July 7, 2025 • 37 mins
What's your intellectual property truly worth when it's on the line? Not what you hope or what you feel, but what courts, investors, and negotiators will actually pay. This episode of Intangiblia dives deep into the high-stakes world of IP valuation, where patents, trademarks, and copyrights transform from abstract legal protections into concrete dollar amounts.
We journey through landmark global IP disputes that have defined how creative assets are valued in courtrooms from California to Colombia. The Samsung v. Apple design patent battle set precedent for how much of a product's profit can be attributed to its appearance. Epic Systems v. Tata Consultancy Services revealed the billion-dollar worth of trade secrets when they cross into competitors' hands. Meanwhile, cases like Liffers in Spain demonstrate that even moral rights, the right to be credited for your work, carry financial value that courts will recognize and enforce.
The podcast unpacks three essential valuation methodologies that every creator should understand: cost-based (what it took to create), market-based (what others pay for similar assets), and income-based (what future earnings it will generate). Through fascinating case studies across industries, from pharmaceuticals to streaming services, sneakers to smartphones, we see how these approaches play out in real disputes with massive financial implications.
Beyond methodology, we explore how valuation strategies differ across borders, with emerging economies like India pushing back against one-size-fits-all licensing rates, and Mexico's courts mandating that IP damages reflect genuine commercial impact. The digital transformation adds another layer of complexity, as shown in Disney v. Redbox, where even access codes carried enforceable intellectual property value.
Whether you're protecting your creative work, licensing your technology, or facing infringement, this episode delivers a crucial message: in intellectual property, real power lies not just in registration but in pricing. Because in the world of IP, value isn't what you feel, it's what you can prove.
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Episode Transcript
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Speaker 1 (00:00):
worth fighting for IP lawsuits and the art of
valuation.
You've registered yourintellectual property Congrats.
But now comes the real questionwhat's it worth Not in theory,
in court, when you're raisingcapital, closing a deal,
licensing your brand, pitchingto investors, securing a loan or
turning down a low ball offerfrom someone who loves your work
(00:23):
?
Today we're unpacking how theworld puts a price on patents,
trademarks and copyright.
It's methodic, reflective,strategic and intentional,
because in IP, value isn't justabout protection, it's the
number that gets you paid.
Speaker 2 (00:39):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Speaker 3 (00:50):
Hello and welcome to Intangiblia, the podcast
exploring the invisible assetsshaping our real world.
I'm Leticia Caminero, your host, your IP guide and your
friendly reminder that sometimesthe biggest battles aren't over
if you own your creation.
Speaker 1 (01:07):
But how much it's worth and I'm Artemisa, your
digital co-host, valuation hypequeen and certified calculator
of creative chaos If it'sprotected.
I want to know what it's worthin court contracts and cold hard
cash.
Speaker 3 (01:22):
Today we're diving into a deceptively simple but
compelling question what's thevalue of your intellectual
property?
We're talking real numbers,real strategy and real global
core decisions, because in IP,the drama isn't just in the
infringement, it's in thevaluation.
Speaker 1 (01:42):
But before we go any further, a quick note.
Speaker 3 (01:45):
This episode was created with the assistance of
artificial intelligence.
Any opinions expressed by theAI me and my co-host, artemisa
are very bold, very digitalcommentators are hers alone.
Let's keep it fair and factual.
Fair and factual Okay, you'vegot your IP, it's registered,
(02:06):
it's yours, but when the timecomes to license it, defend it
or pitch it, everyone's askingthe same thing how much is this
worth?
That's where valuation entersthe chat.
Speaker 1 (02:17):
And no, it's not just guesswork or vibes.
Ip valuation is about putting adollar or peso, euro, rupee or
yen on the creative work you'veprotected.
It's not about ideas.
It's about what you've legallylocked in like a patent, a
design, a formula or your brandidentity.
Speaker 3 (02:36):
Let's break it down beautifully into three main
methods.
No stretches are required.
Speaker 1 (02:44):
Method.
One cost base.
Basically, how much did it taketo make this thing?
Think time, money, r&d brainpower or caffeine-fueled
all-nighters.
Speaker 3 (02:54):
Method two market basis.
This one asks what are otherpeople paying for similar IP If
your design pattern looks likesomething already sold for a
fortune?
That sets a benchmark.
Speaker 1 (03:07):
And method three, the juicy one income base.
How much money will thisgenerate in the future?
We're talking royalties,licensing revenue, projected
sales, all the juicy bits thatmake investors lean in.
Speaker 3 (03:20):
Now these sound neat and tidy, but in real life,
valuation is full of friction.
Different courts, countries andindustries all approach it
differently.
Speaker 1 (03:32):
That's why today's episode is packed with real
legal battles, from Californiato Colombia, where valuation was
the core issue.
Some used cost-based logic,others asked about future
earnings.
Some courts had to inventcreative ways to assign value
when data was scarce.
Speaker 3 (03:51):
So if you've ever wondered how a stolen design, a
licensing fight or even a moralharm gets priced, stick around,
Because these cases don't justmake valuation real, they make
it matter.
Speaker 1 (04:03):
And trust.
Each case we're about to coverit fits into one of those
valuation models.
Some are classic cost-basedcalculations, others dive deep
into projected royalties andfuture earnings and some, oh
some, are full-on courtroomdebates over brand prestige and
public confusion.
Speaker 3 (04:22):
So, as we go, try to spot the method behind the
madness cost base market, backbase income base.
They're all in here and howeach court chose to apply them.
That's where the legal magicand drama happens.
Speaker 1 (04:39):
All right, enough theory.
Let's get into the cases andsee just how much a patent, a
platform or even a sneakersilhouette is actually worth.
Let's get into the cases andsee just how much a patent, a
platform or even a sneakersilhouette is actually worth.
Speaker 3 (04:48):
Let's start strong with the mother of all design
wars Samsung v Apple.
This wasn't just a patent fight.
This was the valuation battleof the decade.
Speaker 1 (05:02):
You know the one the iconic iPhone design.
Rounded corners, smooth face,grid of colorful icons.
Versus Samsung's Galaxy lineupthat well looked suspiciously
familiar.
Apple said, hey, that's ourvibe, and sued for design patent
infringement.
Speaker 3 (05:17):
In 2012, a jury awarded Apple over $1 billion
zero cents in damages, but thereal drama kicked off when
Samsung pushed back, not onwhether they infringed, but on
how much it was worth.
This was the valuation showdown.
Speaker 1 (05:37):
And here's where it gets juicy.
Apple held design patents, notutility patents.
That meant they weren't suingover how the phone worked, just
how it looked, and under US lawat the time, infringing a design
patent meant you could beliable for all profits from the
infringing product All profits,as in you copied our phone space
.
Speaker 3 (05:56):
Now give us everything you made from it.
Speaker 1 (05:59):
Samsung was like wait a minute.
Are we seriously giving Applethe profit from the whole phone
just because of a few curves andicons?
Speaker 3 (06:09):
The case went all the way to the US Supreme Court and
in 2016, the court said no, youdon't automatically owe total
profits on the entire product.
The key phrase article ofmanufacture on the entire
product.
Speaker 1 (06:27):
The key phrase article of manufacture,
translation maybe Samsung oldprofits only on the front casing
, not the whole phone with chips, batteries and features.
Apple never claimed.
Speaker 3 (06:35):
That ruling flipped the script on how market-based
valuation works in design patentcases.
It forced courts to dissect aproduct and decide what portion
of it actually drives value andwhether that portion was what
got infringed.
Speaker 1 (06:52):
This wasn't just a money fight.
It reshaped how designers,brands and lawyers think about
IP value.
If you can't tie your design toconsumer choice or actual
profit impact, you may walk awaywith less than you thought.
Speaker 3 (07:06):
Eventually, apple and Samsung settled in 2018 for an
undisclosed amount, but theprecedent it lives on.
Today, courts apply a much morenuanced valuation approach in
design patent fights andcompanies document their
consumer behavior data, likegospel Companies document their
consumer behavior data likegospel.
(07:28):
So the lesson if you'reprotecting a design, be ready to
prove why it sells, not justwhy it looks good.
