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biccat wrote:Here's a case I found in a brief search. If one element of the standard is "reckless disregard for the possibility of infringement," then a legal opinion would weigh against infringement. However, the required "knowledge of [plaintiff's] product line, and [a] failure to investigate the possibility of intellectual property violations" after notice, then a legal opinion may weigh in favor of infringement (the opinion proves you were well aware of the product and pointed out potentially infringing elements).

I think it is important to note that here we're discussing willfulness. The products were already found to infringe. I think it is implicit in what you are talking about, but I wanted to make that clarification just in case it isn't apparent to some readers.

I think that in this case, the recklessness was in failing to seek a legal opinion subsequent to what amounted to a de facto notice of infringement, i.e. the products being rejected because they were "similar" to the Plaintiff's works, and prior to an independent launch of the products. In essence, the Defendant had reasonable knowledge that the products might infringe, had long access to legal counsel, and yet "recklessly" failed to get an opinion before selling the products. So it was the failure to seek an opinion (combined with the ease of seeking such an opinion) that contributed to a finding of willfulness , as you've pointed out above.

But based on the same facts you've also concluded that a legal opinion would weigh in favor of a finding of willfulness because it demonstrates knowledge of potential infringement, if I'm understanding you correctly. This seems to be a catch 22. If it is reckless to not seek a legal opinion when you have effective notice of likely infringement and the resources to easily seek an opinion, how then can seeking a legal opinion prior to an effective notice of likely infringement both constitute knowledge of likely infringement and the reckless disregard to prudently investigate the possibility of infringement by failing to seek a legal opinion?

In simple terms, the Defendant A) knew what the Plaintiff's works were and was well acquainted with them B) had been in the business for more than two decades and had legal representation for more than a decade C) had been told by others in the business that the products were too "similar" the the Plaintiff's works and D) launched the products without consulting the aforementioned legal representation. Given these facts, the "reasonable inference" is that the Defendant didn't want to hear that the products infringed the Plaintiff's works and so, with a "reckless disregard" for the Plaintiff's works, launched the products anyway.

The narrative is that the Defendant knew it would have been prudent to consult it's longstanding legal representation but decided not to because it also knew that infringement was likely enough that a legal opinion would confirm it. Given the Defendant's long history in the business and ready access to legal representation, the Defendant should have known that the responsible thing to do would have been to get a legal opinion.

All that this precedent suggests to me is that failing to seek a legal opinion when you are aware that such an opinion is a responsible course of action in order to avoid infringement can be a contributing factor to a finding of willfulness. It does not suggest to me that seeking a legal opinion about infringement in any way contributes to a finding of willfulness.

Based on my experience with jurors, I think that the facts of the case, taken as a whole, were what motivated the jury to find willful infringement. The Defendant admitted to attempting to copy the Plaintiff's works (which is rare), was told that the products were too similar and thus wouldn't be purchased, and then, without consulting a law firm with which the Defendant had a 12 year relationship, the Defendant launched the products independently. This is a relatively damning narrative. Failing to seek a legal opinion was magnified by the Defendant's long participation in the jewelry business, the long relationship with the legal representation, and the financial motivation to sell a product that was rejected by the retailer that commissioned it. What you have is a party that knows what the right thing to do should be, and at all steps failed to act responsibly in order to make a profit. The key theme here is respect. The Defendant did not respect the Plaintiff's rights or creativity. The Defendant did not respect the business that it had long been a part of. And it was all motivated by a desire to make money off of what amounted to a failed design. Knowing that the design was too close to the Plaintiff's works for the retailer to purchase it, the Defendant put it on the market anyway because it didn't want to take a bath on it.

This is the essence of willfulness, at least in the minds of a jury. The Defendant knew what was wrong and did it anyway for the petty motivation of money. The reason that I've engaged in this long discussion is to point out the lengths one must go to in order to reach a finding of willfulness. The "right" thing for the Defendant to do was not sell the products. The Defendant knew that and the Defendant's failure to consult its attorneys contributed to this inference.

