Section 337 Intellectual Property and Unfair Trade Practices Litigation at the International Trade Commission

Section 337 of the Tariff Act of 1930 makes it unlawful to import articles into the United States, or to sell imported articles in the United States, that infringe a valid and enforceable U.S. patent, trademark, or copyright.  Even more broadly, Section 337(a)(1)(A) makes it unlawful to import articles into the United States pursuant to “unfair methods of competition and unfair acts in the importation of articles . . . into the United States.”  Subsection (a)(1)(A) can be used as the legal vehicle for other intellectual property-based causes of action (e.g., trademark dilution, misappropriation of trade dress, misappropriation of trade secrets), as well as for tort-based causes of action targeting the types of illegitimate conduct that sometimes accompany unfairly traded imports (e.g., breach of contract, tortious interference with a contract or license, fraudulent inducement to breach (or to enter into) a contract or license, and fraud). 

Section 337 investigations are conducted by the International Trade Commission, which is based in Washington, D.C.  If the Commission finds (i) a violation of the intellectual property right or an unfair trade practice, (ii) that there is an industry in the United States related to the articles for which protection is sought, and (iii), in cases brought under Section 337(a)(1)(A), that the domestic industry has been injured or threatened with injury, the ITC may issue an exclusion order barring future imports of the infringing or unfairly traded product and/or a cease and desist order prohibiting sales of such merchandise that has already been imported into the United States.  Exclusion orders are of two types, a limited exclusion order directed against the imports of a single, named respondent, and the far broader general exclusion order, a blanket in rem prohibition against the importation of any infringing/unfairly traded product.  Enforcement of the Commission’s orders is the joint responsibility of the U.S. Customs and Border Protection Department and the Commission.

U.S. intellectual property rights holders are increasingly relying on Section 337 investigations in preference to traditional intellectual property litigation in federal district court because of the numerous advantages offered by such investigations.  Between 2000 and 2006, the number of Section 337 investigations instituted at the International Trade Commission more than tripled and the number of active Section 337 cases is presently at an all-time high.

deKieffer & Horgan’s experience in Section 337 investigations stretches back more than twenty-five years.  In that time, deKieffer & Horgan’s attorneys have represented both complainants and respondents in Section 337 investigations.  The experience that deKieffer & Horgan brings to Section 337 investigations is enriched by Don deKieffer’s service as General Counsel of the Office of the U.S. Trade Representative from 1981 through 1983; for the Office of the USTR, acting on behalf of the President, reviews all affirmative final determinations in Section 337 investigations to ensure that the remedy recommended by the Commission is consistent with U.S. trade policy goals.  deKieffer & Horgan stands ready to assist clients wishing to bring a Section 337 investigation to protect their intellectual property or other trade-related rights, as well as clients named as respondents in such investigations.  Please contact Donald E. deKieffer or J. Kevin Horgan in our Washington office if you have questions or require assistance in this area.

RELEVANT PUBLICATIONS AND PRESENTATIONS BY D&H ATTORNEYS

Donald E. deKieffer, U.S. Trade Policy Regarding Intellectual Property Matters, LEGAL Publications, Current Law and Practical Solutions: North American Free Trade Agreement Critical Business and Legal Issues, (Washington Edition, March 1994).

J. Kevin Horgan, U.S Patents, Trademarks and Copyrights after the Uruguay Round, Corporate Counsel’s International Adviser, Issue No. 116 (January 1995).

Donald E. deKieffer, U.S. Trade Policy Regarding Intellectual Property Matters, in International Trade & Intellectual Property: The Search for a Balanced System, Westview Press (1994).

Donald E. deKieffer, Current Issues in International Intellectual Property Protection, Corporate Counsel's International Advisor, Issue No. 30 (November 1987).

Donald E. deKieffer, Antidumping, Countervailing Duty Laws and Section 337 - A Private View, Fifth Annual Fordham Corporate Law Institute: International Antitrust; Law & Business Inc. (Harcourt Brace Jovanovich, 1979).

Donald E. deKieffer, Unfair Trade Practices and Section 337 - Promises and Uncertainties, North Carolina J. Int’l Law & Commercial Regulation (Spring 1977).

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