Daniel Marti was nominated to become the new White House “IP Czar” in August 2014 to replace Victoria Espinel. His predecessor, in yet another illustration of Washington’s “revolving door” shuffling key individuals between the government and private sector, departed the post a year earlier to become head of BSA/The Software Alliance, the leading trade group for the software industry.

Mr. Marti was finally confirmed to his post by the Senate last month and was sworn in on Monday, April 27th by Vice President Joe Biden to a job that is officially titled “United States Intellectual Property Enforcement Coordinator, Office of Management and Budget”. Last Friday Mr. Martin delivered remarks at the Motion Picture Association’s Creativity Conference discussing IP protection and the role of his office, which he characterized as “the executive branch’s creative conscience”—adding ““Respecting IP not only encourages creativity, it also promotes the technologies for communicating that creativity”.

Two and a half weeks ago the Chairman and Ranking Member of the U.S. Senate Judiciary Committee dispatched a letter to Mr. Marti in which they outlined their own priorities for his office. Prominent among them was engaging with ICANN to promote greater protection for intellectual property. It noted “longstanding concerns within both the business community and the Congress regarding ICANN’s transparency and accountability mechanisms with respect to its existing functions and responsibilities”. The letter also cited the ongoing multistakeholder accountability enhancement process tied to the IANA functions transition, noting that “the success of these efforts [is] essential to increasing faith and trust in the organization on an ongoing and sustainable basis”.

Their dispatch further noted continuing dissatisfaction within the IP sector regarding ICANN’s contractual compliance efforts vis-a-vis registries and registrars, and urged engagement toward the development of ‘best practices’ for IP protection, stating:

With respect to intellectual property enforcement concerns, we have heard from a number of stakeholders that domain name registrars are not meeting their contractual obligations with ICANN, and that ICANN itself routinely has failed to prioritize and enforce its agreements. Registrars and registries, like every legitimate business that operates in the Internet ecosystem, have a constructive role to play in curbing online infringement and counterfeiting. We urge you to facilitate conversations among rightsholders, registrars, registries, and ICANN to identify mutually agreeable best practices in this important space. We urge that you become actively involved in the interagency process to advocate for strong and effective intellectual property rights in this online environment.

So, notwithstanding the anticipated US withdrawal from direct oversight of the IANA functions, these Senators want the White House to bring contracted parties, ICANN and IP rightsholders together for the development of best practices for IP protection in the DNS.

One conspicuous omission in their letter is any mention of domain registrants, who have a significant stake in any process that might result in changes to the UDRP, URS, Trademark Clearinghouse, and related matters, and who are likely to be significantly impacted by any ‘voluntary’ change in registry or registrar practices. That doesn’t mean that registrants aren’t committed to IP protection, but does highlight the need for them to be part of the conversation as well. That’s especially true since review of the new gTLD rights protection mechanisms and potential UDRP reforms will be on the table in half a year.

The White House IP Czar tends to work closely with and be sensitive to the concerns of the Judiciary Committees, which have primary jurisdiction over copyright and trademark. Regardless of the substance and timing of the IANA functions transition, ICANN itself and many major registries and registrars are headquartered within the U.S. and can anticipate being contacted by Mr. Marti’s office to discuss development of best practices. They can presume from past history that inadequate progress in adopting them may lead to calls for more coercive initiatives. This all bears further watching.

The text of the letter follows:

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United States Senate
Committee on the Judiciary

April 9, 2015

The Honorable Daniel H. Marti
United States Intellectual Property Enforcement Coordinator
Office of Management and Budget
Executive Office of the President
The White House
Washington, D.C. 20500

Dear Mr. Marti:

Congratulations on your unanimous confirmation to serve as the Intellectual Property Enforcement Coordinator. Our Nation is the envy of the world for the quality, and the quantity, of its innovative and creative goods and services. To retain that position and to encourage other countries to develop meaningful intellectual property systems, we must ensure that our citizens’ intellectual property rights are effectively enforced at home. The Office of the Intellectual Property Enforcement Coordinator (IPEC) was authorized to fill a critical role in meeting that goal.

