Jurisdiction over trademark infringement when infringement has a foreign origin My understanding is that to file a trademark infringement lawsuit, I have to file it in the state where the &quot;infringing activity&quot; is occurring, in other words the location of the defendant. However, this creates two problems/questions: (1) What if the infringer is foreign? For example, imagine there is a company in Hong Kong ripping off my trademark and selling knock offs by mail to customers in the United States. I can't very well file the lawsuit in Hong Kong. (2) Supposedly trademark infringement suits can be filed in state court (although federal courts have original jurisdiction). If I am suing in a state court, can I sue in my home state (the state of the plaintiff)? In other words, by suing in a state court can I circumvent the normal requirement to sue in the location of the defendant?
There are some complexities here. First of all, in the US, trademarks may be protected under either state or federal laws. Suits for trademark infringement under either kind of laws may be filed in state courts, although suit under federal laws are more often filed in federal courts. My understanding is that to file a trademark infringement lawsuit, I have to file it in the state where the &quot;infringing activity&quot; is occurring, in other words the location of the defendant. That is not quite correct. The infringing activity occurs wherever sales are made, and often wherever goods or services with an infringing marks are advertised. If goods are sold by mail, the infringing activity may be held to occur where the customers are located. If an infringing mark is being used to sell or advertise goods or services in a particular US state, suit may normally be filed in that state, whether in state or federal court, no matter where the infringer is located. (However it may be much easier to secure damages if a suit is won when suing in the jurisdiction where the infringer is located.) Procedures are different if the trademark is registered than if it is not. Trademark suits are often complex and costly. It would be very wise to consult an experienced trademark lawyer when considering bringing such suits. If goods carrying infringing marks are being imported into the US, the US Customs can seize or deny entry to such goods. A trademark lawyer might be able to advise how to get the customs service to act on such situations, and what the limits of such enforcement is. Trademarks are generally matters of national law. A mark that is valid and fully protected in the US, may not be protected at all in Hong Kong, for example.
There's no "common law copyright" in the US. There's common law trademark, but copyrights and trademarks are different things. All copyright is based on federal copyright statutes, and an unregistered copyright is just called an unregistered copyright. What an unregistered copyright gives you is almost the same thing as a registered copyright: the exclusive right to exercise various rights (reproduction, distribution, public performance/display, etc.) Registration is required before you can actually file an infringement lawsuit, but it's OK if you only registered it after learning about the infringement. The main reason to register the work early is that you might be able to collect higher damages if it was registered before the infringement. If the work was unregistered when the infringement happened, you can only collect actual damages. If it was already registered, you can instead opt to collect statutory damages. Statutory damages don't require you to show actual loss; instead, the court awards between $750 and $30,000 per work based on what it considers fair. The lower limit can go down to $200 if the infringer had no reason to think they were infringing, and the upper limit can go up to $150,000 if the infringement was willful. You can also collect attorney's fees if it was already registered. In the comments, the question was raised of whether someone else might be able to register the copyright for your work before you and what would happen then. When I say "registration is required before filing a lawsuit," the requirement is that you submit the registration paperwork properly, pay the fee, and wait for the Copyright Office to act on the application. If they accept the registration, you're all set. Even if they refuse, though, you can still file an infringement claim -- you just have to also serve the head of the Copyright Office, who has the option of jumping into the case to argue about whether the work could legally be registered. You can also sue the Copyright Office to get judicial review of a denial under the Administrative Procedure Act (refusal still lets you file infringement lawsuits, but you can't get statutory damages or attorney's fees against an infringer unless the Copyright Office actually accepted the registration).
The answer to the question "can so-and-so sue me?" is almost always "yes", regardless of context. Such a suit might be baseless, and it might get settled in your favor, but you still have to spend the time and money to defend yourself. This can be disastrous for a start-up that's trying to get off the ground, and it's how patent trolls make their money. (I'm not accusing SnapChat of engaging in such tactics as a rule, of course; I'm just pointing out that the legal system does allow for them.) Whether or not you are likely to be sued is a separate question, and one that can really only be effectively addressed by a trademark attorney with full knowledge of the particularities of your situation.
