Year-End IP Legislation

Shortly before midnight on December 21, 2020, Congress passed a 1.4 trillion omnibus spending package in order to avoid a federal government shut down. Included in the 5,593 page legislation were significant alterations to the intellectual property landscape.

Trademarks: 2020 Trademark Modernization Act

The Presumption of Irreparable Harm. A Lanham Act plaintiff seeking an injunction now has a rebuttable presumption of irreparable harm upon a finding of a violation or a likelihood of success on the merits, depending on what type of injunction is being sought. Prior to this amendment, brand owners were required to present evidence of irreparable harm which can be difficult at the preliminary injunction stage.

Fraudulent Trademarks. Through various amendments, the Act seeks to address fraudulent trademark registrations with updates to the examination process and ex parte proceedings. First, it allows for third parties to submit evidence during the examination of a mark regarding its registerability. Second, the Act also provides a new ground for cancellation and ex parte expungement where a mark has never been used in commerce on or in connection with some or all of the goods or services cited in the registration.

Copyright Law: The CASE Act

For copyright owners, Congress passed the Copyright Alternative in Small-Claims Enforcement (CASE) Act. This Act establishes a Copyright Claims Board within the Copyright Office. The Board will be staffed by “claims officers” that have the authority to adjudicate copyright infringement claims under $30,000.

Also included in Monday’s legislation was the Protecting Lawful Streaming Act. The Act would give the Department of Justice the authority to charge commercial, for-profit streaming services with felony copyright infringement. Prosecution under the Act includes fines and imprisonment up to 10 years if the infringement is found to be willful. The law does not apply to individuals as casual internet users.