Intellectual Property Law: Damages and Remedies

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Terence P. Ross

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In today's information-based economy, intellectual property law has received more attention than ever before. Yet little has been said about the damages and remedies that are available—until now. Intellectual Property Law: Damages and Remedies addresses two crucial concerns of intellectual property owners—how to recover monetary compensation when an infringement has occurred and how to prevent further infringement. This unique work explains how compensation and remedies are determined in every scenario, including infringement on the Internet. You'll read about: ex parte seizures and stopping infringing goods at the border; provisional rights and remedies for patent owners; injunctive relief; monetary damages; punitive and statutory enhanced damages; attorneys' fees and costs; and more. This is the first book to turn to for coverage of all the issues that arise once liability for infringement has been established.

Book #00656; looseleaf, one volume, 808 pages; published in 2000, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-094-4

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  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: 0
  • Page Count: 808
  • ISBN: 978-1-58852-094-4
  • Pub#/SKU#: 656
  • Volume(s): 1

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  • Terence P. Ross
Terence P. Ross is a partner in the Washington, D.C. office of Crowell & Moring LLP and a member of the firms Intellectual Property Practice Group. The Washington Legal Foundation has described Mr. Ross as one of the countrys top lawyers and The National Institute of Trial Advocacy has conferred on Mr. Ross its designation as a Master Advocate. He is a graduate of Stanford University and the University of Virginia School of Law, where he was a member of the Managing Board of the Virginia Law Review. Upon graduation, he clerked for Judge Roger Robb on the U.S. Court of Appeals for the D.C. Circuit. Mr. Ross writes and speaks extensively on intellectual property issues. He is Chair of the D.C. Bar Associations Annual Developments in Intellectual Property Law Forum, and is also an Adjunct Professor of Law at George Mason University School of Law, teaching IP law.


Introduction to Monetary Damages

§ 1.01 Introduction
§ 1.02 Historical Background to Monetary Damages
§ 1.03 General Principles of Monetary Damages
[1] Determining Whether Injuries May Be Compensated by Damages
[2] Calculating the Damages Award

Copyright Infringement Damages

§ 2.01 Introduction
§ 2.02 Recovery of Monetary Damages
[1] Actual Damages Attributable to the Infringement
[2] The Infringer’s Profits Attributable to the Infringement
[3] Statutory Damages
[4] Extraterritorial Damages
[5] Interaction of Copyright and Contract Damages

Patent Infringement Damages

§ 3.01 Introduction
§ 3.02 Lost Profits
[1] Statutory Basis for Lost Profits Damage Awards
[2] The Standard of Proof
[3] Proving Causation
[4] The Panduit Test and Its Progeny
§ 3.03 Quantifying Lost Profits
[1] Price Component
[2] Costs
[3] Taxes
[4] Infringer’s Profit Margin
[5] Split Awards
[6] Experts
§ 3.04 Profits on Non-infringing Products
§ 3.04A Future Lost Profits
§ 3.05 Apportionment
[1] When Applicable
[2] When Not Applicable
[3] Difficulties with Apportionment
§ 3.06 Review of Damages Awards
§ 3.07 Established Royalty
[1] The Established Royalty Criteria
[2] Minimum or Maximum Recovery
§ 3.08 Reasonable Royalty
[1] The Analytical Method
[2] The Hypothetical Negotiation
[3] The “25% Rule”
[4] Ongoing Royalties
[5] Provisional Rights
§ 3.09 Special Damages Cases
[1] Design Patents
[2] The United States As Infringer
[3] The State Infringer
§ 3.10 Collateral Assessments
§ 3.11 Limitations on Award of Damages
[1] The Six-Year “Lookback”
[2] Marking
[3] Laches
[4] Double Recovery

Trademark Infringement Damages

§ 4.01 Introduction
§ 4.02 When Monetary Damages Are Available
[1] Historical Development of Monetary Damages for Trademark Infringement
[2] The Contemporary Rule on Monetary Damages for Trademark Infringement
§ 4.03 Recovery of Monetary Damages
[1] Actual Damages Attributable to the Infringement
[2] Reasonable Royalty
[3] The Infringer’s Profits
[4] Preemption of State Law Remedies
[5] Statutory Damages for Counterfeiting
[6] Statutory Damages for Cybersquatting

