipment that may be used in violation of the act. And what that means is, if you have got a kid who downloads music improperly, your computer may be seized."

Rep. Lofgren spoke in greater detail, and with more vehemence. She said that "the unbounded forfeiture provision in this bill isn't about going after criminals, it's about going after the Internet."

She said that the May House bill "had some measures to ensure that there was a meaningful connection between the property subject to seizure and the underlying offense", but that the bill just passed removed these protections.

See also, related story in this issue titled "Rep. Lofgren Addresses PRO-IP Act and Direction of Copyright Law".

Praise for the Bill. Patrick Ross, head of the Copyright Alliance, stated in a release that "Congress is being asked to invest hundreds of billions of dollars in failing Wall Street firms, but artists don't want handouts. They just ask that existing copyright laws are enforced so they can continue to produce creative works with the hope of earning a living wage while doing so."

He argued that "Increased copyright enforcement, combined with better coordination of intellectual property policy across the federal government, will be a boon to all of us who love creative works, as we can look forward to U.S. artists and creators maintaining their leading role in the world of producing creative works that enrich our culture and drive our economy."

Mitch Bainwol, Ch/CEO of the Recording Industry Association of America (RIAA), stated in a release that "This bill truly is music to the ears of all those who care about strengthening American creativity and jobs. At a critical economic juncture, this bipartisan legislation provides enhanced protection for an important asset that helps lead our global competitiveness. The intellectual property industries are widely recognized as a cornerstone of the U.S. economy. Additional tools for intellectual property enforcement are not just good for the copyright community but for consumers who will enjoy a wider array of legitimate offerings."

Dan Glickman, head of the Motion Picture Association of America (MPAA), stated in a release that "Through a truly bi-partisan effort, Congress has re-enforced the significance of creative endeavors and sent a clear message that the protection of intellectual property and American industrial innovation is a national priority. In the motion picture industry alone, more than 1.5 million people are employed, and the provisions of this bill will spur even greater production and jobs for American workers. Republicans and Democrats alike have demonstrated their leadership today and their ability to work together when American economic productivity is at stake."

Tom Donohue, head of the U.S. Chamber of Commerce, stated in a September 26 release that "This is a win for both parties and, more importantly, for America's innovators, workers whose jobs rely on intellectual property, and consumers who depend on safe and effective products".

Criticism of the Bill. Ed Black, head of the Computer and Communications Industry Association (CCIA), stated in a release that "At a time when U.S. taxpayers are on hook to rescue the financial industry, why should they also foot the bill for the content industry's financial fees?"

Gigi Sohn, head of the Public Knowledge (PK), stated in a September 26 release that "It is unfortunate that the Senate felt it necessary to pass this legislation. The bill only adds more imbalance to a copyright law that favors large media companies. At a time when the entire digital world is going to less restrictive distribution models, and when the courts are aghast at the outlandish damages being inflicted on consumers in copyright cases, this bill goes entirely in the wrong direction."

However, she praised the Congress for removing an "egregious provision allowing the Justice Department to file civil suits against alleged copyright violators on behalf of copyright holders. This provision was a total waste of the taxpayers' money. We are grateful to Senator Wyden for his leadership in getting that provision removed."