All right Time to shift gearsfrom sleek smartphones to
seismic sensors and, trust me,the valuation drama here was
earth shaking.
Speaker 1 (07:45):
Oh, we're getting geological now.
I love it.
Let's talk Western Jacoby Ion.
This 2018 US Supreme Court casewasn't flashy, but it changed
the way companies price IP tiedto international business.
Speaker 3 (08:01):
Here's the setup.
Western Jaco held patents onmarine survey technology,
basically equipment that helpsoil companies map the ocean
floor before drilling.
Big money very specialized.
Speaker 1 (08:20):
They were accused of shipping parts overseas that
could be assembled into WesternJCO's patented tech without a
license.
Western JCO sued for patentinfringement and said hey, we
lost out on big overseascontracts because of you.
Speaker 3 (08:36):
Now pause because this is where income-based
valuation enters the chat.
Western JCO wasn't just askingfor damages inside the US.
They wanted compensation forthe profits they would have
earned abroad if Aion hadn'tundercut them.
Speaker 1 (08:54):
Aion argued wait, wait.
Us patent law shouldn't applyto what happens outside the
country Classicextraterritoriality debate.
Speaker 3 (09:02):
But the Supreme Court it didn't buy that
territoriality debate.
But the Supreme Court it didn'tbuy that In a 7-2 decision they
ruled that Western GECO couldrecover lost foreign profits
because the infringement startedin the US with the unauthorized
component exports.
Speaker 1 (09:17):
That was huge.
Suddenly, patent holders couldclaim global revenue loss as
part of their valuation, notjust domestic.
Market impact global revenueloss as part of their valuation,
not just domestic market impact, but the entire international
earnings pipeline.
Speaker 3 (09:28):
This shifted how companies estimate the value of
their patents, especially thosein hardware, biotech or
specialized engineering, becausenow the global market potential
can directly affect yourcourtroom compensation.
Speaker 1 (09:42):
And, let's not forget , this was a real win for small
patent holders who competeglobally.
Western JECO wasn't a massivebrand, but their tech was niche
and valuable.
They had the receipts and thecourt said, yep, those receipts
matter.
Speaker 3 (09:55):
Valuation takeaway if your patented invention has
cross-border potential, documentit Earnings projections, missed
bids, regional contractsthey're all fair game in a
damage claim now.
Speaker 1 (10:10):
And in IP, lost opportunity is still opportunity
with a dollar sign.
Speaker 3 (10:16):
Next up corporate espionage with a tech twist.
We're talking Epic Systems,bond, tata Consultancy Services,
a US case that proved just howmuch confidential information is
worth when it crosses into IPterritory.
Speaker 1 (10:35):
Oof.
This one had it all Fakecredentials, sneaky logins and a
courtroom price tag big enoughto make CEOs sweat.
Spoiler alert $940 million zerocents in damages.
That's almost a billion dollarwhoopsie.
Speaker 3 (10:52):
Anja, here's the backstory.
Epic Systems is a US-basedsoftware giant that builds
health records systems forhospitals, had a consultancy.
One of India's largest techfirms was hired by an Epic
client to help with systemmaintenance.
Speaker 1 (11:13):
Instead of just doing the job, some Tata employees
allegedly used stolencredentials to access Epic's
internal system and downloadedover 6,000 documents Not code,
exactly, but manuals,configuration files, tools,
basically the IP that teachesyou how the engine runs.
Speaker 3 (11:35):
Epic found out and they were not amused.
They stood for Trey's secretmisappropriation and made a
compelling case that Tata usedthose materials to build and
improve their own competinghealthcare software.
Speaker 1 (11:49):
Here's where it gets valuation worthy.
The court had to determine notjust if Tata used the material,
but how much value it gave them,because this wasn't a direct
copy paste of code, it wasstealth learning, short cutting
the R&D process.
Speaker 3 (12:04):
Exactly so.
The damages calculation leanedinto an income-based approach.
How much profit did TATAC earnor save by not having to develop
that knowledge from?
Speaker 1 (12:18):
scratch awarded $240 million zero cents in
compensatory damages and thendropped an extra $700 million
zero cents in punitive damageson top, just to make a point.
Speaker 3 (12:32):
He was one of the largest trade secret verdicts in
US history, later reduced onappeal.
But the message was loud andclear If you shortcut your way
to market with someone else'sprotected know-how, it'll cost
you.
Speaker 1 (12:50):
Valuation isn't just about physical patents or
trademarks.
Sometimes it's about thesystems behind the systems, the
internal tools, data, processes.
If they're protected andcommercially valuable, they
count.
Speaker 3 (13:05):
And they count big.
The key in this case wasproving that those 6,000
documents saved Tata time andmoney and gave them a
competitive edge.
Speaker 1 (13:15):
That's where the price tag came from, and it's a
reminder to everyone track yourtrade secrets, mark them,
protect them, limit access,because if you ever have to
fight over their value, you'llneed the receipts.
Speaker 3 (13:27):
Now for a case with a little less math and a lot more
heart.
We're headed to Spain and intothe world of moral rights.
Speaker 1 (13:36):
Oh yes, time to talk about Liffers v Producciones,
mandarina.
No spreadsheets, just feelingsand legal recognition that
sometimes IP damage is emotionaland economic.
Speaker 3 (13:49):
José Luis Leferre is a cinematographer who created
the visual style for a SpanishTV show.
When the show got recut andaired without crediting him and
with modifications he hadn'tapproved.
Speaker 1 (14:01):
Leferre sued and he had every right.
In many countries, includingSpain, creators have moral
rights like the right to becredited and the right to object
to modifications that harmtheir artistic integrity.
Speaker 3 (14:15):
Here's the kicker.
Liffers didn't sue forcopyright infringement in the
traditional sense.
He sued for damages to hisreputation and won reputation
and won.
Speaker 1 (14:29):
The court awarded him compensation not based on lost
profits but on non-material harm.
That's valuation through thelens of artistic identity and
professional credibility.
Speaker 3 (14:37):
So what method of valuation are we talking about
here?
Technically, none of the bigthree cost-based, market-based
or income-based fit neatly, butthe court still had to put a
number on the damage.
Speaker 1 (14:52):
Exactly.
This is what you might call areputational valuation.
The court looked at theindustry norms, lifford's
standing as a professional andthe likely impact on his career.
It wasn't just about a missingcredit.
It was about what that missingcredit cost him in prestige,
visibility and future work.
Speaker 3 (15:12):
And let's be real in creative industries, reputation
is currency and compensate harmto your name, your style, your
dignity.
It's a great reminder thatvaluation isn't always about
(15:38):
bank statements.
Sometimes it's about theinvisible value behind the
credits and the respect thosecredits represent.
Let's talk standard, essentialpatents, aka SCPs.
These are the patents that areso fundamental, so baked into
global tech standards like 4G,wi-fi or USB, that everyone has
(16:00):
to use them.
Speaker 1 (16:02):
And if you own one, you're basically holding the
keys to the digital kingdom,basically holding the keys to
the digital kingdom.
Today's case Unwired Planet vHuawei, a UK court drama that
shook up how we value thosegolden keys.
Speaker 3 (16:19):
Unwired Planet had acquired a bunch of steps from
Ericsson.
We're talking mobilecommunication tech that powers
everything from phone calls tostreaming cat videos.
Speaker 1 (16:27):
They offered Huawei a license.
Huawei said too expensive,unwired, sued and boom, we've
got ourselves a courtroomshowdown over what a FRAND
license should cost.
Speaker 3 (16:39):
FRAND stands for Fair , reasonable and
Non-Discriminatory.
It's the gold standard for SEPlicensing.
But here's the billion dollarquestion what exactly is fair
and reasonable?
Speaker 1 (16:58):
That's where valuation walks in sipping tea
like, oh you rang.
The court had to decide notjust if Huawei infringed, but
how much the license should havecost and whether Unwired's
offers were in line with globalnorms.
Speaker 3 (17:07):
And get this.
The UK court didn't just lookat British markets, it went
global, setting a worldwideroyalty rate that Huawei would
have to pay to use unwiredpatents everywhere.
Speaker 1 (17:21):
That was groundbreaking because up until
then, most SEP battles werelocal.
You're using it here, pay ushere.
