The Troubling Role of Federal Registration in Proving Intellectual Property Crimes

Abstract

The government relies upon federal registration of intellectual property as prima facie evidence of valid rights when prosecuting trademark counterfeiting and copyright infringement offenses. The inference of validity arising from registration, well established in civil and administrative proceedings, raises constitutional concerns in the context of criminal proceedings, particularly where validity of the rights is an element of the offense. The federal statute establishing the crime of trademark counterfeiting requires proof of a federal registration but makes no reference to proof that the registration or underlying common law trademark rights are valid; whereas, the federal crime of copyright infringement is understood to require proof that a valid copyright exists but does not require proof of registration. This Article posits that Congress intended validity of intellectual property rights to be an element of both crimes and, against that stance, questions the government’s method of establishing that element with proof of a federal registration. To the extent the inference of validity arising from federal registration operates to relieve the government of its obligation to prove each element of the relevant offense beyond a reasonable doubt, use of this evidentiary tool violates the constitutional rights of criminal defendants. These rights are at risk unless proof of the basic fact - federal registration - renders existence of the inferred fact - valid intellectual property rights - more likely than not. The 'more likely than not' test hinges upon the rigor of the registration examination procedures in place in the Trademark and Copyright Offices, respectively. This Article outlines those procedures and notes the serious difficulty in drawing a conclusion of validity from the cursory nature of the copyright registration process and the less troubling, but still problematic, validity conclusion based on the trademark registration process. Defenses that challenge the validity inference trigger similar constitutional concerns if criminal defendants must carry the burden of persuasion, or in some instances, the burden of production, on such matters. With criminal sanctions on the line, courts should respect the limits of a federal registration as a proxy for proof that valid intellectual property rights exist in the first instance.