Seeking a legal opinion, on the contrary, does not feed into a narrative of willful wrongdoing unless the opinion clearly states that you shouldn't be doing what you've done. In the Chapterhouse case, to bring this back on topic, I don't think you get close to a clear and reasonably uncontested narrative of willful infringement. The facts simply aren't there. Right off the bat you have two parties with an [/i]unequal[i] relationship. This itself makes a finding of willfulness very difficult, barring exemplary facts in support of it, which there isn't likely to be. The narrative you'd have to craft for Chapterhouse to be hit with willful infringement is an extreme reach given the facts of the case and a very compelling counter narrative from Chapterhouse.

edit: working to revise my comments...please hold.

weeble1000 wrote:I think it is important to note that here we're discussing willfulness. The products were already found to infringe. I think it is implicit in what you are talking about, but I wanted to make that clarification just in case it isn't apparent to some readers.

Good point! It's sometimes hard to separate out the distinct elements of the case if you're not familiar with that type of reasoning.

weeble1000 wrote:But based on the same facts you've also concluded that a legal opinion would weigh in favor of a finding of willfulness because it demonstrates knowledge of potential infringement, if I'm understanding you correctly. This seems to be a catch 22. If it is reckless to not seek a legal opinion when you have effective notice of likely infringement and the resources to easily seek an opinion, how then can seeking a legal opinion prior to an effective notice of likely infringement both constitute knowledge of likely infringement and the reckless disregard to prudently investigate the possibility of infringement by failing to seek a legal opinion?

Edit: I really should shepardize these cases...

So the new case on willful infringement is In re Seagate (at least in the patent realm).
The old standard was as follows:

Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing. Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity

That is, essentially, a subjective standard: what did the defendant know, and how did he act on that knowledge?

The new standard is an objective standard: what did the defendant know, and did he act in an objectively reckless manner?

Accordingly, to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. See Safeco, slip op. at 19 (“It is [a] high risk of harm, objectively assessed, that is the essence of recklessness at common law.”). The state of mind of the accused infringer is not relevant to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.

Therefore, and this guy agrees with me on pages 9-10, a legal opinion will not serve to insulate someone from infringement, and may in fact be a bad thing, as it shows that the defendant had additional knowledge.

weeble1000 wrote:Based on my experience with jurors, I think that the facts of the case, taken as a whole, were what motivated the jury to find willful infringement.

I would defer to your experience with jurors, but also agree with you. These cases always seem to be a "totality of the circumstances" rather than specific separable facts. And bringing it back to Chapterhouse, they have a much better narrative than GW, and it will play better with jurors.

See also here for some statistics on patent willful infringement.

Although the absence of an attorney opinion in bench trials equates to a finding of willfulness (84%), the presence of an attorney opinion does not insulate a defendant from willfulness (45%). Judges are more likely to find willfulness when the infringer does not present an attorney opinion as a defense. Attorney opinions seem to make almost no difference in jury trials.

It looks like juries tend to not give any weight (one way or the other) to attorney opinions, at least in patent infringement (note that this data is from 1999-2000, so before Seagate).

That's really cool, biccat. Thanks for those statistics. In my experience, you really have to piss off a jury to get willfulness. By this I don't mean the attorney, per se, but the Jury has to want to punish the Defendant.

I wonder how those statistics would look for more recent years, especially considering the spate of patent litigation being pushed through East Texas in the past several years. It would also be interesting to see how bifurcation impacted findings of willfulness. Bifurcation is often problematic. I wouldn't be surprised if there was a higher incidence of jury findings of willfulness in cases where that issue was bifurcated. I often find that a compromise by the jury on infringement usually precludes a finding of willfulness as jurors favorable to the Defendant that are willing to bend on infringement do so by getting willfulness off of the table, but that's far from a hard and fast rule. There's frightfully few hard and fast rules when it comes to deliberations.

The '07 objective standard is great in theory, but jurors are anything but objective. I'd like to see if there was a wider difference between juror and judge findings of willfulness subsequent to 2007. There may or may not be. Statistics are sometimes problematic. An objectively high likelihood that actions caused infringement is also balanced by the somewhat subjective "clear and convincing" standard. What evidence is clear and convincing? Not even federal judges would agree about that on a case by case basis.

This is also interesting:

"The patentee will have to demonstrate by clear and convincing evidence
that it would be “objectively reckless” for a reasonable person in the alleged infringer’s
position to continue the infringing activity. Given the inherent uncertainties in claim
construction and validity, particularly with regard to obviousness in light of the Supreme
Court’s decision in KSR International Co. v. Teleflex Inc.,
56 establishing this threshold objective
standard will be difficult. Moreover, the proof on this aspect of the test will, of necessity,
mirror to a large extent the proof the patentee will present in support of the underlying case.
In light of the “objectively reckless” portion of the test, only the clearest case of infringement
and validity would seem to satisfy the standard. Put another way, so long as the defendant
demonstrates non-frivolous noninfringement and/or invalidity arguments, it is unlikely that
its decision to continue the allegedly infringing activity could be considered “objectively
reckless.”"

