Stimulus Package Includes New Trademark and Copyright Laws

Tuesday, December 22, 2020

In a yr too typically stuffed with unexpected developments of each variety, a last shock for a lot of who weren’t paying shut consideration has emerged from December’s marathon stimulus and funds negotiations. This week, Congress included a trio of notable and hotly debated mental property measures in its multi-trillion-dollar spending and aid bundle. These payments, if signed into regulation as anticipated, might basically alter the style through which mental property homeowners shield and implement their rights.

The Trademark Modernization Act of 2020, amongst different technical modifications to the Lanham Act:

Permits third events to submit proof to the USA Patent and Trademark Workplace (USPTO) throughout the examination section of an utility, underneath sure circumstances, to encourage the USPTO to refuse registration on the bottom that claims of use within the utility are inaccurate;

Permits third events to submit proof in so-called ex parte re-examination and expungement proceedings, in search of to cancel registrations (in entire or partially) for non-use; and

Gives plaintiffs in search of an injunction underneath the Lanham Act with a statutory rebuttable presumption of irreparable hurt, thus considerably lessening the evidentiary burden. When thought of in mild of the unfold of prevailing occasion payment shifting awards in Lanham Act circumstances, and the potential for better entry to revenue awards as a result of Supreme Courtroom’s current Romag choice, Lanham Act plaintiffs could also be extra inspired to litigate their claims.

The CASE Act creates a voluntary, quasi-judicial tribunal that may resolve copyright infringement claims exterior of federal court docket the place the rights proprietor seeks $30,000 or much less in damages — $15,000 per work, $30,000 per matter, with every occasion to pay their very own lawyer charges. Supporters argue that the Act will make it simpler for unbiased artists to implement their rights and fight piracy, whereas critics concern that it could possibly be weaponized by copyright trolls seeking to extract settlement {dollars} from unsophisticated targets for commonplace on-line conduct.

New language criminalizes the operation of a web site that’s “primarily” engaged in streaming unlicensed or pirated copyrighted works, probably permitting the Justice Division to cost companies with felonies.

Whereas the complete influence of those new provisions will stay unsure for months as guidelines and laws implementing these new processes are promulgated by the Copyright Workplace and the USPTO, a few of the influence can be speedy, particularly for these involved with emblems and branding. First, mark homeowners want to contemplate whether or not their very own portfolio of trademark registrations (or a competitor’s portfolio) is probably a goal for these new cancellation instruments. Second, companies and practitioners alike have to suppose by way of how these new guidelines might influence their efforts to look and clear new marks, and whether or not marks uncovered in watch packages must be extra aggressively challenged at earlier phases. Third, anybody contemplating an motion alleging trademark infringement or violations of Part 43(a) of the Lanham Act ought to take into account how a brand new presumption of irreparable hurt can alter their broader enforcement technique if injunctions are certainly extra attainable.

Within the months to return, you possibly can anticipate that we’ll offer you further insights and apply ideas addressing these new developments. Within the meantime, whereas the arrival of a brand new yr typically conjures up a reassessment of methods and objectives, these necessary modifications to important mental property statutes have assured that this January would require an excellent better stage of planning for firms and practitioners alike.