But this ruling said now ifyou're a global company using
global standards, the license isglobal too.
Speaker 3 (17:33):
So what kind of valuation are we dealing with
here?
Definitely income based.
The court calculated how muchrevenue the patents could
reasonably generate throughglobal licensing Plus a little
market based flavor.
Speaker 1 (17:46):
They compared Unwired's offers with other SEP
agreements to make sure therates weren't wildly out of step
.
Speaker 3 (17:52):
And, of course, this all sent a message to other
patent holders If you're sittingon SCPs and want to enforce
them, be ready to back up yourroyalty demands with solid data
Usage rates, comparable licenses, market coverage.
Speaker 1 (18:07):
Because vague demands won't cut it.
Courts want valuation, math,not vibes.
Speaker 3 (18:12):
The ruling said, a precedent has been echoed in
India, china and beyond.
It forced companies to approachSDP licensing as a structure
global valuation strategy, notjust a numbers game.
Speaker 1 (18:26):
So, yes, owning a standard, essential patent can
make you powerful, but only ifyour licensing terms can pass
the global sniff test.
Speaker 2 (18:36):
Intangiblia, the podcast of intangible law.
Playing talk about intellectualproperty.
Speaker 3 (18:43):
Time to head to India , and, yes, we're still in the
world of mobile technology,india.
And yes, we're still in theworld of mobile technology, but
this time it's LavaInternational, a local
smartphone manufacturer, takingon global telecom giant Ericsson
.
Speaker 1 (19:01):
This case is basically the Indian remix of
Unwired Planet.
Ericsson claimed Lava had beenusing its standard essential
patents again SCPs for thingslike GSM and 3G connectivity
without a license and.
Speaker 3 (19:08):
Ericsson wasn't just asking politely.
They wanted Lava to cough uproyalties at a global rate rate
that had already been challengedas too high in India by other
manufacturers like Micromax andIntex.
Speaker 1 (19:22):
That's right.
This wasn't Ericsson's firstdance.
They had already faced scrutinyfrom the Competition Commission
of India for potentiallyabusing their dominant position
by charging unreasonably highroyalties, so Lava said wait a
second.
Speaker 3 (19:36):
these rates don't make sense in our market.
We're selling phone at afraction of that price squarely
onto valuation fairness indeveloping economies.
Speaker 1 (19:50):
The big question should royalty rates be based on
the value of the whole deviceor just the part that uses the
patented tech?
Speaker 3 (19:55):
And what's the income-based value of that
little chip inside your phonethat connects it to the network?
Because if it costs $2, zerocents, should royalties be based
on that or on the $100, zerocents phone it?
Speaker 1 (20:11):
powers.
Valuation battles like thisshow that context matters.
A fran rate in Sweden might notfly in New Delhi.
Courts in India started pushingback, asking for local market
evidence, cost breakdowns anddata on how much the patents
actually contributed to thephone's success.
Speaker 3 (20:32):
And remember Lava wasn't refusing to pay.
They were asking for evaluationthat made economic sense in
their business model.
They wanted fair, reasonableand truly non-discriminatory
terms, just like the FRANacronym promises.
Speaker 1 (20:51):
So what was the valuation method?
Again, a hybrid.
The court weighed income-basedprojections against market-based
comparables, all filteredthrough India's local realities.
Speaker 3 (21:03):
This case, along with others in the region, helped
shape how emerging economiesapproach IP valuation.
It also sent a warning topatent holders you can't just
copy paste royalty models acrossborders.
You need cultural, legal andeconomic fluency.
Speaker 1 (21:22):
And ideally, a calculator that converts Swedish
licensing optimism into Indianregulatory realism.
Speaker 3 (21:29):
All right, deep breath.
We're jumping into pharma nowbecause if there's one industry
where valuation and timing areeverything, it's pharmaceuticals
.
Speaker 1 (21:38):
Oh yes, this case is Toray v Saway, and the question
at the center was this whathappens when a generic drug
maker delays licensing apatented product and jumps the
gun?
Speaker 3 (21:51):
Sawai held a compound patent and a process patent for
a key hypertension drug inJapan.
Sawai, a generic manufacturer,applied for marketing approval
and then launched the drugbefore concluding a proper
license agreement with Toray Nota great look.
Speaker 1 (22:10):
Toray sued, arguing that Sawai had benefited
commercially while draggingtheir feet on formal licensing.
Basically, you used our tech,sold it and paid us nothing.
Speaker 3 (22:21):
So what did the Tokyo District Court do?
It treated the case like aretroactive license negotiation,
but with court oversight.
And guess what that meant?
Valuation central.
Speaker 1 (22:35):
Yep.
The court had to figure outwhat a fair licensing fee should
have been, even though noagreement had actually been
signed.
Enter income-based valuation.
They looked at how much Sawaiearned from sales and what
similar licenses would have costin Japan's pharma market.
Speaker 3 (22:51):
The judge didn't just slap on a penalty.
They calculated hypotheticalroyalties, assuming a license
had existed, and awarded Tureover 1.3 billion yen in damages,
that's roughly 12 million.
Speaker 1 (23:08):
USD.
And that wasn't all.
The court also confirmed thatprocess patents, not just the
final product patents, haveindependent commercial value.
So even if Suai had slightlyaltered the manufacturing, they
were still within Torre's patentfence.
Speaker 3 (23:24):
This case highlighted how valuation can also protect
market exclusivity bydiscouraging generic companies
from jumping ahead beforelicensing terms are settled.
Speaker 1 (23:37):
And it showed that Japanese courts are perfectly
comfortable putting a hardnumber on patent misuse, even
when there's no formal contractin place.
Speaker 3 (23:45):
So next time someone tells you IP is intangible,
remind them that courts can andwill put a yen value on every
delayed signature and everyunauthorized pill sold,
especially when millions inpharma revenue are on the line.
Now let's talk about streamingand stealing, because this case
(24:09):
shows how copyright violationisn't just about the art.
It's about access, audience andthe platforms we use to get
both.
Speaker 1 (24:19):
Enter Netflix versus Dragon Media.
This wasn't some shady torrentsite in a dark corner of the
internet.
Dragon was out in the openselling fully loaded streaming
boxes that came pre-installedwith apps designed to access
pirated content.
Speaker 3 (24:35):
Think of it like this you walk into a store, buy a
box that plugs into your TV andpoof, you've got access to all
the latest Netflix, HBO andDisney Plus shows without paying
a single subscription fee, andthey even advertise it as better
than cable, which, legallyspeaking, is like waving a red
(24:56):
flag in front of every majorstudio's legal team a red flag
in front of every major studio'slegal team.
So Netflix, along with Amazon,hulu and others, hit dragomedia
with a massive copyrightinfringement lawsuit.
And here's the juicy part thiswasn't just about stopping the
sales, it was about provingdamages, Because how do you
(25:21):
value what was lost when someonestreams without paying?
Speaker 1 (25:22):
That's where income-based valuation came in
hot, measuring how manysubscriptions were likely lost,
how many users were diverted andwhat that cost the platforms in
revenue.
Speaker 3 (25:35):
Plus, there was a market-based element too.
The court looked at what DragonMedia was earning from selling
the boxes and how that comparedto the legitimate market value
of access to streaming platforms.
Speaker 1 (25:43):
Spoiler.
It was nowhere near fair.
The court ordered a permanentinjunction, shut the whole
operation down and awarded amassive default judgment of
nearly $14 million zero cents indamages.
Speaker 3 (25:56):
The ruling also reinforced that enable
infringement is just as seriousas doing it yourself.
Draken wasn't streaming thecontent, but they designed the
ecosystem to make it easy andthey profited from it.
Speaker 1 (26:09):
So what's the valuation takeaway In the
streaming world?
Access is the asset.
It's not about how many DVDsyou sell.
It's about how many eyeballsyou attract and what those
eyeballs are worth insubscriptions, data and ad
revenue.
Speaker 3 (26:23):
And courts are very willing to assign a dollar value
to each of those missingeyeballs, especially when entire
industries depend on it.
Let's head to Mexico, where theSupreme Court, the SCJ, and
decided it was time to give IPdamages a serious upgrade, and
(26:45):
not just any upgrade.
