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1708

Joint Statement—Part B. Defenses

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 that any defense, affirmative defense, or limitation on remedies that would be applicable in an action under the Lanham Act shall be applicable in a prosecution under this section.

"Defense" means any issue as to which the plaintiff has the burden of proof in a Lanham Act case, and "affirmative defense" refers to matters as to which the defendant bears that burden. Under this subsection, allocations of 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 affirmative defense under this Act, which a defendant must prove by a preponderance of the evidence. Should there be any serious doubt about the allocation of the burden of proof on a particular issue under the Lanham Act, the burden should be placed on the government as to that issue. In addition, should any issue appear to be both an element of the offense and part of an affirmative defense, the conflict should be resolved by placing the burden on the prosector.

Among the matters on which the defendant appears to have to burden of 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., 692 F.2d 1250, 1256 (9th Cir. 1982); Union Carbide v. Ever-Ready Inc., 531 F.2d 366, 389 (7th Cir. 1976) ("the burden of . . . proof is a heavy one on the (defendant)" to establish an antitrust defense).

By "limitation on relief," this act incorporates the prosecutions for innocent printers and publishers that are contained in 15 U.S.C. 1114(2) and any 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, affirmative defense, and limitations on relief that are relevant under the circumstances will be applicable in a prosecution under this section.