Medicaid final rule implements hospital specific DSH limit changes
Recently, CMS finalized a rule implementing the DSH-related provisions of the CAA 2021.
In an 11th-hour-effort to avoid a government shutdown, on December 21, 2020, the US Congress passed the Consolidated Appropriations Act, 2021 (the "Act"). Surprisingly, and without much notice, input, or deliberation, Congress included provisions in the Act that could significantly change American trademark and copyright laws.
Trademark and copyright owners should review and understand these changes, which provide both significant benefits—that require rethinking enforcement strategies—but also hazards to plan for and address.
Within the Act, Congress expands trademark cancelation procedures, creates a rebuttable presumption of irreparable harm when requesting an injunction for trademark infringement matters, criminalizes companies facilitating digital downloading, and establishes a new administrative copyright infringement tribunal—all of which benefit trademark and copyright owners. However, these changes may also expose companies to more costs and nuisance suits.
President Trump signed these changes into law on December 27, 2020. We will continue to track and report on developments, but provide this overview of the proposed changes, along with our initial assessment of potential impacts and things to consider.
Called the "Trademark Modernization Act of 2020" ("2020 Trademark Act"), the proposed 2020 Trademark Act provides (1) important clarification (and resolution of the current circuit split) that "irreparable harm" is presumed for purposes of entering an injunction if a likelihood of confusion is shown, making it easier for trademark owners to obtain injunctions in US federal courts; and (2) new options for preventing applications from being approved and also for seeking to cancel existing registrations.
For trademark owners, the 2020 Trademark Act establishes that a plaintiff seeking an injunction is entitled to a rebuttable presumption of irreparable harm. (See 15 U.S.C. § 1116(a)). This codified presumption resolves a current circuit split resulting from the Supreme Court's decision in eBay v. Mercexchange, a patent case.1
For applicants, the Act potentially increases prosecution costs by requiring fees to extend the period of time to respond to Office Actions. (See 15 U.S.C. § 1062(b)). The 2020 Trademark Act permits the PTO to change the time for an Office Action response from six months to 60 days. But, the applicant—after paying a fee—may request up to four additional months, or up to a total of six months, to respond. No fee previously existed in the event the applicant responded anytime within the six-month window.
Finally, the Act provides, for the first time, the ability for third-parties to submit evidence to be included in the record during examination. (See 15 U.S.C. § 1051). Previously, a third party could submit a Letter of Protest during examination of an application, which could include evidence, but that evidence would not necessarily become part of the file or record. The Letter of Protest is limited in scope, should not be argumentative, and is not binding on the examiner. This essentially required third parties to spend a lot more time, effort, and cost on providing evidence in the context of an opposition (rather than providing the evidence to the examiner who could then reject the application and avoid an opposition).
With the new law, the director will determine whether third-party evidence should be included in the record and therefore require the examiner to review the evidence. If successful, the third-party submission will likely decrease a competitor's ability to obtain approval of the application for publication (and therefore preventing registration without the need for an opposition).
Significantly, the Act also creates two powerful mechanisms to seek cancellation of existing registered marks: ex parte expungements and ex parte reexaminations. These petitions provide an opportunity for challengers to avoid having to invest substantial time and effort in pursuing expensive cancellation proceedings.
First, "any person" may petition to "expunge" a registered mark in the event the mark has never been used in commerce on or in connection with some or all of the goods or services identified in the registration. A petitioner can file such petition for any mark within three years of the Act's enactment or within three and 10 years of a mark's registration date.
Second, the Act provides for ex parte reexamination of marks not used in commerce on or in connection with the goods or services recited in the mark's registration. To trigger this provision, the challengers must show that the mark was not used in connection with the recited goods or services before initial filing or any subsequent amendment. An ex parte reexamination petition must be filed no later than five years after the date of registration. Notably, this does not provide a window for retroactive application to all marks, unlike ex parte expungement.
A petition under either proceeding, significantly, must include a verified statement describing how the petitioner investigated that the mark has not been used in commerce. If the petitioner presents a prima facie showing, the director shall institute a reasonable investigation. Then, if successful, the director will order cancellation of the registration.
A party can appeal the director's determination from an instituted proceeding to the Trademark Trial and Appeal Board ("TTAB") (see 5 U.S.C. § 1070) and then to the Federal Circuit (see 15 U.S.C. § 1071).