Speaker 1 (26:46):
we're talking about a jurisprudential thesis from the
top court that basically saidif you want to protect IP, you
better know how to price it.
Speaker 3 (26:56):
Before this decision, mexican IP lawsuits had a bit
of a reputation.
Courts were cautious, damageswere low and valuation was well
inconsistent.
Speaker 1 (27:08):
Enter the SCJN with a bold position.
Ip damages can't just besymbolic.
They need to reflect realcommercial value and courts must
evaluate the actual economicharm, including lost profits,
market share and potentiallicensing income, which
basically brought income basedvaluation into the center of the
Mexican IP courtroom.
Speaker 3 (27:30):
No more moral victories with one dollar zero
cents awards.
If your rights were violatedand you can prove it, the court
will quantify that violation.
Speaker 1 (27:41):
And the SCJN also emphasized a big shift the
burden of proof right Shoulderswere given greater procedural
leverage, including the right torequest detailed financial
documents from infringers tohelp calculate the damage.
Speaker 3 (27:53):
So it wasn't just about increasing awards.
It was about making valuationevidence more accessible and
central to the case.
It gave judges the tools andthe push to actually use
valuation principles in practice.
Speaker 1 (28:13):
That's a game changer , because now, when a copyright
or trademark holder sues inMexico, they can build a damages
claim that reflects real worldbusiness losses, not just legal
theory.
Speaker 3 (28:27):
And it's helped bring Mexican jurisprudence more in
line with internationalstandards.
Speaker 1 (28:33):
So what's the bottom line?
The court made valuationstrategic, legal and
non-optional.
If you want to defend your IPin Mexico today, you better come
prepared with the numbers.
Speaker 3 (28:44):
And if you're an infringer, you better be ready
to disclose your books, becausethe price of playing dirty just
got a whole lot higher.
If you thought IP only got thelatillos in tech or pharma,
think again.
Only got the latillos in techor pharma think again.
This case is about a sneaker, aslogan and a very famous radio
(29:11):
station.
Speaker 1 (29:11):
Let's set the stage.
Los 40 is one of Colombia'sbiggest radio networks Music,
pop, culture, gen Z, vibes and afew years back they ran a major
campaign using the phraseall-star.
Speaker 3 (29:18):
Now, if you've ever owned a pair of Converse Chuck
Taylors, that slogan might ringa little loud.
All-star isn't just a phrase.
It's part of Converse'sglobally protected brand
identity.
Speaker 1 (29:31):
Converse wasn't having it.
They sued, arguing that LostForty's use of All-Star created
brand confusion, diluted theirtrademark and basically
piggybacks off the culturalequity they'd built over decades
.
Speaker 3 (29:41):
And here's where valuation comes in.
Converse it and just say youuse our phrase.
They said you use our brandequity and now we want
compensation for what that'sworth.
Speaker 1 (29:53):
Which means this wasn't about a lost shoe sale.
It was about the value of brandidentity and how much a
non-authorized use in anotherindustry, like media, could harm
perception and revenue.
Speaker 3 (30:07):
The court agreed that there was unauthorized
exploitation of a registeredtrademark, and they used a mix
of market-based and income-basedmethods to assess the damage,
and income-based methods toassess the damage.
Speaker 1 (30:22):
Basically, they looked at the value of
Converse's trademarks inColombia, advertising costs and
how much a similar ad campaignwould have cost if Los 40 had
actually licensed the phrase.
Speaker 3 (30:30):
The ruling reinforced that trademarks aren't limited
by sector.
Speaker 1 (30:34):
Just because you're not selling shoes doesn't mean
you can casually use a brand'ssignature phrase to hype your
concert series, and it was a winfor brand owners everywhere,
showing that even in LatinAmerica, valuation isn't just
about physical goods.
It's about reputation, marketpositioning and the power of a
phrase.
Speaker 3 (30:55):
So, yes, in the world of IP, even two little wars
like All-Star can come withserious legal price tags.
All right Time to close withthe classic Disney twist.
And no, this isn't aboutCinderella's copyright.
It's about digital codes,licensing rights and whether
buying a DVD gives you the rightto resell the piece of the
(31:19):
magic.
Speaker 1 (31:20):
Enter Disney v Redbox Around 2017,.
Redbox you know the DVD kioskcompany used to see at the
grocery store came up with acreative way to compete in the
digital era.
Speaker 3 (31:32):
They started buying up Disney DVD combo packs.
They kind of include a Blu-raydisc, a regular DVD and a
digital download code.
Then they crack open the boxes,pull out the digital code and
sell it separately for cheap.
Speaker 1 (31:50):
Basically, redbox was like hey, you want Disney's
Moana or the Force Awakens forfive bucks?
Just take this code nostreaming service, no license,
no subscription, just the codeand a smile.
Speaker 3 (32:02):
Disney's response A full-blown lawsuit.
They claimed Redbox wasviolating the license terms
attached to those digital codes,which clearly stated they were
not for resale and intended forpersonal use only.
Speaker 1 (32:18):
Here's the fun part.
Redbox tried to argue that oncethey bought the DVD pack, they
owned all of it physical discsand digital rights included.
They called it first saledoctrine you buy it, you can
sell it.
Speaker 3 (32:31):
But Disney clapped back with the ultimate IP
rebuttal not so fast.
That applies to tangible goods,not licensed digital content.
The download codes weren't sold, they were licensed, and that
license came with stringsattached.
Speaker 1 (32:50):
Exactly so.
This case became a litmus testfor the value of digital IP and
whether courts would recognizethat even a code has legal teeth
if it's tied to licensingrestrictions and valuation wise.
Speaker 3 (33:05):
This case was a perfect example of how access
can be an asset.
Disney wasn't just protecting apiece of plastic.
They were protecting theirentire digital distribution
model streaming rights, platformpartnerships, bundle pricing
and how they monetize contentbeyond the DVD shelf.
Speaker 1 (33:26):
The court issued a preliminary injunction stopping
Redbox from selling the codes,but the real headline was that
the judge agreed with Disney'sposition.
Reselling a digital licensewithout permission is a
violation of IP rights.
Speaker 3 (33:41):
And it affirms something critical Valuation in
digital markets isn't about whatsomething costs to produce.
It's about how it's licensed,how it's accessed and how that
access drives revenue.
Speaker 1 (33:56):
So, whether it's a streaming password, a QR code or
an app download, if it's tiedto a license, it's got value,
and if you try to unbundle thatvalue for resale, expect a
studio's legal team at your door.
Speaker 3 (34:08):
In the end, the Simbi Redbox helped reinforce that
digital IP has boundaries, evenwhen it looks like a 12-digit
string of letters and numbers.
Speaker 1 (34:18):
And that IP law, even in its most classic forms, is
evolving to prize access, notjust ownership.
Speaker 3 (34:25):
So what did we learn on this whirlwind tour through
the world of IP and its pricetags?
Speaker 1 (34:32):
Besides the fact that even a download code or a
slogan can cost you millions.
Let's hit the top five.
Speaker 3 (34:38):
Lessons One valuation is an optional strategy.
Whether you're suing forinfringement or closing a
licensing deal, you need to knowyour IAP's value.
Courts, investors and buyersall expect you to bring numbers,
not just feelings.
Speaker 1 (34:56):
Two the method matters Lost profits, that's
income-based cost of creation,that's cost-based going rates
for similar assets, market-basedthe strongest cases.
Use the right mix of methodsand backed it up with evidence.
Re-licensing terms are law, notsuggestions From Qualcomm to
(35:19):
Disney.
If access is tied to a license,courts will enforce the fine
print.
Valuation lives in the contract, so write and read them wisely.
Speaker 3 (35:29):
Or IPBD, travels across borders and courts are
catching up.
Whether it's Mexico's SupremeCourt, India's front battles or
Colombia's commerce case,jurisdictions are aligning with
global standards and treating IPas a business asset, not just a
legal one.
Speaker 1 (35:48):
Five protection is just the beginning.
Real power lies in pricing.
A registered right meansnothing if you don't know what
it's worth.
These cases showed us that thereal flex isn't filing a patent.
It's negotiating withconfidence because you know its
market impact, its licensingpotential and its courtroom
strength.
