Business Law

What Areas Of Intellectual Property Litigation Does Your Firm Handle?

Of the four class areas of intellectual-property law, we regularly handle copyrights, trademarks and trade secrets. To these, we also handle a number of related areas: domain name disputes (including “cybersquatting”), privacy and publicity rights, and laws governing the internet. With patent law, we can only handle the litigation side (and its rare here in Nashville)…Read More

What Steps Should Be Taken If We Do Discover Some Sort Of Infringement?

The first thing we’ve got to figure out is whether an infringement is an emergency. Are we being harmed or about to be harmed in a way that can’t be fixed with money? Clients aren’t often prepared to even think about that. If you’ve got an emergency on your hands, then you have the option of trying to get a preliminary injunction, which would stop the other side from using your intellectual property for the pendency of the case. The problem is, that’s a lot of money on the front end. Many injunctions are like mini trials, often even with mini discovery, which can get very expensive. If you let it go or dither about whether to get a preliminary injunction, it becomes evidence that it wasn’t really an emergency. If there was emergency, you would act right away.

The first thing we have to establish is that there is an emergency and it is worth the resources to try to put a stop to it. Preliminary injunctions are in the discretion of the court, which means it’s a little harder to predict how they’re going to work out. Often, they mean the end of the case. If the other side can’t use the intellectual property, that’s the end because by the time there is a trial, even if they win, it’ll be too late.

If it’s not an emergency, you will try to avoid a lawsuit and you will try to reason with these people. You’ll send a demand letter asking them to stop. Every infringement is a little different and these letters need to be crafted with the particular circumstances in mind. If you don’t succeed with negotiations or a demand letter, you can try to sue. Then, the question is where do we sue? Often, these are national cases. Can we sue in your hometown? Do we have to go to where they are? Can we get responsible local counsel?…Read More

Is There A Statute Of Limitations On Infringement Of My Intellectual Property?

Even when we’re bringing federal trademark cases, the statute of limitations will depend on state law. There actually isn’t such a thing as such a statute of limitations for trademark infringement. The courts have decided that there is a presumption that if you waited longer than the statute of limitations in that state for a comparable tort claim, your claim is barred.

Trademark typically has what is called a rolling statute of limitations. If you wait too long, your claim is not fully extinguished but limited to the X number of years before you sued (where X is the limitations period). It cuts down the damages but it doesn’t extinguish the claim.

When it comes to copyright, there is a three-year statute of limitations. You determine it from when you did or should have, with reasonable effort, discovered the infringement. It too is a rolling statute of limitations, unless the claim has to do with ownership, in which case it’s a hard three years.

Trade secrets have a three-year statute of limitations under federal law and most states’ laws. Don’t count on a rolling statute of limitations though.

Patent law has a six-year statute of limitations. It, too, is a rolling statute of limitations…Read More

What Are The Possible Remedies Available In An Infringement Case?

Generally, main remedies are going to be an injunction to stop the wrongful use of your intellectual property. We seek preliminary injunctions and then a permanent injunction. At the end, we ask for damages. Sometimes these disputes have the potential to actually lead to positive outcomes, where the defendant didn’t realize they needed permission and now sees an opportunity to enter into mutually beneficial licensing arrangements. It’s important to keep an eye out for that.

The main measure of damages in trademark cases is the profit that the defendant made using your mark that is attributable to the mark. If someone started using your mark and then your sales dropped off, you should be able to also recover for your lost profits.

Trademark courts do have some equitable power to increase damages up to triple, if it feels the compensatory damages are too low and the plaintiff is not being fully compensated or that or it should be higher in order to discourage this kind of behavior in the future. It has to be an “extraordinary case,” though. There is also a special remedy for “counterfeiting.” Counterfeiting is limited to the very worst kind of trademark infringement, luxury-goods knock-offs, things like that. There are statutory damages up to $2 million dollars for willful counterfeiting. Lawyers love to threaten counterfeit, for obvious reasons, but they’re usually full of it.

Copyright has a statutory damages scheme and an actual damages scheme, and you can’t have both. You have to choose before judgment and after trial. The statutory damages are $750-$30,000 per work infringed. If it’s just one work that got infringed but a lot of times, this may not be the appropriate measure of damages for you. If the infringement is regarded as unusually innocent, damages can be reduced to $250. It can be increased up to $150,000, if the infringement is found to be willful. Under the right circumstances, the statutory damages can start multiplying like rabbits and lead to some truly huge damage awards…Read More

What Are Some Proactive Steps To Protect Your Business From Intellectual Property Infringement?

The main thing you can do to protect your copyright and trademark is register them. Trademarks arise from use; copyright arises from putting something original in a fixed medium. You don’t need the government to give you a copyright or a trademark. They arise organically but registration makes your trademark or copyright a lot more powerful.

With trademark, you go to the United States Patent and Trademark Office and you submit an application. There’s some back and forth and there’s an examiner, who tries to make sure that your mark has not been used by anyone else for similar goods and services. This is a somewhat expensive process but it’s worthwhile because trademarks take a lot of effort to prove up. But with a registration, all I have to do is attach the trademark registration to the complaint, and the trademark is presumed valid. Another benefit of trademark registration is that it puts you in the USPTO database. If someone later tries to register their mark for something similar, services will get blocked by the examiner without you having to do anything.

You cannot file a lawsuit to enforce your copyright unless you have registered the copyright (or you’ve tried and failed). What good is a copyright, if you can’t enforce it? If you register timely, you are eligible for statutory damages and eligible to recover your attorney’s fees (assuming, of course, you are successful in enforcing your copyright). You get a three month grace period, after you first publish your work, to be eligible for these benefits. These benefits often make all the difference because it’s not always possible to prove actual damages with copyright, and it wouldn’t be economical to sue for copyright infringement without the chance to recover your attorney’s fees…Read More