Navigating IP Damages – A Streamlined Strategic Guide for In-House Attorneys

Protecting your company's intellectual property (IP) is crucial in today's business landscape. When faced with infringement challenges, your role as legal counsel is pivotal in pursuing compensation, enforcement, and protection, while balancing that with the company’s overall vision and budgetary goals/concerns. Here's a streamlined guide to effectively implement Legal Remedies for IP Infringement. 

Swift Identification and Documentation 

Immediately identify instances of infringement and meticulously document evidence, including dates, locations, and specifics of the infringement. Solid documentation forms the bedrock of a strong legal case. 

Legal Assessment 

Conduct a thorough legal assessment of the infringement, considering the type of IP involved (trademarks, copyrights, patents) and relevant laws. Even if IP litigation isn't planned, seeking legal counsel, particularly from experienced IP attorneys, is prudent. Many in-house attorneys have a general IP background and do not include outside counsel in the earliest days of evaluating infringement, which can lead to larger issues down the road if/when litigation is pursued. Bringing in an IP specialist such as the ones at Trestle Law as early as possible can lend specialized insights into your options and the most effective courses of action. 

Cease and Desist Letter 

Some infringement cannot be addressed via a letter. Situations such as location of the defendant, an unreachable defendant, or an insolvent defendant come to mind. However, in many circumstances, sending a well-crafted cease-and-desist letter is the proper way to initiate communication with the infringing party. This should clearly outline the infringement, the legal basis for your claim, and demand the immediate cessation of infringing activities. Ensure specificity in the letter, avoiding generic online templates. In-house attorneys will do well to avoid including any language that may undermine their negotiating position, such as admissions, potential licensing language, etc.  

Explore Administrative Avenues Before Suing 

While most administrative proceedings do not provide for an award of damages or fees (such as the USPTO’s Trademark Trial and Appeals Board (TTAB)), this can be an effective way to save company funds and still remove infringing materials, particularly when they are found online. Filing an opposition or cancellation with the TTAB requires the filer to have knowledge of the claims being asserted as well as being aware of any timing issues in submitting.  

Legal Remedies for IP Infringement 

Statutory Damages 

These damages, awarded in trademark and copyright cases, compensate for losses at an amount predetermined by statute. The awarded sum varies based on the severity of the infringement and other factors determined in court. 

Actual Damages 

Organizations can seek actual damages, such as loss of profits and missing royalties, which are verifiable through evidence like financial records. 

Court Orders 

Courts can issue orders to halt further use of registered materials, remove infringing material from the marketplace, and compel the infringing party to provide profits generated by copied materials. 

Attorney Fees 

Winning parties in IP damage lawsuits may be reimbursed for attorney fees, subject to certain legal provisions. 

Punitive Damages 

These are awarded as punishment for deliberate infringement, particularly in cases of willful misconduct. 

Injunctive Relief 

Courts may grant injunctive relief to prevent further harm to IP rights holders, typically when irreparable harm is imminent. 

Seeking Guidance from IP Professionals 

Collaborating with IP professionals, such as those at Trestle Law, is crucial in the Legal Pursuit of IP Compensation for navigating the complexities of IP infringement cases. Their expertise ensures a deep understanding of legal frameworks and the ability to execute effective strategies. 

Proactive engagement with IP professionals and strategic legal approaches are essential in successfully navigating IP infringement battles.