In other words, how can your actions be "objectively reckless" if there's a good chance that the patent is invalid, or considering that there could be widely divergent interpretations of the extent of patent claims based on potential claim constructions? I've seen a few patent cases live or die based on the outcome of Markman hearings.

This feels like it is starting to stray off topic though, so I'll shut up.

Admittedly, there are points where my eyes glaze over when you lawyers start getting lawyerly.
Interested though I am, there are points where it's obviously "lawyerspeak" and my brain starts screaming, "DON'T CARE! DON'T CARE! DON'T CARE!" at me. : )

Even with that, though, I'm getting a lot of really interesting reading out of these posts. So, thanks for discussing the issues so openly. The "back & forth" of info is cool at times.

Eric

MagickalMemories wrote:Admittedly, there are points where my eyes glaze over when you lawyers start getting lawyerly.
Interested though I am, there are points where it's obviously "lawyerspeak" and my brain starts screaming, "DON'T CARE! DON'T CARE! DON'T CARE!" at me. : )

Even with that, though, I'm getting a lot of really interesting reading out of these posts. So, thanks for discussing the issues so openly. The "back & forth" of info is cool at times.

Eric

yeah im getting that too.
im also reading an knowing they are real words but having no idea what the sentence as a whole means
the law isnt a subject i have a whole lot of knowledge of, but these posts are definitely opening my eyes, thanks guys

weeble1000 wrote:In other words, how can your actions be "objectively reckless" if there's a good chance that the patent is invalid, or considering that there could be widely divergent interpretations of the extent of patent claims based on potential claim constructions? I've seen a few patent cases live or die based on the outcome of Markman hearings.

What!? Are you suggesting that KSR is anything but a straightforward application of the law to the facts? Blasphemy!

weeble1000 wrote:This feels like it is starting to stray off topic though, so I'll shut up.

Agreed. I think I (eventually) made my point tho. Thanks for sticking with me

Subjective standard of willfulness: Lawyer opinion good.
Objective standard of willfulness: Lawyer opinion neutral to bad.

why are people talking about Patents?

A Patent is an registered idea I.E a practical function of an idea can be patented.

A design or concept art IP comes under Registered Designs and Design Rights. Totally different.

Seems like there is a ton of misinformation here.

Its because they've run out of truly substantive things to talk about. At this point it seems like alot of hypothetical discussion based on why might happen, or might have happened under different circumstance.

Underachiever wrote:why are people talking about Patents?

A Patent is an registered idea I.E a practical function of an idea can be patented.

A design or concept art IP comes under Registered Designs and Design Rights. Totally different.

Seems like there is a ton of misinformation here.

Well, I believe biccat and I have more experience with patents than with copyrights, and biccat knows much more about case law than I do. We were considering the interaction between a legal opinion and a finding of willfulness which is relevant to the Chapterhouse suit given that CHS ostensibly sought legal advice prior to starting the business and Games Workshop has indeed made a claim of willful infringement and is seeking treble damages and attorney's fees.

I agree with you that there's a clear distinction between patents and copyrights, but that distinction might be a little more blurred when it comes to willful infringement. However, biccat and I both agreed that the discussion was sliding far more into something specifically related to patent cases and away from the topic at hand.

weeble1000 wrote:I agree with you that there's a clear distinction between patents and copyrights, but that distinction might be a little more blurred when it comes to willful infringement. However, biccat and I both agreed that the discussion was sliding far more into something specifically related to patent cases and away from the topic at hand.

That too

Underachiever wrote:why are people talking about Patents?

Just as far as willfulness is concerned.

Underachiever wrote:A design or concept art IP comes under Registered Designs and Design Rights. Totally different.

There's no such thing as Registered Designs or Design Rights in the US like there is in the UK. Since these types of protections aren't available in the US, GW can't sue for such a violation. They're limited to trademarks and copyrights.

There is registered copyright in the US. Is that a different thing?

I don't really know much about UK law, but it's my understanding is that a Design Right may encompass both artistic elements as well as functional elements of expression.

