USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
or creation of derivative works of the copyright work. See 7.2 Legal Claims for Infringements Lawsuits and Their Standards . 7.4 Prerequisites and Restrictions to Filing a Lawsuit Trade Mark To file a trade mark lawsuit, the plaintiff must have a good faith basis to believe that it has a valid mark and that the defendant’s use of the accused mark is likely to cause confusion. Fil - ings made in bad faith or without a basis in law are impermissible and can expose the plaintiff While copyright protection exists automatically upon the creation of the work, in order to file a lawsuit for copyright infringement of a US work, the work must be registered with the USCO. Registration is not required for registration of a work first published outside the US, but registra - tion of the work in the US prior to infringement occurring allows the copyright holder to seek statutory damages and attorneys’ fees. 7.5 Lawsuit Procedure Trade Mark Courts for Trade Mark Infringement Proceedings to liability. Copyright Federal courts have non-exclusive original juris - diction of trade mark infringement and unfair competition cases under the Lanham Act. State courts can also hear trade mark and unfair com - petition cases. Most trade mark cases are heard
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 deter - mine 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 counter - claim. 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 infringe - ment claim in the US provided the mark in ques - tion is in use or registered in the US. A foreign trade mark registration is insufficient to bring suit. Copyright Except for very limited exceptions, claims for copyright infringement are brought in federal court. An individual 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 with- in 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-litigat - ed, and appeals are limited. The CCB also does
in federal court. Pre-Filing Costs
The plaintiff must conduct pre-filing investiga - tions to assess the viability of its claim. This investigation may include determining how and where the defendant is using the accused mark,
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