Using the ITC as a Trademark Enforcement Tool

Transcription

1 April 12, 2016 Webinar Using the ITC as a Trademark Enforcement Tool Sheryl Koval Garko Principal, Boston Monty Fusco Of Counsel, Washington, DC

2 Overview CLE Contact: Materials available post-webinar on FishTMCopyrightblog.com 2

3 Outline of Today s Discussion The ITC Generally Agency Overview Jurisdiction Section 337 Proceedings Institution Timing Discovery Pre-Hearing Filings Hearings Relief Determinations and Appeals

4 Why the ITC? Advantages of Relief, Jurisdiction, and Speed Exclusion order Excludes importation of infringing products into the U.S. market Better than recording at Customs Fast-paced litigation Typically ends 16 months after institution Impending exclusion order motivates settlement Nationwide jurisdiction In rem over the article, not personal over the party Need not run around to different district courts, but can have a single action against multiple infringers 4

5 Agency Overview Non-partisan, quasi-judicial federal agency Commissioners Board of 6 (3R/3D) appointed for 9 year terms Determine whether to institute an investigation Review Initial Determinations of the ALJs Administrative Law Judges (ALJs) Ground Rules Specific to each ALJ s preferences Attorneys-advisor similar to law clerks in district court Office of Unfair Import Investigations (OUII) Staff Attorneys typically assigned (30 out of 35 investigations in 2015) Conducts independent investigation and represents the public interest 5

6 Statutory Authority Relevant portions of Section 337 (A) is used for common law marks/trade dress (C) is used for registered marks (A) Unfair methods of competition and unfair acts in the importation of articles (other than articles provided for in subparagraphs (B), (C), (D), and (E)) into the United States, or in the sale of such articles by the owner, importer, or consignee, the threat or effect of which is (i) to destroy or substantially injure an industry in the United States; (ii) to prevent the establishment of such an industry; or (iii) to restrain or monopolize trade and commerce in the United States. (C) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946 (15 U.S.C et seq.). 19 U.S.C. 1337(a)(1) 6

7 Section 337 Case Statistics Cases Instituted

8 Section 337 Statistics: Types of Unfair Acts Alleged in Active Investigations, FY 2006 FY 2015 Source: USITC, Year in Review, for Fiscal Years

9 Section 337: Relief Only prospective relief no money damages Exclusion Order Limited directed to respondents General directed to all infringing goods Both enforced by Customs Cease & Desist Order Directed to goods already imported and in inventory Enforced by the Commission 9

10 Section 337 : Filing a Complaint Pre-Filing Review Review by OUII Supervisory Attorney Allow 7-10 days Complaint and Public Interest Statement filed Fact pleading required 19 C.F.R Must address the domestic industry requirement Separate public interest statement required Pre-institution Proceedings Institution requires majority vote of Commission o Usually within 30 days of filing Notice of Institution to parties and Federal Register 10

11 Section 337: Responding to a Complaint Pre-institution Can file letter regarding public interest implications of requested relief Can request utilization of the 100-day program (rare) Commission orders ALJ to conduct an expedited proceeding on a single, potentially dispositive, issue Has been used for domestic industry (Laminated Packaging Inv. No ) and standing (Audio Processing Hardware, Inv. No ) Response to complaint due 20 days after date of service of complaint by the Commission Extra time for service, more if respondent is located in another country ALJ s routinely grant a motion to coordinate responses by related respondents Detailed response required 19 C.F.R Statistical data regarding quantity and value of imports 11

12 Section 337: Timing ITC cases move quickly Complaint filed Notice of Institution Answer due Markman Hearing (if applicable) Fact Discovery closes Pre-Hearing Briefs, Motions in Limine due Summary Determination deadline Hearing Post-Hearing Briefing Initial Determination Jan. Feb. Mar. Apr. May Jun. July Aug. Sept. Oct. Nov. Dec. Jan. Feb. Mar. Apr. May Jun. Completed Investigation 12

13 Section 337: Discovery Discovery Complaint filed Notice of Institution Answer due Discovery opens with responses due 10 days post-service Markman Hearing (if applicable) Fact Discovery closes Pre-Hearing Briefs, Motions in Limine due Summary Determination deadline Hearing Post-Hearing Briefing Initial Determination Jan. Feb. Mar. Apr. May Jun. July Aug. Sept. Oct. Nov. Dec. Jan. Feb. Mar. Apr. May Jun. Completed Investigation 13

