Litigation: Emergency business litigation in IP: Copyrights, trademarks and patents

TROs and preliminary injunctions are essential tools to protect copyrights, trademarks and patents

Copyright, trademark and patent are three different legal concepts all based around the idea that a person or entity should have some legal means to protect their intellectual property (IP). In the modern business environment, intellectual property can be important assets owned by a firm, and no matter what form that IP takes, it is important that not only do firms have the ability to prevail in these suits in the long-run, but also have the ability to protect their IP while their claim is still pending. That is where a temporary restraining order (TRO) or preliminary injunction can be a truly essential tool.

Copyright

A copyright claim, in its simplest form, requires that there has been copying done by the defendant and that the plaintiff has proof of ownership or a valid copyright. Ideally, the copyright will be registered with the Copyright Office, which will give federal courts subject matter jurisdiction over the case and is prima facie evidence that there is a valid copyright being defended. Even if the registration is still pending, most federal courts will still find subject matter jurisdiction in such cases. One thing to keep in mind, however, is that copyright infringement can still occur even if the registration process has not yet begun, as the copyright attaches once the work meets the statutory requirements of the Copyright Act. Registering a copyright is merely a procedural prerequisite that must occur before a federal court can assert jurisdiction over a case.

The second element—copying the work—requires a showing that the defendant either copied the copyrighted work or produced a work substantially similar to the protected work. A defendant’s best defense will be to claim that he lacked access to the copyrighted work, and so could not have copied it, and that the work is too dissimilar to allow an inference of copying. The former defense can be rebutted by showing that the defendant either had direct access to the work, or indirectly by showing that the defendant had knowledge of the work or an opportunity to view it.

In terms of emergency litigation and copyright infringement, the Copyright Act itself has a provision allowing for an emergency injunction to protect a copyright. In determining whether or not to grant the injunction, the typical four-part test is used. First, the moving party must show that they have a likelihood of success on the merits. Next, the court inquiries into whether, absent the injunction, there will be irreparable harm done to the moving party. It used to be the case, until recently, that the second element of the test, whether or not there was an irreparable harm, was presumed by the courts in copyright cases, but it appears that the trend among courts has been to do away with that presumption and force the moving party to make a showing of the irreparable harm. That said, if the harm can be shown, the third factor, the balancing of the harms, will likely favor the moving party. The public interest element does not go clearly in one direction, as the public interest for copyrights to be protected to incentivize creators is balanced against the public interest in encouraging innovation. Therefore, a court will likely not base its decision on this factor.

Trademark

A trademark protects the trade names and marks used by business. As firms often place a great deal of value in the goodwill and brand familiarity of those names, the use of those marks, or marks similar, can often be a serious problem that needs immediate redress.

In getting an emergency injunction to prevent a competing firm from using a protected trademark, the following elements must be met:

  1. The mark must be eligible for protection
  2. The moving party must show that it is the senior user
  3. The moving party must then show a likelihood of confusion between its mark, and the mark it is challenging
  4. The moving party must show that the likelihood of confusion will lead to an irreparable injury for which there is no adequate legal remedy

For a mark to be valid, it must be both distinctive and used in commerce. Similar to copyright cases, registration of a trademark will create presumption of validity. If the mark is not registered, however, the moving party can still meet this element by showing that its mark distinguishes its product from those of others.

In terms of the likelihood of confusion, most courts use a seven-part test to determine whether or not consumers are likely to confuse the products of the plaintiff from those of the defendant. Among the factors considered are the similarity of the marks, the similarity of products, strength of complainant’s mark and several others.

A court ruling on an emergency injunction will then turn to the standard four-part test. In trademark cases, as long as the moving party can show a “better than negligible” chance of success, the likelihood of success element will be met. The second element, whether an irreparable harm will occur without the injunction, trademark infringement used to be presumed in trademark cases, but the recent trend, like in copyright, has been to force the moving party to provide some evidence that there is an irreparable harm that will occur unless the court grants an injunction. In balancing the harms, courts will often demand that the moving party put their prospective injury into concrete terms rather than a simple presumption, as this harm must be weighed against the harm that the non-moving party will suffer in the injunction is granted. The final element, that of public interest, will likely be met so long as the preceding three elements have been met, as courts tend to reason that the public interest is in favor of as little confusion as possible.

Patent

Patent cases tend to work a bit differently than copyright or trademark cases. For starters, while a copyright or trademark infringement claim may begin before registration, a U.S. Patent number is required to initiate a patent infringement claim. In terms of what is considered patent infringement, a court will only look to the claims made on the patent, rather than any schematics or drawings. A product looking similar to a patented invention is not necessarily grounds for patent infringement. Another key aspect of a patent infringement case is a Markman hearing, where a court will determine the construction of the claims on the patent. These hearings often take place early on in the litigation, before or during a hearing for a preliminary injunction.

In terms of showing actual infringement, the infringement may be either literal infringement or equivalency. Literal infringement is a direct copy of a protected patent and, as a result, is relatively uncommon. In terms of equivalency, courts tend to use a function-way-result test, determining whether the device performs substantially the same function in substantially the same way to obtain substantially the same result.

In determining whether a preliminary injunction will be granted, though, the normal four-part test is still used. The usual rules for proving the likelihood of success apply, as a valid patent will not create a presumption of success in a case where the validity of the patent is being challenged. In terms of the second element, the existence of an irreparable injury without adequate remedy at law, the trend has been for district courts to no longer presume the existence of an injury in patent cases, and so a moving party will be forced to show that they will suffer an actual injury. The balance of harms analysis is similar to those in copyright and trademark cases, and, if the previous element has been met, will be quickly disposed of by the court. Finally, the public interest will favor the party more likely to succeed on the merits, as the public interest is in the use of patents to encourage innovation by incentivizing new elements. As such, presuming the first element has been met, the public interest element will pose no obstacle to the entering of an injunction.

It is impossible to condense the sheer complexity of copyright, trademark and patent law into an article of this size. The preceding was a glimpse into how emergency litigation operates in these contexts, and is by no means an exhaustive look at the process. Because of both the importance and intricacy of protecting one’s intellectual property, an experienced commercial litigator can be an indispensable asset in pursuing and defending these claims.

Contributing Author

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Thomas Patterson

Thomas E. Patterson started the Patterson Law Firm in 2000. He has 32 years of experience preparing and trying lawsuits for businesses, professionals and entrepreneurs—often...

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