By Thomas F. Cotter

Intellectual property (IP) is the body of law governing rights in, among other things, new inventions (patents), works of authorship (copyright), source-identifying symbols (trademarks), and confidential proprietary information (trade secrets). Over the past generation, the acquisition and enforcement of IP rights has become a matter of pressing importance across the globe, to individual creators, business enterprises, governments and nongovernmental organizations, and everyday consumers, as IP rights have come to have an outsize impact on product value and international commerce. Not surprisingly, disputes involving the alleged infringement of IP rights also have steadily increased; and since IP owners and accused infringers generally do not litigate merely as a matter of principle, but rather in the hope of convincing a court or agency to grant (or deny) some desired relief, the law of IP remedies also has come to play an increasingly important role in global litigation.

My book Remedies in Intellectual Property Law provides a compact, comparative overview of the types of remedies available in the world’s leading jurisdictions for IP litigation— primarily the United States, the United Kingdom and other members of the Commonwealth of Nations, the European Union and its member states, China, and Japan. The book illustrates the similarities and differences among these jurisdictions with regard to issues such as whether courts should routinely enter injunctions against the infringing use of IP rights; how courts should go about calculating the compensation due for losses that owners claim to have suffered, including not only standard fare such as lost profits, but also less easily quantifiable harms such as loss of reputation or even mental anguish; whether relief should sometimes take the form of a reasonable royalty, for past or even future infringement, and if so how courts should go about determining the appropriate royalty rate; whether courts be authorized to award punitive or pre-established damages, or even criminal penalties, and if so what guidelines should they follow in doing so; and, conversely, under what circumstances accused infringers should be able to obtain judicial declarations that the IP owner’s rights are invalid or not infringed.

The divergent ways in which jurisdictions answer these questions, moreover, are not simply a matter of taste, but often reflect sincere differences of opinion regarding which rules and practices are more likely to enhance innovation and consumer welfare, or better fit within the pre-existing contours of a specific legal system.  The U.S. legal system, for example, allows for very extensive pretrial discovery and liberal use of expert witnesses; requires many IP disputes to be resolved by lay juries; and sometimes permits those juries to award substantial punitive damages.  These features increase the cost of litigation, while at the same time U.S. law makes it difficult for the prevailing party to recover any portion of its attorneys’ fees from the losing side.  These variations from practice elsewhere explain some unique aspects of American IP damages law, which (for example) imposes substantial limits to keep information deemed irrelevant or unreliable away from the trier of fact; they also provide at least a partial explanation for why patent assertion entities (sometimes pejoratively referred to as patent trolls) tend to litigate more frequently in the U.S., as well as why U.S. courts are (for now) less likely than their counterparts elsewhere to grant injunctions in patent disputes.  Differences like these among countries and regions, in turn, exacerbate the risk of forum shopping—particularly in cases, such as those involving standard-essential patents, in which owners and users operate in multiple countries; consequently have some choice about where to file suit for infringement or for declaratory relief; and often expect that the outcome of the first suit to be concluded will pressure the losing party into a global settlement on terms that favor the victor.

‘In this uniquely comprehensive volume, Professor Thomas Cotter offers a masterful synthesis that compares, assesses and evaluates both monetary and non-monetary legal remedies across the major commercial jurisdictions of the world. This highly readable text should be indispensable to anyone seeking to understand international IP litigation today.’
– Jorge L. Contreras, University of Utah, US

Other differences may be more philosophical in nature.  Many countries, for example, permit IP owners to assert claims for unjust enrichment—sometimes even after the statutory timeframe for asserting claims for compensatory damages has passed—but exactly what “unjust enrichment” means can vary widely.  In Japan and Taiwan, for example, the relief afforded may be limited to the royalty the defendant should have paid for permission to use the IP, whereas in other such as Germany the defendant may be required to disgorge its entire profit; and U.S. law is, once again, unusually complex, with different standards applying within each of the main branches of IP.  Even within the single body of trade secret law, moreover, U.S. courts are divided on whether plaintiffs asserting claims for unjust enrichment are entitled to recover, as a matter of right, the R&D costs the defendant avoided by misappropriating, or only in cases in which the plaintiff has suffered some injury in addition to its quantifiable actual damages.  As with the international disputes noted above, these differences among courts within a single country provide plenty of opportunities for strategic manoeuvring.

Not long ago, many IP litigators may have thought it wise to devote almost all of their time to preparing their cases on infringement and validity, with injunctions and damages being more or less an afterthought; they also could afford to be relatively uninformed about practice in other countries.  In today’s interconnected world, by contrast, such a narrow focus is a luxury that ill serves their clients.  More generally, I believe that legal professionals of all stripes, including students, academics, and policymakers, will benefit from better understanding how the law of IP remedies works, at home and abroad—and from thinking about how it might be improved, in ways large or small, to better serve the public interest in innovation, creativity, and fair competition.  It is my hope that Remedies in Intellectual Property Law will advance that understanding.

Remedies in Intellectual Property Law is written by Thomas F. Cotter, Taft Stettinius & Hollister Professor of Law at the University of Minnesota Law School, USA

Remedies in Intellectual Property Law is available to order in eBook and hardback here.