Litigation and the Principles of Warfare
Kelley Drye Client Advisory
September 3, 2007
The Principles of Warfare

Dating back to Sun Tzu, vast literature explains the techniques and principles of warfare. While various authors have differences on the application and use of warfare, they share nine broad principles. First is the importance of having and being aware of the central objective, and ensuring that each and every step taken moves toward that objective. Second is ensuring that the plan in question is simple and easy to implement, rather than being unnecessarily complicated, and implementing that plan through clear and concise orders.

Third is the importance of "mass," or concentrating resources in the right place at the right time to ensure victory rather than spreading the resources across the entire front, to ensure that force can be applied where it is most effective. Related to this is the principle of economy, ensuring that the limited resources available to a party are used wisely, rather than wasting time and money on secondary matters which distract from the plan and reaching the goal.

Next is the importance of initiative, or keeping on the offense, so as to prevent your opponent from obtaining an advantage. The sixth principle is the crucial element of surprise, which allows parties to catch their adversaries off-guard. The converse of this is the seventh principle, which is ensuring your own security so that you are not caught by surprise. Similarly, the principle of "maneuver" requires that potential parties be willing to change and reassess their plans based on their opponents' actions. The final principle is the necessity of a unity of command, or having a single central decision-maker whose decisions are final. This allows a party to quickly respond to and deal with situations as they arise.

Applying The Principles in Copyright Litigation

In Living Media India, Ltd. v. Parekh, 1994 WL 68193 (S.D.N.Y. 1994), the Indian publisher of India World magazine was confronted with a scheme in which its magazines were bought in India and then resold in the United States at a price much lower than the publisher's price for magazines sold in the United States. This was particularly problematic, since the purchase of genuine magazines in India did not violate Indian copyright law, the sale of the Indian magazines likely did not violate U.S. copyright law, and potential trademark claims were barred by the first sale doctrine. However, under the Berne Convention, the importation of Indian magazines into the United States infringed the publisher's Indian copyrights.

Kelley Drye represented Living Media India, which first identified its objective—stopping the importers' undercutting of the publisher's prices. Complicating the situation, simply suing the individuals reselling the magazine would not resolve the problem, as the importers could easily find new middlemen to distribute the magazines. For this reason, the publisher focused resources in the right place, locating and filing suit against the importers behind the scheme based on the violation of Indian copyright under the Berne Convention. Initiating the lawsuit took the importers by surprise, allowing the publisher to take the offensive and concentrate its efforts on a decisive summary judgment motion. The court granted summary judgment to the publisher on its Berne Convention claim, resulting in the successful stopping of the importation, through the application of the principles of warfare.

Applying The Principles In Trademark Litigation

In Havana Club Holding, S.A. v. Galleon, S.A., 62 F.Supp.2d 1085 (S.D.N.Y.), aff'd, 203 F.3d 116 (2d Cir. 2000), a foreign government had confiscated a trademark from its original owners, and managed to obtain a U.S. trademark registration for that trademark through the use of international treaties, which it had assigned to a joint venture. Kelley Drye represented the successor-in-interest to the original trademark owner in its seeking to cancel the joint venture's trademark registration. Rather than focusing on the administrative proceedings for canceling the trademark, the successor-in-interest launched a product under the trademark in the United States. This forced the joint venture to pursue an infringement claim, and allowed the successor-in-interest to bring a cancellation counterclaim in federal court. By applying the principles of surprise, maneuver, remaining on the offense, and keeping the goal, the successor-in-interest defeated the trademark infringement claims brought by the joint venture and obtained an order canceling the joint venture's trademark registration.

Applying The Principles In Another Dispute

In another situation, shortly after an Indian software developer announced it was being acquired by a publicly traded company, the developer received a letter threatening litigation in California for copyright and trade secrets claims if a settlement was not reached immediately. While the claims were bogus, simply having the suit brought could delay the acquisition. Kelley Drye represented the software developer, who instead of simply lying back and hoping that the issue would disappear, seized the initiative and filed a declaratory judgment complaint in New York federal court. The complaint showed the developer's confidence in its case and turned the inconvenience back on the party threatening suit. By moving to the offense, preventing the opponent from obtaining advantage and taking the opponent by surprise, the developer obtained a positive result and prevented the threat of litigation from creating an obstacle to closing the transaction.

Conclusion

Litigation in the United States is often complex and costly, and involves a substantial degree of risk. However, by keeping your eyes on the goal, developing a plan to reach that goal, and applying the principles of warfare to that plan, litigation can become a valuable business tool.