Damages in Intellectual Property Arbitrations

Introduction

The party autonomy that is an especial feature of arbitration provides the parties and the tribunal with the freedom to determine the approach to be adopted to the issue of damages^[2] in an intellectual property dispute. This contrasts with the general approach in litigation, in which the court must apply the law applicable to the contract in issue and the law or laws that apply to the various intellectual property rights in issue. The flexibility afforded to parties in arbitration provides an opportunity in international intellectual property disputes by allowing the parties in a submission agreement or in an arbitration clause to tailor the approach to be adopted by the tribunal in assessing damages by, for example, providing for a single applicable law for the assessment in place of many, providing an option to recover the defendant’s profits as an alternative to the damage suffered by the right holder, or providing that punitive damages not be awarded. However, it also provides a challenge in those very types of intellectual property disputes that are particularly suited to arbitration – the multi-jurisdictional infringement disputes in which, on the face of matters, and absent guidance in the submission agreement, damages fall to be determined by reference to the different applicable laws that apply to intellectual property in different countries, an approach that risks unnecessarily complicating the assessment of damages.

These issues of applicable law are not a problem with a dispute that relates only to intellectual property in one country – the natural approach in such a case is to apply the law of that country, although there is nothing to stop the parties from taking the unlikely course of specifying another law. Similarly, disputes that arise under an arbitration clause in an intellectual property licence or other agreement, even when the territory of the licence includes many countries, present less of a challenge from this perspective than multi-jurisdictional infringement disputes that are the subject of a submission agreement, as the applicable law under which damages are most naturally assessed in the former case will generally be the proper law of the agreement itself.

There is a need for parties and tribunals in international arbitrations to be better informed about the variety of approaches to damages in intellectual property disputes adopted by different jurisdictions. This allows the identification of areas of similarity and of difference, and so will allow parties to tailor the most suitable approach to the assessment of damages, especially if a tribunal faces a situation that does not compel one single approach. Given the vast amount of scholarship and case law that already exists on the US approach to the issue of damages for the infringement of intellectual property rights, this chapter seeks in a small way to redress the balance by outlining, at a general level, the different approaches to the assessment of damages at an international level and under some of the legal systems in Europe.^[3] The chapter concludes with observations about certain approaches to the assessment of damages that are adopted in some jurisdictions but which, when applied in the context of an arbitral award, may give rise to issues of enforceability under the Convention on the Recognition and Enforcement of Foreign Arbitral Awards (the New York Convention).

Although this chapter focuses on matters of substantive law, it should be noted that different jurisdictions will also adopt different procedural approaches to the assessment of damages and that an arbitral tribunal is not constrained in the same way as a court would be as to which procedural approach it adopts. Arbitral tribunals have broad discretion on issues such as discovery and expert evidence, which, if not properly managed, can add significant delay and expense in connection with the assessment of damages. In addition, one can identify two other significant procedural issues specific to the assessment of damages.

One is the scope these assessments offer for bifurcation, by which a tribunal^[4] can determine damages in a separate stage of proceedings that are only initiated after there has been a determination as to liability. A bifurcation avoids the risk of wasting costs on extensive discovery and elaborate expert accounting evidence directed to quantum; if there is no liability, this exercise can be avoided. Although in litigation bifurcation can result in a delayed recovery should an initial finding of no liability be reversed on appeal, as most arbitration clauses or submission agreements do not provide for an appeal route, this should not be an issue.^[5]

A related procedural issue can arise when the applicable law, as discussed below, permits the right holder to choose between an assessment of the damage that it has suffered as a result of the infringement and the benefit that the infringer has secured as a result of it. Both involve some measure of discovery on the part of the infringer, but whereas the former also involves discovery on the part of the right holder, the latter does not. Accordingly, the courts in some jurisdictions require that the right holder elect which approach it wants to adopt once liability has been established; however, because the right holder will have insufficient information on which to base that election, courts in some jurisdictions can order a limited amount of financial discovery before the right holder does so to enable it to make a more informed choice.^[6]

The TRIPS Agreement

An internationally recognised set of minimum standards in intellectual property, applying to most countries of the world, is provided by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 1994, Article 45 of which addresses the issue of damages:

Article 45 – Damages
1. The judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.
2. The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney’s fees. In appropriate cases, Members may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.

