Trademark Law TM remedies: key concepts • Injunctions and other equitable relief: Prof. Madison general equitable principles apply • Damages? Deft’s profits (unjust Key concepts from Class 22: enrichment) and/or harm to the Legal rules and concepts as tools for problem pltf/mark owner (lost sales, reputational solving. harm, out of pocket expenses) Parody, satire, and commentary that uses • Seizure/destruction others’ TMs. • Criminal penalties Different frameworks for accommodating First • Attorneys’ fees Amendment goals. • Alternative (private) dispute resolution 1 2 Expanding Rogers v. Grimaldi . Injunctions and other equitable relief 3 4 • Equitable relief: TROs, preliminary injunctions, permanent injunctions. • Std elements for PI: (i) likelihood of success on the merits; (ii) likelihood of irreparable harm absence of injunction; (iii) balance of hardships and public interest considerations favor issuance of injunction. • Courts generally apply eBay v. MercExchange (U.S. 2006) (patent case), holding that violation of the substantive IP right does not give rise to a presumption of irreparable harm; pltf must show harm in addition to showing (infringement). Goal is to align IP remedies w/std equitable principles • Common to ask whether harm could be remedies via Coca-Cola Co. v. Gemini Rising, Inc. (E.D.N.Y. 1972) damages (equity steps in where legal remedies are inadequate)
Injunctions and other equitable relief Injunctions and other equitable relief • What does TM harm look like other than • General remedial principle: pltfs get to confusion itself, or dilution itself? decide what kinds of relief they want. • Applying eBay too aggressively may • Nb. claims in equity do not trigger juries. • When it comes to TROs, PIs, and perpetuate consumer injury because pltfs cannot show harm. permanent injunctions: ask for what you • Much rides on the evidentiary showing. want, and want what you ask for! • Beware the theory of the case! (esp. if • And remember that many district courts this gets developed after rush for TRO don’t know about (or don’t understand) and PI). eBay , esp. in districts w/few IP cases and • Bonding. a limited IP bar. 1 2 Damages: read the statute 3 4 • Lost profits ( deft’s unjust enrichment) and harm to pltf (trademark owner). • Goal is compensation; no punitive damages. But: • “Willful” infringement (not innocent) may trigger treble damages. • What’s the evidence of loss? Of willfulness? • Damages questions almost always turn on role of dueling expert witnesses (economists): what is the value of a mark? What is the structure of a market? In adidas Am., Inc. v. Skechers USA, Inc., compare the value of the Stan Smith mark/trade dress w/ the value of the Three Stripe TM infringed by the Cross Court TR.
Seizure and destruction Attorneys’ fees • Registered marks only. • Attorneys’ fees are available to the • Counterfeiting only (identical marks, prevailing party (pltf or deft) in identical goods). “exceptional cases.” • Order can cover counterfeit goods and • What’s an exceptional case? See Octane marks and means of making the marks. Fitness, LLC v. ICON Health & Fitness, Inc. • Specificity matters. (U.S. 2014): • Ex parte relief, often. Accelerated (i) bad faith / willful infringement / extraordinary disparity in the merits of the discovery? File under seal? parties’ positions and/or • Bonding. (ii) super aggressive/oppressive litigation • Executing …. Team, team, team. conduct (“scorched earth”) 1 2 Criminal law, seizure and impoundment, 3 4 and third party help • How to get the attention of the US Attorney’s Office. • Alternatives to US federal courts: other countries; US FDA (pharma); US Customs & BP; US ITC (w/patent claims); online …..
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