USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
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 suffered 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 excessive, the court has discretion to award a sum it • Attorneys’ fees: A prevailing party may recover attorneys’ fees and litigation costs in an “exceptional 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 inter - est and other enhanced remedies are also available. See 7.9 Counterfeiting and Boot- legging . Monetary remedies for copyright infringement include: finds to be just. • Costs of action • Actual damages: This includes the actual loss suffered 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 damages 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 infringement, 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 An award of statutory damages and/or attor - neys’ fees is unavailable where infringement of an unpublished work began before registra - tion or where, in the case of a published work, infringement commenced after publication and before registration (unless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 cer - tain forms of relief without prior notice to the defendant, particularly in the context of seeking temporary or preliminary relief:
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