USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
hear trade mark and unfair competition cases. Most trade mark cases are heard in federal court. Pre-filing costs The plaintiff must conduct pre-filing investigations to assess the viability of its claim. This investigation may include determining how and where the defend - ant is using the accused mark, whether there is actual confusion and whether the accused conduct appears wilful. Trade mark searches are sometimes conducted to assess how diluted the subject mark may be and determine whether the defendant has any trade mark registrations. Most importantly, the plaintiff will want to be sure that it has priority and that the defendant does not have a basis to counterclaim. In most cases, the plaintiff will also send a demand letter before filing suit. The expense will vary from case to case. Foreign trade mark owners A foreign trade mark owner may file an infringement claim in the US provided the mark in question is in use or registered in the US. A foreign trade mark registra - tion is insufficient to bring suit. Copyright Except for very limited exceptions, claims for copy - right infringement are brought in federal court. An indi - vidual can proceed pro se, but a corporate entity must be represented by an attorney. Copyright infringement claims asserted in federal court can also seek other remedies including monetary damages, impoundment or destruction of infringing items, and attorneys’ fees, where applicable. Copyright infringement can also be adjudicated by the Copyright Claims Board (CCB). The CCB is a three- member administrative tribunal within the USCO that represents a more efficient, less formal option by which to resolve certain copyright disputes. Parties do not need to be represented by an attorney. CCB decisions are binding on the parties, they cannot be re-litigated, and appeals are limited. The CCB also does not have authority to issue injunctions, make wil - fulness findings or award monetary damages greater than USD30,000. See 7.7 Small Claims .
Pre-filing costs for a copyright case are similar to those described above for trade marks. One additional pre-filing cost in copyright lawsuits is the need to first obtain a copyright registration (or, in certain cases, a refusal). However, works first published outside the US do not need to be registered prior to filing suit. It is sufficient to have merely filed a copyright appli - cation to file a case at the CCB, but if the pending application is later refused, the CCB will dismiss the claim without prejudice (meaning that the plaintiff can then file the claim in federal court). 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants For both trade marks and copyright, an accused can file a declaratory judgment action asking a court to declare that the accused conduct is not infringing or that the underlying rights are unenforceable. To qualify for declaratory judgment, there must be a “real case and controversy” such that the accused infringer is at imminent risk of litigation. This usually means that one party has created a “reasonable apprehension” of liability in the other party such as by sending a letter explicitly threatening suit. The risk of an alleged infringer bringing a declara - tory action is a reason that in some circumstances, infringement plaintiffs sue infringers first and send a demand letter after the fact. This allows the plaintiff to pick the court and avoid the risk of being forced to fight in an unfavourable forum. 7.7 Small Claims Trade Mark There is no special small claims court to handle small trade mark infringement disputes. Infringement claims must be brought in court. Disputes solely relating to the right to register a mark may be brought before
the TTAB. Copyright
As an alternative to litigation, the CCB has the author - ity to adjudicate certain copyright disputes seeking no more than USD30,000 in monetary damages, subject to an opportunity for the defendant to opt out of the proceeding. See 7.5 Lawsuit Procedure .
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