Can a Private Party Enforce a Federal Statute?

Most of us are taught from an early age that you can’t take the law into your own hands. But, in Stauffer v. Brooks Bros., Inc., the U.S. Federal Circuit Court of Appeals considered whether a private party had the standing to enforce the false marking statute. And the court’s finding may surprise you.

Plaintiff All Tied Up

Brooks Brothers manufactures and sells bow ties with an “Adjustolox” mechanism that’s manufactured by J.M.C. Bow Company. The ties are marked with numbers for two patents that expired in 1954 and 1955.

Raymond Stauffer is a patent attorney who purchased some of the marked bow ties. In December 2008, he brought a qui tam action against Brooks Brothers under the false marking statute, which prohibits marking an unpatented article, in a way that indicates the article is patented, for purposes of deceiving the public.

In a qui tam action, a private citizen sues for a statutory penalty (up to $500 for each case of false marking), with any penalties recovered to be split equally with the government. But the district court dismissed this particular action, finding that Stauffer lacked standing to bring the claim because he’d failed to show that the government had suffered an injury.

Standing Knot A Problem

The Federal Circuit explained that the qui tam provision in the false marking statute operates as a partial assignment, or transfer, of the government’s rights to damages to a private party. For Stauffer to have standing, he must allege that the government has suffered an injury causally connected to the defendant’s conduct.

The appellate court found that, by enacting the false marking statute, Congress defined an injury to the government as “a violation of that statute [that] inherently constitutes an injury to the United States.” The government would, therefore, have standing to enforce the statute, as would its assignee.

Reverse Windsor

Interestingly, the Federal Circuit suggested that the qui tam provision in the false marking statute might not withstand a challenge to its constitutionality. But because the defense didn’t raise constitutional issues on appeal, the court declined to determine the statute’s constitutionality. Instead, it reversed the district court and sent the case back for consideration on the merits of the claim.

About the patent law firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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