USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
7.3 Factors in Determining Infringement Trade Mark To determine whether there is infringement, a court must consider whether there is a likelihood of confusion. courts generally consider the fol - lowing factors in determining likelihood of con - fusion: • strength of the mark (conceptually and com - mercially); • 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. Copyright The Copyright Act states: “Anyone who violates any of the exclusive rights of the copyright own - er… 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 second element by proving that the alleged infringer had access to the work and that there are substantial similarities between the accused work and protectable elements of the copyright owner’s work. Further, because violation of “any of the exclusive rights of the copyright owner” constitutes infringement, courts have interpret - ed the second element to include unauthorised reproduction, distribution, performance, display
Copyright Copyright owners can bring claims in federal court or before the Copyright Claims Board (see 7.5 Lawsuit Procedures ). In certain circum - stances, the government can pursue criminal copyright claims against a wilful infringer (17 USC §§ 501 and 506). Copyright owners have several legal claims avail - able to them when pursuing civil infringement. These claims can vary based on the nature of the infringement and the specific rights involved but may include: • Direct infringement: Infringement by the defendant. • Contributory infringement: Infringement by a third party is imputed to a defendant “who, with knowledge 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 infringe - ment of a third party if the defendant: (1) “possess[es] the right and ability to supervise the infringing conduct” and (2) “ha[s] an obvi - ous and direct financial interest in the exploi - tation of copyrighted materials”. Generally, the elements of civil copyright infringe - ment 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 defendant’s access to the copyrighted work and substantial similarity between the accused work and the copyrighted work. See 7.3 Factors in Determining Infringement.
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