• Paul Peter Nicolai

NEW COPYRIGHT AND TRADEMARK LAWS PASSED

Updated: Feb 9

On December 21, Congress passed, and the President later signed, a spending bill that folded in several intellectual property provisions that expand the rights of intellectual property owners.


These provisions are the Copyright Alternative in Small-Claims Enforce (CASE) Act, the Trademark Modernization Act (TMA), and a law to make certain illegal streaming a felony.


The CASE Act creates a new administrative tribunal in the Copyright Office where individuals can bring infringement claims for limited damages adjudicated by experts. Successful copyright holders could be awarded up to $15,000 per work infringed and $30,000 total. Critics say the tribunal potentially would subject defendants to penalties for engaging in ordinary online behavior.


The TMA provision allows third parties to request the Patent and Trademark Office to reject trademark applications from “trademark trolls” (entities who apply for registrations for marks they never plan to use) and force them to present evidence in new re-examination and expungement proceedings. The law also affords plaintiff trademark owners a rebuttable presumption of irreparable harm in infringement actions, making it easier to get an injunction. The effective date is one year after enactment.


Lastly, the law makes it a felony for illegal commercial streaming of publicly performed works punishable by a fine and years in prison. The law applies only to organizations and piracy services, not individuals, non-commercial activities, or good-faith business disputes.


These changes will be implemented through rules and regulations over the next year. Copyright owners will want to check the efficacy of the new “small claims” procedure. Trademark owners will need to re-assess enforcement, clearance, and maintenance procedures in light of these new provisions.