USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
for example, there is concern that evidence will be destroyed if notice of the action is given before evi - dence is impounded and secured. Destruction Courts can also order that the infringing merchandise and materials used to manufacture the same are deliv - ered up and destroyed. Where this relief is sought, the movant must give notice to the US Attorney’s Office that seizure will not prejudice a criminal prosecution. Asset Freeze Orders Asset freeze orders may also be granted in injunction proceedings to prevent the dissipation of assets that could be used to satisfy a potential judgment. Copyright For copyright cases, the right to injunctive relief is similar to the rights in a trade mark case. However, the risk of irreparable harm is not presumed. 10.2 Monetary Remedies Monetary remedies for trade mark infringement are “subject to principles of equity” and include: • Actual damages: This includes the actual loss suf - fered by the trade mark or copyright owner due to infringement such as its lost profits. In cases of egregious conduct such as wilful infringement or counterfeiting, a court may enhance the award in its discretion up to three times actual damages. • Profits: An infringer may be ordered to pay the profits it earned from the infringement. This is often calculated based on the sales attributed to the infringing activity minus the costs of goods sold. The plaintiff only needs to establish the gross sales, and the defendant has the burden of establishing its expenses. If the court finds that the recovery based on profits is inadequate or exces - sive, the court has discretion to award a sum it finds to be just. • Costs of action. • Attorneys’ fees: A prevailing party may recover attorneys’ fees and litigation costs in an “excep - tional case”. The standard to recover attorneys’ fees is sometimes lower under state law causes of action.
• In counterfeiting cases involving a registered mark, statutory damages, pre-judgment interest and other enhanced remedies are also available. See 7.9 Counterfeiting and Bootlegging . Monetary remedies for copyright infringement include: • Actual damages: This includes the actual loss suf - fered by the copyright owner due to infringement. For copyright owners, this may include lost sales or licensing fees. • Profits: An infringer may be ordered to pay the profits it earned from the infringement. This is often calculated based on the sales attributed to the infringing activity minus the cost of producing the goods. • Statutory damages: A copyright owner may elect to recover statutory damages in lieu of actual dam - ages and profits in an amount in the discretion of the court of not less than USD750 or more than USD30,000 per work infringed. For wilful infringe - ment, a court may increase the statutory damages up to USD150,000. • Costs of action • Attorneys’ fees: The prevailing party may recover attorneys’ fees. An award of statutory damages and/or attorneys’ fees is unavailable where infringement of an unpublished work began before registration or where, in the case of a published work, infringement commenced after publication and before registration (unless registration was made within three months after publication). Restrictions and Considerations to Damages Awards for damages must be reasonable and just. Courts avoid awarding damages that would result in double recovery – plaintiffs cannot claim both profits and actual damages for the same infringement. 10.3 Attorneys’ Fees and Costs See 10.2 Monetary Remedies . 10.4 Ex Parte Relief Trade mark and copyright owners can seek certain forms of relief without prior notice to the defendant,
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