Infringements of IP Rights

An infringement strategy

Determining whether there has been an infringement of IP rights and what legal action is appropriate can be a complex exercise. It is recommended that you consult a lawyer who understands these matters before taking any infringement action or establishing an infringement strategy. In some cases, by simply threatening someone with infringement proceedings you can incur a serious legal liability.

IP rights are most effective when they are enforced as part of an infringement strategy. An infringement strategy is not simply an intention to commence legal proceedings when you believe your IP rights are infringed. It involves a strategic assessment of your IP rights and setting parameters for beginning (and ending) infringement action.

There will be cases where your IP rights have been infringed but you may be advised by your lawyer not to bring legal proceedings against the infringer. This may be the result of particular difficulties:

• In proving the existence or ownership of the IP rights;
• In proving infringement; or
• The fact that the costs of the proceedings outweigh the value of succeeding in the infringement action.

An owner of IP rights should develop an infringement strategy which is appropriate for the particular IP rights held and the owner's particular needs. For example, the infringement strategy should specify:

• Pro-active measures to be used to limit the incidence of infringements. These can include the use of software access codes or passwords, or physical protection measures or data 'seeding' to enable easy detection of infringements;
• The methods which will be used to detect infringements. Detection methods could range from periodic review of competitor's products and advertising to campaigns specifically targeted at identifying infringements and infringers;
• The process which will be used to select targets for infringement action and the type of action against each target. For example, in the case where there are potentially too many infringements to prosecute, such as home taping of sound recordings, the strategy may specify the size and type of targets that will be pursued. In other cases the threshold may be set according to the financial resources of the infringer;
• The budgets for infringement action. All legal proceedings are potentially expensive and infringement actions can be amongst the most expensive. If you are unsuccessful not only will you have incurred your own legal costs, you will usually be liable for some or all of the legal costs of the person you alleged was an infringer; and
• Setting goals for infringement action. These goals can include obtaining injunctions, recovering damages or deterrence through the use of publicity.

The infringement strategy guide offered here is necessarily general and is not intended as an alternative to obtaining specific legal advice in relation to a particular situation of infringement.

This module will also help you identify the type of information you will need to provide to a potential legal adviser and what you can expect in return.