Damages for the Misappropriation of Trade Secrets

§ 5.01 Introduction
§ 5.02 Reasonable Royalty Under Section 2 of the Uniform Trade Secrets Act
§ 5.03 Damages Under Section 3 of the Uniform Trade Secrets Act
[1] Actual Loss
[2] Unjust Enrichment
[3] Reasonable Royalty
§ 5.04 Limitations on Damage Awards
[1] Equitable Limitations
[2] Temporal Limitations
§ 5.05 Review of Damage Award

Remedies for Internet Infringement

6.01 Introduction
[1] The Internet and the World Wide Web
[2] Intellectual Property Infringement on the Internet
[3] Infringement and Internet Service Providers
§ 6.02 Copyright Infringement on the Internet
[1] Types of Infringement
[2] Remedies
§ 6.03 Trademark Infringement and Dilution on the Internet
[1] Types of Infringement
[2] Remedies
§ 6.04 Trade Secret Infringement on the Internet
[1] Generally
[2] Unauthorized Disclosures of Trade Secrets on the Internet

Augmented Damages

§ 7.01 Introduction
§ 7.02 Augmented Damages for Copyright Infringement
[1] Increased Damages under the Copyright Act of 1976
[2] State Law Claims
§ 7.03 Augmented Damages for Patent Infringement
[1] Increased Damages Under the Patent Act
[2] Willful Patent Infringement
[3] Pre-Seagate Technology Caselaw
[4] Procedural Issues
[5] Amount of Increased Damages
§ 7.04 Augmented Damages for Trademark Infringement
[1] Increased Damages Under the Lanham Act
[2] Factors
[3] Procedural Issues
[4] Amount of Increases
[5] Increased Damages for Trademark Counterfeiting
[6] State Law Claims
§ 7.05 Augmented Damages for Trade Secret Misappropriation
[1] Increased Damages Under the Uniform Trade Secrets Act
[2] State Laws Claims

Recovery of Attorneys’ Fees and Costs

§ 8.01 Introduction
§ 8.02 The “American Rule”
§ 8.03 Statutory Basis for Recovery of Attorneys’ Fees in Intellectual Property Litigation—Historical Development
[1] Timing of Motion for Attorneys Fees
§ 8.04 Award of Attorneys’ Fees Under the Copyright Act of 1976
[1] Registration as a Prerequisite
[2] Prevailing Party Defined
[3] Awards to Defendants
[4] Awards in the Court’s Discretion
[5] Reasonable Fees
§ 8.05 Award of Attorneys’ Fees Under the Patent Act
[1] Prevailing Party
[2] “Exceptional” Cases
[3] Discretion
[4] Reasonable Attorneys’ Fees
§ 8.06 Award of Attorneys’ Fees in Trademark Litigation
[1] Prevailing Party
[2] “Exceptional” Cases
[3] Discretion
[4] Trademark Counterfeiting
[5] Reasonable Attorneys’ Fees
[6] Attorneys’ Fees on Appeal
§ 8.07 Award of Attorneys’ Fees in Trade Secret Litigation
[1] Special Circumstances
[2] Discretion
[3] Reasonable Fees
§ 8.08 Award of Attorneys’ Fees Against the United States
§ 8.09 Costs
[1] Electronic Discovery Costs
[2] Expert Witness Fees
[3] Other Expenses

Interest on Monetary Awards

§ 9.01 Introduction
§ 9.02 Prejudgment Interest
[1] Under the Patent Act
[2] Under the Copyright Act
[3] Under Trademark Law
[4] Under the Uniform Trade Secrets Act
§ 9.03 Postjudgment Interest
[1] Federal Cases
[2] Misappropriation of Trade Secret Cases


Introduction to Nonmonetary Remedies

§ 10.01 Introduction
§ 10.02 Historical Background to the Development of Equity
§ 10.03 General Principles of Equity
[1] Procedural Aspects of Equity
[2] Remedial Aspects of Equity
§ 10.04 Nonjudicial Remedies
[1] The Customs Service
[2] The International Trade Commission

