INTELLECTUAL PROPERTY LITIGATION GROWS EXPONENTIALLY
In the five year period between 2002 and 2007, the number of IP litigation cases in the United States has nearly tripled. This increase in growth ranges across all categories of IP from trademarks and patents to copyrights and trade secrets. Much of this increased litigation activity can be traced to the following fundamental changes: First, the value and importance of intellectual property is growing in literally every corporate entity in our economy. Second, the laws governing intellectual property are changing and expanding, and becoming increasingly complex and the causes of action in litigation are also expanding.
EXPERT SELECTION: ONE EXPERT OR TWO?
It has been our universal experience that in those cases where the litigator has thought that two experts were better than one, that litigator has most often proved himself or herself wrong during the course of the litigation. If one is looking for true expert advice on intellectual property valuation and damages, the expert hired to cover the valuation and damages issues also should be able to cover all the other IP issues – assuming they are a true IP expert. What most often happens when the duties are split between a so-called damages expert and a so-called IP expert is that the sum of the two is less than the whole (in a mixed metaphor).
For example, we recently participated in a trademark and copyright infringement lawsuit case in the state of Washington. The so-called damages expert (hired by the client’s attorneys against our advice) misunderstood the case so greatly that it caused substantial harm to the client, and, more importantly, partially undermined our report on the issues of trademark usage, licensing, and customs and practices. Clearly the client was worse off for having two witnesses and even the litigators were gracious enough to admit this at the conclusion of the deposition phase of the process. Where possible, then, a single witness covering the IP and damages issues is always a preferable circumstance than using two or more witnesses.
Expert Witness:
We provide expertise and testimony regarding a wide range of business and intellectual property issues. Our principals are Daubert qualified experts.
Value and Damages:
CONSOR possesses exceptional experience assessing damages in intellectual property litigation for a wide range of industries. We apply traditional and proprietary valuation methodologies, which we developed over the past 20 years: the VALMATRIX® and the BVEQtm methodologies.
Infringement and Confusion:
CONSOR works with survey data as well as a simple yet sophisticated technique, the confusion measurement matrix analysis, which analyzes all the business and marketplace issues affecting a confusion case.
Customs and Practices:
We advise on practical, market-based business issues and on the customs and practices, management and licensing of intellectual property, as well as issues involved in the disposition of intellectual property.
Bankruptcy:
Our expertise is utilized in bankruptcy and reorganization where intellectual property is an important component of value and in inter-company transfer situations where intellectual property is being moved from one entity to another, and must be done so at market value.
AREAS OF EXPERTISE
Trademark and Brand Assets:
We have unmatched proficiency in trademark and brand valuation, royalty rates, licensing, and brand extension strategies. We often provide deal management and take the lead in negotiations of complex licensing agreements.
Patents and Technology:
Our technology group specializes in valuations, portfolio management, and litigation support. We have also pioneered a technology portfolio management system and technology factor analysis.
Media and Entertainment:
We establish intellectual property values for media and other entertainment properties, and for not-for-profit organizations that impact a broad range of people, often on a global basis.
Electronic, Internet & Software:
We continue to be at the forefront of digital asset licensing, establishing global royalty rates and values for software, electronic, and Internet assets.
Celebrities & Estates:
Increasingly, celebrities and their estates find great value in their name and likeness and associated intangible assets. We establish compensation and values for the use of those images.
Sports & Events:
CONSOR pioneered the licensing and valuation of major events beginning with the Calgary Olympics in 1988, to the World Cup of 2006 and 2010.
PAST PROJECTS
ADJUSTMENT OF RATES AND TERMS FOR PREEXISTING SUBSCRIPTION SERVICES AND SATELLITE DIGITAL AUDIO RADIO SERVICES, Docket No. 2006-1 CRB DSTRA, Copyright Royalty Board, Library of Congress, Washington, D.C. expert rebuttal report and testimony regarding the apportionment of compensation paid to marquee celebrities for brand value, endorsement value and exclusivity value components (August - October 2007).
LOUIS VUITTON MALLETIER, v. DOONEY & BOURKE, INC., Case No. 04 Civ. 2990, United States District Court, Southern District of New York expert report regarding trademark infringement and dilution damages (litigation pending).
ARONCHICK / INKINE v. WOLF BLOCK, ET AL., Court of Common Pleas, Philadelphia County, PA. Civil Action 0712 (Nov. Term, 2004) expert report regarding customs and practices and economic damages stemming from lost patent royalties in the pharmaceutical industry (case settled).
