United States: Looking Beyond Patents At The International Trade Commission - Is The ITC An Underutilized Forum?

Introduction

The United States International Trade Commission ("ITC") is an independent, quasi-judicial federal agency responsible for enforcing Section 337 of the Tariff Act, a trade statute designed to protect U.S. industries from injuries caused by the importation of goods connected to unfair acts. Traditionally, the large majority of Section 337 investigations have focused on allegations of patent, copyright, or trademark infringement. However, Section 337 is not limited only to enforcement of statutory IP rights; other types of unfair acts of competition can provide the basis for filing a Section 337 complaint. This article explores the history of such claims at the ITC, and the role that the ITC and Section 337 may play within the broader context of increasingly global business competition.

I. Advantages of Litigating at the ITC—Speed and Broad Global Reach

The ITC is first and foremost a trade forum tasked with ensuring international parity in trade. The ITC promotes a level playing field where companies with a U.S. presence are insulated from unfair business actions or surprises from competitors. The default remedy—an exclusion order that bars affected products from entry into the United States—is a source of powerful leverage in business disputes. Section 337 investigations at the ITC are extremely fast, often taking less than 18 months from filing to final decision and a potential exclusion order, and rarely suffer from delays that can affect a federal district court action. And for global disputes, the fact that the ITC need only exercise in rem jurisdiction over products imported into the U.S. is often a key consideration—the ITC does not need to obtain personal jurisdiction over a respondent, and may enter an exclusion order barring products from the U.S. market even where a respondent fails to show up to defend against a complaint.

II. Non-Patent, Non-Statutory IP Claims Under Section 337

Section 337 broadly authorizes the ITC to investigate all forms of "[u]nfair methods of competition and unfair acts in the importation of articles." These so-called "Section 337(a)(1)(A) claims" (or "nonstatutory Section 337 claims") make the ITC a potentially attractive forum for companies seeking creative solutions to defend their rights and gain a competitive edge in global business disputes.

The requirements to bring Section 337(a)(1)(A) claims differ in two significant ways from claims relating to statutory IP rights. In asserting an (a)(1)(A) claim, a complainant must plead four elements: (1) unfair competition or an unfair act by the respondent; (2) importation, sale for importation, or sale after importation into the United States of an article; (3) the existence of a "domestic industry"; and (4) injury to the domestic industry from the alleged unfair act. In contrast, to prove a statutory cause of action (such as patent infringement), the complainant must plead only three elements—there is no requirement to prove injury to a domestic industry, because such injury is presumed when a statutory IP right is infringed. However, the complainant asserting a statutory cause of action must also tie the domestic industry to the accused product or the intellectual property in question, which is not required for nonstatutory claims.

In recent years, the ITC has instituted investigations under Section 337(a)(1)(A) based in whole or in part on allegations of trade secret misappropriation, common law trademark and trade dress infringement, breach of contract, tortious interference with contractual relations, false advertising, passing off, violation of the Digital Millennium Copyright Act (DMCA), and violation of a state-law Uniform Deceptive Trade Practices Act.1

Trade secret misappropriation cases have been particularly popular in recent years. That growth in popularity was sparked by the Federal Circuit decision in TianRui Group Co. v. International Trade Commission, an appeal from a case at the ITC in which the complainant sought to prevent steel railroad wheels manufactured by TianRui in China from being imported into the United States. The complainant argued that the ITC had authority under Section 337 to enter an exclusion order because TianRui was manufacturing the wheels using a trade secret it stole from the complainant's licensee in China, even though the complainant itself no longer used the trade secret in the United States. In other words, although TianRui's misappropriation of trade secrets occurred wholly overseas and were not connected to the trade secret being used in the United States, the complainant argued that the nonstatutory prong of Section 337 nonetheless authorized the ITC to act. The ITC agreed, and its decision was upheld on appeal to the Federal Circuit. Since then, several other complaints asserting trade secret misappropriation have been successful at the ITC.2

