Going to court
Understanding what is required in formal court proceedings will help you make an informed decision about whether or not to litigate.
Before starting court proceedings
Set clear goals
Decide whether the proceedings are intended to obtain financial compensation for infringement, an order to restrain further infringement, or both. Usually both remedies will be sought.
Decide who you intend to sue
More than one person is often liable for IP infringements. For example, a company that infringes copyright in photography, and the directors who control the company, may all be liable for the same infringement. In many cases it is important to sue the directors personally, to avoid them leaving the company as a shell and forming a new company to carry out further infringements.
Consider publicity impacts
There may be positive and negative publicity impacts resulting from legal proceedings. The evidence given in court and documents tendered in court become publicly available and, unless they have been covered by a confidentiality order, lose any conditions associated with confidentiality.
Review all relevant documents
Relevant documents include contracts, licences and correspondence. Identify whether contractual documents prevent you from bringing proceedings at all, or proceedings in the court you have identified for the action.
Some contracts require the parties to participate in mediation or other forms of dispute resolution before legal proceedings can be brought. Others require that a notice of default is issued before any legal action is taken.
Who can sue?
Usually the plaintiff in an infringement action is the owner of the IP rights.
Under the Copyright Act 1968, Circuit Layouts Act 1989 and Patents Act 1990, an exclusive licensee of the rights is given the same right to sue an infringer of those rights as the owner.
In the case of the Trade Marks Act 1995, an 'authorised user' is given an equivalent right to sue an infringer of the trade mark.
Your lawyer will be able to advise you on whether you are entitled to bring infringement action and whether other parties should be 'joined' in the action.
Preparing for trial
When litigation starts, irrespective of whether an injunction has been sought or granted, it is usual for the court to set a timetable for the completion of steps required to prepare the case for trial.
The four main steps are:
Statement of claim
This is the document that officially starts proceedings. It is drafted and filed by you or your lawyer and sets out the facts supporting the infringement allegation and the remedies sought.
The party serving the statement of claim must clearly articulate the complaint.
For example, a copyright claim should clearly set out all facts relating to ownership.
Such facts include when, where and who created the work. If you claim to own the rights but did not create the work, you must show how you came to be the owner.
The claim should also clearly set out how, where and when the defendant has infringed the copyright.
This ensures that the defendants are fully aware of the precise nature and extent of the claim made against them, so they can properly defend themselves.
Defence
The party who allegedly was responsible for the infringement files the defence document with the court. This document replies to each of the allegations made in the statement of claim by admitting the allegation is correct, not admitting it is correct, or denying it.
The difference between 'not admitting' and 'denying' is subtle.
By not admitting a fact, the defendant is simply requiring the plaintiff to prove that fact, but the defendant will probably not seek to introduce evidence to actively disprove the fact.
With a denial, on the other hand, a defendant will typically seek to lead evidence to show that the alleged fact is untrue.
This establishes the 'facts in dispute', in other words, the allegations about which the parties disagree, and which will be determined by the court.
Discovery
Both parties must inform each other of the relevant documents they have in their possession and those to which they can get access.
The documents must be disclosed, even if they assist the other party in its claim against you.
Each party is obliged by law to inform the other party about these documents to ensure they are not taken by surprise at the hearing of the claim. For this reason it is essential that all documents in the possession, custody or power of the parties be retained until the hearing is over.
Affidavits
These are written statements of evidence sworn on oath and signed by the person who makes them. They detail everything that person knows about the complaint. They are usually drafted by, or in consultation with, a lawyer to ensure all relevant evidence is obtained and all issues addressed.
Preparing affidavits may involve tracking down former employees or business partners.
Last Updated: 13/12/2012
