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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, May 17, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will provide guidance to IP counsel on the monetary and non-monetary remedies available for trademark infringement. The speaker will address navigating through inconsistent court rulings on trademark infringement remedies.

Faculty

Robert W. Payne
Attorney
Payne IP Law

Mr. Payne is the owner of Payne IP Law, located in the heart of Silicon Valley. With over 20 years’ experience, he practices trademark, patent and other intellectual property litigation and dispute resolution. Mr. Payne is former Chair of the California Bar’s IP Section Executive Committee and former Chair of the AIPLA’s Patent Litigation Committee. He has authored over 50 trademark and patent articles in various publications and is a frequent presenter on IP topics. 

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Description

In 2020, the Supreme Court resolved a longstanding circuit split with its decision in Romag Fasteners v. Fossil Group. As a result, proof of willful infringement is no longer required for trademark owners to recover infringers' profits. The decision makes it easier for trademark owners to recover infringers' profits and increase the damages awards.

While the Court's decision brings some consistency to court treatment on remedies, it raises new issues. If willfulness is not required, when is seeking actual damages preferable to seeking an award of the infringer's wrongful profits? Moreover, the enactment of the Trademark Modernization Act took effect in December. As a result, a rebuttable presumption of irreparable harm once again applies to any permanent injunction and preliminary injunction decision. How will that change current practice?

Robert Payne has delved into trademark remedies for over 10 years in numerous articles and presentations, is the incoming chair of the Trademark Committee for the California Lawyer’s Intellectual Property Section, and former Chair of the Section’s Executive Committee. Listen as he examines non-monetary equitable remedies as well as monetary remedies that can be pursued in federal trademark infringement cases and addresses the inconsistencies which plague this important area of IP law.

Outline

  1. Court treatment of remedies
  2. Non-monetary relief
    • Changes brought by Trademark Modernization Act
    • Preliminary injunctions
    • Permanent injunctions
  3. Monetary relief -- hurdles and opportunities
    • Actual damages
    • Wrongful profits
    • Royalties -- a rarely used remedy
    • Where are we, now that there is "no" willfulness requirement?
    • Challenges of enhanced damages and attorneys' fees
  4. Other remedies

Benefits

The panelist will review these and other key issues:

  • How has the Trademark Modernization Act changed the scene?
  • Willfullness is no longer required for wrongful profits. Where do we go from here on monetary remedies?
  • Is an award of a royalty an alternative to actual damages and wrongful profits?
  • How do these changes affect cease and desist negotiations?