Section 337(a)(1)(A) claims based on other unfair acts have also seen increased activity at the ITC. For example, the recent decision in Certain Woven Textile Fabrics involved a claim of false advertising. The complainant in that case alleged that the respondent was unfairly and falsely advertising the thread count of its bed sheets. After investigating, the ITC found a violation of Section 337 and, notably, entered a general exclusion order—meaning that not only would respondent's sheets be excluded, but all sheets that falsely advertised their thread count would also be excluded.3 Furthermore, Section 337 claims based on false designation of origin (mislabeling the country of origin of imported goods, often to avoid tariffs or duties) have also been on the rise. After being successful in the 1980s,4 only two such claims have been brought since 2008: Certain Footwear Products in 2014 and the currently-pending Certain Carbon & Alloy Steel Products. The latter case is particularly interesting, as it also involves the first ITC investigation based on an alleged antitrust violation in more than 25 years. There, the ITC is expected to rule soon regarding the specific showing that must be made to plead an injury for an antitrust claim under Section 337.

III. Other Potential Claims Under the ITC's Broad Section 337 Authority

Although cases asserting nonstatutory causes of action have been on the rise, they are still a small minority compared to other cases brought under Section 337. Yet the ITC's authority to investigate nonstatutory claims is viewed as very broad, as the permissive language of Section 337(a)(1)(A) illustrates. The legislative history of the Tariff Act and case law make clear that the ITC has the broad authority to prevent every type and form of unfair practice—thus, the breadth of Section 337(a)(1)(A) may make it ripe for bringing actions in additional contexts than those described above.

Some complainants have already started to push the envelope in the food and drug area, and the ITC has responded favorably. For example, in 2012, KV Pharmaceutical Company ("KV") filed a Section 337 complaint alleging that several compounding pharmacies were competing unfairly by creating a drug called 17P in violation of KV's exclusivity period granted by the Food and Drug Administration ("FDA").5 The complaint drew a significant amount of attention, with several third parties urging the ITC to decline to investigate the complaint on the grounds that this was a matter for FDA, not ITC, jurisdiction. The ITC ultimately issued a rare denial of institution, explaining that because the FDA had already declined to pursue enforcement against the named respondents, the complained-of conduct was not unlawful. Crucially, in a concurring memorandum, two commissioners explicitly stated "that they d[id] not reach the issue of whether properly pleaded claims based on the Food, Drug, and Cosmetic Act [("FDCA")] may be cognizable under section 337(a)(1)(A)." Since then, at least three complaints have been filed alleging unfair acts under Section 337 based at least in part on violations of provisions of the FDCA such as drug labeling regulations. The first, Certain Potassium Chloride Powder Products, Inv. No. 337-TA-1013, resulted in an ITC investigation, and subsequently, a quick settlement. A second complaint was filed in August 2017 in Certain Periodontal Laser Devices, alleging unfair acts of false advertising relating to non-FDA-cleared medical devices. That complaint resulted in the institution of Inv. No. 337-TA-1070, which is scheduled to go to trial in April 2018. The third, Certain Synthetically Produced, Predominantly EPA Omega-3 Products ("Omega-3 Products"), was j filed in late August, and a decision on institution is still pending—in fact, the complaint in Omega-3 Products has attracted significant briefing from both the parties and non-parties as to whether the ITC has jurisdiction over the complaint. The FDA even submitted a letter to the ITC, requesting that the ITC not institute the complaint.

These two latter cases are definitely ones to watch in this developing area of law; the ITC's institution in Omega-3 Products is due October 27.