Speaker 3 (36:08):
So next time someone asks you is that trademark
really worth anything?
You'll know the answer andyou'll know the method to prove
it.
Speaker 1 (36:17):
Remember in IP value isn't what you feel, it's what
you can prove, and the betteryour proof, the better your
prove.
It Remember in IP value isn'twhat you feel, it's what you can
prove, and the better yourproof, the better your payout.
Speaker 3 (36:24):
Thanks for listening to Intangibilia.
If you've enjoyed this episode,share it, review it or, even
better, price it, protect it andprofit from it.
Speaker 1 (36:35):
We'll see you next time.
And hey, if anyone tries tolowball you, just send them this
episode.
Speaker 2 (36:42):
Thank you for listening to Intangiblia, the
podcast of intangible lawplaying.
Talk about intellectualproperty.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(37:02):
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
worth fighting for IP lawsuits and the art of
valuation.
You've registered yourintellectual property Congrats.
But now comes the real questionwhat's it worth Not in theory,
in court, when you're raisingcapital, closing a deal,
licensing your brand, pitchingto investors, securing a loan or
turning down a low ball offerfrom someone who loves your work
(00:23):
?
Today we're unpacking how theworld puts a price on patents,
trademarks and copyright.
It's methodic, reflective,strategic and intentional,
because in IP, value isn't justabout protection, it's the
number that gets you paid.
Speaker 2 (00:39):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Speaker 3 (00:50):
Hello and welcome to Intangiblia, the podcast
exploring the invisible assetsshaping our real world.
I'm Leticia Caminero, your host, your IP guide and your
friendly reminder that sometimesthe biggest battles aren't over
if you own your creation.
Speaker 1 (01:07):
But how much it's worth and I'm Artemisa, your
digital co-host, valuation hypequeen and certified calculator
of creative chaos If it'sprotected.
I want to know what it's worthin court contracts and cold hard
cash.
Speaker 3 (01:22):
Today we're diving into a deceptively simple but
compelling question what's thevalue of your intellectual
property?
We're talking real numbers,real strategy and real global
core decisions, because in IP,the drama isn't just in the
infringement, it's in thevaluation.
Speaker 1 (01:42):
But before we go any further, a quick note.
Speaker 3 (01:45):
This episode was created with the assistance of
artificial intelligence.
Any opinions expressed by theAI me and my co-host, artemisa
are very bold, very digitalcommentators are hers alone.
Let's keep it fair and factual.
Fair and factual Okay, you'vegot your IP, it's registered,
(02:06):
it's yours, but when the timecomes to license it, defend it
or pitch it, everyone's askingthe same thing how much is this
worth?
That's where valuation entersthe chat.
Speaker 1 (02:17):
And no, it's not just guesswork or vibes.
Ip valuation is about putting adollar or peso, euro, rupee or
yen on the creative work you'veprotected.
It's not about ideas.
It's about what you've legallylocked in like a patent, a
design, a formula or your brandidentity.
Speaker 3 (02:36):
Let's break it down beautifully into three main
methods.
No stretches are required.
Speaker 1 (02:44):
Method.
One cost base.
Basically, how much did it taketo make this thing?
Think time, money, r&d brainpower or caffeine-fueled
all-nighters.
Speaker 3 (02:54):
Method two market basis.
This one asks what are otherpeople paying for similar IP If
your design pattern looks likesomething already sold for a
fortune?
That sets a benchmark.
Speaker 1 (03:07):
And method three, the juicy one income base.
How much money will thisgenerate in the future?
We're talking royalties,licensing revenue, projected
sales, all the juicy bits thatmake investors lean in.
Speaker 3 (03:20):
Now these sound neat and tidy, but in real life,
valuation is full of friction.
Different courts, countries andindustries all approach it
differently.
Speaker 1 (03:32):
That's why today's episode is packed with real
legal battles, from Californiato Colombia, where valuation was
the core issue.
Some used cost-based logic,others asked about future
earnings.
Some courts had to inventcreative ways to assign value
when data was scarce.
Speaker 3 (03:51):
So if you've ever wondered how a stolen design, a
licensing fight or even a moralharm gets priced, stick around,
Because these cases don't justmake valuation real, they make
it matter.
Speaker 1 (04:03):
And trust.
Each case we're about to coverit fits into one of those
valuation models.
Some are classic cost-basedcalculations, others dive deep
into projected royalties andfuture earnings and some, oh
some, are full-on courtroomdebates over brand prestige and
public confusion.
Speaker 3 (04:22):
So, as we go, try to spot the method behind the
madness cost base market, backbase income base.
They're all in here and howeach court chose to apply them.
That's where the legal magicand drama happens.
Speaker 1 (04:39):
All right, enough theory.
Let's get into the cases andsee just how much a patent, a
platform or even a sneakersilhouette is actually worth.
Let's get into the cases andsee just how much a patent, a
platform or even a sneakersilhouette is actually worth.
Speaker 3 (04:48):
Let's start strong with the mother of all design
wars Samsung v Apple.
This wasn't just a patent fight.
This was the valuation battleof the decade.
Speaker 1 (05:02):
You know the one the iconic iPhone design.
Rounded corners, smooth face,grid of colorful icons.
Versus Samsung's Galaxy lineupthat well looked suspiciously
familiar.
Apple said, hey, that's ourvibe, and sued for design patent
infringement.
Speaker 3 (05:17):
In 2012, a jury awarded Apple over $1 billion
zero cents in damages, but thereal drama kicked off when
Samsung pushed back, not onwhether they infringed, but on
how much it was worth.
This was the valuation showdown.
Speaker 1 (05:37):
And here's where it gets juicy.
Apple held design patents, notutility patents.
That meant they weren't suingover how the phone worked, just
how it looked, and under US lawat the time, infringing a design
patent meant you could beliable for all profits from the
infringing product All profits,as in you copied our phone space
.
Speaker 3 (05:56):
Now give us everything you made from it.
Speaker 1 (05:59):
Samsung was like wait a minute.
Are we seriously giving Applethe profit from the whole phone
just because of a few curves andicons?
Speaker 3 (06:09):
The case went all the way to the US Supreme Court and
in 2016, the court said no, youdon't automatically owe total
profits on the entire product.
The key phrase article ofmanufacture on the entire
product.
Speaker 1 (06:27):
The key phrase article of manufacture,
translation maybe Samsung oldprofits only on the front casing
, not the whole phone with chips, batteries and features.
Apple never claimed.
Speaker 3 (06:35):
That ruling flipped the script on how market-based
valuation works in design patentcases.
It forced courts to dissect aproduct and decide what portion
of it actually drives value andwhether that portion was what
got infringed.
Speaker 1 (06:52):
This wasn't just a money fight.
It reshaped how designers,brands and lawyers think about
IP value.
If you can't tie your design toconsumer choice or actual
profit impact, you may walk awaywith less than you thought.
Speaker 3 (07:06):
Eventually, apple and Samsung settled in 2018 for an
undisclosed amount, but theprecedent it lives on.
Today, courts apply a much morenuanced valuation approach in
design patent fights andcompanies document their
consumer behavior data, likegospel Companies document their
consumer behavior data likegospel.
(07:28):
So the lesson if you'reprotecting a design, be ready to
prove why it sells, not justwhy it looks good.
All right Time to shift gearsfrom sleek smartphones to
seismic sensors and, trust me,the valuation drama here was
earth shaking.
Speaker 1 (07:45):
Oh, we're getting geological now.
I love it.
Let's talk Western Jacoby Ion.
This 2018 US Supreme Court casewasn't flashy, but it changed
the way companies price IP tiedto international business.
Speaker 3 (08:01):
Here's the setup.
Western Jaco held patents onmarine survey technology,
basically equipment that helpsoil companies map the ocean
floor before drilling.
Big money very specialized.
Speaker 1 (08:20):
They were accused of shipping parts overseas that
could be assembled into WesternJCO's patented tech without a
license.
Western JCO sued for patentinfringement and said hey, we
lost out on big overseascontracts because of you.
Speaker 3 (08:36):
Now pause because this is where income-based
valuation enters the chat.
Western JCO wasn't just askingfor damages inside the US.
