USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Priority • The defendant was using the accused trade mark before the plaintiff in the relevant field of use and/ or territory. • If the defendant has priority in a common law mark, that priority may be local and may only insulate it in the trading area where it had priority. Abandonment • The plaintiff has not used the asserted mark for some time and lacks an intention to resume use. Intent not to resume may be inferred from circum - stances. Non-use for three consecutive years is prima facie evidence of abandonment. This can be a complete bar to liability. Fair Use • Classic fair use: The defendant used the plaintiff’s mark in its plain English meaning or in some other descriptive manner. • Nominative fair use: The defendant used the mark to fairly and non-confusingly to refer to the plaintiff or the plaintiff’s product. Parody • The defendant used the trade mark in a parodical way to comment on the owner of the trade mark or the product in a manner such that no consumer could reasonably be confused. Parody is a subcat - egory of the fair use exception. In Jack Daniel’s v VIP , 599 US 140 (2023), the Supreme Court made clear that parody does not protect the junior user when it uses the mark as a source identifier, even if the mark is humorous. Unclean Hands • Unclean hands is a defence that considers the plaintiff’s bad faith, wrongful conduct, etc. It is usu - ally used to reduce damages rather than as a com - plete defence; however, it can act as a complete defence to liability. Examples of unclean hands include fraudulent filings to secure registration. Violation of Competition Laws/Trade Mark Misuse • Antitrust violations may fall under the unclean hands defence and generally require that the plain - tiff is misusing the trade mark beyond the scope if
its claimed rights to create a monopoly. This is not often used. Delay • Laches is a defence to infringement when the plaintiff has waited unjustifiably long to sue, and the defendant would be prejudiced by the delay. Courts will often look to an analogous state law’s statute of limitations, as the federal Lanham Act does not provide for a statute of limitations. • Laches is often a bar to monetary damages, but depending on the case and court, it may or may not be a sufficient defence to an injunction, given the focus of trade mark law on protecting consum - ers. Acquiescence • Acquiescence is available as a defence when the plaintiff undertakes some affirmative conduct that assures the defendant that the plaintiff has no objection to the use and then delays in making objection to the defendant’s mark. Estoppel • The plaintiff engaged in intentionally misleading representations concerning its abstention from suit, and the alleged infringer detrimentally relies on the copyright owner’s deception and is prejudiced. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) For both copyright and trade mark, there is a “fair use” exception that allows limited use of a copyrighted or trademarked material without the owner’s consent. See 9.1 Defences to Trade Mark Infringement for the discussion of trade mark parody and fair use. Section 107 of the Copyright Act codifies “fair use”, allowing certain uses of copyrighted material without permission. There are no uses that are per se “fair”, but the Copyright Act expressly recognises that unau - thorised use for purposes such as criticism, comment, news reporting, teaching, scholarship or research may qualify as fair. Determining fair use requires assess - ment of at least these non-exhaustive factors: • Purpose and character of the use, including wheth - er use is commercial or is for nonprofit educational
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