Double-Counting of Damages

In US intellectual property infringement, particularly copyright, the various Heads of Damages could in principle lead to a double recovery of damages. In copyright cases in particular such double recover is precluded by Section 504(b) of the Copyright Act which provides that when copyright owners recover actual damages it can then only recover in addition:

“any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.”

In effect the copyright owner has to make a choice – actual damages or the wrongful profits of the infringer, but not both. A similar rule has been applied by the Federal Circuit in mixed trademark and patent infringement cases, where a plaintiff sought damages for both forms of IP based on the same infringing sales. (Aero Products International, Inc. v. Intex Recreation Corp. (2006)), while patent case law requires methods used to arrive at damages to also avoid double counting when for example combing a reasonable royalty measure with lost profits and profit disgorgement remedies.