Thus, TRIPS requires that compensatory damages be available under the applicable laws of member nations of the World Trade Organization, and envisages that these are to be the primary financial remedy, but that innocence on the part of the infringer is a permitted defence to such an award, although in practice few legal systems show much sympathy to innocent infringers.

It also envisages that as an alternative to compensatory damages, the courts may order the recovery of the infringer’s profits or payment of pre-established damages, even when there is innocent infringement. One assumes that these two approaches are intended, when they are both available, to be alternatives in any one case. However, TRIPS does not mandate either of them, and just as the remedy of an ‘account of profits’, as it is referred to in English law, is not available in all countries,^[7] neither is the award of pre-established damages, such as ‘statutory’ damages, a form of financial relief that is more commonly encountered with copyright infringement.^[8]

European approaches to assessing damages

Although national jurisdictions in Europe have widely differing approaches to, and traditions of, assessing monetary compensation for intellectual property infringement,^[9] a basis for harmonisation now exists and has started to emerge within the European Union by virtue of Article 13 of Directive 2004/48/EC on the enforcement of intellectual property rights,^[10] and the interpretations placed on this, by national courts in Europe and the Court of Justice of the European Union.

Article 13 provides:

1. Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the right holder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.
When the judicial authorities set the damages:
(a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the right holder by the infringement;
or
(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.
2. Where the infringer did not knowingly, or with reasonable grounds know, engage in infringing activity, Member States may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established.

This provision, representing a legislative compromise and couched largely in permissive, rather than prescriptive, terminology, cannot be said to be entirely clear as to the relationship between these various bases of assessment. In particular, as discussed below, presenting ‘unfair profits made by the infringer’ as a type of damage suffered by the right holder is a potential source of confusion as to whether the ‘unfair profits’ should be calculated wholly without reference to the actual damage so suffered. Unfortunately, the corresponding Recital 26 does little to assist except to make it clear, as it does in its final sentence, that the Article provides no mandate for damages (in the general sense), however assessed, to be punitive:

With a view to compensating for the prejudice suffered as a result of an infringement committed by an infringer who engaged in an activity in the knowledge, or with reasonable grounds for knowing, that it would give rise to such an infringement, the amount of damages awarded to the right holder should take account of all appropriate aspects, such as loss of earnings incurred by the right holder, or unfair profits made by the infringer and, where appropriate, any moral prejudice caused to the right holder. As an alternative, for example where it would be difficult to determine the amount of the actual prejudice suffered, the amount of the damages might be derived from elements such as the royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question. The aim is not to introduce an obligation to provide for punitive damages but to allow for compensation based on an objective criterion while taking account of the expenses incurred by the right holder, such as the costs of identification and research.

Thus Article 13(1) establishes the following four bases for assessing damages when the infringer knew, or ought to have known, that it was infringing: (1) ‘at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question’; (2) ‘the negative economic consequences, including lost profits, which the injured party has suffered’; (3) ‘any unfair profits made by the infringer’; and (4) ‘in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the right holder by the infringement’.^[11]

The first three of these four bases of assessment are met in most legal systems in one context or another and are each discussed further below.

‘At least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question’

If the right holder does not itself exploit an intellectual property right at all, or does not exploit it other than by licensing, there is no logical basis on which it can claim a loss of manufacturing or other profits from exploitation of the intellectual property and so, unless it can claim an account of the infringer’s profits or pre-established damages, it is limited to recovering royalties.^[12] Even a right holder that does use intellectual property to protect its own sales may not be able to show that, but for the infringement, it would have captured all the infringer’s sales, leaving it to recover royalties only on those that it could not have captured. Although unpaid royalties can be seen as a form of lost profit under Article 13(1)(a) for an entity that licenses out its patents, royalties are expressly treated as an alternative, under Article 13(1)(b).