For companies, the 2020 Trademark Act:
However, the 2020 Trademark Act also:
A competitor seeking to cancel a mark must be diligent:
Called the "Copyright Alternative in Small-Claims Enforcement Act of 2020" ("2020 Copyright Act"), the 2020 Copyright Act creates two important opportunities for copyright owners: it (1) criminalizes the act of companies providing platforms for illegal downloads, thereby targeting the underlying infrastructure that facilitates infringement, and (2) creates a small-claims court.
These changes are beneficial to copyright owners, making it easier and less expensive for enforcement but could also result in more nuisance suits against companies.
Although the Digital Millennium Copyright Act criminalized illegally downloading copyrighted material, the 2020 Copyright Act further expands protections to copyright owners.
Now, illegal activity includes offering, providing, or marketing a digital transmission service that transfers copyrighted material without the copyright owner's authority. As a result, running or even marketing a company that permits illegal downloading is illegal regardless of whether that company downloads materials. Penalties include fines and imprisonment up to 10 years.
The 2020 Copyright Act establishes a new administrative forum, the CCB, which is a small claims court focused solely on resolving copyright infringement disputes up to a certain amount.
The CCB is established within the Copyright Office. Three Copyright Claims officers, recommended by the Register of Copyrights and appointed by the Librarian of Congress, will sit on the CCB.
This alternative forum allows an owner to seek independent determination of copyright infringement and, by extension, infringement damages. The CCB's determination, though subject to further judicial review, is legally binding.
A party can voluntarily bring a claim in the CCB for:
However, the CCB cannot hear a claim:
If successful, the CCB's remedies include actual damages and profits or statutory damages (however, damages are limited to US$30,000). The CCB can also enter an injunction ordering infringing activity or the sending of takedown notices, as applicable, to stop. Finally, the CCB can also grant attorney's fees to a prevailing party.
Additional provisions include:
At a high-level, the 2020 Copyright Act provides significant opportunities for copyright owners to proactively enforce their rights against a class of defendants (e.g., those companies that create platforms that permit illegal downloading). The expanded prosecution of illegally transmitting copyrighted material provides a key advantage: owners no longer have to wait—or find and develop proof of actual infringement by the ultimate infringer—to take action against a platform that contributes to the infringement.
The 2020 Copyright Act targets offering, providing, or marketing a service to illegally transmit works, not actually transmitting the works. This means an owner can stop a bad actor before the ultimate bad actor actually transmits or downloads works. As a result, the 2020 Copyright Act provides the opportunity to stop illegal dissemination before it occurs. However, these changes may also make it easier for parties to bring claims against legitimate companies that create platforms unwittingly used for illegal downloads.
By creating the CCB, the 2020 Copyright Act also provides another powerful mechanism to stop infringement and makes it simpler and less expensive to take action against "smaller" infringements.
The 2020 Copyright Act explicitly states that the CCB "may" limit the number of cases a person can bring in a single year. Nonetheless, upon enactment, copyright owners may file a significant number of claims in the CCB (or small infringers may file claims for non-infringement), in the hope of obtaining quick settlements without much effort. The penalties set forth in the Act for doing so likely will not sway initial efforts.
Therefore, by lowering the barrier for bringing and pursuing claims, the CCB may increase the number of legitimate claims—and also exposure to nuisance suits—for all companies.
Nevertheless, if companies pursue active enforcement of their copyrights—and robust defenses against nuisance suits—the new CCB may provide beneficial opportunities to protect valuable intellectual property rights (and limit exposure) while simultaneously decreasing enforcement/defense costs and efforts.
We will monitor and provide updates regarding implementation of the 2020 Trademark Act and 2020 Copyright Act through Norton Rose Fulbright's Brand Protection Blog.
The Act's changes to trademark and copyright law provide different and additional tools and mechanisms for enforcement that may save time, effort, and money on one hand but potentially require adjusting approaches to save money to better position your company for defensive strategies.
In the meantime, we preliminarily recommend:
Recently, CMS finalized a rule implementing the DSH-related provisions of the CAA 2021.
Texas will soon be the latest state to enact a comprehensive consumer data privacy and security legislation called the Texas Data Privacy and Security Act.
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