Trademark infringement may result in catastrophic results for a business, both in terms of financial losses and reputation. Not all types of infringement are equal, as different actions may affect the level of damages incurred to the injured party.
In this article, you will understand the concept of contributory infringement and how it affects a trademark lawsuit.
What is Contributory Infringement? – The Fundamentals
Contributory infringement is a form of indirect infringement of intellectual property that is intentionally incurred by the perpetrator and may negatively affect a business’s intellectual property or reputation.
The person filing a lawsuit based on contributory infringement has the burden of proof. The first element to prove contributory infringement in court is to show the existence of a direct infringement of the trademark.
Once the plaintiff has demonstrated that the infringement is real, the next step is to prove the defendant knew about the infringement directly or indirectly, which includes:
- Intentionally inducing a third party to engage in infringement, or
- Continuing to supply goods or services to an individual or entity that knew the existence of trademark infringement
Please note that either actual or constructive knowledge may result in contributory infringement. Last but not least, the plaintiff must demonstrate that the defendant controlled the instrumentality used to infringe a protected trademark.
As it is plain to see, it is not easy to gather the necessary evidence and put it in writing to demonstrate the existence of contributory infringement in court. The guidance of an expert attorney must be a top priority to guarantee a successful outcome.
Contributory Infringer Liability in a Trademark Lawsuit – Legal Remedies
While it is possible to enforce a common law (unregistered) trademark in court, the best option is to obtain proper registration. State registration is usually cheaper, but federal registration grants superior legal protection.
Trademarks registered with the United States Patent and Trademark Office (USPTO) enjoy nationwide protection, a presumption of validity in case of infringement, and the right to file infringement lawsuits in federal courts.
Cases involving contributory infringement of trademarks generally result in a lawsuit filed to stop the infringing party. Courts often order an equitable relief, which usually happens in the form of preliminary injunctions to stop the infringement before the final judgment.
A permanent injunction may be part of a final judgment. If applicable, the plaintiff may seek compensatory monetary damages. To verify the existence of actual damages, the court in charge of the case will assess:
- The amount of profit obtained as a result of the defendant’s infringement
- The damages incurred by the defendant’s infringing activity
- The amount spent by the plaintiff in the attempt to restore the value of the trademark damaged by the defendant’s actions
- The amount of royalties to be paid by the defendant, had the trademark been properly licensed
Considering the intentional nature of contributory trademark infringement, a plaintiff who wins a lawsuit in a court may also seek enhanced damages (e.g., treble damages for trademark counterfeiting).
Depending on the particularities of the case, it is possible to obtain attorneys’ fees and costs.
Contributory Infringer Liability in a Trademark Lawsuit – Immediately Seek Expert Legal Guidance
Waste no time with uncertainty. Contact Trademark Attorney Romy B. Jurado today by calling (305) 921-0976 or emailing Romy@juradolawfirm.com to find a cost-effective solution for your case.