Much has been written and many courts have opined on how to determine an appropriate royalty rate in any given case.^[13] In Europe, the primary approach of the English and German courts has been to use the rates set out in comparable licences, to the extent that these exist and can meaningfully be compared, as a starting point for a determination. The German courts have adopted the more generous approach, often applying an uplift of up to 100 per cent on a case-by-case basis to the royalty rate found in comparable licences to reflect the fact that most actual negotiations of royalty rates, unlike those notional negotiations envisaged by the courts after a finding of liability, concern rights that have not yet been held to be either valid or infringed by the activity in question. An ‘infringer surcharge’ should be distinguished, however, from a specific ‘infringer supplement’ applied as a flat rate in every case, which would probably constitute a penalty.^[14] English courts also recognise as an alternative, when there is no satisfactory comparable licence, the ‘profits available’ approach, involving an assessment of the profits that would be available to the licensee from the infringement, absent a licence, and apportioning them between the licensor and the licensee.^[15]

‘The negative economic consequences, including lost profits, which the injured party has suffered’

A convenient and, it is suggested, uncontroversial set of principles for assessing the lost profits suffered by a right holder that exploit an intellectual property right that has been found to have been infringed were set out in Ultraframe (UK) Ltd v. Eurocell Building Products Ltd,^[16] a decision of the English Patents Court:

i) Damages are compensatory. The general rule is that the measure of damages is to be, as far as possible, that sum of money that will put the claimant in the same position as he would have been in if he had not sustained the wrong.
ii) The claimant can recover loss which was (a) foreseeable, (b) caused by the wrong, and (c) not excluded from recovery by public or social policy. It is not enough that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss.
iii) The burden of proof rests on the claimant. Damages are to be assessed liberally. But the object is to compensate the claimant and not to punish the defendant.
iv) It is irrelevant that the defendant could have competed lawfully.
v) Where a claimant has exploited his patent by manufacture and sale he can claim (a) lost profit on sales by the defendant that he would have made otherwise; (b) lost profit on his own sales to the extent that he was forced by the infringement to reduce his own price; and (c) a reasonable royalty on sales by the defendant which he would not have made.
vi) As to lost sales, the court should form a general view as to what proportion of the defendant’s sales the claimant would have made.
vii) The assessment of damages for lost profits should take into account the fact that the lost sales are of ‘extra production’ and that only certain specific extra costs (marginal costs) have been incurred in making the additional sales. Nevertheless, in practice costs go up and so it may be appropriate to temper the approach somewhat in making the assessment.
viii) The reasonable royalty is to be assessed as the royalty that a willing licensor and a willing licensee would have agreed. Where there are truly comparable licences in the relevant field these are the most useful guidance for the court as to the reasonable royalty. Another approach is the profits available approach. This involves an assessment of the profits that would be available to the licensee, absent a licence, and apportioning them between the licensor and the licensee.
ix) Where damages are difficult to assess with precision, the court should make the best estimate it can, having regard to all the circumstances of the case and dealing with the matter broadly, with common sense and fairness.

The application of principles (i) and (ii), above, has allowed a patentee to recover damages that exceed its turnover in the articles that actually infringe, by taking account of foreseeable consequences, such as loss of sales of spare parts and of servicing contracts, even after patent expiry.^[17] Principle (vi) is especially applicable in the not uncommon situation of a market in which there are competitors other than the infringer, when an assessment of the patentee’s sales prospects absent the infringement has to be made.^[18]

‘Unfair profits made by the infringer’

As already observed, the obscure drafting of Article 13 of the enforcement Directive invites the question of what relationship, if any, exists between the lost profits that the injured party has suffered and the ‘unfair profits’ made by the infringer. Thus, although ‘negative economic consequences, including lost profits which the injured party has suffered’ are clearly a type of ‘damages appropriate to the actual prejudice suffered by [the right holder] as a result of the infringement’, it is less easy to see how, as a matter of logic, ‘unfair profits made by the infringer’ can properly be so characterised.

