A patent can
be infringed either literally or under the doctrine of equivalents. First
as a matter of law, a court must construe and interpret a patent's claims
to establish their meaning and scope. In literal infringement, the
accused infringing device or process must contain every limitation of the
asserted claim. Each claim of a patent is considered separately and
not all claims of a patent need to be infringed to establish infringement.
Under the doctrine of equivalents, if a device performs substantially the
same overall function in substantially the same way to obtain
substantially the same result as the claimed invention, the infringement
may be found even if the device does not literally infringe each element
of a patent claim. The difference between literal infringement and
the doctrine of equivalents is that an accused device that does not
literally infringe a claim may be found to infringe if there are only
"insubstantial differences" between the claimed element and the equivalent
element. The statute of limitations in patent infringement actions
is six years and applies only to actions for damages. Damages
available for patent infringement include lost profits, established
royalty or reasonable royalty and in some cases attorneys' fees and treble
The test for
trademark infringement is whether the accused infringing mark is likely to
cause confusion, or cause mistake, or to deceive. The analysis
of likelihood of confusion is more than just a side by side comparison of
the trademarks. Rather the trademarks must be considered in the
context in which the goods are sold, including the ordinary care that a
consumer uses in purchasing particular types of goods. Actual
confusion or deception of purchasers is not essential to trademark
infringement. The owner of a federally registered trademark has the
option of its actual damages for the infringement, or seeking an
accounting of an infringer's profits. Actual damages includes the
loss of sales due to actual confusion, damage to the trademark owner's
business good will, loss of income resulting from a reduction in the price
of goods due to infringing competition, expenses, and loss of reasonable
royalty that would have accrued from licensing the trademark. In
some cases, such as intentional or deliberate infringement, attorneys'
fees are recoverable as damages.
protection exists regardless of whether the copyright is registered.
However, a copyright registration is a prerequisite for filing a copyright
infringement action based on a work of US origin. Registration is
also a prerequisite to recovery of statutory damages and attorney's fees
in an infringement action. Registration further provides prima facie
evidence of ownership and validity of the copyright. A
copyright does not grant the right to exclude others from use of an idea.
Copyright protects only a particular embodiment of an idea.
Therefore, if someone independently creates something that is similar, or
even identical to, the copyrighted work, no infringement exists.
Copyright infringement requires actual copying. A copyright owner is
entitled to preliminary and permanent injunctions to stop an infringement.
The court also may order the destruction of the infringing articles, as
well as the plates, molds, masters, negatives, etc. used to make the
infringing articles. A copyright owner is entitled to recover any
actual damages as well as any profits made by the copyright infringer.
The copyright statute also allows statutory damages, which are determined
by the court, and are limited to between $500 and $20,000 unless the
infringement was willful. For willful infringement the court may
award up to $100,000 in statutory damages. The copyright owner must
select between actual and statutory damages and cannot collect both.
Attorney's fees may also be recoverable as part of costs in a copyright
Matthew G. McKinney, Attorney
121 S. Orange Ave., Suite 1500
Orlando, FL 32801