They wanted compensation forthe profits they would have
earned abroad if Aion hadn'tundercut them.
Speaker 1 (08:54):
Aion argued wait, wait.
Us patent law shouldn't applyto what happens outside the
country Classicextraterritoriality debate.
Speaker 3 (09:02):
But the Supreme Court it didn't buy that
territoriality debate.
But the Supreme Court it didn'tbuy that In a 7-2 decision they
ruled that Western GECO couldrecover lost foreign profits
because the infringement startedin the US with the unauthorized
component exports.
Speaker 1 (09:17):
That was huge.
Suddenly, patent holders couldclaim global revenue loss as
part of their valuation, notjust domestic.
Market impact global revenueloss as part of their valuation,
not just domestic market impact, but the entire international
earnings pipeline.
Speaker 3 (09:28):
This shifted how companies estimate the value of
their patents, especially thosein hardware, biotech or
specialized engineering, becausenow the global market potential
can directly affect yourcourtroom compensation.
Speaker 1 (09:42):
And, let's not forget , this was a real win for small
patent holders who competeglobally.
Western JECO wasn't a massivebrand, but their tech was niche
and valuable.
They had the receipts and thecourt said, yep, those receipts
matter.
Speaker 3 (09:55):
Valuation takeaway if your patented invention has
cross-border potential, documentit Earnings projections, missed
bids, regional contractsthey're all fair game in a
damage claim now.
Speaker 1 (10:10):
And in IP, lost opportunity is still opportunity
with a dollar sign.
Speaker 3 (10:16):
Next up corporate espionage with a tech twist.
We're talking Epic Systems,bond, tata Consultancy Services,
a US case that proved just howmuch confidential information is
worth when it crosses into IPterritory.
Speaker 1 (10:35):
Oof.
This one had it all Fakecredentials, sneaky logins and a
courtroom price tag big enoughto make CEOs sweat.
Spoiler alert $940 million zerocents in damages.
That's almost a billion dollarwhoopsie.
Speaker 3 (10:52):
Anja, here's the backstory.
Epic Systems is a US-basedsoftware giant that builds
health records systems forhospitals, had a consultancy.
One of India's largest techfirms was hired by an Epic
client to help with systemmaintenance.
Speaker 1 (11:13):
Instead of just doing the job, some Tata employees
allegedly used stolencredentials to access Epic's
internal system and downloadedover 6,000 documents Not code,
exactly, but manuals,configuration files, tools,
basically the IP that teachesyou how the engine runs.
Speaker 3 (11:35):
Epic found out and they were not amused.
They stood for Trey's secretmisappropriation and made a
compelling case that Tata usedthose materials to build and
improve their own competinghealthcare software.
Speaker 1 (11:49):
Here's where it gets valuation worthy.
The court had to determine notjust if Tata used the material,
but how much value it gave them,because this wasn't a direct
copy paste of code, it wasstealth learning, short cutting
the R&D process.
Speaker 3 (12:04):
Exactly so.
The damages calculation leanedinto an income-based approach.
How much profit did TATAC earnor save by not having to develop
that knowledge from?
Speaker 1 (12:18):
scratch awarded $240 million zero cents in
compensatory damages and thendropped an extra $700 million
zero cents in punitive damageson top, just to make a point.
Speaker 3 (12:32):
He was one of the largest trade secret verdicts in
US history, later reduced onappeal.
But the message was loud andclear If you shortcut your way
to market with someone else'sprotected know-how, it'll cost
you.
Speaker 1 (12:50):
Valuation isn't just about physical patents or
trademarks.
Sometimes it's about thesystems behind the systems, the
internal tools, data, processes.
If they're protected andcommercially valuable, they
count.
Speaker 3 (13:05):
And they count big.
The key in this case wasproving that those 6,000
documents saved Tata time andmoney and gave them a
competitive edge.
Speaker 1 (13:15):
That's where the price tag came from, and it's a
reminder to everyone track yourtrade secrets, mark them,
protect them, limit access,because if you ever have to
fight over their value, you'llneed the receipts.
Speaker 3 (13:27):
Now for a case with a little less math and a lot more
heart.
We're headed to Spain and intothe world of moral rights.
Speaker 1 (13:36):
Oh yes, time to talk about Liffers v Producciones,
mandarina.
No spreadsheets, just feelingsand legal recognition that
sometimes IP damage is emotionaland economic.
Speaker 3 (13:49):
José Luis Leferre is a cinematographer who created
the visual style for a SpanishTV show.
When the show got recut andaired without crediting him and
with modifications he hadn'tapproved.
Speaker 1 (14:01):
Leferre sued and he had every right.
In many countries, includingSpain, creators have moral
rights like the right to becredited and the right to object
to modifications that harmtheir artistic integrity.
Speaker 3 (14:15):
Here's the kicker.
Liffers didn't sue forcopyright infringement in the
traditional sense.
He sued for damages to hisreputation and won reputation
and won.
Speaker 1 (14:29):
The court awarded him compensation not based on lost
profits but on non-material harm.
That's valuation through thelens of artistic identity and
professional credibility.
Speaker 3 (14:37):
So what method of valuation are we talking about
here?
Technically, none of the bigthree cost-based, market-based
or income-based fit neatly, butthe court still had to put a
number on the damage.
Speaker 1 (14:52):
Exactly.
This is what you might call areputational valuation.
The court looked at theindustry norms, lifford's
standing as a professional andthe likely impact on his career.
It wasn't just about a missingcredit.
It was about what that missingcredit cost him in prestige,
visibility and future work.
Speaker 3 (15:12):
And let's be real in creative industries, reputation
is currency and compensate harmto your name, your style, your
dignity.
It's a great reminder thatvaluation isn't always about
(15:38):
bank statements.
Sometimes it's about theinvisible value behind the
credits and the respect thosecredits represent.
Let's talk standard, essentialpatents, aka SCPs.
These are the patents that areso fundamental, so baked into
global tech standards like 4G,wi-fi or USB, that everyone has
(16:00):
to use them.
Speaker 1 (16:02):
And if you own one, you're basically holding the
keys to the digital kingdom,basically holding the keys to
the digital kingdom.
Today's case Unwired Planet vHuawei, a UK court drama that
shook up how we value thosegolden keys.
Speaker 3 (16:19):
Unwired Planet had acquired a bunch of steps from
Ericsson.
We're talking mobilecommunication tech that powers
everything from phone calls tostreaming cat videos.
Speaker 1 (16:27):
They offered Huawei a license.
Huawei said too expensive,unwired, sued and boom, we've
got ourselves a courtroomshowdown over what a FRAND
license should cost.
Speaker 3 (16:39):
FRAND stands for Fair , reasonable and
Non-Discriminatory.
It's the gold standard for SEPlicensing.
But here's the billion dollarquestion what exactly is fair
and reasonable?
Speaker 1 (16:58):
That's where valuation walks in sipping tea
like, oh you rang.
The court had to decide notjust if Huawei infringed, but
how much the license should havecost and whether Unwired's
offers were in line with globalnorms.
Speaker 3 (17:07):
And get this.
The UK court didn't just lookat British markets, it went
global, setting a worldwideroyalty rate that Huawei would
have to pay to use unwiredpatents everywhere.
Speaker 1 (17:21):
That was groundbreaking because up until
then, most SEP battles werelocal.
You're using it here, pay ushere.
But this ruling said now ifyou're a global company using
global standards, the license isglobal too.
Speaker 3 (17:33):
So what kind of valuation are we dealing with
here?
Definitely income based.
The court calculated how muchrevenue the patents could
reasonably generate throughglobal licensing Plus a little
market based flavor.
Speaker 1 (17:46):
They compared Unwired's offers with other SEP
agreements to make sure therates weren't wildly out of step
.
Speaker 3 (17:52):
And, of course, this all sent a message to other
patent holders If you're sittingon SCPs and want to enforce
them, be ready to back up yourroyalty demands with solid data
Usage rates, comparable licenses, market coverage.
Speaker 1 (18:07):
Because vague demands won't cut it.
Courts want valuation, math,not vibes.
Speaker 3 (18:12):
The ruling said, a precedent has been echoed in
India, china and beyond.
