A remedy is specific when the plaintiff seeks to get the court to coerce the defendant into doing (or not doing) a particular thing. The word ‘coercion’ is used advisedly. The court orders the defendant to do (or not to do) the particular thing, and if the defendant refuses to comply, the court may use measures such as imprisonment, sequestration and fines to encourage compliance with its order. The two most important examples of specific relief in Australia are the decree of specific performance and the injunction. This chapter will consider specific performance, and the next chapter will consider injunctions. Specific performance relates to ordering the defendant to comply with the terms of a contract, but injunctions may be ordered across private law and beyond. Specific performance is exclusively equitable, and generally operates in relation to a common law cause of action; namely, breach of contract.

This chapter deals with the availability of the other specific remedy: the injunction. As with specific performance, injunctions are a coercive remedy originating in equity. The court orders the defendant to do something (or to refrain from doing something) and the defendant must obey this order or be in contempt of court. Again, if the defendant does not comply, the court may use measures such as imprisonment, sequestration, and fines to encourage compliance with its order.

However, in contrast to specific performance, injunctions apply to many situations, not just contract or contract-like obligations, and they protect many private law rights, including rights in land, goods and other property, economic rights, the right to bodily integrity, the right to reputation, the right to privacy, and contractual rights. They may also be used in support of public law rights.

In a tort action, if the plaintiff’s claims are successful and no relevant defences are available to the defendant, the plaintiff will be entitled to an order or award by the court for an appropriate remedy. Such judicial remedies include:

• damages

• injunctions

• declarations.

In addition, self-help remedies are available and include:

• eviction of trespassers and re-entry of land

• self-defence

• abatement

• apology.

  The focus of this chapter will be on judicial remedies, especially damages.

Efficient infringement is when firms opt to “infringe now, pay later,” rather than accepting ex ante a license to use a patented technology. This behavior is particularly attractive when the infringer believes that, even if it is found to have infringed a valid patent, it will not be enjoined from continued infringement. At worst, absent injunctive relief, the infringer will need only pay damages for past infringement, approximating what it would have paid if it had licensed the technology ex ante, and then a royalty rate for future infringement. Essentially, the infringer is in no worse a position that it would be had it accepted a license and may even be in an improved position if the royalty rate set by a court is lower than it could have obtained via negotiation.

Efficient infringement is of particular concern in the standards essential patent (SEP) space because injunctive relief is generally unavailable to SEP owners. This chapter explains that courts are unlikely to grant requests for permanent injunctions and SEP owners are unlikely to even seek injunctive relief, setting up the necessary condition for efficient infringement to flourish. Unsurprisingly, there is evidence that infringers are selecting to “infringe now, pay later” when it comes to SEPs and this chapter sets out the case why this is problematic for a well-functioning innovation system.

One of the world’s greatest experiments in open innovation is mobile wireless. Technology enterprises have invested billions of R&D dollars to develop 2G, 3G, 4G, now 5G, and hopefully 6G soon. Technology developers make investments and look to the patent system and associated regulators to reward them for risky investments, should their patented technologies become included in the standards. In recent years there has been an uptick in the number of technology implementers. But because patents are not self-enforcing, unlicensed use occurs, which is corrosive of the open innovation system that allows non-vertically integrated firms to compete at the device level. This chapter reviews antitrust theories that some implementers have used to avoid paying royalties to patent owners. This is examined in the context of the FRAND licensing regime established by ETSI, a standards development organization. “Hold up” and “hold out” theories are examined. Hold up theories lack empirical support and are misused by some implementers—particularly those in China—who would prefer to free ride on the R&D investments of others. Restoring and revitalizing technology markets for mobile wireless likely requires limits to be placed on the availability of FRAND licenses with respect to recalcitrant technology implementers. Otherwise, the innovation ecosystem will be harmed, and open innovation (that is, licensing) business models will collapse.

During recent decades, patent holders and implementers working within Standard Developing Organizations have successfully cooperated to develop new wireless standards that have benefited consumers all around the world. The standardization process has been successful because it has made all participants better off. The increased strategic use of jurisdiction-by-jurisdiction challenges by certain implementers to delay or avoid payment is threatening this successful process. In response, courts in various jurisdictions are moving to set global license terms. However, because some local courts are, or at least are perceived as, biased, licensors and licensees are maneuvering to influence which court ends up setting global FRAND terms (for example, by seeking anti-suit and anti-anti-suit injunctions). In this chapter, we explore the implications for the future of the standardization process of these developments. Specifically, we consider the implications of extraterritoriality when licensors and licensees belong to different jurisdictions and local courts may be biased in favor of local litigants. Our main concern is that current developments may lead to the fragmentation of global standards along geopolitical lines.

