USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Copyright See 8.2 Effect of Registration . 7.9 Counterfeiting and Bootlegging Trade Mark Counterfeiting A counterfeit mark is a “spurious mark which is identical with, or substantially indistinguishable from, a registered mark” (15 USC § 1127). There are special remedies for litigating counter - feit marks. For example, a court may, upon an ex parte application, order the seizure of coun - terfeits, the means of manufacture, and records relating to the violation. Where ex parte seizure is sought, the movant must give notice to the US Attorney’s Office that seizure will not prejudice a criminal prosecution. In some cases, such as those involving knowing counterfeiting of a registered mark, the court can award the plaintiff profits earned by the infringer or the damages suffered by the plaintiff, trebled damages, and attorneys’ fees. As an alternative, plaintiffs may elect statu - tory damages in the amount of USD1,000 to USD200,000 per mark per type of good or ser - vice. If the counterfeiter is found to have acted wilfully, statutory damages may be increased to up to USD2 million per type of goods. Pre-judgment interest can be awarded for coun - terfeiting under 15 USC § 1117(b). In addition to the enhanced damages available for trade mark counterfeiting, a successful plain - tiff may seek an award of attorneys’ fees and the full range of permanent injunctive remedies including the impounding and destruction of counterfeits, the means of making them, and related records.
Counterfeiting is also subject to severe crimi - nal penalties, including fines and incarceration. Criminal counterfeiting prosecutions must be brought by the government. Copyright Copyright “counterfeiting” generally concerns the unauthorised reproduction, distribution or sale of copyrighted works. Copyright counter - feiting is primarily addressed under 17 USC §§ 501 and 506 and 18 USC §§ 2323, 2318 and 2319 (regarding criminal acts of counterfeiting such as bootleg, recordings of live musical per - formances and the unauthorised recording of films in movie, theatres). Civil remedies available for these copyright vio - lations include: • Injunctive relief, such as the destruction of all infringing copies, materials used to reproduce the copyright, and records documenting the infringing conduct. • Actual damages, that is to say, damages directly related to the infringement, or any profits attributable to the infringement. In lieu of actual damages, an owner may elect statu - tory damages not less than USD750 or more than USD30,000 as the court deems just. For wilful infringement, there is discretion to increase the statutory damages to not more than USD150,000. • Attorneys’ fees to the prevailing party. Copyright violations of this type are also sub - ject to criminal penalties. A person may be found criminally liable for copyright counterfeiting and subject to harsh fines and imprisonment.
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