14 Section 337: Discovery Governed in large part by Ground Rules May vary between ALJs Depositions Complainant 5 per respondent or 20 (whichever is greater) Respondents 20 maximum OUII Staff 10 maximum, and participation in all others No 7 hour limit Interrogatories Up to 175 allowed May be served as soon as notice of investigation is published; must be answered in 10 days Document Requests and Requests for Admissions No limitations on number allowed May be served as soon as notice of investigation is published; must be answered in 10 days Expert Discovery Expert reports are often due within a week or two of fact discovery closing Daubert motions typically unsuccessful 14

15 Domestic Industry Requirement Section 337 is a trade statute Protects domestic industry from unfair imports (in rem jurisdiction over the articles) Statutory and non-statutory intellectual property Key difference is non-statutory causes of action require showing of substantial injury to an industry not necessarily one using the IP right at issue TianRui Group v. USITC, 661 F.3d 1322 (Fed. Cir. 2011) With a registered mark, the industry must be with respect to the article protected by the IP right. 19 U.S.C. 1337(a)(2) DI exists if there is in the United States, with respect to the article: (A) significant investment in plant and equipment; (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing. 19 U.S.C. 1337(a)(3) 15

16 Section 337: Pre-Hearing Filings Motions for Summary Determination Akin to motions for summary judgment Responses due in 10 days Order granting summary judgment is an initial determination and immediately reviewable by the Commission Pre-Hearing Statements and Briefs Statement: exhibit lists, witness lists, statements of testimony, stipulations, length of trial, order and dates for witnesses Brief: must address claims and defenses with particularity; contentions not set forth will likely be deemed waived 16

17 Section 337: Hearing Ground Rules govern Evidentiary Issues Parties may file motions in limine and high priority objections The Federal Rules of Evidence do not apply o Reliable hearsay is admissible o Can have important impact on admissibility of anecdotal evidence of actual confusion Willing to conduct hearing on the confidential record Procedure Generally Some form of opening statements generally allowed Follow same format as district court trial, with the addition of time for OUII Staff to present its case Direct examination often presented by written witness statements Exhibits to be used on cross examination may be limited to those on witness list 17

18 Section 337: Post-Hearing Briefing Post-hearing brief and reply brief Initial Determination by ALJ Provided at least four months prior to investigation s target completion date Commission Review Upon request of Complainant, Respondent(s), or Staff Three bases: (1) finding of material fact that is clearly erroneous; (2) legal conclusion that is erroneous; or (3) determination affects Commission policy Requires vote of a single Commissioner If violation is found, decision is published in the Federal Register (decision is enforceable at that time) Presidential Review Import can continue if bond is posted Disapproval is very rare (President cannot modify order) Appeal to the Federal Circuit 18

19 Section 337: Relief (?) Commission is authorized to deny relief that would be contrary to the public interest. 19 U.S.C (d)(1) Public health and welfare Competitive conditions in the U.S. economy Production of like or directly competitive articles in the U.S. Effect on consumers But an increase in prices to consumers generally does not outweigh the public interest in enforcing valid IP rights Good discussion in the ALJ s initial determination in Ignition Wrappers, Inv. No. 337-TA-756 at pages (Feb. 1, 2012) Commission s exclusion order is subject to Presidential disapproval Decision delegated to U.S. Trade Representative Very very rare. Last occurred in 2013 (Electronic Devices (Inv ) exclusion order would have covered Apple s smart phones and tablets); last previous disapproval was in

20 Contact Information and Questions Sheryl Koval Garko Fish & Richardson Monty Fusco Fish & Richardson Please send your NY CLE forms or questions about the webinar to Lauren McGovern at A replay of the webinar will be available for viewing at FishTMCopyrightblog.com and 20

21 Thank you! Copyright 2016 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this presentation has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only, is not intended to be legal advice and does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. Unsolicited s and information sent to Fish & Richardson P.C. will not be considered confidential and do not create an attorney-client relationship with Fish & Richardson P.C. or any of our attorneys. Furthermore, these communications and materials may be disclosed to others and may not receive a response. If you are not already a client of Fish & Richardson P.C., do not include any confidential information in this message. For more information about Fish & Richardson P.C. and our practices, please visit 21