Prelitigation Checklist For Intellectual Property Infringement Actions

By Konrad L. Trope, Esq., Litigation Chair
Tsircou Law Firm

Owners of intellectual property (copyrights, trademarks, and patents) often can greatly facilitate and assist with the prosecution of an infringement action against an infringer by doing some prelitigation activity that helps solidify the foundation from which a lawsuit against an infringer may be launched.  Sometimes these prelitigation activities not only save tens of thousands or hundreds of thousands of dollars in litigation fees, but can also make the difference between winning or losing an application for an injunction or winning or losing the case at trial.  Moreover, these pre-litigation activities often support the awarding of attorneys’ fees, where intentional infringement is one of the legal issues being adjudicated.

The key to all these prelitigation activities is to document as much as possible the potentially infringing activity.  Most, if not all, of the following actions should be undertaken as soon as possible after discovering potentially infringing conduct:

  1. Take photos of the infringing design or infringing mechanical device;
  2. Take photos of the trademark for the infringing product or take photos of the infringing trademark itself;
  3. Download photos from the infringer’s web site;
  4. Download any and all photos from the infringer’s social media accounts including, but not limited to Snapchat, Instagram, Facebook, and Twitter, etc.
  5. Be certain that any and all downloads of photos are date and time stamped, along with identifying information such as confirming where the photograph was taken;
  6. Very often downloads and print-outs of photographs will be date and time stamped by your own computer;
  7. If the infringing activity is spotted at a Trade Show be certain to take multiple photographs not only of the infringing product and/or infringing trademark, but also take photographs of the exhibit booth and of the personnel who are working at the exhibit booth along with obtaining any and all brochures;
  8. Download any catalogs that contain the infringing trademarks or patent products;
  9. If possible, make a purchase of the infringing product or of the product or service with the infringing trademark documenting who, what, when, where, and how;
  10. Also, If possible make 2 or 3 purchases of the infringing product or service;
  11. Try and collect any and all printed materials whether obtained from the Internet or in person that are clearly being produced or distributed by the alleged infringer; and
  12. If time allows, have a third party, unknown to the alleged infringer, take the photographs and/or make the confirming purchases. Indeed, the alleged infringer is likely aware of the company and/or people associated with the owners or licensees of the infringed trademarks or products.

In the case of copyright infringement, the above checklist can be appropriately modified.

After most, if not all of the foregoing has been completed, then the owner or licensee of the infringed intellectual property can have counsel prepare a cease and desist letter the will be more convincing and possibly could lead to a faster settlement.

Konrad L. Trope is Litigation Chair of the Tsircou Law Firm.  Over his 30 year career he has litigated cases involving patents, trademarks, copyrights and related entertainment matters.  He has successfully obtained reported decisions in various federal district courts across the country, as well as also before the United States Court of Appeals for the Federal Circuit. Mr. Trope was a cum laude graduate of Pomona College in 1981 and graduated UCLA Law School in 1985 where he was a member of the UCLA Law Review.  Following graduation, Mr. Trope clerked for Hon. H. Robert Mayer, Associate Judge at the United States Court of Federal Claims and then clerked for the Hon. Wilson Cowen, Senior Circuit Judge, at the United States Court of Appeals for the Federal Circuit. 

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