Intellectual Property Litigation – Enforcement and Remedies
This topic requires the student to identify and apply the range of court orders, statutory, common law and equitable remedies that are available to an intellectual property rights owner to enforce their rights.
A knowledge of remedies is important for answering essay questions or indeed to answer problem questions which require the student to advise a party as to their ‘rights and remedies’. The methods of enforcing intellectual property rights are of great practical importance as rights that cannot be enforced are ultimately worthless.
Essentially, intellectual property infringement can be described as tortious in nature and as a wrong committed against property. Civil actions are normally brought before the Chancery Division of the High Court of England and Wales. Actions involving smaller monetary sums can be brought in the county court and there is also a specialised Patents County Court in London.
The most important civil remedies for the victim of an infringing action are:
- injunctions (an equitable discretionary remedy which needs to be considered in almost every situation); and
- damages or an account of profits.
The purpose of awarding damages is to compensate the intellectual property owner for the loss caused by the defendant’s infringement. In claiming damages, the intellectual property owner will need to establish that:
- the claimed method for assessing damages is appropriate (measure); and
- the damages are not too remote (remoteness).
Sometimes, the remedy of damages will be inadequate. Equity therefore developed a number of remedies, discretionary in nature, directed towards ensuring that a claimant was not unjustly treated by being confined to a remedy in damages. An injunction is an example of a remedy that seeks to restrain the defendant from committing infringement(s). Another example is an account of profits, which seeks to take back from the defendant profits made through the unauthorised use of the claimant’s intellectual property. An account of profits is usually accompanied by an injunction and it is granted at the discretion of the court.
In addition to civil remedies, UK law provides criminal sanctions for a variety of infringing acts. Moreover, intellectual property rights are increasingly exploited internationally, giving rise to transnational litigation. In May 2011, the Digital Opportunities Report prepared by Professor Ian Hargreaves recommended changes to the intellectual property law enforcement regime, however these recommendations have yet to be implemented.
According to the UK Intellectual Property Office (an Executive Arm of the Department of Trade and Industry) there is evidence that intellectual property piracy and counterfeiting crime are increasingly well organised. Are the current remedies available to enforce intellectual property rights adequate, or is there a need for further measures?
The question expects the student to demonstrate a knowledge of the range of civil remedies and criminal sanctions available for intellectual property infringement and whether or not they are fit for the purpose of enforcing an intellectual property owner’s rights in combating organised crime.
- Clarify and distinguish between piracy and counterfeiting.
- Evaluate the range of civil remedies.
- Discuss the Department of Trade & Industry’s National Intellectual Property Crime Report and TellPat database.
While it is important to ensure that the various intellectual property regimes offer appropriate and adequate protection for the results of creative effort, the other side of the coin is the availability of measures to enforce those rights. A frequent criticism of the operation of the intellectual property laws in practice has been the difficulties encountered when it comes to enforcement of those rights. Such arguments have particular force in relation to combating organised crime, given that litigation is invariably so expensive and time-consuming that it is likely to be out of reach of all but large corporations. Enforcement has become an increasingly challenging area in the fight against the importation of fake goods as well as due to the rise of the digital environment. Historically, crime has always followed the economy and as the knowledge-based economy provides more opportunities, that is where the criminal element has moved.
Piracy and counterfeiting are a real threat to intellectual property owners both domestically and internationally as well as for consumers and the Government. Counterfeiting refers to wilful trade mark infringement, for example: fake replica rock band or football shirts; trainers and clothing branded with fake marks. Piracy refers to wilful copyright infringement such as fake digital versatile discs (DVDs) and compact discs (CDs), or unauthorised downloading of music from the Internet, and so on.
There are a range of civil remedies and criminal sanctions provided in order to enforce intellectual property rights. These are interim and final injunctions, damages, account of profits, search orders, orders for delivery up and destruction, and declarations of infringement. Usually, an IP owner will focus on obtaining civil remedies, but some criminal sanctions are also available. Four types of action are possible:
- civil proceedings;
- criminal proceedings;
- administrative action by giving notice to HM Revenue & Customs, or the UK Advertising & Standards Authority;
- self-help by IP owners.
Final pecuniary remedies are remedies such as damages or an account of profits. These remedies provide financial compensation for losses caused by infringement. However, an intellectual property right owner cannot enjoy both damages and an account of profits. They have to make an informed choice to elect one or the other.
The most common award is for damages and these are calculated on the basis of compensating for lost profits or on a royalty basis: General Tire v Firestone Tyre (1975). See Patents Act 1977, s 61(1)(c); Trade Marks Act 1994, s 14(2); Copyright, Designs and Patents Act 1988, s 9(2); Registered Design Act 1949, s 9(1). Aggravated damages may be available, for example, to include a restitutionary element: Nottinghamshire Healthcare NHS Trust v News Group Newspapers Ltd (2002).
Account of profits is an equitable remedy (PA 1977, s 61(1)(d); TMA 1994, s 14(2); CDPA 1988, ss 96(2) and 229(2)) for infringement of registered designs. The case of Celanese International Corporation v BP Chemicals (1999) provides guidance as to how to calculate an award under account of profits.
Non-pecuniary remedies include:
- declaration of infringement or non-infringement;
- delivery up and destruction;
- court order for a party to reveal relevant information (CPR 31)Norwich Pharmacal order;
Interim remedies include:
- interim injunctions;
- ex parte orders;
- search orders.
Criminal sanctions are sometimes available:
- patents (PA 1977, ss 109 and 110);
- trade marks (TMA 1994, ss 59, 60, 92);
- copyright (CDPA 1988, ss 107–110, 198, 297, 297A, 196ZB and 201); and
- registered designs (RDA 1949, ss 35 and 35A).
In relation to ‘self-help’, s 100 of the CDPA 1988 gives the copyright owner an additional right. This is the only example of self-help in the IP field. Section 100 enables the copyright owner or his agent to seize and detain infringing copies. However, a series of restraints applies to this far-reaching right:
- the infringing copy must be exposed or otherwise immediately available for sale or hire;
- no force may be used, and advance notice of the time and place of the proposed seizure must be given to a local police station;
- nothing may be seized from what appears to be a normal place of business; and
- only premises to which the public has access may be entered in the exercise of this right, for example a market stall, a car boot sale.
Self-help is increasingly popular and several intellectual property owner organisations have been established to assist to enforce IP rights. These include:
- FAST – Federation Against Software Theft;
- FACT – Federation Against Copyright Theft;
- IFPI – Represents the Recording Industry;
- ACID – Anti-Copying in Design.
The above organisations are active in enforcing their members’ interests by providing advice on interim measures and initiating civil proceedings to deter and ultimately prevent infringement.