July 2007

Intellectual Property Law Bulletin

The Intellectual Property Bulletin is published by the Intellectual Property Practice Group at Arthur, Chapman, Kettering, Smetak & Pikala, P.A. to keep our clients informed of the ever-changing complexities of intellectual property and business law.  Topics in this issue cover: 1) Lowering the High Costs of IP Litigation and 2) Well, That Didn't Take Long! Viacom Battles Google and YouTube, reprinted from the May 2007 issue of the  Privacy & Data Security Law Journal.

LOWERING THE HIGH COSTS OF IP LITIGATION

It should come as no surprise that litigation costs of IP cases are high. According to a recent American Intellectual Property Law Association survey, costs (which include attorney fees) for a trademark infringement suit with a risk less than $1 million averaged $300,000 through trial, while costs for a copyright infringement suit with the same risk averaged $250,000 through trial. Furthermore, these figures increase rapidly if more than $1 million is at risk. These high costs, which do not include client time related to responding to discovery and appearing at depositions and trial, should cause insurers and self-insured companies to think about creating strategies to minimize litigation costs in IP cases. Here are a few suggestions that may help your company minimize IP litigation costs.

First, decide quickly on a focused case strategy that ties existing legal arguments with evidence and witnesses. It is in this stage that contested and uncontested issues / claims should be identified and prioritized. Part of developing an early strategy is also drafting a realistic budget and damage assessment. A complete case assessment and strategy should improve efficiency, theoretically eliminate major surprises between client and counsel, and ultimately cut out unnecessary costs.

A second method litigants and counsel can apply to manage costs is to identify and explore every possible settlement opportunity. Too often lawyers wait for a court ordered settlement conference or mediation to begin serious case-resolution analysis and negotiations with opposing counsel. These analysis and negotiations can, and probably should, begin at any time, even before discovery begins. While early settlement attempts may not always prove successful, they lay a beneficial groundwork for later negotiations after the parties have undertaken discovery.

If the parties have not settled the case before mediation, a third way to control costs is to ensure that the parties employ a mediator skilled in both the relevant IP area and market. For example, parties involved in a copyright infringement lawsuit over misappropriated song lyrics should retain a mediator with recording industry experience. While this may not be possible in all cases or areas of the country, every effort should be made to find a mediator with industry-specific experience rather than a jack-of-all-trades. Requiring experienced and skilled mediators will hopefully settle the lawsuit without incurring extensive trial-related expenses and potential appeals.

Finally, another method to minimize IP litigation costs is to suggest bifurcation of the liability and damages phases of the case, if appropriate. If damages are not contested or if the defendant is confident it will prevail at summary judgment on liability issues, bifurcation may save both parties discovery-related expenses related to damages issues. While bifurcation is not ideal in every case, and the court has the final say in granting such a request, it’s always advisable to keep this device in mind and recommend it in the appropriate situation.

It goes without saying that law firms and lawyers must always do all they can to deliver effective representation at the lowest possible cost. Arthur Chapman’s lawyers never hesitate to be proactive and creative in their efforts to settle IP cases. If settlement is not apprppriate, our lawyers do all they can to bring the case to trial in the most cost-effective manner possible. We work with our clients to develop a comprehensive trial strategy while concurrently developing cost saving discovery and trial methods. These methods may include use of in-house document production software, deposition coding software, and trial technology all designed to present the case effectively and efficiently.

Arthur Chapman’s Intellectual Property Litigation Practice Group chairpersons,  Chris Newkirk and Tom Forker, authored the featured article, Well, That Didn't Take Long! Viacom Battles Google and YouTube , reprinted from the May 2007 issue of the  Privacy & Data Security Law Journal.  The article explores the future of the use of copyrighted materials on online hosting sites.

The Privacy and Data Security Law Journal is a publication exploring developments in the law relating to privacy and data security issues.  Published monthly, the Journal provides timely, expert analysis of privacy and data security trends that attorneys and bankers need to understand.

The Intellectual Property Litigation Practice Group at Arthur Chapman is available to assist with your IP litigation needs. Please contact Tom Forker or Chris Newkirk with any IP-related issues. Our IP team is also available to conduct seminars at your office to assist your team in evaluating and addressing any IP-related claims. We look forward to working with you in the near future.

 Click the following link for a reprinted copy of this article:
Well, That Didn't Take Long! Viacom Battles Google and YouTube