Raising the Stakes in Copyright Litigation: The Availability of Punitive Damages
January 28, 2005
Many practitioners likely assume that the sole monetary remedies under the Copyright Act are those specified in Sec, 504 of the statute, namely the copyright owner's provable losses and/or the infringer's profits, or, alternatively, statutory damages (which, by statutory formula, include possible stepped-up awards in cases of willful infringement). It was thus with some significance, and perhaps surprise, that in <i>Blanch v. Koons</i>, a slender decision of only seven paragraphs, a federal district judge in New York rendered a decision that granted a motion to amend the complaint in a copyright case to allow the plaintiff to seek punitive damages (not simply enhanced statutory damages).
Myths About Avoiding Prosecution History Estoppel
January 28, 2005
In the recent Federal Circuit case <i>Honeywell, Int'l. Inc. v. Hamilton Sundstrand Corp.</i>, 370 F.3d 1131 (Fed. Cir. 2004) (en banc), the court held that a presumption of prosecution history estoppel arises when a patent applicant cancels an independent claim and rewrites its first dependent claim in independent form. Since then, patent attorneys and industry watchdogs have repeatedly misinterpreted the cause of this estoppel. Worse, many have advocated the dangerous strategy of initially writing dependent claims in independent form as a means of avoiding the estoppel. Such a strategy is useless in avoiding estoppel and highly counterproductive. Patent prosecutors should leave dependent claims in dependent form and, instead, avoid estoppel by using the strategies suggested below.
Calculation of Lost Profits Damages in Patent Cases
January 28, 2005
Upon a finding of patent infringement, a court is to award the patentee "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court." 35 U.S.C. '284. In most cases, the patentee will be entitled to a larger damage award if it can recover damages based on lost profits. Lost profits are not, however, available in all cases. This two-part article will review the current state of the law governing the availability of lost profits damages in patent infringement cases in the first part and the calculation of these damages based on diverted sales in the second part.
Recovery of Damages for Use of the Invention Claimed in a Published Patent Application
January 28, 2005
For about 200 years, the United States kept all patent applications confidential prior to issuance of a patent. Sabra Chartrand, <i>A New Law Removes Some Secrecy From the Applications</i>, N.Y. Times, Dec. 4, 2000, at C6. However, as the Director of the U.S. Patent and Trademark Office ("USPTO") noted, secrecy eventually gave way to global harmonization. <i>Id.</i> Under the American Inventors Protection Act of 1999 ("AIPA"), patent applications are published by the USPTO 18 months after the earliest claimed filing date. 35 U.S.C. '122(b) (2004). This change in U.S. patent practice presented a risk that a patent applicant's invention, once publicly disclosed, would be vulnerable to unrestrained use until the patent, with its associated intellectual property protections, actually issued. To address the vulnerabilities of a patent applicant prior to issuance of a patent, Congress enacted the Provisional Rights subsection as part of the AIPA.
When a UK Franchise Termination Struck Back
January 28, 2005
On Nov. 16, 2004, Justice Richards of the Chancery Division of the High Court in England handed down judgment in <i>(1) Total Spares & Supplies Limited (2) Antares Ltd v. (1) Antares SRL (2) European Plumb Direct Ltd,</i> 16 November 2004 EWHC 2626 (Ch). It is rare that a franchise dispute proceeds to trial in England, and this case is a reminder of the dangers associated with terminating a franchise agreement.
<b>Meyerowitz on Marketing</b>Strutting Your Stuff: The Advantages Of Seminar Marketing
January 28, 2005
Seminars, which were "the way to go in the 1990s," remain hot. That makes a great deal of sense. After all, a seminar provides lawyers with the opportunity to strut their stuff for existing clients (reminding them why they hired the lawyers in the first place and subtly suggesting that the initial retention decision was correct) and in front of prospective new clients (to whom the message is, "Look what these people know. I should ask them to help when our company has a problem."). In short, "seminars bring clients and contacts into your office."
Letter From The Editor
January 28, 2005
Editor-in-Chief Betiayn Tursi introduces a new feature, a new book and a new Web audio conference.
P.R. Professional Inside and Out: How To Get the Most Value From Your P.R Dollar
January 28, 2005
LJN's Web Audio Conference Division presented a Web audio entitled "P.R. Professional inside and out: How to Get the Most Value from your P.R. Dollar." The program focused on topics including the advantages of an inside public relations (PR) person, what outside public relations firms have to offer and how their services are impossible to duplicate.
