JURIST Guest Columnists Natasha Major and Marcus Childs Moore, respectively Class of 2013 and 2012 from Howard University School of Law, analyze the ruling in Apple v. Samsung and argue that granting Apple’s request for permanent injunctions against Samsung devices is an unfounded attempt to influence the marketplace from the courtroom…

The Apple v. Samsung case is an early Christmas gift to any intellectual property junkie. The complex litigation covers various areas of intellectual property law. Two teaspoons of trade dress issues, one full cup of design patents, two pinches of software patents and a dash of antitrust are the main ingredients of this case. The lawsuit involves a variety of devices including the iPad, iPhone and over 28 Samsung devices. The jury found that Samsung had infringed on six of Apple’s mobile device patents and dished out a $1 billion dollar verdict. We now know that Apple will go for Samsung’s jugular: permanent injunction.

Apple first succeeded in obtaining a preliminary injunction for the sale of Samsung’s Samsung Galaxy Tab 10.1 tablet based on its alleged design patent infringement. This patent protects the iPad’s ornamental design which is the iPad’s look and feel. Apple claimed that Samsung’s tablet looked like a blatant knock-off, citing the iPad’s 9.7-inch screen and border, against the Samsung Tab’s 10.1-inch screen and matching border. Additionally, both products have hard silver colored backings and left-hand control buttons. In granting Apple the preliminary injunction, the court considered the following from Amazon.com v. BarnesandNoble.com:

1. Apple’s reasonable likelihood of success based on the merits of their claim;
2. The irreparable harm to Apple if an injunction was not granted;
3. The balance of hardships tipping in Apple’s favor; and
4. The injunction’s impact on the public interest.

The US District Court for the Northern District of California granted Apple this preliminary injunction that became effective after Apple paid a $2.6 million bond against any damages suffered by Samsung if the injunction is later overturned. This sort of judicial decree, acts as a sort of collateral “oopsey daisy” fund for Apple until trial is over and a verdict is rendered. If it is found not liable, Samsung pockets the $2.6 million.

However, the jury found that the similar design of the tablets were primarily functional and not ornamental. The jury undoubtedly pondered: “How many different ways can one design a tablet? It has to have a screen and buttons.” On the other hand, the jury did find that certain functions of the tablet — such as the popular two-finger pinch zoom and the one-finger swipe features — did infringe on the iPad’s patents, but these were not the basis for the preliminary injunction. Samsung has moved to lift the preliminary injunction since the jury verdict. Yet, Apple has already moved for permanent injunction against the US sales of eight more Samsung devices that the jury found to infringe on Apple’s patents including the Droid Charge, Galaxy S 4G, Galaxy Prevail, Galaxy S2, Galaxy S2 Epic 4G and Galaxy. Apple made the argument that the injunction on the Samsung Galaxy 10.1 Tab should become permanent as well, but the district court lifted the preliminary injunction on October 2, 2012.

Although Apple won the jury verdict, it does not deserve permanent injunctions against Samsung proucts. The Patent Act declares that patents should have the attributes of personal property including “the right to exclude others from making, using, offering for sale, or selling the invention.” The courts often look to injunctive relief for all forms of intellectual property infringement cases. The US Supreme Court stated in eBay Inc. v. MercExchange L.L.C. that “the decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion.” In the same case, the Court stated that a plaintiff seeking a permanent injunction in a patent infringement case must satisfy a four-factor test. The plaintiff must demonstrate:

1. That it has suffered an irreparable harm or injury;
2. That remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
3. That, considering the balance of hardships between the plaintiff and the defendant, a remedy in equity is warranted; and
4. The public interest would not be disserved by a permanent injunction.

The Supreme Court rejected an automatic grant of permanent injunctions in patent infringement cases once infringement and patent validity have been adjudged.

Using the framework established by the Supreme Court, we proffer that Apple probably should not be granted a permanent injunction against any of the Samsung devices. Apple appears to be fighting a marketplace battle within the courtroom by even requesting such a remedy. Has Apple truly suffered irreparable harm? Or are they simply fighting for market dominance? Samsung tablets only make up about 5 percent of the current tablet market, while Apple’s iPads make up 68 percent of current tablet sales. In the cell phone arena, however, Samsung is making a steady sweep. Samsung sells nearly twice as many cell phones as iPhones. Conversely, it is important to note that consumers know that there is only one iPhone. iPhones only vary in memory size, and not in type, while Samsung concurrently sells over 30 touch screen cell phone varieties, carried by all major cell phone carriers. None of the Samsung devices are carbon copies of the iPhone but each may include one or two infringing parts in a device made of hundreds of components.

The court is certainly able to provide adequate legal remedies. Any harm to Apple can be repaired through ongoing licensing agreements for any Samsung devices that currently infringe on Apple’s patents. This permits Samsung to continue to sell the devices that have already entered the market place, prevents Samsung from entering new infringing devices into the market place and allows Apple to reap the financial benefits of their patents. Discounting this option seems to make this motion more of a retributive endeavor.

Granting a permanent injunction would not alleviate hardship for Apple, while conversely rendering a great one upon Samsung. Most of the Samsung devices in question have been on the market for a significant period of time. Moreover, the lifespan of cell phone and tablet technology is relatively short. Sales peak and decline within a year. New iPhones are released annually and Samsung releases new phone models even more frequently. Most of the damage caused by Samsung’s infringing devices will have greatly diminished by the time the district court decides this permanent injunction motion. Furthermore, since so many consumers already have the infringing Samsung devices and those consumers have the right to resell those devices, the phones in question would remain in the market place despite a permanent injunction. What Apple is asking for would have little effect on the actual infringing devices but would serve as a major embarrassment for Samsung. Essentially, Apple is not simply asking for relief but for Samsung to be punished — the $1 billion payout was not enough.

A permanent injunction against the Samsung devices could easily be considered a disservice to the public interest. Many people have spent hundreds of dollars on the Samsung devices and an injunction would discourage the availability of replacement parts and devices. Samsung most likely offers warranty contracts for their devices. An injunction could result in breaches of potentially millions of contracts with consumers and cell phone carriers. During the second quarter of 2012, Samsung sold 50 million devices. Thus, it follows that the public has a direct interest in the availability of these devices. Additionally, the aggressive litigation that Apple has engaged in could have a chilling effect on the technology market which would also hurt the consumer in the end.

As both jurists and consumers of the technology, we recognize that this legal process can prove slow when pitted against the constantly evolving nature of technology. When the dust has settled, the appeals have been adjudged and the damages have been paid, the Samsung Galaxy will merely be heralded as a relic from another time.

Sent from an Apple iPad.

Natasha Major is treasurer of the Intellectual Property Student Association and a student attorney in the Intellectual Property and Trademark Clinic. She graduated from Cornell University, where she majored in government with a concentration in latino studies.

Marcus Moore is an Associate at Mercer Law Associates, PLLC. He specializes in entertainment and intellectual property law. He also serves as Associate Counsel for Flo Brands, LLC. He graduated from City College of New York, where he majored in jazz violin performance.

Suggested citation: Natasha Major and Marcus Childs Moore, Apple v. Samsung: Injunction-Junction, What’s Your Function? , JURIST – Dateline, Oct. 4, 2012, http://jurist.org/dateline/2012/10/major-moore-apple-samsung.php.