Copyright (in the US) on the other hand only covers the artistic expression, and cannot apply to functional elements (there is no real difference in the scope of protection between a registered and unregistered copyright).

The "hybrid" between the two (in the US) is the Design Patent, which covers the ornamental design of a functional item. But I think that a design patent is slightly different than a Design Right (Design Right being more copyright than patent, Design Patent being more patent than copyright).

hmm, fair enough.


Well i was always lead to believe the US Copyright Office did do a similar job. That being creating a public record of ownership of IP, When it comes to argue that point knowing the date of conception which is half the battle. Then it's convincing the court of similarity which i guess is where they wavier. I have experience in the Uk of this stuff from an ownership point of view (both patent and design reg ), but not in US/canada.

When i first saw this i was sure the GW would have grounds. But the more i look at the stuff. the more it looks like public realm - things GW themselves borrow heavily from. Like elves etc (folklores) and Spartan themes etc. Which i guess will be Chapter House's point of needing clarity on which items are infringing. I guess the vehicle kits and power fist are the closest infringing on design they could claim and the Nid stuff is pretty spot on. Oh and the names they sell items under will be under fire and rightly so probably.

will be interesting to see what happens.

Lurking around all these threads pertaining to this case (and the current thread title is moot), I have seem more uninformed opinions (notwithstanding opinions based on legal facts), nut my minimal legal background brings to mind a rather larger Gorilla in the room: GW asked for immediate relief in Chapterhouse ceasing all business until a judgement was declared, That's their club: no buiness by court order means Chapetrhouse is finished. By not granting this motion, the judge feels GW's case has problems. Good for CHS. GW is now risking the case being thrown out at best, an new law covering cases such as these as future precedence. Additionally, the standard practice countersuit may have GW paying CHS's legal fees, potential financial damages to CHS for lost revenues, sanctions for filing a malicious lawsuit intending only to eliminate their "competition", and a flood of buts makers entering the market with little or no recourse to stop them.

At some point GW will offer a settlement (with non-disclosure as to the amounts involved), but anyone with corporate accounting experience could discern what that total is.

PR perspective: Black Eye for GW, and loss of control. They should have dropped the case the second they were not granted immediate temporary relief.

Additionally, the standard practice countersuit may have GW paying CHS's legal fees...

This is something I've been wondering about, myself.
A question for you lawyers (you are a lawyer, but my lawyer... personal and not professional opinions... etc.)...
Speaking STRICTLY of lawyer fees and nothing else (court costs, etc).... If CHS's legal team is working pro bono, do they have a right to any ompensation from GW if GW loses? I mean, is pro bono work strictly pro bono, or is it more like "Pro bono unless we win, in which case I can recoup fees from the counter-suit?"

Thanks.

Eric

From what I gleaned from elsewhere, it's not standard practice to counterclaim for costs in cases like these.

However, CHS has an 'agressive' defence in which they are claiming costs against what they see as a malicious action.

The ProBono team still has a clock running, it's just not being paid by CHS.

Cheers

Andrew

MagickalMemories wrote:

Additionally, the standard practice countersuit may have GW paying CHS's legal fees...

This is something I've been wondering about, myself.
A question for you lawyers (you are a lawyer, but my lawyer... personal and not professional opinions... etc.)...
Speaking STRICTLY of lawyer fees and nothing else (court costs, etc).... If CHS's legal team is working pro bono, do they have a right to any ompensation from GW if GW loses? I mean, is pro bono work strictly pro bono, or is it more like "Pro bono unless we win, in which case I can recoup fees from the counter-suit?"

A law firm functioning pro bono is entitled to collect on legal fees in the same manner as any other firm.

The intent of requiring the other side to pay legal fees isn't to reimburse the defendant, but to punish the plaintiff for bringing a claim without merit.

If GW were found to be groundless in their claim, and only trying to use wrongful legal action as a means of driving its competition under... its one of the few instances where a pro-bono legal team can seek recovery of legal costs. So far it seems CH's team has built a decent foundation for such a claim.

Thanks for the clarification, guys. Especially your last sentence, biccat.

Eric

As a continuation, a firm working pro-bono still 'charges' for their services right (?)
who do they 'charge'? ie where does their money come from? the Government?

Revenent Reiko wrote:As a continuation, a firm working pro-bono still 'charges' for their services right (?)
who do they 'charge'? ie where does their money come from? the Government?