It forced companies to approachSDP licensing as a structure
global valuation strategy, notjust a numbers game.
Speaker 1 (18:26):
So, yes, owning a standard, essential patent can
make you powerful, but only ifyour licensing terms can pass
the global sniff test.
Speaker 2 (18:36):
Intangiblia, the podcast of intangible law.
Playing talk about intellectualproperty.
Speaker 3 (18:43):
Time to head to India , and, yes, we're still in the
world of mobile technology,india.
And yes, we're still in theworld of mobile technology, but
this time it's LavaInternational, a local
smartphone manufacturer, takingon global telecom giant Ericsson
.
Speaker 1 (19:01):
This case is basically the Indian remix of
Unwired Planet.
Ericsson claimed Lava had beenusing its standard essential
patents again SCPs for thingslike GSM and 3G connectivity
without a license and.
Speaker 3 (19:08):
Ericsson wasn't just asking politely.
They wanted Lava to cough uproyalties at a global rate rate
that had already been challengedas too high in India by other
manufacturers like Micromax andIntex.
Speaker 1 (19:22):
That's right.
This wasn't Ericsson's firstdance.
They had already faced scrutinyfrom the Competition Commission
of India for potentiallyabusing their dominant position
by charging unreasonably highroyalties, so Lava said wait a
second.
Speaker 3 (19:36):
these rates don't make sense in our market.
We're selling phone at afraction of that price squarely
onto valuation fairness indeveloping economies.
Speaker 1 (19:50):
The big question should royalty rates be based on
the value of the whole deviceor just the part that uses the
patented tech?
Speaker 3 (19:55):
And what's the income-based value of that
little chip inside your phonethat connects it to the network?
Because if it costs $2, zerocents, should royalties be based
on that or on the $100, zerocents phone it?
Speaker 1 (20:11):
powers.
Valuation battles like thisshow that context matters.
A fran rate in Sweden might notfly in New Delhi.
Courts in India started pushingback, asking for local market
evidence, cost breakdowns anddata on how much the patents
actually contributed to thephone's success.
Speaker 3 (20:32):
And remember Lava wasn't refusing to pay.
They were asking for evaluationthat made economic sense in
their business model.
They wanted fair, reasonableand truly non-discriminatory
terms, just like the FRANacronym promises.
Speaker 1 (20:51):
So what was the valuation method?
Again, a hybrid.
The court weighed income-basedprojections against market-based
comparables, all filteredthrough India's local realities.
Speaker 3 (21:03):
This case, along with others in the region, helped
shape how emerging economiesapproach IP valuation.
It also sent a warning topatent holders you can't just
copy paste royalty models acrossborders.
You need cultural, legal andeconomic fluency.
Speaker 1 (21:22):
And ideally, a calculator that converts Swedish
licensing optimism into Indianregulatory realism.
Speaker 3 (21:29):
All right, deep breath.
We're jumping into pharma nowbecause if there's one industry
where valuation and timing areeverything, it's pharmaceuticals
.
Speaker 1 (21:38):
Oh yes, this case is Toray v Saway, and the question
at the center was this whathappens when a generic drug
maker delays licensing apatented product and jumps the
gun?
Speaker 3 (21:51):
Sawai held a compound patent and a process patent for
a key hypertension drug inJapan.
Sawai, a generic manufacturer,applied for marketing approval
and then launched the drugbefore concluding a proper
license agreement with Toray Nota great look.
Speaker 1 (22:10):
Toray sued, arguing that Sawai had benefited
commercially while draggingtheir feet on formal licensing.
Basically, you used our tech,sold it and paid us nothing.
Speaker 3 (22:21):
So what did the Tokyo District Court do?
It treated the case like aretroactive license negotiation,
but with court oversight.
And guess what that meant?
Valuation central.
Speaker 1 (22:35):
Yep.
The court had to figure outwhat a fair licensing fee should
have been, even though noagreement had actually been
signed.
Enter income-based valuation.
They looked at how much Sawaiearned from sales and what
similar licenses would have costin Japan's pharma market.
Speaker 3 (22:51):
The judge didn't just slap on a penalty.
They calculated hypotheticalroyalties, assuming a license
had existed, and awarded Tureover 1.3 billion yen in damages,
that's roughly 12 million.
Speaker 1 (23:08):
USD.
And that wasn't all.
The court also confirmed thatprocess patents, not just the
final product patents, haveindependent commercial value.
So even if Suai had slightlyaltered the manufacturing, they
were still within Torre's patentfence.
Speaker 3 (23:24):
This case highlighted how valuation can also protect
market exclusivity bydiscouraging generic companies
from jumping ahead beforelicensing terms are settled.
Speaker 1 (23:37):
And it showed that Japanese courts are perfectly
comfortable putting a hardnumber on patent misuse, even
when there's no formal contractin place.
Speaker 3 (23:45):
So next time someone tells you IP is intangible,
remind them that courts can andwill put a yen value on every
delayed signature and everyunauthorized pill sold,
especially when millions inpharma revenue are on the line.
Now let's talk about streamingand stealing, because this case
(24:09):
shows how copyright violationisn't just about the art.
It's about access, audience andthe platforms we use to get
both.
Speaker 1 (24:19):
Enter Netflix versus Dragon Media.
This wasn't some shady torrentsite in a dark corner of the
internet.
Dragon was out in the openselling fully loaded streaming
boxes that came pre-installedwith apps designed to access
pirated content.
Speaker 3 (24:35):
Think of it like this you walk into a store, buy a
box that plugs into your TV andpoof, you've got access to all
the latest Netflix, HBO andDisney Plus shows without paying
a single subscription fee, andthey even advertise it as better
than cable, which, legallyspeaking, is like waving a red
(24:56):
flag in front of every majorstudio's legal team a red flag
in front of every major studio'slegal team.
So Netflix, along with Amazon,hulu and others, hit dragomedia
with a massive copyrightinfringement lawsuit.
And here's the juicy part thiswasn't just about stopping the
sales, it was about provingdamages, Because how do you
(25:21):
value what was lost when someonestreams without paying?
Speaker 1 (25:22):
That's where income-based valuation came in
hot, measuring how manysubscriptions were likely lost,
how many users were diverted andwhat that cost the platforms in
revenue.
Speaker 3 (25:35):
Plus, there was a market-based element too.
The court looked at what DragonMedia was earning from selling
the boxes and how that comparedto the legitimate market value
of access to streaming platforms.
Speaker 1 (25:43):
Spoiler.
It was nowhere near fair.
The court ordered a permanentinjunction, shut the whole
operation down and awarded amassive default judgment of
nearly $14 million zero cents indamages.
Speaker 3 (25:56):
The ruling also reinforced that enable
infringement is just as seriousas doing it yourself.
Draken wasn't streaming thecontent, but they designed the
ecosystem to make it easy andthey profited from it.
Speaker 1 (26:09):
So what's the valuation takeaway In the
streaming world?
Access is the asset.
It's not about how many DVDsyou sell.
It's about how many eyeballsyou attract and what those
eyeballs are worth insubscriptions, data and ad
revenue.
Speaker 3 (26:23):
And courts are very willing to assign a dollar value
to each of those missingeyeballs, especially when entire
industries depend on it.
Let's head to Mexico, where theSupreme Court, the SCJ, and
decided it was time to give IPdamages a serious upgrade, and
(26:45):
not just any upgrade.
Speaker 1 (26:46):
we're talking about a jurisprudential thesis from the
top court that basically saidif you want to protect IP, you
better know how to price it.
Speaker 3 (26:56):
Before this decision, mexican IP lawsuits had a bit
of a reputation.
Courts were cautious, damageswere low and valuation was well
inconsistent.
Speaker 1 (27:08):
Enter the SCJN with a bold position.
Ip damages can't just besymbolic.
They need to reflect realcommercial value and courts must
evaluate the actual economicharm, including lost profits,
market share and potentiallicensing income, which
basically brought income basedvaluation into the center of the
Mexican IP courtroom.
Speaker 3 (27:30):
No more moral victories with one dollar zero
cents awards.
If your rights were violatedand you can prove it, the court
will quantify that violation.
