Page 124 - Intellectual Property Disputes

Yahoo! Inc.; fn 60 Boston Scientific v. Johnson & Johnson; fn 61 Paice; fn 62 and Joyal Products, Inc. v.
Johnson Electric North America, Inc. fn 63

Knowledge of the relevant case precedent will be useful if the damages expert’s work includes
assistance with arguments for or against injunctive relief or post-trial compulsory royalties.

Other Damages Considerations

Other Damage Calculations

In addition to compensatory damages in the form of lost profits, reasonable royalties, or unjust
enrichment, augmented damages in excess of the compensatory measure of recovery may be awarded in
appropriate cases. Augmented damages may include enhanced statutory damages and punitive damages.
fn 64

Certain intellectual property damage statutes permit the award of enhanced damages at the discretion of
the court. For example, in a patent case, upon a finding of willful infringement, the court may award up
to treble damages plus attorney’s fees and costs. In trademark disputes, a court may enter judgment,
according to the circumstances of the case, for any sum above the amount found as actual damages, not
exceeding three times such amount. If the court finds that the amount of the recovery based on lost
profits is either inadequate or excessive, the court may, in its discretion, enter judgment for such sum as
the court finds to be just, according to the circumstances of the case. fn 65 Trebled damages may also be
awarded in exceptional trade secret matters. fn 66

In a copyright matter, fn 67 the defendant who prevails may be awarded attorney’s fees against the
plaintiff.

Market Value

The decline in value suffered by a plaintiff as a result of infringement or misappropriation by a
defendant is available under copyright, trademark, and trade secret claims. If neither lost profits nor a
reasonable royalty have an empirical basis, an infringed copyright owner may employ the market value
test as an alternative measure of actual damages. The market value test estimates the fair market value
that a willing buyer would have paid a willing seller for the use of a work.

fn 60 Creative Internet Advertising Corp. v. Yahoo! Inc., 674 F. Supp. 2d 847 (E.D. Tex. 2009).

fn 61 Boston Scientific v. Johnson & Johnson, 2009 WL 975424 (N.D. Cal.).

fn 62 Paice LLC v. Toyota Motor Corp., 609 F. Supp. 2d 620 (E.D. Texas 2009).

fn 63 Joyal Prods, Inc. v. Johnson Electric North America, Inc., 2009 WL 512156 (D. N.J.).

fn 64 Punitive damages are rarely awarded in intellectual property cases and are not discussed in detail in this practice aid.

fn 65 15 USC 1117.

fn 66 UTSA, Section 3(b). DTSA, Section 2(b)(3)(C).

fn 67 17 USC 504(d).

120 © 2020, Association of International Certified Professional Accountants