WORLD TRIATHLON CORPORATION, INC. v. DAWN SYNDICATED PRODUCTIONS ET AL., Case No. 8:05 CV-983-T27 EAJ, United States District Court Middle District of Florida, Tampa Division expert report related to intellectual property customs and practices, valuation, and calculation of damages specifically federal trademark infringement, false designation of origin and dilution, as well as Florida common law trademark infringement (litigation pending).
CYCLONE USA, INC. v. LL&C DEALER SERVICES, LLC, Docket No. CV-03-0992 WMB (JWJx), United States District Court for the Central District of California expert witness testimony and report regarding calculation of damages (February 2006).
RICHARD BACH AND RUSSELL MUNSON v. FOREVER LIVING PRODUCTS U.S., INC., ET AL., Case No. C05-0970P, Second Amended Complaint, U.S. District Court for Western District of Washington at Seattle expert report related to valuation of damages for the infringement of trademarks and copyrights (case settled).
DON FELDER v. EAGLES LTD., ET AL., Case No. BC244814, Superior Court of the State of California for the County of Los Angeles, Central District expert report prepared for the purpose of, and for use in, mediation as it related to the fair market value of the damages stemming from wrongful termination of employment and breach of fiduciary duty. Active participation in mediation providing qualitative and quantitative analysis to provide mediator with a framework for resolution of dispute over trademark damages (July 2006).
DIGITAL ENVOY INC. v. GOOGLE INC., Case C 04 01497 RS, U.S. District Court of the Northern District of California, San Jose Division expert report regarding calculating damages, specifically Breach of Non-Disclosure Agreement and Trade Secret Misappropriation (April 2006) (case settled).
HAMBRECHT WINE GROUP, L.P. D/B/A BELVEDERE WINERY, L.P. v. MILLENNIUM IMPORT, LLC., Case No. C-5 4625, United States District Court, Northern District of California expert report provided rebuttal discussion and opinions in the area of intellectual property valuation and damages calculations (litigation pending).
PRECISION REPLACEMENT PARTS CORP. v. AUTO GLASS COMPONENTS, INC., Docket No. 04-CV-566L, United States District Court for the Western District of Washington at Seattle deposition and expert witness testimony and report regarding calculation of loss in business valuation and economic damages (August 2005).
FLEETWOOD ENTERPRISES, INC. AND FLEETWOOD FOLDING TRAILERS, INC., PLAINTIFFS AND COUNTERCLAIM DEFENDANTS v. THE COLEMAN COMPANY, INC., Case No. 03 CV 2029, Eighteenth Judicial District Court, Sedgwick County, Kansas expert report regarding breach of contract, customs and practices of holding (and other types of shared control or “parent”) companies, and the use of trademarks in advertising and sales materials (August 2005).
JIMMY DEAN v. SARA LEE CORPORATION, Civil Action No. 5-04CV0039-C, United States District Court, Northern District of Texas Lubbock Division expert report regarding the valuation of compensation paid for the acquisition of trademarks and rights of publicity (July 2005).
CACHE LA POUDRE FEEDS, LLC v. LAND O’LAKES, INC. ET AL. Civil Action No. 04-D-329 (CBS) U.S. District Court District of Colorado rebuttal report designed to identify and quantify errors made in estimating damages resulting from the alleged infringing actions of Defendant, specifically addressing the reasonable royalty determination, and the potential award of damages for the cost of corrective advertising (July 2005).
LAWRENCE PETER BERRA AKA YOGI BERRA v. TURNER BROADCASTING SYSTEM, INC., 1:05-cv-02233-RJH - NY Supreme Court No. 05/600339, Supreme Court of the State of New York, County of New York expert report regarding calculation of damages stemming from the valuation of celebrity rights and rights of publicity (July 2005).
KEN’S FOODS, INC. v. KEN’S STEAK HOUSE, INC., Case No. 01-CV-11878-NG, United States District Court District of Massachusetts expert report regarding trademark infringement and calculation of brand value and damages (December 2004).
PARKS v. LAFACE RECORDS ET AL, Civil Docket for Case No. 1:04 mi-00261, United States District Court, Northern District of Georgia expert report regarding valuation of celebrity rights and images and calculation of damages (December 2004).
MONSTER CABLE PRODUCTS, INC. v. DISCOVERY COMMUNICATIONS, INC., Civil Action No. 03-CV-3250 (WHA), United States District Court for the Northern Districit of California expert report regarding calculation of damages (August 2004).
