Important Changes to Copyright and Trademark Law

March 15, 2021

Beverly A. Berneman

On December 27, 2020, two significant changes to Intellectual Property were signed into law as part of HR 133, Consolidated Appropriations Act 2021. The following are highlights of the new laws.

Copyright Law Changes

First, the new law enacted the Copyright Alternative in Small Claims Enforcement Act (CASE Act). The CASE Act establishes a small claims court for copyright infringement cases. The law requires the Copyright Office to establish a Copyright Claims Board within one year. The Board will become a forum for hearing copyright infringement claims that fall under $30,000.00 in damages. The 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. Plaintiffs seeking damages under $5,000.00 may request a hearing before a single Board member. The CASE Act is designed to provide a less costly and time-consuming way to address copyright infringement in smaller cases.

Second, the new law gives the Department of Justice authority to bring felony charges against digital transmission services that are designed to stream copyrighted works without permission and have no other commercially significant purpose. Individual users are excluded from criminal prosecution.

Trademark Law Changes. Trademark Modernization Act (TMA) creates many new United States Patent and Trademark Office (USPTO) procedures.

First, the TMA establishes a third party’s ability to submit evidence disputing the registerability of a trademark during the examination period. Second, an expungement request allows a party to bring an action to remove some or all of the goods and services from a registered trademark that the registrant never used in commerce. This request has to be brought between three and ten years after the registration date. Third, a reexamination request allows a party to seek removal of some or all goods or services that were not used in commerce on or before a particular date. Reexamination will be a tool to reduce the reach of a registered mark by disputing questionable specimens of use. This request must be made within the first five years after registration. The Director of Trademarks will determine if these requests state a prima facie case and then will institute a proceeding to adjudicate the request. According to the USPTO, the new procedures are designed to strengthen the accuracy and integrity of the federal trademark register and help U.S. businesses make better informed marketing and branding decisions regarding their trademarks.

Second, in order to resolve inconsistencies in the courts’ analysis in injunction proceedings, TMA provides that a trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of confusion on the merits.

Third, TMA also made some changes to the procedure for examining trademark applications. Originally, an applicant would automatically have six months to respond to an Office Action. TMA permits the USPTO to set a shorter period of time for a response but not less than 60 days. This change will require extra diligence on the part of an applicant in responding to Office Actions.

Conclusion

These changes are intended to create cost efficient flexibility in both copyright enforcement and trademark portfolio development. Review of intellectual property portfolios is recommended to see if any works of authorship or trademarks may be impacted by these changes.