USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Trade Mark The US does not have any specialised courts for adjudicating trade mark disputes (outside of the TTAB relating to registration issues). Copyright There are no special procedures if a plaintiff seeks copyright relief in federal court. However, the CCB is available for small claims. Jury Trial The right to a jury trial is enshrined in the US Constitution. A party must request a jury trial. If no party makes this request, the judge will act as the fact finder and decision maker in a bench trial. 8.2 Effect of Registration Trade Mark A trade mark registration is prima facie, evidence of the validity of the mark and the owner’s right to use the mark in commerce nationwide. Provided there has been no final decision adverse to the owner’s rights in the registration and after five years of continuous use, a registrant may file a declaration of incontestability. After incontest - ability, the registration is conclusive evidence of validity, ownership and nationwide right to use, subject only to certain defences and limitations (15 USC § 1065). See also 5.1 Timeframes for Filing an Opposi- tion or Cancellation and 5.2 Legal Grounds for Filing an Opposition or Cancellation .
Copyright A copyright registration (or refusal) is necessary for the owner of a US work to sue in court. Timely registration provides additional benefits. A registration with an effective date “before or within five years after first publication of the work [is] prima facie, evidence of the validity of the copyright and of the facts stated in the certifi - cate” (17 USC § 410(c)). Judges have discretion regarding the evidentiary weight given to regis - trations with effective dates more than five years after first publication. A party may also be eligi - ble for statutory damages and attorneys’ fees if it prevails in its copyright infringement claim and the registration was issued before the infringe - ment commenced or was otherwise timely filed. 8.3 Costs of Litigating Infringement Actions The cost of litigating an infringement action can vary significantly depending on the complexity of the matter. Fees can vary wildly depending on the vigour with which the case is fought, the complexity of discovery, e-discovery issues, and whether expert testimony is needed. US litiga - tion is expensive, and the fact-intensive nature of trade mark and copyright litigation means that the proceedings are not often resolved through a motion to dismiss or summary judgment. These cases can take years to be decided at trial. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement Defences to a trade mark infringement case include:
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