USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
7.7 Small Claims Trade Mark
not have authority to issue injunctions, make wilfulness findings or award monetary damages greater than USD30,000. See 7.7 Small Claims . Pre-filing costs for a copyright case are similar to those described above for trade marks. One additional pre-filing cost in copyright lawsuits is the need to first obtain a copyright registration (or, in certain cases, a refusal). However, works first published outside the US do not need to be registered prior to filing suit. It is sufficient to have merely filed a copyright application to file a case at the CCB, but if the pending application is later refused, the CCB will dismiss the claim without prejudice (mean - ing that the plaintiff can then file the claim in federal court). 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants For both trade marks and copyright, an accused can file a declaratory judgment action asking a court to declare that the accused conduct is not infringing or that the underlying rights are unen - forceable. To qualify for declaratory judgment, there must be a “real case and controversy” such that the accused infringer is at imminent risk of litigation. This usually means that one party has created a “reasonable apprehension” of liability in the other party such as by sending a letter explicitly threatening suit. The risk of an alleged infringer bringing a declar - atory action is a reason that in some circum - stances, infringement plaintiffs sue infringers first and send a demand letter after the fact. This allows the plaintiff to pick the court and avoid the risk of being forced to fight in an unfavour - able forum.
There is no special small claims court to handle small trade mark infringement disputes. Infringe - ment claims must be brought in court. Disputes solely related to the right to register a mark may be brought before the TTAB. Copyright As an alternative to litigation, the CCB has the authority to adjudicate certain copyright dis - putes seeking no more than USD30,000 in mon - etary damages, subject to an opportunity for the defendant to opt out of the proceeding. See 7.5 Lawsuit Procedure . 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 Decisions Trade Mark Some courts may give weight or consideration to a trade mark examiner’s decisions registering or rejecting the registration of a mark, but the decision is not conclusive or binding. With regard to opposition and/or cancellation decisions 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 Har- gis , 135 S. Ct. 1293 (2015)).
740 CHAMBERS.COM
Powered by FlippingBook