issues according to the interviewed lawyers related to whether it was
“worth it” to enforce a potential claim based on non-legal factors. As
I argue below,88 lawyers and their clients often knowingly assert weak
trademark and copyright claims, but it is not because they are
unaware those claims may lack merit. As my interview data suggest,
it is because, under some circumstances, asserting even weak claims
can be quite effective for the trademark and copyright owners.
b. Non-Legal Factors
i. Enforcement Costs
In addition to assessing the legal merits of a potential claim, all
of the interviewed lawyers also identified the additional non-legal
factors that significantly shaped their advice to clients and the clients’
willingness to commence a claim against a potential enforcement
target. Chief among these factors was cost.89 All of the lawyers stated
that the likely costs of enforcement strongly shaped both their legal
advice and the clients’ willingness to initiate a claim to enforce their
copyright or trademark rights90:
Q: Can you tell me what factors other than law are important in
giving advice to a client about whether it makes sense to bring a
claim?
A: First: cost, second: cost, third: cost.
Q: I’m tempted to ask what’s fourth.
A: Maybe not cost, but it comes close.
88.