Practical Takeaways from Large-Scale International Intellectual Property Litigation

Gerard P. Fox

Lauren M. Greene

Many of today’s companies are large global entities that hold intellectual property rights in several jurisdictions across the world. What happens when those rights, held by various subsidiaries in many jurisdictions, are being infringed in one particular jurisdiction? Our firm recently encountered that situation in one of our intellectual property cases. We helped a global music publisher successfully enforce its internationally held copyrights in a litigation in Los Angeles, California. The takeaways from that litigation shed light on how companies can ensure they are prepared to enforce their intellectual property rights and on how attorneys can help their clients navigate these complex situations.

Maintain Organised Records

While not the most thrilling topic, proper record maintenance is the key to successful intellectual property litigation. In every case, the plaintiff will have to show that they actually own the rights that they are suing to enforce. However, for global businesses, these ownership records can be scattered across offices, with only a few employees having access to them. To remedy this, it is essential for every company to have a central database that houses all of its intellectual property ownership documentation. This database should be as detailed as possible and should be easily accessible for the company’s in-house attorneys. Every time the company acquires new intellectual property, either through registration of new IP or acquisition of existing IP, the associated paperwork should be added into the database. That said, in order for this to actually happen, employees tasked with obtaining intellectual property must be trained on the protocols for cataloguing the company’s ownership documentation.

Ensure Rights Across Separate Business Entities

What happens when the entity suing to enforce IP rights is not the entity that actually owns those rights? That plaintiff cannot win its case because it does not own the intellectual property. For companies with numerous subsidiaries in different countries, it is imperative to have intercompany agreements that allow each entity to enforce the rights owned by its sister entities. These agreements simplify the processes and allow for just one entity to be the named plaintiff in the litigation. Keeping the number of plaintiffs to one also limits the amount of discovery a defendant can pursue during the litigation.

Confirm Clients’ Rights Early

Attorneys in these situations should ensure that their clients have all of the necessary ownership paperwork in order as early in the representation as possible. The last thing an attorney wants is to start the process of verifying ownership rights only after receiving a discovery request from opposing counsel. To avoid this, the first step for an attorney is to determine what type of documentation and information is necessary for the client to prove the ownership aspect of their case. With this knowledge in mind, the attorney can guide their client through the process of finding and properly documenting their rights. The attorney should work directly with those employees responsible for maintaining and processing the company’s records.

Conclusion

Through proper preparation and attorney guidance, global companies can ensure that they are ready to pursue IP litigation in any jurisdiction. This upfront planning and organisation can help reduce litigation costs and increase a company’s odds of successfully enforcing its IP rights.


XLNC MAGAZINE | No. 04 | November 2019

 

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