USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Copyright The Copyright Act states: “Anyone who violates any of the exclusive rights of the copyright owner… is an infringer…” “To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original” ( Feist v Rural Tel. , 499 U.S. 340, 361 (1991)). In general, the copyright owner can satisfy the sec - ond element by proving that the alleged infringer had access to the work and that there are substantial similarities between the accused work and protect - able elements of the copyright owner’s work. Further, because violation of “any of the exclusive rights of the copyright owner” constitutes infringement, courts have interpreted the second element to include unau - thorised reproduction, distribution, performance, dis - play or creation of derivative works of the copyright work. See 7.2 Legal Claims for Infringements Law- suits and Their Standards . 7.4 Prerequisites and Restrictions to Filing a Lawsuit Trade Mark To file a trade mark lawsuit, the plaintiff must have a good faith basis to believe that it has a valid mark and that the defendant’s use of the accused mark is likely to cause confusion. Filings made in bad faith or with - out a basis in law are impermissible and can expose the plaintiff to liability. Copyright While copyright protection exists automatically upon the creation of the work, in order to file a lawsuit for copyright infringement of a US work, the work must be registered with the USCO. Registration is not required for registration of a work first published outside the US, but registration of the work in the US prior to infringement occurring allows the copyright holder to seek statutory damages and attorneys’ fees. 7.5 Lawsuit Procedure Trade Mark Courts for trade mark infringement proceedings Federal courts have non-exclusive original jurisdic - tion of trade mark infringement and unfair competition cases under the Lanham Act. State courts can also
• Contributory infringement: Infringement by a third party is imputed to a defendant “who, with knowl - edge of the infringing activity, induces, causes or materially contributes to the infringing conduct of” the third party. • Vicarious infringement: The defendant can be held vicariously liable for copyright infringement of a third party if the defendant: (1) “possess[es] the right and ability to supervise the infringing con - duct” and (2) “ha[s] an obvious and direct financial interest in the exploitation of copyrighted materi - als”. Generally, the elements of civil copyright infringement are: • Ownership of a valid copyright. • Proof that the defendant violated one or more of the exclusive rights of copyright such as the right to copy, perform, make derivative works, distribute copies or display the work. • Copying can be proven by showing the defend - ant’s access to the copyrighted work and substan - tial similarity between the accused work and the copyrighted work. See 7.3 Factors in Determining Infringement . 7.3 Factors in Determining Infringement Trade Mark To determine whether there is infringement, a court must consider whether there is a likelihood of confu - sion. Courts generally consider the following factors in determining likelihood of confusion: • strength of the mark (conceptually and commer - cially); • similarity of the marks; • similarity of the goods or services; • similarity of the channels of trade; • sophistication and care of consumers; • likelihood of expansion into products of the other; • defendant’s intent; and • whether there is actual confusion. Not all factors may be relevant in a particular case. In some instances, only one factor may be dispositive.
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