Injunctive Relief in Intellectual Property Cases

§ 11.01 Introduction
§ 11.02 General Federal Statutes, Rules and Case Law Governing Injunctive Relief
[1] Preliminary Injunctions
[2] Temporary Restraining Orders
[3] Prohibitory, Mandatory and All-Relief Injunctions
[4] Bond Requirement
[5] Remedies for Violations or Improper Grant of Injunctions
[6] Permanent Injunctions
[7] Appeal of Injunctive Relief
§ 11.03 Injunctive Relief Under the Copyright Act
[1] The Presumption of Irreparable Harm
[2] Factors to Consider in Analyzing Irreparable Harm
[3] Preliminary Injunctions
[4] Temporary Restraining Orders
[5] Permanent Injunctions
§ 11.04 Injunctive Relief Under the Patent Act
[1] The Presumption of Irreparable Harm
[2] Factors for Analysis of Irreparable Harm
[3] Preliminary Injunctions
[4] Temporary Restraining Orders
[5] Stay Pending Reexamination
[6] Permanent Injunctions
§ 11.05 Injunctive Relief Under the Lanham Act
[1] The Presumption of Irreparable Harm
[2] Factors for Analysis of Irreparable Harm
[3] Preliminary Injunctions
[4] Temporary Restraining Orders
[5] Permanent Injunctions
§ 11.06 Injunctive Relief Under the Uniform Trade Secrets Act
[1] The Presumption, or Lack of Presumption, of Irreparable Harm
[2] Factors for Analysis of Irreparable Harm
[3] Preliminary Injunctions
[4] Temporary Restraining Orders
[5] Permanent Injunctions

Exclusion of Infringing Products from Importation and Other International Trade Remedies

§ 12.01 Introduction
§ 12.02 Problems in Extraterritorial Enforcement
[1] Different Perceptions of Intellectual Property Abroad
[2] Difficulties in Obtaining Adequate Remedies Against Intellectual Property Infringement Abroad
§ 12.03 Exclusion by Customs
[1] Imported Products Infringing a United States Patent
[2] Imported Products Infringing a United States Trademark
[3] Imported Products Infringing a United States Copyright
[4] Imported Products Infringing a Trade Name/Trade Style
[5] Customs’ Dissemination of Information to the Field
§ 12.04 Remedies Against the Importation of Gray Market Goods
[1] Definition of Gray Market Goods
[2] Trademarks
[3] Copyright
[4] International Trade Commission Remedies
§ 12.05 Exclusion of Infringing Merchandise Under Section 337 of the Tariff Act
[1] Introduction to Section 337 Proceedings
[2] Exclusion Orders
[3] Cease and Desist Orders
[4] Modification or Revocation of Exclusion or Cease and Desist Orders
§ 12.06 Other International Trade Remedies for Intellectual Property Rights Violations
[1] Section 301
[2] The World Trade Organization (WTO)
[3] The North American Free Trade Agreement

Civil Raids and Seizures

§ 13.01 Introduction
§ 13.02 Civil Seizures in Copyright Litigation
[1] The Copyright Act of 1976
[2] The Copyright Rules of Practice
§ 13.03 Civil Seizures in Trademark Litigation
[1] Seizures in Ordinary Trademark Litigation
[2] Ex Parte Pretrial Seizures in Trademark Counterfeiting Litigation
§ 13.04 Civil Seizures in Trade Secret Cases and Other State Law Remedies
[1] Trade Secret Cases
[2] Other State Law Remedies
§ 13.05 Establishing the Required Facts to Obtain a Civil Seizure Order
[1] The Infringement Has Taken a Particular, Tangible Form
[2] The Infringement is Occurring Within the Jurisdiction of the Court
[3] The Infringement Will Continue Absent a Seizure Order
[4] The Harm to the Intellectual Property Owner Can Be Halted by a Seizure Order
§ 13.06 Constitutional Issues in Civil Raids and Seizures
[1] Due Process Concerns
[2] Unreasonable Search Concerns
§ 13.07 Destruction and Other Disposition of Infringing Articles