By Michael C. Gilleran of Edwards Angell Palmer & Dodge
Attorney Michael C. Gilleran is a partner in the Business litigation and IP litigation departments of the 520-attorney national law firm of Edwards Angell Palmer & Dodge. He is also the author of a book on the Massachusetts Little Federal Trade Commission Act entitled The Law of Chapter 93A. He may be reached at: firstname.lastname@example.org.
Two recent federal Court of Appeals decisions may have opened the door for enhanced remedies for federal intellectual property claims based on state law. The remedies under state law often go far beyond an award of actual damages. However, remedies available under federal intellectual property (“IP”) claims are usually limited to nothing more than actual damages, with no general provision for punitive damages, attorneys’ fees or expert fees. Moreover, as a general rule, federal laws preempt state law claims. Now there are high-level federal cases involving trademark infringement claims where the courts have permitted state law remedies to supplant and replace limited federal IP remedies. This change has already happened; it is here now. What does it mean, and how far will it go?
Limited Federal IP Remedies
The Lanham Act provides for, among other things, a federal claim for trademark infringement. The remedies available under the federal Lanham Act include attorneys’ fees, but only in exceptional cas...