Speaker 1 (27:41):
And the SCJN also emphasized a big shift the
burden of proof right Shoulderswere given greater procedural
leverage, including the right torequest detailed financial
documents from infringers tohelp calculate the damage.
Speaker 3 (27:53):
So it wasn't just about increasing awards.
It was about making valuationevidence more accessible and
central to the case.
It gave judges the tools andthe push to actually use
valuation principles in practice.
Speaker 1 (28:13):
That's a game changer , because now, when a copyright
or trademark holder sues inMexico, they can build a damages
claim that reflects real worldbusiness losses, not just legal
theory.
Speaker 3 (28:27):
And it's helped bring Mexican jurisprudence more in
line with internationalstandards.
Speaker 1 (28:33):
So what's the bottom line?
The court made valuationstrategic, legal and
non-optional.
If you want to defend your IPin Mexico today, you better come
prepared with the numbers.
Speaker 3 (28:44):
And if you're an infringer, you better be ready
to disclose your books, becausethe price of playing dirty just
got a whole lot higher.
If you thought IP only got thelatillos in tech or pharma,
think again.
Only got the latillos in techor pharma think again.
This case is about a sneaker, aslogan and a very famous radio
(29:11):
station.
Speaker 1 (29:11):
Let's set the stage.
Los 40 is one of Colombia'sbiggest radio networks Music,
pop, culture, gen Z, vibes and afew years back they ran a major
campaign using the phraseall-star.
Speaker 3 (29:18):
Now, if you've ever owned a pair of Converse Chuck
Taylors, that slogan might ringa little loud.
All-star isn't just a phrase.
It's part of Converse'sglobally protected brand
identity.
Speaker 1 (29:31):
Converse wasn't having it.
They sued, arguing that LostForty's use of All-Star created
brand confusion, diluted theirtrademark and basically
piggybacks off the culturalequity they'd built over decades
.
Speaker 3 (29:41):
And here's where valuation comes in.
Converse it and just say youuse our phrase.
They said you use our brandequity and now we want
compensation for what that'sworth.
Speaker 1 (29:53):
Which means this wasn't about a lost shoe sale.
It was about the value of brandidentity and how much a
non-authorized use in anotherindustry, like media, could harm
perception and revenue.
Speaker 3 (30:07):
The court agreed that there was unauthorized
exploitation of a registeredtrademark, and they used a mix
of market-based and income-basedmethods to assess the damage,
and income-based methods toassess the damage.
Speaker 1 (30:22):
Basically, they looked at the value of
Converse's trademarks inColombia, advertising costs and
how much a similar ad campaignwould have cost if Los 40 had
actually licensed the phrase.
Speaker 3 (30:30):
The ruling reinforced that trademarks aren't limited
by sector.
Speaker 1 (30:34):
Just because you're not selling shoes doesn't mean
you can casually use a brand'ssignature phrase to hype your
concert series, and it was a winfor brand owners everywhere,
showing that even in LatinAmerica, valuation isn't just
about physical goods.
It's about reputation, marketpositioning and the power of a
phrase.
Speaker 3 (30:55):
So, yes, in the world of IP, even two little wars
like All-Star can come withserious legal price tags.
All right Time to close withthe classic Disney twist.
And no, this isn't aboutCinderella's copyright.
It's about digital codes,licensing rights and whether
buying a DVD gives you the rightto resell the piece of the
(31:19):
magic.
Speaker 1 (31:20):
Enter Disney v Redbox Around 2017,.
Redbox you know the DVD kioskcompany used to see at the
grocery store came up with acreative way to compete in the
digital era.
Speaker 3 (31:32):
They started buying up Disney DVD combo packs.
They kind of include a Blu-raydisc, a regular DVD and a
digital download code.
Then they crack open the boxes,pull out the digital code and
sell it separately for cheap.
Speaker 1 (31:50):
Basically, redbox was like hey, you want Disney's
Moana or the Force Awakens forfive bucks?
Just take this code nostreaming service, no license,
no subscription, just the codeand a smile.
Speaker 3 (32:02):
Disney's response A full-blown lawsuit.
They claimed Redbox wasviolating the license terms
attached to those digital codes,which clearly stated they were
not for resale and intended forpersonal use only.
Speaker 1 (32:18):
Here's the fun part.
Redbox tried to argue that oncethey bought the DVD pack, they
owned all of it physical discsand digital rights included.
They called it first saledoctrine you buy it, you can
sell it.
Speaker 3 (32:31):
But Disney clapped back with the ultimate IP
rebuttal not so fast.
That applies to tangible goods,not licensed digital content.
The download codes weren't sold, they were licensed, and that
license came with stringsattached.
Speaker 1 (32:50):
Exactly so.
This case became a litmus testfor the value of digital IP and
whether courts would recognizethat even a code has legal teeth
if it's tied to licensingrestrictions and valuation wise.
Speaker 3 (33:05):
This case was a perfect example of how access
can be an asset.
Disney wasn't just protecting apiece of plastic.
They were protecting theirentire digital distribution
model streaming rights, platformpartnerships, bundle pricing
and how they monetize contentbeyond the DVD shelf.
Speaker 1 (33:26):
The court issued a preliminary injunction stopping
Redbox from selling the codes,but the real headline was that
the judge agreed with Disney'sposition.
Reselling a digital licensewithout permission is a
violation of IP rights.
Speaker 3 (33:41):
And it affirms something critical Valuation in
digital markets isn't about whatsomething costs to produce.
It's about how it's licensed,how it's accessed and how that
access drives revenue.
Speaker 1 (33:56):
So, whether it's a streaming password, a QR code or
an app download, if it's tiedto a license, it's got value,
and if you try to unbundle thatvalue for resale, expect a
studio's legal team at your door.
Speaker 3 (34:08):
In the end, the Simbi Redbox helped reinforce that
digital IP has boundaries, evenwhen it looks like a 12-digit
string of letters and numbers.
Speaker 1 (34:18):
And that IP law, even in its most classic forms, is
evolving to prize access, notjust ownership.
Speaker 3 (34:25):
So what did we learn on this whirlwind tour through
the world of IP and its pricetags?
Speaker 1 (34:32):
Besides the fact that even a download code or a
slogan can cost you millions.
Let's hit the top five.
Speaker 3 (34:38):
Lessons One valuation is an optional strategy.
Whether you're suing forinfringement or closing a
licensing deal, you need to knowyour IAP's value.
Courts, investors and buyersall expect you to bring numbers,
not just feelings.
Speaker 1 (34:56):
Two the method matters Lost profits, that's
income-based cost of creation,that's cost-based going rates
for similar assets, market-basedthe strongest cases.
Use the right mix of methodsand backed it up with evidence.
Re-licensing terms are law, notsuggestions From Qualcomm to
(35:19):
Disney.
If access is tied to a license,courts will enforce the fine
print.
Valuation lives in the contract, so write and read them wisely.
Speaker 3 (35:29):
Or IPBD, travels across borders and courts are
catching up.
Whether it's Mexico's SupremeCourt, India's front battles or
Colombia's commerce case,jurisdictions are aligning with
global standards and treating IPas a business asset, not just a
legal one.
Speaker 1 (35:48):
Five protection is just the beginning.
Real power lies in pricing.
A registered right meansnothing if you don't know what
it's worth.
These cases showed us that thereal flex isn't filing a patent.
It's negotiating withconfidence because you know its
market impact, its licensingpotential and its courtroom
strength.
Speaker 3 (36:08):
So next time someone asks you is that trademark
really worth anything?
You'll know the answer andyou'll know the method to prove
it.
Speaker 1 (36:17):
Remember in IP value isn't what you feel, it's what
you can prove, and the betteryour proof, the better your
prove.
It Remember in IP value isn'twhat you feel, it's what you can
prove, and the better yourproof, the better your payout.
Speaker 3 (36:24):
Thanks for listening to Intangibilia.
If you've enjoyed this episode,share it, review it or, even
better, price it, protect it andprofit from it.
Speaker 1 (36:35):
We'll see you next time.
And hey, if anyone tries tolowball you, just send them this
episode.
Speaker 2 (36:42):
Thank you for listening to Intangiblia, the
podcast of intangible lawplaying.
Talk about intellectualproperty.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(37:02):
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
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