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COUNTERFEIT ELECTRONIC PARTS: Awareness, Avoidance, Detection and

Mitigation

Current and Proposed Legal Tools to Combat Counterfeit Parts

© 2009 Timothy Trainer

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Timothy Trainer

Global Intellectual Property Strategy Center, P.C.

Washington, D.C.www.globalipsc.com

Tel. 202-955-1144

©2009 Timothy Trainer

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Disclaimer

This presentation does not constitute legal advice. You are advised to consult legal counsel

for specific issues of concern.

Information in this session deals with domestic and foreign laws and developments and is

intended only as an overview.

©2009 Timothy Trainer

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Why We’re here—The Concern

•Use of semiconductors in an expanding array of products

• mobile phones• automobile braking systems• medical devices• home appliances• satellites • much more

©2009 Timothy Trainer

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Why We’re here—an Example

• March 2009 (Houston Chronicle) Article• NASA’s Acting Administrator tells Congress cost overruns due, in part, to fake parts• Problem is growing as fakes enter NASA supply chain• NASA personnel and aerospace industry officials have found stolen manufacturer markings on parts

©2009 Timothy Trainer

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U.S. Criminal Law: Changes Benefitting Industry

18 USC 2318 - Trafficking in Counterfeit Labels, Documentation or Packaging (aimed at copyrighted materials)

• a counterfeit label or illicit label affixed to, enclosing, or accompanying, or designed to be affixed to, enclose, or accompany a copy of a computer program

• “illicit label” means a genuine certificate, licensing document, registration card, or similar labeling component

©2009 Timothy Trainer

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U.S. Criminal Law: Changes Benefitting Industry

18 USC 2320 - Trafficking in Counterfeit Goods• Fines and jail terms possible for trafficking in:

• counterfeit goods, packaging and labeling materials

• Importing, exporting, transshipping such goods• Increased level of penalty for knowingly or

recklessly causes or attempts to cause serious bodily injury (do counterfeits of your products fit under this provision?)

©2009 Timothy Trainer

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Additional U.S. Criminal Laws & other Statutes

18 USC 1341 - Frauds and Swindles (using postal service)

18 USC 1343 - Fraud by wire, radio or television19 USC 1526 – Customs authority to seize

counterfeit goods19 CFR Part 133 – Customs Trademark &

Copyright regulatory provisions for detentions & seizures

©2009 Timothy Trainer

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Proposed Legislation

S. 1466 (Sen. Stabenow)• Increase disclosure of info to IPR owners upon detention of

goods• Improve Customs recordation of ® and © by coordinating with

USPTO and US Cop. Office• Self-certification of low risk importers (who wouldn’t identify

themselves as low risk???)• Increase IPR enforcement staffing for Customs• Customs seizure authority of circumvention devices (17 USC

1201) under 19 USC 1595a(c)(2)(g)**• Customs Off. Of Chief Counsel to protect USG interests in

forfeiture proceedings

©2009 Timothy Trainer

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Proposed Legislation

S. 1631 (Sen. Baucus)• Commercial Targeting (IPR as one area)• Establish within ICE a Nat’l IPR Coordination Center

(NOTE: Already exists)• Create a confidential list of repeat IPR violators• Each port of entry to have 1 full-time person primarily

responsible for IPR• Availability of samples• Seizure of circumvention devices**

©2009 Timothy Trainer

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Civilian Agency Acquisition Council and the Defense Acquisition Regulations

Council• Early stages of developing new rules to ensure that

agencies are not buying counterfeit products• Regulators considering how to amend the Federal

Acquisition Regulation (FAR) to require contractors selling IT products to prove that products are authentic

• Some have proposed trade associations police their members or offer some certification that can be audited (certifications could give the govt a uniform and reasonable assurance that the IT products and their parts aren’t counterfeits)

©2009 Timothy Trainer

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Civilian Agency Acquisition Council and the Defense Acquisition Regulations

Council (cont’d)

©2009 Timothy Trainer

• Officials are also interested in areas such as contractor liability, consequential damages and the competition aspects of purchasing IT products from the original manufacturer or authorized dealers.

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IPR Enforcement Obligations on Trading Partners: Additional Tools

• Free Trade Agreements (FTAs)• All have Customs enforcement requirements

(importation, exportation and goods in-transit) & Criminal penalty requirements

• European Council Customs Regulations• China Customs Law/Regs: authority to seize

exports of counterfeit goods (Trademark registered in China and deposited with Customs)

©2009 Timothy Trainer

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IPR Enforcement Obligations on Trading Partners: Additional Tools

• Proposed Anti-Counterfeiting Trade Agreement• Currently being negotiated• Intended to address enforcement only• Criminal (copyrights and trademarks)• Customs• Digital piracy (internet issues)• Target: end of 2010

©2009 Timothy Trainer

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Additional Initiatives:Semiconductor chip industry

• Governments/Authorities Meeting on Semiconductors (GAMS)• first-ever meeting with customs authorities

(9/09—South Korea) (PRC, EU, US, Japan, Taiwan, ROK)

• Increasing threat/broad array of goods• Imports/exports, customs best practices• Govt-industry info sharing• Are you involved (represented by GAMS or

thru others)? ©2009 Timothy Trainer

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Additional Enforcement “Tools”

• Rights abroad: Are your trademarks registered abroad? Yes, then take advantage of foreign enforcement efforts

• Copyrights: protect them abroad (WTO/Berne) eliminates formalities, but check local laws

• Use available “advocates” abroad:• U.S. Customs attaches• U.S. Legal attaches (FBI agents abroad)• U.S. Embassy staff (econ & commercial

officers)©2009 Timothy Trainer

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Additional Enforcement “Tools”

• Understand, in detail, foreign enforcement systems• Who (agency) does what?• How much enforcement authority does each

have?• What forms of IPR are covered by criminal

laws and customs enforcement provisions?

©2009 Timothy Trainer

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Additional Enforcement “Tools”

• Based on the above:• Is there a corporate inter-disciplinary team? • Does your company/trade assn follow IPR

enforcement developments?• Who is dedicated to providing updates on

anti-counterfeiting issues/policies• Do you belong to government committees

focused on anti-counterfeiting? • Is there a point person to engage INTERPOL

or the World Customs Organization?©2009 Timothy Trainer

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IPR Training/Education

• What is the corporate IPR training program?• Does it raise IPR awareness within the

company?• Does it promote an anti-counterfeiting/anti-

piracy culture among all employees?• Is the IPR education program a “one size fits

all” approach?• Who is involved in the program

development?

©2009 Timothy Trainer

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Training/Education Abroad

• Activity Abroad:• Do you have production abroad? If yes:

• IPR training: link your economic contribution to the need for IPR protection

• Make your case• Audience

• Policy makers, law enforcement, administrative officials

©2009 Timothy Trainer

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Training/Education Abroad

• Message:• How counterfeits of your products pose a public

safety risk/government risk in vital programs• The economic contribution of your presence• How IPR protection/enforcement benefits locals

(NOTE: This requires adding a new component by demonstrating IPR benefits)

• Consider: Good Corporate citizen component by extending IPR awareness programs to educational institutions/non-traditional groups

©2009 Timothy Trainer

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Training/Education

• Do you have diverse messaging and formats?

• Does your training/education content “connect the dots”, i.e., why IP is in and of itself valuable and, therefore, worthy of resources for enforcement?

• Is there a dedicated team/resource for IPR training/education/awareness?

©2009 Timothy Trainer

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Thank You

Questions/Comments

Contact Info

ttrainer@globalipsc.comTel 202-955-1144

©2009 Timothy Trainer