Since the Supreme Court’s 2006 decision in eBay, Inc. v. MercExchange, LLC, increasingly large portions of the patentee population have no realistic expectation of securing injunctive relief against adjudicated infringers. This judicially imposed quasi-compulsory licensing regime induces well-resourced infringers to decline a license, appropriate patented technology, and negotiate the terms of use through litigation. Costly and protracted litigation is unlikely to adequately remunerate the patent owner whenever infringers have greater litigation resources, lower opportunity costs, and limited expectations of enhanced damages, which can induce the patent owner to settle for an amount that undervalues its technology. These litigation and settlement dynamics are illustrated through case studies of “holdout” tactics employed by well-resourced infringers in recent litigations involving standard-essential patents. To correct for the underdeterrence and undercompensation effects inherent to a no-injunction regime, it is proposed that courts enhance damages by an appropriately calibrated multiplier in all infringement litigations in which injunctive relief is not a practically available remedy.

This introduction acquaints the reader with traditional concepts of private and public nuisance law, the determination of liability for a nuisiance, and the conventional remedies for public nuisance of abatement and injunctions. After setting forth basic concepts concerning nuisiance law, the introduction discusses the emergence of public nuisiance as a legal claim in 21st century mass tort litigation. It describes the theoretical basis for public nusiance claims in mass tort cases and introduces statutory public nuisance statutes. The introduction analyzes the relationship of public nuisance to traditional tort theories. The introduction concludes with a roadmap for the ensuing chapters, tracing the historical basis for public nuisance jurisprudence, early judicial rejection of public nuisance claims, evolution and expansion of public nuisance claims to environmental and products cases, and issues relating to pleading, defenses, and remedies.

Chapter 6 addresses the types of remedies or relief that plaintiffs may obtain when asserting a public nuisance claim for public mass tort harms. In the original understanding of public nuisance as a criminal offense, remedies were limited to fines or a criminal sentence. Traditionally at common law, plaintiffs who prevailed on a public nuisance claim were entitled to an abatement of the nuisance, or an injunction to enjoin continuation of the nusiance, for example closure of a noxious factory or removal of a higway obstruction. The chapter then documents the gradual expansion of public nusiance remedies in the 21st century to embrace the concept of public nusiance abatement funds, whereby offeding defendants are required to pay large sums of money into a abatement fund to cover the cost to municipalities for services involved in abating the nusiance. The chapter additionally discusses the problem of the ability of individuals to obtain compensation apart from the group remedy, through satisfaction of the special injury rule. The exposition chronicles the inconsistent and confusing judicial application of the special injury rule.

This chapter traces the historical derivation of private and public nuisance law, extending back to 12th century England, where a public nuisance was considered to be an offense agains the Crown. As such, nuisance was considered to be a criminal act, punishable by the sheriff purusant to police powers. Over time public nuisance expanded to embrace activities such as lotteries, unlicensed plays, disorderly houses of prostitution, noxious odors, higway interferences, and many other offenses. In the 16th century a crime of public nuisance gave rise to a private tort if the plaintiff could show he sustained injuries that were different in kind from those suffered by the general public. This special injury requirement carried over into modern public nuisance jurisprudence. Over time nuisance law subsumed elements of criminal law, tort law, and property law. Modern American public nuisance law developed with the American Law Institutes Restatement (Second) of Torts, in 1979. The ALI Restatement (Third) has consierably limited the modern concept of public nuisance law, excluding its applicability to product cases.

An injunction, like specific performance, is an equitable remedy. Specific performance compels a plaintiff to perform their contractual obligations, and is granted as final relief at trial, whilst an injunction extends to a far broader range of circumstances, not limited to breach of contract. Further, an injunction can be granted as interlocutory relief (prior to trial) or as a final injunction at trial and different principles apply to each.

Damages must be inadequate before an injunction for a common law cause of action is granted; conversely there is no need for inadequacy of damages to be shown for injunctions for purely equitable causes of action such as for a breach of fiduciary duty.

Equitable and common law injunctions are subject to bars to relief (hardship, laches, and clean hands). Statutory injunctions are governed by the terms of the statute, not by general equitable principles.

Injunctions can also be classified in accordance to their effect. Thus a prohibitory injunction prevents someone from doing something whereas a mandatory injunction compels them to do something.

The purpose of orders of specific performance of a contract and of injunctions is to compel the performance of legal obligations. Many, though not all, of the considerations relevant to an order granting specific performance of a contract are also germane to the award of an injunction. Matters such as inadequacy of damages, hardship and the ability of a court to supervise the execution of its own orders are relevant to both remedies (see textbook chapter 3). Underlying the principles governing these orders are policy questions relating to the nature and limits of judicial coercion to which monetary remedies, such as damages, do not usually give rise. These questions include: to what extent can private law (as opposed to the criminal law) restrict individual freedom, including a person’s freedom to select his or her employment; can a court compel parties whose commercial relationship has broken down to cooperate with each other; and what are the limits of a court’s power to prevent wrongdoing, for example where the wrong is likely to occur outside a court’s jurisdiction but will cause damage within its jurisdiction?

