Emergency Arbitration and Provisional Relief - Chapter 8 - Arbitration of Intellectual Property Disputes in the United States
David L. Evans is co-chair of the litigation department at Murphy & King, Professional Corporation, in Boston, Massachusetts. He represents large public corporations, closely held companies and individuals in the resolution of complex business disputes.
Mr. Evans also maintains an active practice as a certified neutral arbitrator and mediator, serving in more than 350 cases. As a neutral, he has presided over a broad range of business disputes involving areas such as intellectual property rights and licenses, finance and accounting, technology development and transfer agreements, stock/asset purchases, energy, biotechnology, medical devices, real estate, private investment firms, and business separations.
Mr. Evans is a member of numerous arbitration and mediation panels, including the Commercial and Large, Complex Case Panels of the American Arbitration Association (AAA), the Panel of Distinguished Neutrals of the International Institute for Conflict Prevention and Resolution (CPR), the International Centre for Dispute Resolution (ICDR) Panel of Arbitrators and Mediators, the ICC International Court of Arbitration (North America), the Court of Arbitration for Sport (CAS) in Switzerland, the London Court of International Arbitration (LCIA), World Intellectual Property Organization (WIPO) and the AAA Master Mediator Panel.
He has been selected as a Massachusetts Super Lawyer in Business Litigation in every year the award has been offered (2006-2018), named a top-rated lawyer in ADR law by The American Lawyer and recognized with an AV Preeminent Peer Rating from Martingdale-Hubbell.
He also serves as a member of the Board of Directors of the American Arbitration Association, and as the co-chair of the Large Case Committee of its Council. For his contributions to the AAA, Mr. Evans received its Outstanding Director Award in 2014.
Theodore J. Folkman is a shareholder of Murphy & King, P.C., in Boston, where he has a complex civil litigation and commercial arbitration practice. He is a member of the commercial and consumer arbitration panels of the American Arbitration Association and has recognized expertise in international judicial assistance and other areas in private international law. Prior to joining Murphy & King, Mr. Folkman was an associate with Hill & Barlow, PC, in Boston, and judicial law clerk to the Hon. Ann Aldrich, U.S. District Judge for the Northern District of Ohio. Mr. Folkman speaks frequently at law schools and bar events on topics of private international law and is the author of several works in this area, including International Judicial Assistance (MCLE, 2d ed. 2016) the chapter on service of process in International Aspects of Litigation: A Practitioner’s Deskbook (ABA 2017), and the chapter on choice of law in The Arbitration of International Intellectual Property Disputes (Juris 2012). Mr. Folkman is a member of the Amicus Committee and former chairman of the Massachusetts Practice and Procedure Committee of the Boston Bar Association, from which he received the President’s Award in 2016. He holds a law degree from Harvard Law School, a master’s degree in political science from Columbia University, and a bachelor’s degree in politics from Princeton University.
The judiciary has well-established and often-used means for providing emergency relief to litigants. The most well-known form of preliminary emergency relief in the United States is the preliminary injunction, and for even more urgent needs, the ex parte temporary restraining order. Injunctions and restraining orders are equitable remedies that make use of a power not available to arbitrators: the state’s power to compel enforcement with in personam orders, or in other words, the state’s power to coerce a person subject to an injunction to obey it (whether by fines, imprisonment or some other means) and to punish a person subject to an injunction for disobedience in certain cases. These procedures can be particularly important in certain kinds of IP disputes. For example, in a dispute about misappropriation of a trade secret, time and the ability to enjoin dissemination are of the essence. Similar conditions can arise in trademark cases, where ongoing trademark infringement can sow confusion in the marketplace or can dilute a mark in ways that are difficult to remedy. Analogous situations occur in other IP contexts as well.
In addition to providing for preliminary relief in the form of injunctions and restraining orders, the courts also provide for prompt hearings when necessary in order to seek such relief. In general, the process of assigning a judge to a civil action is quick, indeed much more so than the process of appointing an arbitrator or arbitrators in an arbitration. Judge assignment is typically done in accordance with local rules of the trial court. Cases are generally assigned to judges by the clerk, who assigns them by lot. Rules of court typically also provide for a special judge to hear emergency matters that require immediate action.
In an arbitration, on the other hand, the appointment of arbitrators can be time-consuming, as discussed below, and the arbitrator lacks the power to send the marshals to ensure that his or her orders are obeyed. These facts of life have led to two responses, both of which this Chapter discusses: first, the arbitrator’s powers to grant the kind of provisional relief courts can grant, and the provision some arbitral rules now make for speedy appointment of arbitrators in such cases; and second, the parties’ right to seek provisional relief from a court in an arbitrable dispute without losing the advantages of arbitration with respect to the merits of the case. The Chapter also discusses some of the forms of provisional relief available.