Another potential use of the ITC could be to challenge violations of the Foreign Corrupt Practices Act ("FCPA"). Although the federal government has stepped up enforcement of the FCPA in recent years, there is no private cause of action under the FCPA—similar to the FDCA implicated in the investigations discussed above. This means that a company who "has played by the rules"—and who may be at a significant disadvantage to a competitor who has engaged in illegal acts abroad—nonetheless cannot seek recourse under the FCPA. However, if the illegal acts (such as bribery) can be tied to importation of products into the United States, then the ITC may offer a way for the injured competitor to seek redress. Indeed, the U.S. Customs and International Trade Guide considers "commercial bribery" to be a "[p]ossible Section 337 violation."6 Given the ITC's expansive mandate to enforce Section 337, under the appropriate circumstances, the Commission may institute an investigation in this context.

Parallel importation, sometimes known as the importation of "gray market" goods, is also a prime example of a situation where Section 337 may be applicable. Gray market goods are genuine (i.e., not counterfeit) products protected by copyrights, patents, or trademarks, which are legally bought outside of the United States (usually for a lower price) and then imported into the United States and sold without authorization from the intellectual property owner. In the past, such conduct may have given rise to claims of statutory-based infringement in district court. However, two recent Supreme Court decisions may have left copyright and patent owners without an ability to enforce their rights under the traditional statutory framework. The Court in Kirtsaeng v. John Wiley & Sons, Inc. held that under the first sale doctrine, an initial sale extinguishes all copyright rights as to that copyrighted work, even if that sale is made overseas. And in Impression Products, Inc. v. Lexmark International, Inc., the Court held that under the analogous patent exhaustion doctrine, patent rights are similarly "exhausted" once an initial sale is made, regardless of geographical considerations. Under these new precedents, an IP owner would likely be unable to bring suit in district court to address the parallel importation. However, the IP owner may be able to use a Section 337(a)(1)(A) claim to argue that the foreign buyer's conduct constitutes unfair competition or unfair acts justifying exclusion from the U.S. market.

Environmental law and fair labor standards practices are additional areas where Section 337 may be creatively utilized. Although no complaints have yet been brought under Section 337 in these contexts, there is no prohibition on such claims. Indeed, because the Commission's Section 337 authority is broad, if a company can tie its competitors' violations of environmental or fair labor laws to the importation of goods and show that those violations are giving its competitors an unfair advantage, it could succeed in excluding those goods from the domestic market. Notably, the ITC already has experience in investigating practices in the environmental context as they relate to international trade,7 and so could easily bring that expertise to Section 337 investigations.

Finally, the ITC may be a valuable forum to protect competition in the data privacy and security context. Hacking and data breaches are not new concepts to the ITC. In Certain Carbon & Alloy Steel Products, U.S. Steel alleged that its trade secrets were misappropriated in 2010 and 211 through Chinese government-backed "cyber attacks intended to aid China's state-owned steel enterprises." While these claims were subsequently dropped, U.S. Steel's complaint may provide a roadmap for other companies to assert claims of similar misconduct in the future. And unfair data privacy and security violations need not be tied solely to trade secrets misappropriation claims. Data privacy concerns and data breaches are generally investigated in other contexts by the Federal Trade Commission ("FTC"), and the FTC has found a multitude of unfair practices relating to data privacy and security, especially when data breaches have occurred. In the past, the ITC has looked to the FTC's definition of what constitutes an "unfair" act in resolving its own investigations under Section 337(a)(1)(A). Therefore, the ITC may potentially investigate a broad swath of actions in the data security arena.

Conclusion

In sum, although Section 337 litigation at the ITC has traditionally focused on statutory IP claims, the Commission's broad authority to investigate a wide range of unfair practices has lead to a growing number of complaints alleging nonstatutory claims. From trade secret misappropriation to false advertising claims, more and more companies are becoming increasingly creative in taking advantage of the ITC's unique position in regulating international trade. Yet the Commission may still be an underutilized forum. Section 337 could be ripe for use by companies in business disputes with competitors who refuse to play by the rules in a variety of arenas.

