Intellectual Property Litigation

Litigating Intellectual Property cases is usually complex, and at some point, parties to such disputes must retain legal counsel.  From a plaintiff/IP owner’s perspective, the course of litigating an IP dispute usually boils down to six basic steps:

1. Discovering Infringement
2. Sending a Cease-and-Desist Letter
3. Following up with a Final Notification and Intent to Sue Letter
4. Filing a Complaint
5. Conducting Discovery & Negotiation
6. Trying the Case

Discovering Infringement

            The first step to litigating an IP dispute is learning of or discovering that someone is violating one or more of the exclusive intellectual property right granted to you as a copyright property, trademark, or patent holder.  For copyright holders, this can mean hearing a song that has clearly stolen elements from one of yours.  For trademark owners, this could mean walking into a new restaurant and finding it to have a nearly identical “look and feel” of yours, one that is likely to cause confusion to the patrons.  With patents, this could mean going to a store and seeing for sale a pen just like the one you invented.   Once infringement is discovered, quick action must be taken.

Sending a Cease-and-desist letter

            Step one is to send a cease-and-desist letter to the infringer.  It can be beneficial to have an attorney take this step for you, as simply tracking down the offender can be a challenging task.  However, if cost is an issue, you may be able to manage this step yourself.  In this letter, you want to identify yourself and the copyright, trademark, and/or patent you own that is at issue.  You want to explain why their product is infringing on your exclusive rights and the evidence you possess to support your contention.  Then you must advise them to “cease-and-desist” from exhibiting, distributing, using in commerce, passing off as their own, or taking any other activities with regard to the IP asset that is in violation of your rights.  Finally, you should give the infringing party a reasonable timeframe by which they must comply with your demand before you are going to take action.  It is usually appropriate to give the infringing party some time, but not too much, before you take further action.  Usually ten (10) days is a fair timeframe, except for patent holders or other commercial enterprises, where it may take longer to effectively change course and halt their infringing activities.

Sending a Final Notification and Intent to Sue

If the infringing party has not complied with your lawful request to cease and desist, you will want to give them one more chance to avoid legal action.  This time, it is even more advisable to employ the services of an intellectual property attorney, since doing so will let the other party know that you mean business.  But if you must do it yourself, be sure to start the letter by typing FINAL NOTIFICATION AND INTENT TO SUE in the subject line, in all caps and in bold.  Then provide a few details, but not too many, about the types of suit you plan to file and repeat what facts these claims are based on.  Advise the infringing party of the damages they face, and if possible, include citations to former cases in your jurisdiction where similar facts were involved and the result was favorable to the party in your position.  Finally, if you believe a settlement is possible and you have received some signs of good faith from the other party, offer to meet and confer in person.

Filing a Complaint

            If your letter writing campaign and good faith efforts to resolve the dispute proves unfruitful, then you must proceed to filing a lawsuit.  For this step, experienced counsel must be retained, as the procedural challenges involved in IP litigation, especially patent litigation, are simply too complex for non-lawyers to handle.  Once retained, counsel will then review the facts and decide where to file the suit and what claims should be included.  Counsel will then file the complaint, which will state with specificity the facts of the case and what remedies form the court should are being requested.  Usually IP claims are litigated in Federal court, although state laws sometimes apply as well.  For patent-related claims, Federal court is the exclusive jurisdiction, since all patent laws are Federal. 

Note that retaining counsel can be an expensive endeavor, as most firms will require a retainer of several thousand dollars just to get involved in Intellectual Property litigation.  Afterwards, hourly billing will apply.

Conducting Discovery & Negotiation

Once the suit is initiated, your attorney will serve appropriate discovery requests on the defendant - such as Requests for Admissions, Requests for Production of Documents, Interrogatories - and shall respond to similar requests from the opposing counsel.  Lawyers from both parties will also schedule depositions, contact expert witnesses, and organize the evidence.  During this time, both sides will be “digging in their heels” so to speak, trying to establish a superior position from which they can leverage a favorable settlement for their respective client.

Trying the Case

Ninety-five percent of all cases, IP or otherwise, settle before going to trial.  However, for those that don’t the final step in IP litigation is the trial itself.  As in other types of trials, such as Insurance Defense or Medical Malpractice, in Intellectual Property cases expert testimony almost always rules the day.  Often a respected musician or music professor will be called upon to testify about the uncanny similarities between two different songs.  In the case of patents, testimony from respected scientific and engineering experts can be vital to one’s success.  For the plaintiff especially, careful attention must be paid to introducing compelling evidence, as they carry the initial burden of proof.  If the plaintiff carries her burden of proving infringement, the defendant has to raise one or more affirmative defenses to escape liability, such as parody or fair use.  At the end of the day, the trier of fact, either the jury or a judge, will decide the case.