Written by: Mark Terry

How do you calculate damages in a Trademark Infringement case? Is the financial data of the Plaintiff relevant when calculating damages in a trademark infringement case? This is an issue that often comes up during the discovery phase of a trademark infringement case. As a Miami Trademark Attorney currently involved in multiple trademark infringement cases in the Southern District of Florida, the subject of calculating damages is always in the forefront of my mind.

With regard to a federal trademark infringement claim under the Lanham Act, a Plaintiff can elect to recover actual or statutory damages pursuant to 15 U.S.C. § 1117. Section 1117(a) allows a registrant to recover Defendants’ profits, Plaintiff’s damages and the costs of the action. Plaintiff’s damages, however, may be calculated as Defendant’s profits and therefore does not involve an inquiry into Plaintiff’s financial situation. Nutrivida, Inc. v. Inmuno Vital, Inc., 46 F. Supp. 2d 1310 (S.D. Fla. 1998) (“An award of an infringer’s profits has traditionally been viewed under the Lanham Act and the common law of unfair competition as a way of compensating the plaintiff for sales lost to the infringer.”) Therefore, a calculation of damages under 15 U.S.C. § 1117 does not necessitate an exploration of Plaintiff’s financial data in any way.

With regard to Florida common law trademark infringement, Florida common law mirrors the damages available under 15 U.S.C. § 1117. Again, under Florida common law, Plaintiff’s damages may be calculated as Defendant’s profits and therefore does not involve an inquiry into Plaintiff’s financial data. Nutrivida, Inc., 46 F. Supp. 2d at 1315.

Consequently, a Plaintiff in a trademark infringement suit (federal or Florida state) may elect damages under 15 U.S.C. § 1117 and Florida common law, wherein Plaintiff’s financial information is irrelevant. Therefore, the financial data of the Plaintiff may not be discoverable by the Defendant in a trademark infringement suit and such attempts by the Defendant should be resisted in compliance with the Federal Rules of Civil Procedure. This is especially concerning in cases where the financial information being sought can be used by the Defendant to gain a competitive edge over the Plaintiff.