We write to highlight some of the pressing issues facing the IPEC that we hope will receive your attention as you begin your tenure.

Voluntary Best Practices.

The IPEC has played a constructive role in improving intellectual property enforcement by facilitating voluntary agreements between stakeholders. Such agreements, which we have advocated for, have led to positive developments on a wide range of enforcement issues, including more engagement by payment processors and advertising networks in helping to combat online infringement and the creation of the Center for Safe Internet Pharmacies. Voluntary agreements like these are an essential tool for improving intellectual property enforcement and highlight one of the important duties that we envisioned for the IPEC when the position was created.

We hope that ensuring the effectiveness of the existing voluntary agreements and identifying new areas where voluntary agreements can bring improvements will be a cornerstone of your work . We encourage you to develop methods for analyzing the effectiveness of the voluntary agreements and to discuss with stakeholders their experiences and suggestions for improvements. Among the specific areas ripe for exploration of new voluntary efforts are the role of advertising networks that drive so much of the online economy, and the “whack-a-mole” problem that plagues copyright holders online, where illegal content or sites are taken down only to spring back up again moments later in a new location.

Finally, as the most recent IPEC Joint Strategic Plan noted, intellectual property must be protected at ICANN, which governs the use of domain names on the Internet. There are longstanding concerns within both the business community and the Congress regarding ICANN’s transparency and accountability mechanisms with respect to its existing functions and responsibilities. There are active discussions and efforts taking place to design and implement improved ICANN accountability and transparency mechanisms. We consider the success of these efforts to be essential to increasing faith and trust in the organization on an ongoing and sustainable basis.

With respect to intellectual property enforcement concerns, we have heard from a number of stakeholders that domain name registrars are not meeting their contractual obligations with ICANN, and that ICANN itself routinely has failed to prioritize and enforce its agreements. Registrars and registries, like every legitimate business that operates in the Internet ecosystem, have a constructive role to play in curbing online infringement and counterfeiting. We urge you to facilitate conversations among rightsholders, registrars, registries, and ICANN to identify mutually agreeable best practices in this important space. We urge that you become actively involved in the interagency process to advocate for strong and effective intellectual property rights in this online environment. (Emphasis added)

2014 Annual Report and Next Joint Strategic Plan.

The Office of the IPEC provides high-level, centralized coordination across the many agencies of the Federal Government that handle intellectual property enforcement. Among the IPEC’s central roles is producing a joint strategic plan every three years, setting out a comprehensive, multi-agency approach to combat piracy and counterfeiting . The IPEC also provides annual reports to Congress on the Government’s enforcement efforts and makes legislative recommendations . These reports and recommendations are highly beneficial to our efforts as lawmakers.

We have not yet received the Office’s 2014 Annual Report on its activities, as required by the Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008. While some delay is understandable in light of the transition, we expect every effort to be made to swiftly provide Congress with that report.

Among the contents of that report, we are particularly interested in the Office’s efforts to implement the 26 recommendations of the Administration’s 2013 Joint Strategic Plan On Intellectual Property Enforcement. Moreover, as you begin work on the next Joint Strategic Plan to be issued in 2016, we look forward to discussing additional enforcement priorities.

International IP Enforcement.

Although the primary focus of the IPEC is on coordinating the domestic enforcement efforts of the Federal Government, we believe that there is a critical role for the Office to play in encouraging our trading partners and other countries to provide for adequate and effective intellectual property protections. The United States remains a net exporter of IP-protected goods, and as such, we must work to ensure that the intellectual property rights of our creators and innovators are meaningfully protected around the world. We encourage you to work with the relevant agencies, including the U.S. Patent and Trademark Office, the U.S. Trade Representative , and the U.S. Copyright Office, to find ways to use your position and the Office of the IPEC to advocate for strong and effective intellectual property rights internationally .

We look forward to working with you throughout your tenure and urge you to prioritize the issues outlined in this letter in the coming months. Please do not hesitate to reach out to us and our staffs if we can be of assistance on these matters or any additional issues that relate to the vital protection of intellectual property.

Sincerely,

CHARLES E. GRASSLEY
Chairman

PATRICK LEAHY
Ranking Member

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