Modernization of Intellectual Property Laws Under the New Consolidated Appropriations Act, 2021

The act includes not only amendments to the Paycheck Protection Program (PPP), but also significant changes to copyright and trademark laws. Key provisions relating to the copyright and trademark law amendments are as follows:

COPYRIGHTS

The act includes the Protecting Lawful Streaming Act of 2020 (PLSA). The PLSA makes it a felony to engage in large-scale, for-profit, piracy of copyright material. The PLSA is intended to reduce unlawful streaming of copyrighted videos. The PLSA prohibits intentional conduct and provides for monetary penalties as well as imprisonment.

The act also includes the Copyright Alternative in Small-Claims Enforcement Act of 2020, or the CASE Act of 2020. The CASE Act of 2020 essentially creates a small claims court system within the United States Copyright Office, whereby copyright owners may file an action for copyright infringement and seek damages under $30,000 against alleged infringers. The process is voluntary. If a copyright owner files an action, a respondent may opt-out if it does not wish to have the claim decided by the Copyright Claims Board. The case would then be heard in court. If a respondent does not opt-out, the Copyright Claims Board will adjudicate the matter.

The decisions of the Copyright Claims Board are similar to arbitration awards, where the decisions may be appealed to and/or confirmed by federal courts but may only be overturned or vacated in exceptional cases. Exceptional cases include decisions based on fraud, corruption, misrepresentation or if the Copyright Claims Board exceeded its authority.

TRADEMARKS

The act includes the Trademark Modernization Act (TMA), which provides much-needed updates to existing trademark laws. The TMA will become effective one year after it is signed into law.

The TMA contains significant amendments to the Lanham Act in at least the following key areas:

• The TMA modernizes trademark examination procedures by, among other things, giving the US Patent & Trademark Office (PTO) discretion in setting deadlines and response times and permitting third parties to submit evidence to the PTO during the trademark prosecution phase to show that an applicant’s mark is not entitled to registration.
• The TMA provides a process for “decluttering” or removing deadwood trademark registrations (i.e., trademarks that are not in use) from the PTO through two new mechanisms: (i) an ex parte reexamination process, which permits third parties to challenge registrations for non-use through the PTO’s reexamination of the accuracy of the registrant’s statements of use; and (ii) an ex parte expungement, which allows third parties to challenge trademarks that have never been used in commerce.
• The TMA confirms the rebuttable presumption of irreparable harm. Typically, in trademark infringement litigation, trademark owners seek injunctive relief to enjoin, or stop, infringers from using the owner’s trademark. Injunctive relief requires a showing that the trademark owner will be irreparably harmed if the injunction is not entered. The TMA provides a statutory rebuttable presumption of irreparable harm if the likelihood of confusion between the marks is shown. This presumption effectively makes it easier for trademark owners to obtain injunctive relief in trademark infringement matters by lowering their evidentiary burden.

In short, the act’s changes to copyright and trademark laws provide more ammunition to protect intellectual property rights and stop infringement.

Author Lisa Lori is a partner in the litigation department at Klehr Harrison.