Timothy Q. Li · September 2013
81 GEO. WASH. L. REV. 1755 (2013)
The U.S. International Trade Commission (“ITC”) has become increasingly important in the enforcement of intellectual property (“IP”) rights in recent years. Despite the increase in ITC filings, however, very little literature discusses the effectiveness of ITC exclusion orders. This Essay analyzes seventy- three ITC exclusion orders issued from 2002–2011, finding their scope to be imprecise and vague. To remedy this lack of clarity, this Essay proposes that the ITC improve the enforcement of exclusion orders by providing notice to IP rightsholders, adopting a practical test to resolve close cases, and providing for a civil penalty to deter violations.
More specifically, the ITC should provide notice to IP rightsholders when importers file certifications with Customs and Border Protection (“CBP”) or when CBP issues ex parte decisions concerning exclusion orders. The ITC should also adopt the colorable differences test used by some district courts to resolve close cases concerning redesigned products in contempt proceedings. Contempt proceedings share many similarities with ITC enforcement proceedings, including a prior patent infringement trial, a previous order by the tribunal against infringement, disagreement concerning redesigned products, and an expedited proceeding. Finally, the ITC should issue cease and desist orders in tandem with exclusion orders because cease and desist orders are enforceable with civil penalties. The most natural remedy to deter a violation of an exclusion order is an order to cease and desist from selling the infringing, imported products. By issuing cease and desist orders in tandem with exclusion orders, the ITC could eliminate duplicative enforcement proceedings, increase efficiency, and lower litigation costs.
