Damages and Remedies in Civil IP Cases An U.S. Perspective Elaine B. Gin Attorney - Advisor Office of Intellectual Property Policy and Enforcement US Patent & Trademark Office
Every right has a remedy Enforcement is the key to obtaining that remedy!!! 10/7/2011 2
copyrights, patents, trademarks & trade secrets Copyright original expression fixed in a tangible medium Utility patents process, machine, manufacture, composition of matter, and improvements thereof Plant patents asexually produced plant Design patents ornamental design Trademarks source indicator Trade Secrets any information that is generally not know by the public and has economic benefit that is subject of reasonable efforts to maintain secrecy 10/7/2011 3
Overview of Remedies What relief is available to an intellectual property rights holder? 1) money damages 2) equitable relief 10/7/2011 4
Four Types of Money Damages 1) Compensatory Damages 2) Unjust Enrichment 3) Punitive or Augmented Damages 4) Collateral Damages 10/7/2011 5
Compensatory Damages 1) Lost Profits 2) Statutory Damages 3) Established / reasonable royalties 10/7/2011 6
Compensatory Damages Statutory Damages Trademark - for counterfeit mark 15 U.S.C. 117(c) - for cybersquatting 15 U.S.C. 117(d) Copyright - 17 U.S.C. 504 (c) 10/7/2011 8
Statutory Damages for Counterfeited Trademarks Not less than $500 or more than $100,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed If the court finds that the use of the counterfeit mark was willful, not more than $1,000,000 per counterfeit mark per type of goods or services sold 10/7/2011 9
Statutory Damages for Cybersquatting [T]he plaintiff may elect an award of statutory damages in the amount of not less than $1,000 and not more that $100,000 per domain name 10/7/2011 10
Statutory Damages for Copyright With respect to any one work, the sum of not less than $750 or more than $30,000 as the court considers just. If infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum or not more than $150,000. 10/7/2011 11
Established / Reasonable Royalties IP rights holder will provide past licensing agreements to prove established royalty rates IP rights holder will provide licensing activities and value of the patent prove reasonable royalty rates 10/7/2011 12
Punitive Damages for Patent Cases Applied in exceptional cases Showing of willfulness Up to treble damages 10/7/2011 13
Augmented Damages for Trademark Cases The court can award up to three times the amount found to be actual damages Discretionary for ordinary trademark infringement Mandatory for trademark counterfeiting 10/7/2011 14
Collateral Damages Interests Attorney s fees are sometimes awarded in exceptional cases, against the American rule that each party bears its own attorney costs 10/7/2011 15
Damages Compared Copyright 1) compensatory damages 2) established /reasonable royalty 3) unjust enrichment 4) statutory damages Trademark 1) compensatory damages 2) established /reasonable royalty 3) unjust enrichment 4) statutory damages for counterfeiting & cyber squatting 5) augmented damages Patents 1) compensatory damages 2) established /reasonable royalty (in Patent Act) 3) punitive damages 10/7/2011 16
Evidence Used to Prove Damages IP right holder s financial information) Infringer s financial information Market place information Royalty information Expert witness (testimony and report) 10/7/2011 17
Equitable Relief Temporary Restraining Order (TRO) (ex parte) Preliminary Injunction (before and during trial) (inter partes) Permanent Injunction Civil Seizures and Destruction of Goods 10/7/2011 18
TRO / Preliminary Injunction Four Factors Test Likelihood of success on the merits Likelihood of irreparable harm if injunction is not granted Balance of hardships Public interest 10/7/2011 19
Permanent Injunction Irreparable harm Inadequacy of money damages Balance of hardship Public interest 10/7/2011 20
Civil Seizures and the Destruction of Goods Prevents infringing articles from entering into the stream of commerce and preserves evidence Copyright Act and Lanham Act contain authorization for civil seizures Seizures may be done pre-trial in copyright and trademark counterfeiting cases 10/7/2011 21
THANK YOU Elaine Gin elaine.gin@uspto.gov (571) 272-9300