BEVERLY A. BERNEMAN

Partner


Two Important Advances In Intellectual Property Law Have Been Enacted

First, the Copyright Alternative in Small Claims Enforcement Act (CASE Act) creates a system for hearing copyright infringement claims that fall under $30,000.00 in damages. A three member board will first determine if the plaintiff has a case and, if so, allow it proceed. The proceedings will have expedited discovery and will be adjudicated based on written submissions only. Participation is voluntary which means that a party can opt out. The CASE Act is designed to provide a less costly and time consuming way to address copyright infringement. The Copyright Office may take about a year to set up the hearing board and its procedures.

Second, the Trademark Modernization Act amends the federal trademark statute (the Lanham Act) to reduce the number of trademarks that have been registered but are not actually used in commerce. The Act allows third parties or the US Trademark Office to initiate expungement or reexamination proceedings to test whether a trademark is actually being used in commerce. The Act also provides for a new ground for cancellation when a mark is not used for all identified goods and services. There will also be some changes to the examining procedure.

These changes are intended to create cost efficient flexibility in both copyright enforcement and trademark portfolio development. We highly recommend that you review your Intellectual Property portfolio to see if any works of authorship or trademarks may be impacted by these changes.

Please contact Beverly A. Berneman (baberneman@gct.law) if you have any questions.