Joint StatementPart B. Defenses
In a civil proceeding under the Lanham Act, a number of defenses,
affirmative defenses, and limitations on remedies are applicable. (See,
e.g., 15 U.S.C. 1114(2); 15 U.S.C. 1115(b).) Subsection 2320(c) provides
any defense, affirmative defense, or limitation on remedies that would be
applicable in an action under the Lanham Act shall be applicable in a
under this section.
"Defense" means any issue as to which the plaintiff has the burden
proof in a Lanham Act case, and "affirmative defense" refers to matters as
which the defendant bears that burden. Under this subsection, allocations
burdens of proof will be identical to those in a comparable Lanham Act case.
Thus, any affirmative defense under the Lanham Act will remain an
defense under this Act, which a defendant must prove by a preponderance of
evidence. Should there be any serious doubt about the allocation of the
of proof on a particular issue under the Lanham Act, the burden should be
on the government as to that issue. In addition, should any issue appear to
both an element of the offense and part of an affirmative defense, the
should be resolved by placing the burden on the prosector.
Among the matters on which the defendant appears to have to burden
proof under the Lanham Act are laches, see Valmor Products Co. v.
Standards Products Corp., 464 F.2d 200, 204 (1st Cir. 1972), and the
"antitrust" defense, see Coca-Cola v. Overland, Inc.,
F.2d 1250, 1256 (9th Cir. 1982); Union Carbide v. Ever-Ready Inc.,
F.2d 366, 389 (7th Cir. 1976) ("the burden of . . . proof is a heavy one on
(defendant)" to establish an antitrust defense).
By "limitation on relief," this act incorporates the prosecutions
innocent printers and publishers that are contained in 15 U.S.C. 1114(2) and
other limitations on relief that may be applicable under the Lanham Act. Of
course, as is the case in any legal proceeding, only those defenses,
defense, and limitations on relief that are relevant under the circumstances
be applicable in a prosecution under this section.