So you’ve perfected your intellectual property rights by taking all the right steps involved in intellectual property planning. Now what? If your intellectual property ends up having value for the market, there is a good chance you will discover that someone else is using your idea, innovation, or creative work. This is intellectual property infringement.
What is Infringement?
Intellectual property infringement is the unauthorized sale, duplication, or use of products or materials that are protected intellectual property. Infringement is defined by Federal and State law, depending on the intellectual property right at issue. Patents and copyrights are protected by Federal law, so infringement is defined by those same laws. Generally, these statutes define infringement as the unauthorized making, using, or selling of the protected intellectual property (or a copy of a copyrighted work).
Trademark rights and trade secrets have both state law protection (referred to as common law protection) and protection under Federal laws. As a result of their hybrid nature, infringement can be defined by both state and federal law. The Federal laws apply the same in every state, while the state law protections can vary somewhat between states.
Remedies For Infringement
A intellectual property owner may will generally have the right to bring a civil lawsuit against someone who is infringing. Because there are Federal laws that protect each form of intellectual property, most intellectual property infringement cases are handled in federal court. Infringers can face multiple penalties that serve a variety of purposes.
Payment of damages to the intellectual property owner. The most common remedy for intellectual property infringement is an award of damages to the plaintiff. A money judgment is generally intended to compensate the intellectual property owner for the damage they have suffered in the form of lost sales, lost claims, or a loss to its reputation.
Enhanced damages to punish the infringer. In some instances, a court can impose damages that are beyond the damage suffered by the intellectual property owner. These enhanced damages are mean to serve as a punishment for the party that has infringed. These enhanced damages are not common, as they are intended to punish entities that have engaged in particularly bad conduct.
Payment of attorney fees and costs. In some instances, a court will require the infringing party to pay the costs incurred by the intellectual property owner in brining and litigating the case. Under the Patent Act, for example, a judge can require the losing party to pay attorney fees in an “exceptional case.” As with enhanced damages, these awards are not the normal practice, but they can provide an additional penalty.
An injunction that prevents further infringement. In some cases, the intellectual property owner will be able to obtain an order to require the infringing party to stop using or selling the protected intellectual property right. These types of orders are least common in the case of patents, as courts have generally decided that the better course is to require infringers to pay ongoing royalty payments to the owners.
Destruction of the protected material. In some cases, courts will order the infringer to destroy the protected material. An obvious example of this is in the trade secret case. If an infringer is unlawfully using a protected trade secret, one of the common remedies is to force the infringing party to destroy the protected material (e.g., the customer list).
In some instances, IP theft cases that can result in criminal charges. The Economic Espionage Act of 1996 considers certain types of trade secret theft a federal crime. Similarly, many states treat the “theft” of a trade secret as a crime under state law. Counterfeiting and piracy are criminal acts. They can be reported to the FBI’s Internet Crime Complaint Center when the products are sold online. When the products are imported from outside the country, the U.S. Customs and Border Patrol or the National Intellectual Property Rights Coordination Center can be contacted.
Examples of Infringement In The News
Infringement cases are rarely front-page news, but they sometimes end up breaking through the clutter. A few years ago, Disney sent Florida daycare centers Cease and Desist letters, when these establishments painted their walls with images of Mickey Mouse, Minnie Mouse, and Goofy Dog. There is no question that these characters are protected Disney trademarks. Disney sent these cease and desist letters to request that the daycare centers stop infringing the trademarks. Cease and desist letters can be the beginning stages of an upcoming lawsuit.
Another famous infringement case involved A & M Records and Napster a few years ago. Napster was a website that allowed users to exchange and download copyrighted songs. A & M records accused Napster of stealing music and making it available. They filed a copyright infringement against Napster, who in the end had to pay millions to recording companies and music artists.
Infringement lawsuits are complicated and can be expensive and time consuming. At Klinck LLC, we work with clients to handle intellectual property infringement cases efficiently and cost-effectively. If you’d like more information, you can set up a consultation with Robert Klinck.