USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Copyright violations of this type are also subject to criminal penalties. A person may be found criminally liable for copyright counterfeiting and subject to harsh fines and imprisonment. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Trade Mark The US does not have any specialised courts for adju - dicating trade mark disputes (outside of the TTAB relating to registration issues). Copyright There are no special procedures if a plaintiff seeks copyright relief in federal court. However, the CCB is available for small claims. Jury Trial The right to a jury trial is enshrined in the US Constitu - tion. A party must request a jury trial. If no party makes this request, the judge will act as the fact finder and A trade mark registration is prima facie evidence of the validity of the mark and the owner’s right to use the mark in commerce nationwide. Provided there has been no final decision adverse to the owner’s rights in the registration and after five years of continuous use, a registrant may file a decla - ration of incontestability. After incontestability, the reg - istration is conclusive evidence of validity, ownership and nationwide right to use, subject only to certain defences and limitations (15 USC § 1065). See also 5.1 Timeframes for Filing an Opposition or Cancellation and 5.2 Legal Grounds for Filing an Opposition or Cancellation . Copyright A copyright registration (or refusal) is necessary for the owner of a US work to sue in court. decision maker in a bench trial. 8.2 Effect of Registration Trade Mark
Timely registration provides additional benefits. A registration with an effective date “before or within five years after first publication of the work [is] prima facie evidence of the validity of the copyright and of the facts stated in the certificate” (17 USC § 410 (c)). Judges have discretion regarding the evidentiary weight given to registrations with effective dates more than five years after first publication. A party may also be eligible for statutory damages and attorneys’ fees if it prevails in its copyright infringement claim and the registration was issued before the infringement com - menced or was otherwise timely filed. 8.3 Costs of Litigating Infringement Actions The cost of litigating an infringement action can vary significantly depending on the complexity of the mat - ter. Fees can vary wildly depending on the vigour with which the case is fought, the complexity of discov - ery, e-discovery issues, and whether expert testimony is needed. US litigation is expensive, and the fact- intensive nature of trade mark and copyright litigation means that the proceedings are not often resolved through a motion to dismiss or summary judgment. These cases can take years to be decided at trial. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement Defences to a trade mark infringement case include the following. Invalidity • The mark is invalid or unenforceable because it is (i) generic or (ii) descriptive without secondary meaning. • A non-traditional mark such as product packaging, sound, colour, etc is not inherently distinctive and lacks secondary meaning. • Product features that are functional – whether aes - thetic or utilitarian – cannot be protected as trade marks. A feature is functional if it is essential to the product’s use or purpose, or if it has an impact on the product’s cost or quality or puts competitors at a significant non-reputational disadvantage.
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