Here are several items from around the web that are worth your attention:
The latest edition of Doug Lichtman’s IP Colloquium is available here and it is another excellent listen. The program looks at copyright’s statutory damages regime through the lens of music downloading. Lichtman moderates an impressive group of experts and stakeholders in the debate. It would be worth the time, even if CLE credit was not available, but it is.
Congratulations to Victoria Pynchon of the IP ADR Blog and Settle It Now on her move to ADR Services — click here to read Pynchon’s post about the move.
The Alternative Patent Dispute Resolution Project at San Diego’s Thomas Jefferson School of Law has an interesting survey up about how ADR should be used in patent cases. No results yet, but I will discuss them here when they are made available. The survey follows up a survey done ten years ago by IPWatchdog’s Gene Quinn. Click here to take the survey.
Continue Reading IP News: ADR & Copyright Damages
Statutory Damages
Copyright Mandatory Registration and Registration-Deposit Requirements are Separate
By R. David Donoghue on
Posted in Legal News
Rudnicki v. WPNA 1490 AM, No. 04 C 5719, Slip Op. (N.D. Ill., Jul. 24, 2008) (Moran, Sen. J.).
Judge Moran denied plaintiff’s motion in limine to preclude defendants from arguing non-registration of plaintiff’s allegedly copyrighted works. Plaintiff argued that his certificate of registration was conclusive proof that his works were registered. But plaintiff only deposited six of his works with his applications. In response, plaintiff argued that deposit of a representative sample was all that was necessary for registration, and all that was necessary for statutory damages.
The Court, however, held that the mandatory registration requirement, and its exceptions pursuant to 17 U.S.C. § 407, was separate from the registration-deposit requirement, pursuant to 17 U.S.C. § 408. The registration-deposit requirement did not provide exceptions for works first published outside the United States, such as plaintiff’s works. Because § 408 required deposit for all of plaintiff’s works, and because plaintiff had not identified if any of the six works plaintiff deposited was at issue in this case, the Court denied plaintiff’s motion.
…
Continue Reading Copyright Mandatory Registration and Registration-Deposit Requirements are Separate
Counterfeiting Statutory Damages are up to $1M/Trademark
By R. David Donoghue on
Posted in Damages
Lorillard v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 4844, 2008 WL 1775512 (N.D. Ill. Apr. 17, 2008) (Aspen, J.).
Judge Aspen adopted Magistrate Judge Cole’s Report and Recommendation, denying defendants’ Fed. R. Civ. P. 59(e) motion to alter the Court’s judgment against defendants – click here to read more about that Report and click here to read more about this case in the Blog’s archives. The Court awarded plaintiff Lorillard $2.5M in statutory damages for defendants’ sales of counterfeit cigarettes using Lorillard’s trademarks. Defendants objected to, among other things, a statutory damages award in excess of $1M. Defendants argued that 15 U.S.C. § 1117(c)(2) only allowed $1M in statutory damages per type of goods sold. Because this case only involved one type of goods, cigarettes, defendants argued statutory damages could not exceed $1M. But the Court held that the limitation was $1M per counterfeit mark per type of good. Because Lorillard alleged five counterfeit marks were used, the statutory damages limit was $5M.
…
Continue Reading Counterfeiting Statutory Damages are up to $1M/Trademark
$2.5M Statutory Damages Award Set Without Hearing
By R. David Donoghue on
Posted in Damages
Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., No. 03 C 5311 & 4844, 2007 WL 2580491 (N.D. Ill. Sep. 10, 2007) (Cole, Mag. J.).
Judge Cole recommended awarding plaintiff $2.5M in statutory damages. The Court had previously entered a Fed. R. Civ. P. 37(b) default judgment against defendants for sales of counterfeit Newport cigarettes in violation of the Lanham Act.* The Court recommended that a damages hearing was not necessary because of defendants’ four year pattern of avoiding discovery obligations leading to a default judgment, including failing to produce damages documents. Having actively avoided producing the information for four years, defendants were not now entitled to seek opportunities to present evidence in their defense. Furthermore, the Court reported that a $2.5 M award was reasonable. $2.5M was half of plaintiff’s estimate of defendants’ infringing sales and it was half of the potential $1M statutory award for each of the five marks defendants infringed.
* For more on this case, see the Blog’s archives.
…
Continue Reading $2.5M Statutory Damages Award Set Without Hearing