Can a trademark counterfeiting and infringement plaintiff elect statutory damages instead of actual damages under the Lanham Act and still receive attorney's fees?
EIGHT YEARS AGO Congress decided that the existing means for awarding damages for trademark infringement were not deterring this illegal practice and decided to supplement these measures with statutory damages-a specific range that a court could award even in the absence of proof of a plaintiff's losses or the defendant's profits.
In the last 10 years, the 9th U.S. Circuit Court of Appeals has decided two cases involving naked licensing: Barcamerica International v. Tyfield Importers (9th Cir. 2002) 289 F.3d 589, and Freecyclesunnyvale v. The Freecycle Network (9th Cir. 2010) 626 F.3d 509.
Eight years ago Congress decided that the existing measures of damages for trademark infringement were not deterring trademark infringement. It decided to supplement these measures with statutory damages - a specific range of damages which a court could award even in the absence of proof about plaintiff's losses or defendant's profits.
Intellectual Property licensing is big business, and is getting bigger. But most licensors do not earn as much as they should because they fail to perform royalty audits allowed under their license agreements.
Licensing and infringement litigation are two primary potential income sources from a patent. With licensing, the inventor permits the licensee to make, use, sell, or offer to sell a patented invention for compensation.
I’m not an attorney, nor do I play one on TV. Yet my engineering career has often involved legal issues, the most interesting of which is intellectual property (IP).
