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?
With domain name disputes, you do have a more efficient quasi litigation proceeding, which is called a UDRP. You just submit your evidence and they make a decision. It’s a lot cheaper, even though the filing fees are a lot higher than for a regular court. It’s a lot less attorney time and a lot cheaper than going to trial. They also have the power to make the domain name companies comply. However, you can’t get money through a UDRP.
If The Company Causing Infringement Against My Trademark Is Outside Of The United States, Does The Protocol On How To Combat That Differ At All?
If you go through a UDRP, one of the wonderful things about that is it doesn’t care where the parties are because the power is really over the domain name registrars. It has jurisdiction over everyone. Again, you can’t get money; you can just get the domain name transferred.
If we’re looking at a regular lawsuit, the first question is whether we can even get jurisdiction over these people. Can we sue them in the United States? With IP cases, that jurisdictional question can be hard. We can try to bring the lawsuit here. We can spend a lot of money and then have the jurisdictional rug pulled out from under us. The internet makes figuring out jurisdiction really hard because it looks like everyone is infringing everywhere, which means there should be an issue in jurisdiction everywhere. Goods are a little easier: if we can show that copyrighted goods or trademark goods are coming into a state, we feel like we can get jurisdiction that way.
Suing in a convenient place but losing the jurisdiction fight can put a dent in the litigation budget. So sometimes it’s best to do the safe thing and just sue the defendant where the defendant is if in a country that we feel has a reasonable justice system. We would then go to our network of international counsel and hand the case off to council in the country where the defendant resides.
For more information on Steps To Take For Trademark Infringement, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (615) 734-1188 today.