The title of this chapter may look like a grab bag of remedies, but this is not the case. Specific performance and injunctions are equitable remedies. The remedy of equitable damages is a creature of statute available either in lieu of or in addition to the equitable remedies of specific performance and injunction. Thus, the three remedies are closely related. They will be discussed in turn.

The equitable obligation of confidence is used to protect information from unauthorised misuse or exploitation by others. The action now has two significant aspects; it is traditionally used to protect commercially valuable information such as trade secrets, and it is increasingly used to protect personally private information. Whether the same considerations apply to these two aspects of the action is an open question. Though the obligation of confidence is one of the oldest in equitable jurisdiction, it has only recently been called upon to protect interests previously thought to be ineffectively protected. The long hiatus between the action’s origins and its current development is partly due to the unusual position confidentiality has occupied. Whereas many equitable responsibilities, such as trust or fiduciary obligations, have no direct common law counterparts, confidentiality can be regulated by regimes other than equity. Up until the mid-twentieth century most cases concerning the equitable obligation of confidence also involved a breach of an obligation of confidence not sourced in equity

The right to claim contribution in competition law is ensured by EU law but its exercise takes place under national laws. This Chapter investigates English, German, French and Polish rules on contribution and their application in the competition law context. On the one hand, the assessment is pragmatic. It analyses questions that are likely to appear when pursuing contribution claims. Does a right to claim contribution exist in a given legal order? On what basis and in which form can contribution be claimed? Against whom can contribution be claimed? What legal test must be met to receive contribution? What is the criterion for allocating liability between antitrust infringers? The analysis shows that the allocation of liability can be debated, as there are several possible methods of dividing liability: relative fault, causation, illicit gains, values of sales, market shares and pro capita. At the same time, the Chapter reflects on whether the requirements and modifications stemming from EU competition law require the adoption of a competition law-specific approach to contribution and makes proposals on how rules on contribution can be improved.

The regulation of patent enforcement in Europe is characterized by the typical multi-layered EU law system of primary EU law, secondary EU law, i.e. unification and harmonization of member states’ laws by way of regulations and directives, and member states’ laws which in particular implement the EU directives into national law.1 Primary EU law, insofar as it is similar to written constitutional law, establishes the competence and baseline for all EU legal actions. Secondary legislation is based on the competences of the EU established in primary law and unifies certain areas of law (by way of directly applicable unitary regulations) or harmonizes member states’ laws by way of directives that are not directly applicable but addressed to the member states and that typically leave the member states certain leeway for manoeuvre when they implement such directives in their national law systems. Both EU primary and secondary legislation take primacy over national law; this so-called principle of primacy of EU law has been developed by the Court of Justice of the European Union (CJEU) in its case law2 and is meanwhile also laid down in a declaration concerning primacy,3 which is part of the Treaty of Lisbon.4

All patent cases are heard by the specialized IP chamber of the District Court of the Hague. Appeals (which are de novo) are heard by the specialized chamber of the Court of Appeal of the Hague. Thereafter an appeal (on points of law) is possible without the necessity of leave to the Supreme Court. The specialized chamber in first instance issues between about fifty and seventy decisions each year. The Court of Appeal issues about twenty and the Supreme Court around five. Of course, numbers vary from year to year. The courts have a good reputation in patent matters. The UK, German and Dutch courts take into consideration each other’s decisions in cases invoking the same European Patent and normally give reasons if they do not follow each other’s decision (which is more the exception than the rule). The Netherlands does not have a bifurcated system for patent cases: validity and infringement are always dealt with in the same proceedings. Thus, if an infringer challenges the validity of the patent, the court will normally first decide on the validity of the patent and only turn to infringement if the validity of the patent is upheld. In other words, a Dutch court will not order an injunction unless it has first established that the patent is valid, and the only way that an injunction can be granted on the basis of a patent that is later invalidated is if the decision on validity is overturned on appeal.1 This is true in proceedings on the merits, where the court will always rule on the validity of the patent if it is challenged, but also in interim relief proceedings, where the court will make a preliminary assessment of the patent's validity before imposing interim relief, denying it if there is a reasonable, not-to-be-ignored chance that the patent will be revoked or invalidated.

In the preceding chapters of this book, we have seen a variety of national approaches to the issuance and tailoring of injunctive relief, characterized by a range of similarities and differences among jurisdictions. In this chapter, we synthesize the principal features of these different legal systems, provide an analytical framework for comparing them, and offer our observations about trends and the outlook for the future.

Israeli law, in general, is based on the principles of English common law, in which an injunction is perceived as a form of equitable, discretionary relief.1 Historically, injunctive relief was granted based on discretionary criteria, including the irreparable injury rule (in the absence of an injunction, the plaintiff would be caused an irreparable injury, which could not be compensated for by monetary relief); the balance of hardships between the plaintiff and defendant (known also as the “balance of convenience”); and the clean hands rule (equitable relief is only granted if the plaintiff acted in a decent and moral manner, disclosing the relevant facts).2 Another important criterion was the public interest.3