Month: January 2021

What You Need to Know About the CASE Act

Posted on by Gavin Law Offices

The CASE Act of 2020 establishes a new Copyright Claims Board (“CCB”) to hear infringement, noninfringement and misrepresentation claims which meet certain criteria.  Generally, the Act provides a less expensive method for harmed parties to assert copyright claims short of filing in federal court.

Remedies available include actual damages and profits, statutory damages and injunctive relief.  Works timely registered with the Copyright Office are eligible for an award of statutory damages of up to $15,000 for each infringed work.  Statutory damages for timely registered works may not exceed $30,000 in any single proceeding.  Works considered not timely registered are eligible for statutory damages of $7,500 per infringed work, not to exceed, however, $15,000 in any single proceeding.  For both timely and not timely registered works, statutory awards limitations are exclusive of attorneys’ fees and costs.

Claimants must file an application to register the allegedly infringed work prior to filing with the CCB. Although issuance of a copyright registration certificate is NOT required to initially file, registration IS required for damages to be awarded.

 

Why does it matter?

Lower value small claims may now be asserted more easily.  For those seeking small licensing fees for use of their works or wishing to represent themselves, the CASE Act will help.

The CCB will be staffed with attorneys who may be available to help claimants evaluate or state their claim.  This may allow certain claimants to file on their own without hiring a personal attorney; it should be noted, however, that CCB staff attorneys may or may not provide more than general guidance to the claimant and may or may not be available when needed.

Defendants/Respondents in CCB claims have the right to opt out of the proceedings (within 60 days) and to instead have the claim heard in federal court.  If so, the claimant will have wasted time filing with the CCB and will still need to move forward in federal court, which will benefit large corporate defendants.

 

What to do?

  1. Get Registered. To take full advantage of the CCB statutory damages awards, copyrighted works need to be timely registered.
  2. Audit Content and Contracts. Don’t be an easy target for claims, meaning, review content and related contracts to ensure proper licensing or originality of content and add a layer of indemnity to contracts before small claimants can take advantage of new easier filing of copyright complaints against you.

 

 

– Pam Gavin & Elizabeth Sewell

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Will Trademark Holders Lose Rights in the UK?

Posted on by Gavin Law Offices

By Elionas2 from Pixabay

While the United Kingdom formally withdrew from the European Union early last year, the Brexit transition period officially ended on December 31, 2020.  During the transition period, European Trade Mark Registrations (EUTMs) still extended to the UK and provided EUTM owners protection in the country.  Although as of January 1, 2021 EUTMs are no longer protected in the UK, the UK Intellectual Property Office (UK IPO) has created “comparable trade marks” for all registered EUTMs.  These comparable trade marks have the same legal status as if they were originally applied for and registered in the UK.  Owners of registered EUTMs did not need to request that any such comparable rights were created – this process was automatic.  Moving forward, the below points may be helpful in navigating trademark protection in the UK:

  • Pending EUTM applications – Any EUTM applications still pending on January 1, 2021 will need to be re-filed as new UK trade mark applications. Applicants may file new UK applications by September 30, 2021 to maintain the filing date and priority date of their EUTM applications.  The UK trade mark must be identical and cover the same goods and services as the EUTM.  UK trade mark application filing fees will apply, and the UK application will be subject to the same review process as any other UK trade mark application.
    • Because filing dates are important outside of the US, applicants with pending EUTM applications should aim to file within the 9 -month period after January 1, 2021 to ensure they are able to claim the same filing/priority dates in the UK as their EUTM applications. This process will not be automatic and requires action by applicants/counsel.
  • Address for Service in the UK – Those wishing to apply to register a trade mark in the UK should note that an address for service in the UK is required for new applications. Under the UK IPO’s new rule, owners of UK comparable trade marks will not need to change their address for service for 3 years if their new comparable trade marks were created from registered EUTMs.  After January 1, 2024, comparable trade mark owners will need to change their address for service to the UK only if their right is subject to proceedings (if your right is challenged and your address for service is outside the UK, the UK IPO will ask you to provide an address in the UK to engage in those proceedings).  Interestingly, this 3-year exception for comparable trademarks does not apply to comparable trade marks created from international registrations designating the EU under the Madrid Protocol.
    • This rule will limit businesses/individuals from filing UK trade mark applications themselves if they do not have a UK address. Owners of comparable UK trade marks may want to look into whether their existing EU counsel has an office in the UK.  Otherwise, such owners will need to appoint a new representative in the UK by January 1, 2024.  If your comparable UK trade mark was created from an EU designation under a Madrid Protocol application, the 3-year exemption period does not apply and you may need to appoint a representative with a UK address for service now.
  • Use Requirements – For EUTMs, an owner may use a mark in any member state of the EU to demonstrate use across the EU. Because the UK is no longer part of the EU, those applying for a UK trade mark will need use the mark in the UK in order to demonstrate use and may not rely on use in the EU.  For those with existing EUTM registrations that created comparable UK trade marks, the UK IPO will consider previous use in the EU.  However, owners of new UK comparable trade marks should note that marks become vulnerable to cancellation proceedings in the UK on the grounds of non-use after five years.  Thus, owners should put their marks to use in the next few years in the UK (if not already in use) if they wish to maintain their UK trade mark registrations and to avoid becoming vulnerable to cancellation proceedings.

For other questions, Gavin Law Offices is glad to advise on EU and UK trademark matters.

– Courtney Reigel, Esq.

January Focus: Self-care and Wellness

Posted on by Gavin Law Offices

Self-care can mean a lot of different things and everyone practices it a little differently. We wanted to highlight some of the ways that our team has been taking care of our well-being. To celebrate the new year, we decided to treat ourselves to facemasks.

Finding time to rest and relax is an important part of sustainable working habits. Some members of our team use candles and soft music to relax. Elizabeth sticks to a meditation routine and Jenn likes quiet days.

Taking care of ourselves involves more than just the ways in which we relax, itis also sticking with healthy routines. Here are some of the best ways to start your day, according to the GLO team:

Courtney: Coffee

Pam: A solid night’s rest

Jenn: Coffee, socks, and pups!

Elizabeth:  A (COVID-19 compliant) walk with close friends.

Lily: Upbeat music

There is a whole list of ways to practice self-care that works for your life, whether it be for your physical, mental, or any other part of your well-being! This could look like daily routines that help support your goals or treating yourself to something special. Finding what helps you recharge is important, whether it’s daily increments of exercise, walks in sunny weather, or guilty pleasures like reality TV shows. Let us know how you relax and recharge!