No. The firm (generally) provides their services at no cost to anyone (though they may be able to do some sneaky tax things with it). And even in a pro bono situation, the represented party may still on the hook for certain expenses, such as court filing fees and the like.

Don't confuse this with a court-appointed attorney for a defendant in a criminal case; it's a different situation.

Janthkin wrote:

Revenent Reiko wrote:As a continuation, a firm working pro-bono still 'charges' for their services right (?)
who do they 'charge'? ie where does their money come from? the Government?

No. The firm (generally) provides their services at no cost to anyone (though they may be able to do some sneaky tax things with it). And even in a pro bono situation, the represented party may still on the hook for certain expenses, such as court filing fees and the like.

Don't confuse this with a court-appointed attorney for a defendant in a criminal case; it's a different situation.

Cool, thanks Janthkin!
i was definitely confusing with court-appointed attorneys :(

Bear in mind that Paulson requested a court-appointed attorney in this case. If I remember correctly, that request was denied. It might be that it hasn't been ruled on yet, I don't remember off the top of my head. Anyways, it isn't likely to be granted if it hasn't already been ruled on. The court typically doesn't provide representation in civil suits.

This presents a convenient distinction between court-appointed legal representation and pro-bono representation. Although I don't know why Paulson hasn't been able to get pro-bono representation yet. Perhaps he hasn't looked into it.

Sorry I have sort of lost track of this.

When is the next concrete date for submissions/hearings/decisions etc? I've sort of got lost thinking about what could be happening/motives and forgotten what should be happening.

weeble1000 wrote:Bear in mind that Paulson requested a court-appointed attorney in this case. If I remember correctly, that request was denied. It might be that it hasn't been ruled on yet, I don't remember off the top of my head. Anyways, it isn't likely to be granted if it hasn't already been ruled on. The court typically doesn't provide representation in civil suits.

This is regarded as a civil case and as far as I know you can only get court-appointed council in criminal cases.

aka_mythos, I think it is technically possible to get court-appointed representation in a civil case, just amazingly unlikely.

notprop, there is a status conference on next Wed morning, May 11th. A status conference isn't particularly exciting, but that's what's coming up next. Status conference statements might pop up on the docket prior to Wed, but they might not. It depends on the local procedural rules and what get's posted on the docket report. I'll see if I can find out what happens at the status conference, but I don't expect it will be incredibly interesting. They might set a trial date or something.

weeble1000 wrote:aka_mythos, I think it is technically possible to get court-appointed representation in a civil case, just amazingly unlikely.

notprop, there is a status conference on next Wed morning, May 11th. A status conference isn't particularly exciting, but that's what's coming up next. Status conference statements might pop up on the docket prior to Wed, but they might not. It depends on the local procedural rules and what get's posted on the docket report. I'll see if I can find out what happens at the status conference, but I don't expect it will be incredibly interesting. They might set a trial date or something.

Child support hearings are civil cases. In many states, if the defendant in a child support case is destitute and facing jail time for non-payment of child support obligations, the courts will appoint him an attorney to assist in proving his/her destitute status in order to avoid jail time. This is actually kind of a big deal here in GA right now; GA doesn't currently provide court appointed attorneys to indigent child support defendants, and there is a push for the state to start doing so. Despite the fact that there are literally dozens of destitute fathers in jail right now for lacking the financial ability to either pay their child support obligations or to afford an attorney to assist them in proving this fact, the state is resisting providing attorneys to these defendants because of the cost to the state.

http://www.cobbcountyfamilylawattorney.com/2011/03/lawsuit-georgia-should-provide-indigent-parents-with-lawyers.shtml

http://www.ajc.com/news/lawsuit-state-should-provide-881743.html

weeble1000 wrote:aka_mythos, I think it is technically possible to get court-appointed representation in a civil case, just amazingly unlikely.

As far as I'm aware, while the possibility of court appointed representation in a civil trial is open to a case by case determination, the court will only appoint a representation if the civil case could result in someone being deprived of some liberties as a result... like divorce cases where a child might be involved. I think beyond that there are a number of states that extend those rights to more situations.

Thanks weeble1000, much appreciated.

So, after 19 pages of some really interesting legal discussion (no, really!). Can there be established a first page like the rumor discussion threads, describing what has happened, when, by whom, etc? Where things stand, treated like say the necron rumors.

Commodore Perry