Article 13(1)(a) appears to treat both lost profits and unfair profits in the same way, while saying nothing about the relationship between them. Are they alternatives, or should they both be taken into account, and if so which one predominates? To conflate the two concepts, as does Article 13(1)(a), and to characterise a remedy for unjust enrichment as another type of damage suffered by the right holder, rather than as a separate and alternative basis for securing recompense from the infringer, is a recipe for confusion, as has indeed proved to be the case in practice.^[19] Thus, in its 2010 review of the national implementation of the enforcement Directive,^[20] the European Commission commented in the Report that accompanied the Staff Working Paper:

The main aim of awarding damages is to place the right holders in the same situation as they would have been in, in the absence of the infringement. Nowadays, however, infringers’ profits (unjust enrichment) often appear to be substantially higher than the actual damage incurred by the right holder. In such cases, it could be considered whether the courts should have the power to grant damages commensurate with the infringer’s unjust enrichment, even if they exceed the actual damage incurred by the right holder.^[21]

In its Staff Working Document, the Commission recognised that the recovery of profits unlawfully made by an infringer was a new concept in many EU Member States and that, in this respect, Article 13 was being implemented in a variety of different ways, some of which effectively capped such an assessment at the level of damage suffered by the right holder, which would render any assessment of the profits made by the infringer pointless. However, even without involving the Court of Justice, national courts of different EU Member States have moved towards accepting that these two bases for assessment should be regarded as alternatives, with neither having any bearing on the other.

This approach has been adopted by the English and German courts (which have long been able to provide for recovery on this basis) in assessing the profits to be recovered from those who infringe trademarks by selling repackaged goods parallel imported from elsewhere in the European Union without complying precisely with the somewhat technical requirements for so doing as established by the Court of Justice.^[22] The Court of Appeal of England and Wales,^[23] reversing the judge at first instance but consistent with a decision of the German Federal Supreme Court in a similar case,^[24] held that the damage caused to the trademark proprietor by the infringement had no bearing on a recovery based on determining the infringer’s profits. In France, a decision of the Paris Court of Appeal in 1963 having excluded the possibility of claiming the profits of a patent infringer,^[25] the law was changed expressly to permit it as a result of the enforcement Directive.^[26] However, there was controversy initially as to quite how the profits made by the patentee should be determined, and whether or not the loss actually suffered by the patentee was of any relevance in making the assessment. Subsequent cases, however, have shown the French courts, when assessing the level of financial recovery on the basis of the profits of the infringer, doing so without any reference to the actual loss suffered by the patentee.^[27]

As recovering the infringer’s profits becomes a more popular approach, the courts are starting to clarify some of the issues that it raises, such as how to apportion profits in patent cases when the infringing process is part of a larger one,^[28] or the infringing goods do not correspond to the inventive concept underlying the patent that has been held to be infringed,^[29] and the extent to which the infringer’s overheads may be deducted.^[30]

Constraints on enforcement of certain types of award as penalties

As discussed above, one important advantage of arbitrating international intellectual property disputes is that the parties can specify in their arbitration agreement a particular approach to the calculation of damages. Whatever approach the arbitral tribunal takes to the assessment of damages, it should be mindful of the issue of enforceability under Article V(2)(b) of the New York Convention, under which enforcement of an arbitral award can be refused if the recognition or enforcement of the award would be contrary to the public policy of the country in which enforcement is sought. There is thus a concern that the enforcement of an award that can be characterised as a penalty, for example, because it has been enhanced on grounds of ‘wilful’ infringement, may not be enforced in a country that does not allow for penal awards of damages, even if the award is in accordance with the applicable law as chosen by the parties. Although this concern is real and should be addressed, one should perhaps not overstate it as, in practice, certain jurisdictions that have a ‘rule’ against penalties have not necessarily been prepared, at least in relation to contractual penalties, to characterise it as a rule that is so fundamental as to constitute ‘public policy’ for the purposes of Article V(2)(b) of the New York Convention.^[31]

Notes