Generally, you may only file an action in the Western District of Virginia if the actions or inactions that you believe violated your rights occurred within the boundaries of this District. When a lawyer uses the word &quot;generally,&quot; it typically signals the existence of exceptions. The specific statutory provision of 8 USC 1447(b) supersedes the general rule expressed in the handbook. I am not a lawyer, so I hope that the lawyers on this site will correct me if I am wrong, but I believe that this provision establishes &quot;subject matter jurisdiction,&quot; and the statute explicitly grants that jurisdiction to the court for the district in which the permanent resident resides. The &quot;application for a hearing&quot; should be submitted to the court for the western district. If I were you, I would try to find out whether &quot;applying for a hearing&quot; is in fact the same as filling a suit; it sounds to me like they may be different. In the latter case, you submit a &quot;complaint,&quot; which makes you a &quot;plaintiff.&quot; The use of &quot;apply&quot; and &quot;hearing&quot; suggests that different procedural rules may be relevant. If that is the case, it supports the conclusion that the general rule expressed in the handbook does not apply, since the talk of rights violation also implies a complaint and a potential trial rather than an application and a hearing. After writing the previous paragraph, I found a few discussions online that make it clear that &quot;apply for a hearing&quot; does mean &quot;file a suit,&quot; but it's still not clear to me who the defendant would be. Another open question is when the 120-day period begins. It seems that different courts have different opinions on the matter.
The legal standard is whether the allegedly infringing mark is confusingly similar to the mark that is allegedly infringed. This is a mixed question of fact and law usually determined by the trier of fact (which is the jury, in a jury trial where there is a colorable dispute of fact regarding the issue).
None of the methods suggested protect Bob from a copyright or trademark infringement claim. These methods may protect Bob from a claim that Bob is an intentional infringing party, as opposed to being an &quot;innocent infringer&quot;. But, an innocent infringer is not immune to liability for copyright and trademark infringement. Instead, an innocent infringer is simply subject to less potent penalties and remedies than an intentional infringer of the copyright or trademark owner's rights. Also, innocent infringer status ceases when Bob receives a cease and desist letter if Bob continues the infringing conduct. This said, in the first case, if Bob independently writes the blog post without copying anyone else's work, Bob has not infringed any copyright. This is true even if someone else had already written exactly the same thing. Copyright infringement, unlike patent infringement and trademark infringement, requires that the infringing work actually be derived from the work claimed to be infringed and independent invention of a work is a full defense to copyright infringement.
When you file a DMCA notice, what it really means is that you are saying: "Dear website, there is some copyright infringement going on against my works, and I'm willing to take someone to court. You have the choice of removing these materials, which means I cannot sue you, or you can leave copyright infringement on your website and you will be part of the court case". When the purported infringer gives a counter notice, what it really means is that they are saying: "Bring it on. Take my to court. I'm not afraid of you. By the way, dear website, because you followed the DMCA procedures and I gave you the counter notice, you can't be sued for copyright infringement if you restore these materials, even if they are infringing on copyright. " And the website tells you politely "we played by the rules of the DMCA. So now it's between you and the purported infringer, you can't sue us for showing the contents. " So yes, if you don't take the copyright infringer to court, nothing will happen.
First, a preliminary correction. Patents are different than copyright. 35 USC §271 defines patent infringement: Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. Can patent holders sue patent infringers? Yes. See 35 USC §281: A patentee shall have remedy by civil action for infringement of his patent. Does the US Government own US Patent 6630507? Yes. The assignee is "The United States of America as represented by the Department of Health and Human Services". What does this patent claim? "Claims" are the things that the patent protects for exclusive use (or making or selling of) by the patent owner. Quoting from Joseph D. Summer, Patenting Marijuana Strains: Baking Up Patent Protection for Growers in the Legal Fog of this Budding Industry: [US Patent 6630507] patents a method of use of a non-psychoactive cannabinoid compound for treating some diseases. The patent does not claim a composition of matter or a compound, but rather a method for using specific cannabinoids for treating oxidative stress. Are dispensaries infringing? Not for direct infringement (but see the next section). They are not selling the method of treatment. The closest a dispensary comes is selling the raw material that may be used in such a treatment. Who would be liable? Doctors or hospitals prescribing or administering the claimed treatment? No. 35 U.S. Code § 287(c) says: With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b), the provisions of sections 281, 283, 284, and 285 shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity. This says that even if a medical practitioner infringes a patented medical method when they use that method, they cannot be punished. But, direct infringement did happen, and thus, providers of the materials necessary for that direct infringement may have committed contributory infringement 35 USC §271(c). This is where a dispensary may be liable. If they provide the products or compounds that the claimed method requires, to somebody who directly infringes (even if that direct infringer happens to be shielded from liability), the dispensary may be liable for contributory infringement. This would depend on whether the particular compound is "a staple article or commodity of commerce suitable for substantial noninfringing use".