USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
The CCB has certain advantages over federal court, including that the procedures are more streamlined without the burdens of extensive discovery, lengthy motion practice and trial. The CCB has procedural limitations that make it unsuited for complex cases. 7.8 Effect of Trade Mark and Copyright Office Some courts may give weight or consideration to a trade mark examiner’s decisions registering or reject - ing the registration of a mark, but the decision is not conclusive or binding. Decisions Trade Mark With regard to opposition and/or cancellation deci - sions by the TTAB, there is a risk that the decision may be binding in a civil case: “When an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim” ( B&B Hardware, Inc. v Hargis , 135 S. Ct. 1293 (2015)). Copyright See 8.2 Effect of Registration . 7.9 Counterfeiting and Bootlegging Trade Mark Counterfeiting A counterfeit mark is a “spurious mark which is iden - tical with, or substantially indistinguishable from, a registered mark” (15 USC § 1127). There are special remedies for litigating counterfeit marks. For example, a court may, upon an ex par - te application, order the seizure of counterfeits, the means of manufacture, and records relating to the vio - lation. Where ex parte seizure is sought, the movant must give notice to the US Attorney’s Office that sei - zure will not prejudice a criminal prosecution. In some cases, such as those involving knowing coun - terfeiting of a registered mark, the court can award the plaintiff profits earned by the infringer or the dam - ages suffered by the plaintiff, trebled damages, and attorneys’ fees.
As an alternative, plaintiffs may elect statutory dam - ages in the amount of USD1,000 to USD200,000 per mark per type of good or service. If the counterfeiter is found to have acted wilfully, statutory damages may be increased to up to USD2 million per type of goods. Pre-judgment interest can be awarded for counterfeit - ing under 15 USC § 1117 (b). In addition to the enhanced damages available for trade mark counterfeiting, a successful plaintiff may seek an award of attorneys’ fees and the full range of permanent injunctive remedies including the impound - ing and destruction of counterfeits, the means of mak - ing them, and related records. Counterfeiting is also subject to severe criminal pen - alties, including fines and incarceration. Criminal counterfeiting prosecutions must be brought by the government. Copyright Copyright “counterfeiting” generally concerns the unauthorised reproduction, distribution or sale of copyrighted works. Copyright counterfeiting is primar - ily addressed under 17 USC §§ 501 and 506 and 18 USC §§ 2323, 2318 and 2319 (regarding criminal acts of counterfeiting such as bootleg recordings of live musical performances and the unauthorised recording of films in movie theatres). Civil remedies available for these copyright violations include: • Injunctive relief, such as the destruction of all infringing copies, materials used to reproduce the copyright, and records documenting the infringing conduct. • Actual damages, that is to say, damages directly related to the infringement, or any profits attribut - able to the infringement. In lieu of actual damages, an owner may elect statutory damages not less than USD750 or more than USD30,000 as the court deems just. For wilful infringement, there is discre - tion to increase the statutory damages to not more than USD150,000. • Attorneys’ fees to the prevailing party.
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