The award of damages is, along with injunctive relief, one of the major remedies for infringement of intellectual property rights (IPRs). While procedural and substantive rules concerning IPRs achieved a fairly high level of harmonization already in the late 19th century, rules for remedies were basically left to each country’s legal system. As the law of remedies is directly connected to general law (such as the Civil Code in the case of Japan) based on legal traditions of each country, its rules have been diverse among countries. However, factors such as the expansion of IPRs disputes on a global scale, including those related to Fair, Reasonable and Non-Discriminatory licensing of Standard Essential Patents, and more generally the globalization of business activities, are pushing forward the trend to harmonize different countries’ damage systems. Needless to say, European Union is at the forefront of such a trend, exemplified by the Unitary Patent and Unified Patent Court systems as well as the EU Directive on Enforcement of IPRs.
In Japan, the damage system for IP infringement has been controversial since the enactment of its current IP laws. The main reason is that if we apply the general rules for damages under the Civil Code, IPRs holders would have many difficulties in proving the presence and amount of damages because of the nature of IPRs as intangible goods. Therefore, special provisions have been introduced, and expanded later, in the Japanese IP laws in order to make it easier for IPRs holders to prove damages. For example, there are provisions to presume infringers’ profits as the amount of damages. However, there are still theoretical and practical issues concerning the application of those special provisions. Taking the provisions to presume infringers’ profits as the amount of damages as example, what kind of “damage” is presumed under these provisions? What is the rationale for the presumption? How should “profits” be calculated? To what kind of cases can these provisions be applied?
In this lecture, Professor Suzuki will start with the general theory of damages for IP infringement, and then discuss the laws and practice relating to damages in Japan. Professor Suzuki will also touch on the damage systems of other countries such as the US and Germany so that audience can get a comparative law perspective. As to the kinds of IPRs, Professor Suzuki will cover various IPRs broadly, including copyrights and trademarks, however will put a focus on patents.
Masabumi SUZUKI teaches Intellectual Law at Nagoya University Graduate School of Law in Japan since 2002. He graduated from the University of Tokyo (LL.B., 1981) and received an LL.M. from Harvard Law School (1986). He joined the Japanese Ministry of International Trade and Industry (MITI; renamed METI since 2000) in 1981, and was Director of the Office of Intellectual Property Policy from 1999 to 2001. He also served as Visiting Fellow at the Brookings Institution (1998-99). He was admitted to the New York Bar in 1987. He is currently a Council Member of the Japan Association of Industrial Property Law, the Copyright Law Association of Japan, and the Japan Association of International Economic Law.
Professor Suzuki’s recent major works include: Realization of Substantive Law through Legal Proceedings (Mohr Siebeck, 2017) (co-editor with Professor Alexander Bruns); “International Norm Setting and Its Localization on Intellectual Property,” 19 Quarterly Jurist 37 (2016) (in Japanese); “Legal Issues concerning Enforcement of Standard Essential Patents,” RIETI Discussion Paper Series 15-J-06 (2015) (in Japanese).
Public CPD Points - 2 points
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