CORBIS CORPORATION v. AMAZON.COM, INC. ET AL., Case No. CV03-1415L, United States District Court Western District of Washington expert report regarding royalty rates, rights clearance fees, dilution of licensability, lost revenue, and calculation of damages (June 2004).
AMERIQUEST v. AMERICREST (OKLAHOMA), Case No. L7526-0585, United States District Court Western District of Oklahoma expert report regarding trademark infringement, false designation of origin, unfair competition, trademark dilution, and calculation of damages (March 2004).
ADIDAS AMERICA, INC. ET AL v. PAYLESS SHOESOURCE, INC., Civil Document for Case No: 0:94-cv-03424-LDW, United States District Court Eastern District of New York expert report regarding establishment of royalty rates for the use of the trade dress, calculations of royalty rate payments, lost profits, and damages (October 2003).
KLUGE DESIGN, INC. v. GENTRA SYSTEMS, INC., Civil Docket for Case No. 0:02-cv-00234-SRN-SRN, United States District Court District of Minnesota (DMN) expert report regarding calculation of damages stemming from misappropriation of proprietary software (August 2003).
CAVALIER v. THE JIM HENSON CO., LLASC Case No. BC 251828, United States District Court expert report regarding misuse of intellectual property and calculation of damages (May 2003).
NATIONAL BEVERAGE CORP. EVERFRESH BEVERAGES INC., FARGO BEVERAGES, INC., AND HOME JUCE CORP. f/k/a HJMP CORP. v. garden foods, inc., and fresh-pure splash juice company, Civil Action No. 01-73158, United States District Court for the Eastern District of Michigan Southern Division expert report regarding dilution and trademark confusion (May 2003).
FISH bONES-SANDLAKE ROAD, INC. v. OUTBACK STEAKHOUSE, INC., BONEFISH GRILL, LLC, OS SEA, INC., AND INTERNATIONAL MARKET PLACE, Inc., Case No. 6:02-CV-671-ORL-31JGG, United States District Court, Middle District of Florida Orlando Division expert report regarding confusion (January 2003).
MARCEL FASHIONS GROUP, INC. v. LUCKY BRAND DUNGAREES, INC. AND FEDERATED DEPARTMENT STORES, INC. AND LIZ CLAIBORNE, INC., Civil Action No. 01-7495, United States District Court, Southern District of Florida expert report regarding calculation of damages (January 2003).
PAUL FRANK INDUSTRIES, INC. v. zeros & ones, inC., and DOES 1 through 15, inclusive, Case No. SA CV01-582DOC(ANx), United States District Court for the Central District of California expert report regarding customs and practices relating to agreements for use of intellectual property and calculation of damages (April 2002).
YKK CORPORATION and YKK (U.S.A.), INC. v. jungwoo zipper co., ltd., and ypp (u.S.A.), inc., Civil Action No. C00-05731 FMC (RCx), United States District Court for the Central District of California expert report regarding likelihood of confusion, trademark dilution, and calculation of damages (January 2002).
SAN FRANCISCO NETWORK v. Salisbury Manufacturing corporation fab industries, Inc. et al, Civil Action No. C99-5022 CRB (JL), United States District Court for the Northern District of California expert report regarding licensing versus franchise agreements and infringement (December 2001).
CREATIVE COMPUTING d/b/a INTERNET TRUCKSTOP v. GETLOADED.COM LLC AND/OR CODIFIED CORPORATION, AND JACK C. MARTIN, Civil Action No. CIV 00-476-S-BLW, United States District Court for the District of Idaho expert report regarding valuation and infringement (November 2001).
AMAZON.COM, INC., a Delaware Corporation v. VON ERIC LERNER KALAYDJIAN, d/b/a/ AMAZON COSMETICS AND TAN PRODUCTS, Civil Action No. CV 01-02041 R (AIJx), United States District Court Central District of California expert report regarding trademark infringement (October 2001).
HEARTS ON FIRE COMPANY v. ALEXANDER M. WALDMAN DIAMOND COMPANY, INC., Civil Action No. 01 CV 4628(HB), United States District Court for the Southern District of New York expert report regarding confusion and dilution of trademark (October 2001).
GENESCO, INC. v. MUDD, LLC, Case No. 3:2000-cv-00641, United States District Court for the Middle District Of Tennessee expert report regarding licensing, royalty rates, and valuation (August 2001).
| 
Economic Damages
