In an eleventh-hour deal struck just before for the winter holidays, both houses of Congress passed three new intellectual property bills as part of its COVID-19 relief and budgetary legislation. Two of these were bills that copyright and trademark owners have long been pushing for, and another slipped in under the radar to provide additional relief against infringing online streaming. All three represent a significant gift to IP owners. Below is a high-level summary of all three acts, which have now been signed by President Donald Trump.
Copyright Alternative in Small-Claims Enforcement Act
First is the Copyright Alternative in Small-Claims Enforcement (CASE) Act (page 77). This requires the U.S. Copyright Office to establish (within the next year) the Copyright Claims Board, a new, voluntary tribunal. Its officers will have the power to adjudicate claims and counterclaims raising copyright infringement disputes, and disputes involving fraudulent or improper DMCA notices and counter-notifications under Section 512 of the Copyright Act. Damages for infringement will be capped at $15,000 per work and $30,000 per case, with no award of attorneys’ fees or costs (except for bad-faith litigation conduct). Defendants are free to opt out of this procedure in favor of traditional federal litigation, but the low caps on damages—as opposed to the much higher awards available from courts—are designed to encourage their participation. The streamlined procedure also significantly lowers the monetary barriers that many copyright owners currently face in enforcing their rights.
Trademark Modernization Act
Second is the Trademark Modernization Act (page 139). It creates new opportunities for third parties to submit evidence of fraud and nonuse in order to purge the registry of invalid or abandoned marks. The act also codifies the rebuttable presumption of harm in trademark infringement cases—a standard that used to be commonplace before the Supreme Court decided against. This act reverses the effect of the court’s decision and makes it easier for trademark owners to obtain preliminary injunctions against infringers.
Criminal Provision for Streaming Services
Third is a criminal provision (page 72) that makes it a felony for streaming services that provide unauthorized access to copyrighted material, where the service is primarily designed to publicly perform copyrighted works for financial gain without permission and has no other "commercially significant purpose." This adds streaming to the types of copyright infringement that can already rise to the level of criminal conduct.
Warner’s Intellectual Property Enforcement and Litigation Practice Group is on top of these changes (and in some cases was involved in helping to lobby for them). Our attorneys litigate copyright and trademark cases day in and day out, and can advise you on how to update your IP enforcement strategy in light of these significant legislative changes. If you have questions regarding these changes, please contact Mary Bonnema, Scott Keller, James Scott, Amber Underhill, Brian Wassom or a member of Warner’s Intellectual Property Enforcement and Litigation Practice Group.