Footnotes

1 See, e.g., Certain Light-Emitting Diode Prods. & Components Thereof, ITC Inv. No. 337-TA-947, USITC Notice (Feb 12, 2015) (preliminary) (false advertising); Certain Footwear Prods., Inv. No. 337-TA-936, USITC Notice (Nov. 12, 2014) (preliminary) (false designation of origin, common law trademark infringement, and trademark dilution); Certain Elec. Fireplaces, Components, Manuals, Certain Processes for Mfg., Inv. No. 337-TA-791/826, USITC Pub. 4552 (May 1, 2013) (final) (breach of contract and tortious interference with contract relations); Certain Food Water Disposers, Inv. No. 337-TA-838, USITC Notice (Apr. 16, 2012) (preliminary) (common law trademark infringement, passing off, and trade dress infringement); Certain Prods. Advertised as Containing Creatine Ethyl Ester, Inv. No. 337-TA-679, USITC Notice (Apr. 1, 2010) (final) (false advertising under Lanham Act and Nebraska Uniform Deceptive Trade Practices Act); Certain Cast Steel Ry. Wheels, Processes for Mfg. or Relating to Same & Certain Prods. Containing Same, Inv. No. 337-TA-665, USITC Pub. 4265, at 1–2 (Feb. 16, 2010) (final) (trade secret misappropriation); Certain Bearings & Packaging Thereof, Inv. No. 337-TA-46, USITC Pub. 3736 (May 12, 2004) (final) (false designation of origin, trademark dilution, and false advertising under the Lanham Act, and passing off); Certain Universal Transmitters for Garage Door Openers, Inv. No. 337-TA-497, USITC Pub. 3670 (Nov. 24, 2003) (DMCA); see also Michael Buckler & Beau Jackson, Section 337 as a Force for "Good"? Exploring the Breadth of Unfair Methods of Competition and Unfair Acts Under § 337 of the Tariff Act of 1930, 23 Fed. Cir. B.J. 513 (2014).

2 See, e.g., Certain Crawler Cranes & Components Thereof, Inv. No. 337-TA-887, USITC Notice (Apr. 16, 2015) (final) (ten year limited exclusion order entered based in part on trade secret misappropriation); Certain Rubber Resins & Process for Mfg. Same, Inv. No. 337-TA-849, USITC Notice (Jan. 15, 2014) (final) (same); Certain Paper Shredders, Certain Processes for Mfg. or Relating to Same and Certain Prods. Containing Same & Certain Parts Thereof, Inv. No. 337-TA-863, USITC Notice (Dec. 20, 2013) (final) (case settled); Certain Robotic Toys & Components Thereof, Inv. No. 337-TA-869, USITC Notice (July 19, 2013) (final) (case settled).

3 Certain Woven Textile Fabrics & Prods. Containing Same, Inv. No. 337-TA-976, Comm'n Op., at 7 (Mar. 20, 2017)

4 See, e.g., Certain Alkaline Batteries, Inv. No. 337-TA-165, USITC Pub. 1616 (Nov. 5, 1984) (final); Coin-Operated Audio-Visual Games & Components Thereof, Inv. No. 337-TA-87, USITC Pub. 1160 (June 25, 1981) (final).

5 Certain Hydroxyprogesterone Caproate and Prods. Containing the Same, Docket No. 2919 (Oct. 23, 2012).

6 See U.S. Customs and International Trade Guide, § 21.02[3].

7 See e.g., United States International Trade Commission, Air and Noise Pollution Abatement Services: An Examination of U.S. and Foreign Markets, Inv. No. 332-461, USITC Pub. 3761 (Apr. 2005), https://usitc.gov/publications/docs/pubs/332/pub3761.pdf; Crystalline Silicon Photovoltaic Cells (Whether or Not Partially or Fully Assembled into Other Prods.), Inv. No. TA-201-75 (Aug. 15, 2017) (hearing held on whether imports of foreign solar parts is injuring domestic solar industry).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.