Enforcement of IP Rights Flashcards

Question

Why discriminate between IP rights?

Answer 1

- it was easy TRIPS they decided to limit trademark and copyright because that was easy for they custom authorities, for the criminal authorities, they found its very difficult to assess the criminal measures for patent, sometimes its difficult to find a scope for a patent, intention of the infringer.

Answer 2

the case under WTO, they tried to define what is it. who is doing it professionally!

Answer 3

``` Negative effect reputational demage loss ot sale lost of inovation lost of taxes lost of working places ``` Positive effect: -24h free copyrighted platforms work increased customes we know more artists or actors. - trademark. counterfiter products of Rolex increased the value of the Rolex. people more want to buy original one.

Answer 4

• What (Art. 51-60 TRIPS) • Make available procedures that lead to suspension of release by customs authorities • Mandatory for trademark; copyright • Conditions • evidence of prima facie infringement • the detailed description of the goods required • Procedures • notice of suspension and 20 days to initiate proceeding leading to the decision on merits • Question • How to deal with goods in transit? authorities must stop the counterfeiting goods to cross the border. (the travel of the goods) they are limited to copyright works and trademark. The claimant needs provide prima facie, the claimant needs to provide the proof of your claim. claimant need to notifiate custom authority needs to seizure the goods. notified the claimant and after the claimant has 20 days to initiate the providing. goods in transit, they won't seized if there will be a proof that they going to the third country and no way it comes back to EU. detailed prescription of the goods which needs to be seized. annex attached his patent or sample of infringing goods. in Switzerland, customs authority may seize the countering goods even they are for private goods.

Answer 5

injections and damages an injunction to stop or to seize before there appear more damages damages its to compensate injunction looks more to future 3 types of injunctons: 1. ex parte (the emergency situation to prevent future damages) injunction provided by authority (without hearing defendant) - first injunction requested, defendant, does not occur at this stage. 2. Preliminary injunction ( they will allow the defendant to hear) status quo present (case Winter v. Natural ) facts natural resort defence claimaid that US military was using sonare drills which can damage the whales, so eniviromental organization claimed to stop such military drills, we need to ask tree those conditions. « A plaintiff seeking a preliminary injunction must establish that [1] he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest » Apple v Amazon App Store vs Amazon appstore for Android. claimant argument : - trademark infringment of words App Store. (complex type of cases) Defandant argument: - No chance at all to succeed of the merits - App Store it is such general and descriptive term. Injunction to be granted? Preliminary injunction: rejected because the plaintiff is not likely to succeed on the merits (trademark infringement and dilution were unlikely to succeed on the merits) (2011) -> set the bar high for Apple to succeed on the merits for trademark infringement • Permanent injunction: Apple accused Amazon of misusing the "app store" name in connection with the sales of apps for Android devices, while Amazon argued that the term "app store" had become so generic that using it would not mislead customer -> parties announced that they had reached a settlement (2013) 3. Permanent injunction (1) that it has suffered an irreparable injury; (2) that remedies available at law are inadequate to compensate for that injury and (3) that the public interest would not be disserved by a permanent injunction » (eBay v. MercExchange, L.L.C., 547 U.S. 388 (2006)) 1. irrparable injury 2. inadequate to compensate 3 public interest ebay case Claimant: said that ebay was using our patent without authorization. They even proved thanks to this system represent 30% of the company. patent infringment. very hight dameges. 1. yes they suffer irraparable injury 2. is it inadequate to compensate 3. Hold: no injunction should be granted but only damages. Inunction to be granted? • (1) District Court granted damages ($25m) but denied injunction (2003) • (2) Court of appeal reversed and granted an injunction to stop using the patent, because there is a "general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances“ (2005) • (3) Supreme Court concluded that a permanent injunction in patent infringement cases can be issued only if the plaintiff can show that the issue satisfies a four-factor test (2011) • -> parties announced that they had reached a settlement (2011)

Answer 6

compensate the claimant for occurred harmful injuries there are various types of damages. claimant may ask lost of profits they need to proof it (1) demand for the infringed product, (2) absence of non-infringing substitutes, (3) capacity of the right holder to exploit the demand, (4) amount of the profit it would have made case Panduit Corp v. Stahlin Bros Fibre Works (2) Depreciation of the IP Right - Amount by which the relevant IP right has been depreciated by the infringement - Infringement must cause a diminution in the capital value e.g: bigOtire case goodyear was claiming that BigOtire was infringing its patents tire. and they asked depreciation of the IP right. Big O Tire said we sell only in these 16 states, so depreciation will be based only on this 16 states and no on all of another. Unfair profit (they claim another type of measures) Addidas was claimant all the profit made by selling all the shoes. 3 lines and not equal to 2 lines so the product its not the same. price was make to the quality of and quantity, and the court decideted to reduce to 10% of damages. Trip Trap chair where still a bit different one more light and another one is heigh and very solid. price one is cheaper adn second one more expensive . Apple v Samsung court have to decide there was infringing of the Apple's design phone. $400 m. Apple was calculated on the sales profit. Court said in such case its difficult on what we should count the whole profit from all consumers or just small amount of profit. its not clear even for vk car do they buy this car for his car or for his functionalities we need to reject the case. !!! Reasonable royalty !!! to allow to grant royalties that have been paid of infringing the rights. so usually based on the calculation on the royalties that should be paid. Jurisdictions allow usually to claim a reasonable royalty from the defendant « But for » principle not applicable Calculating the reasonable royalty: Willing buyer/willing seller test 5-20% of infringer’s sales See 15 Factors of Georgia-Pacific v. US Plywood Corp, 446 F2d 295 Some jurisdictions give the court a discretion for fixed or increased damages - Compensatory, deterrent and punitive - Statutory: e.g. US Copyright Act § 504(c) $750 - 30’000 per infringed work, min. $200 if no fault and max. 150’000 if bad faith 1000 movies downloaded in Swiss the court decided to multiplied 1000x 1000 for pay the damages.