Civil Remedies for Intellectual Property Invasions: Themes and Variations

Abstract

Both practitioners and students of intellectual property may benefit by exposure to comparisons of the overall remedial schemes of the three statutes that encompass copyrights, patents, and trademarks. Such a survey is further warranted by my belief that, in general, we do not pay enough attention to remedies. They come at the end of the road (with, of course, the major exception of preliminary relief) and, for most of us, do not have the intellectual challenge of determining the existence of rights. Yet remedies are the payoff in litigation. Their potential severity, or lenity, presumably influences business decisions. The risk of treble damages if one skirts a patent too closely, or of a crippling injunction if a marketing program runs into an existing trademark, ought to affect the advice of lawyers, as well as the decisions of entrepreneurs. The comparison will proceed from injunctive remedies, both before and after trial, to the varying forms of monetary recoveries: actual damages (which are usually plaintiffs' lost profits, or reasonable royalties), defendants' profits, statutory substitutes for actual damages, and enhanced and punitive damages. Each type of remedy is subdivided among copyrights, patents, and trademark. Recovery of lawyers' fees by either party in copyright cases is the topic of another contribution to this symposium, by Professor Peter Jaszi. Fees in patent and trademark cases are not addressed here. This comparison seeks to survey the dominant similarities and disparities among the various remedies, illustrating the variations that have developed over a century or more. Occasionally, the comparison will linger somewhat on contentious matters, notably the conflict between the copyrights of some authors and the first amendment privileges of other authors.