Marques 2017: FIFA criticises US litigation costs as outrageous and ‘a joke’
The head of IP at football governing body FIFA has admitted that the organisation has previously had to settle with a so-called “patent troll” because litigation in the US is “so expensive”.
Speaking yesterday, September 20, at the Marques 31st Annual Conference in Prague, Daniel Zohny was discussing IP enforcement across different jurisdictions.
When discussing the stereotype that US litigation was expensive, Zohny stated that although his “personal pride” meant he wanted to fight the case, he was forced to settle due to the cost of litigation.
“When I realised the cost, we were forced to concede that it was simply not possible on this occasion,” he explained.
“It was completely outrageous, a joke in my eyes. I wanted to fight the case, not let them take our money, but when costs come in and we looked at the numbers, who knows if we would ever get attorneys’ fees back; even if we win, they could fold.
“In that sense, some of the stereotypes regarding litigation in the US being expensive are most certainly true.”
Zohny was joined on the panel by Katherine Tsang, assistant general counsel, IP at Diageo, who said the alcoholic drinks maker faced similar problems in the UK when looking to protect its various brands.
“I would say litigation is very expensive and difficult,” she said, when speaking on stereotypes that UK courts are harsher on the trademark holder.
“There is a view that trying to stop copycats is difficult—you rely on a lot of past case law and you have to show there is a likelihood of confusion, and there is a high threshold.
“The UK courts have been dismissive of survey evidence. It isn’t impossible, however, and we won a case against somebody selling a product called ‘Vodkat’ which looked like the Smirnoff brand.”
She further stated that for a case of that kind, she would budget £250,000 ($330,000), while in German courts a preliminary injunction, as long as you file within four weeks of acknowledgement of infringement, is confirmed in four weeks if there is no opposition, with a price of €10,000 ($11,900).
The Marques conference finishes tomorrow, September 22.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox
Already registered?
Login to your account
If you don't have a login or your access has expired, you will need to purchase a subscription to gain access to this article, including all our online content.
For more information on individual annual subscriptions for full paid access and corporate subscription options please contact us.
To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.
For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk