Lawyer Monthly - June 2022

of damage done to my client in terms of market recognition was extremely significant in a very short amount of time due to the infringement of its trademarks. Fortunately, my client was able to prevail in forcing the competitor to immediately change its name and logo. Roleof Experts in TrademarkCases The role of a damages expert in a trademark case is similar to that in a patent case, in that a damages expert is asked to provide an opinion of the appropriate amount of damages suffered by the trademark holder as a result of infringement of the trademark at issue. The opinions here, just as under a patent infringement claim, are guided not only by trademark law but also by court precedents and sound economic principles. The remedies for trademark infringement in the United States consist of (1) the trademark owner’s lost profits, (2) disgorgement of the infringer’s profits or (3) a reasonable royalty. In my experience, it is typical that in trademark infringement cases, plaintiffs typically claim disgorgement of the infringer’s profits. Compared to the analysis required under a Georgia-Pacific analysis that is typically needed to assess damages related to patent infringement, a disgorgement of profits analysis is typically a simpler analysis of the infringer’s profits. Georgia-Pacific is a methodology that was established by the US courts in 1970 in Georgia-Pacific Corp. v United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). The Georgia-Pacific v US Plywood case describes a “hypothetical negotiation” which “attempts to ascertain the reasonable royalty upon which the parties would have agreed had they successfully negotiated a license agreement for rights to the patent(s) at issue, just before infringement began”. Under the hypothetical negotiation, the Georgia-Pacific case set forth 15 factors that the courts require to be considered when determining a reasonable royalty rate. The Georgia-Pacific factors are widely recognised and acknowledged by the federal courts and damages experts as an appropriate methodology to assist in the determination of reasonable royalty damages in patent infringement cases. Compared to the Georgia-Pacific analysis that is typically required to assess damages related to patent infringement, a disgorgement of profits analysis is typically a simpler analysis of the infringer’s profits. It is a much less complex analysis to determine disgorgement of profits under a trademark infringement matter, as opposed to a full Georgia-Pacific analysis in the context of a patent infringement case. Conclusion Given the complexity and ambiguities of assessing the value of technology, patents and intellectual property in the context of litigation, and withing complex multi-featured products, the role of the damages expert witness will almost always be required. This role will always, to some degree, require opinions of the expert in order to provide the court with information that is necessary in order to property consider and rule on infringement of intellectual property claims and to properly compensate intellectual property holders when their IP has been infringed. 96 WWW.LAWYER-MONTHLY.COM | JUN 2022 EXPERT WITNESS About Intellion Intellion assists law firms and corporate clients to develop economically sound and defensible damages analyses, arguments and strategies. The firm works with clients throughout all stages of the litigation process, including pre-suit assessments, discovery, document requests, interrogatory questions and responses, financial and marketing witness support, trial preparation, settlement analysis and trial strategies. Marcus DReading Founder Intellion Analytics Group 3267 Bee Cave Road, Suite 107-324, Austin, Texas 78746 Tel: +1 512-806-7610 | +1 512-826-2340 E:

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