Page 30 - Intellectual Property Disputes

owner is deprived of by reason of the infringement. This lost opportunity measure is often referred to by
the courts as special or consequential damages. fn 6

Although the market value measure and the lost opportunity measure may appear similar in nature, they
are, in fact, distinct damage measures. The market value measure compensates a plaintiff for the
diminished value of the intellectual property attributable to a civil wrong. The lost opportunity measure,
on the other hand, compensates a plaintiff for the loss of income that would have been generated from
the intellectual property’s use or ownership. A plaintiff is normally permitted to seek one or the other of
these alternative measures of damages, but not both. fn 7

Unjust Enrichment as Damages

Unjust enrichment is another damages measure for certain intellectual property claims. As opposed to
plaintiff’s actual damages, unjust enrichment seeks to deprive the wrongdoer of any gain or benefit
realized from the wrongful act. In other words, unjust enrichment takes from the bad actor the fruits of a
wrongful act. Dobbs Law of Remedies: Damages—Equity Restitution identifies the following potential
gains or benefits for purposes of an unjust enrichment award:

1. The increased assets in the hands of the defendant from the receipt of the property;

2. The market value of services or intangibles provided to the defendant, without regard to whether
the defendant’s assets were actually increased; that is, the amount which it would cost to obtain
similar services, whether those services prove to be useful or not;

3. The use value of any benefits received, as measured by (i) market indicators such as rental value
or interest or (ii) actual gains to the defendant from using the benefits, such as the gains
identified in item (5);

4. The gains realized by the defendant upon sale or transfer of the asset received from the plaintiff;

5. Collateral or secondary profits earned by the defendant by use of an asset received from the
plaintiff, or, similarly or comparably, the savings effected by the use of the asset. fn 8

Unjust enrichment is a damage measure that is frequently employed in intellectual property litigation.
For example, the Copyright Act expressly provides for the recovery by the copyright owner of "any
profits of the infringer that are attributable to the infringement and are not taken into account in
computing the actual damages." fn 9 Provided that an award does not include a double-recovery, a
copyright owner may recover both (a) actual damages and (b) an infringer’s profits. Accordingly, a
copyright owner can receive both actual damages and unjust enrichment damages as a monetary award.

With respect to trademarks, the Lanham Act explicitly authorizes a trademark owner to recover both the
infringer’s profits and its own damages sustained "subject to the principles of equity and upon such

fn 6 Id., 302.

fn 7 Id., 312–313.

fn 8 Id., 571–586.

fn 9 17 USC 504(2)(b).

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