Tuesday, May 19, 2009 www.managingip.com

CONTENTS 2 • QUIZ 9 • CITY GUIDE 18 • AFFILIATE PARTY PHOTOS 22-23 • SCHEDULE 24

www.inta.org 131ST ANNUAL MEETING, SEATTLE

Daily NewsPUBLISHED BY

FEATURE: RIGHT OF PUBLICITY 8

FEATURE:ANTICOUNTERFEITINGANSWERS 14

INTERVIEW:BATUR OKTAY,STARBUCKS 16

A ctor Woody Allen hasreached a $5 million settle-ment with American

Apparel in his headline-grabbingright of publicity suit against theUS clothing manufacturer.

Allen sued American Apparellast year for using an imagefrom the film Annie Hall of theactor dressed as a Hasidic rabbiin a 2007 billboard campaign.He claimed that the companyhad used his likeness withoutpermission for advertising pur-poses and sought $10 million incompensatory and exemplarydamages and attorney’s fees.

American Apparel chief exec-utive Dov Charney argued thatthe billboards—which weretaken down within a week ofthe complaint—were protectedby the First Amendment of theU.S. Constitution. Charney saidthe billboards amounted to freespeech and represented the rightof “an individual or corporationto invoke the likeness of a public

figure in a satiric and socialstatement.”

In a statement on yesterday’ssettlement, Charney said that“the vast majority” of the $5million payment would be madeby American Apparel’s insurancecarrier, “who is responsible forthe decision to settle this caseand has controlled the defense ofthis case since its inception.”

He added that, while relievedabout not having to go throughtrial, “I also harbor a sense ofremorse and sadness for notarguing an important issueregarding the First Amendment.”

Speaking to reporters outsidethe Manhattan court where thecase was set to be argued, Allensaid: “It’s of course possible bygoing through the trial a jurymight have awarded me moremoney but this is not how Imake my living and $5 million isenough to discourage AmericanApparel or anyone else fromever trying such a thing again.”

Charney’s lawyer, AdamLevin of Mitchell Silberberg &Knupp, citing the decision inHoffman v Capital Cities/ABC,said that the billboards were notadvertisements, but that “even ifthe billboard is found to havethe dual purpose of a commer-cial transaction and an expres-sive medium, First Amendmentprotection still attaches becausethe two elements are ‘inextrica-bly intertwined.’”

In Hoffman v CapitalCities/ABC, actor DustinHoffman sued Los AngelesMagazine for a 1997 article inwhich his image was superim-posed on a female model’s bodyas part of an article titled“Grand Illusions.”

The actor argued that the arti-cle was being used for advertis-ing purposes and won the case inthe district court, but an appealscourt reversed the decision onFirst Amendment grounds, say-ing that any commercial aspects

of the article were “‘inextricablyintertwined’ with expressive ele-ments, and so they cannot beseparated out from the fully pro-tected whole.’”

“The decision...makes [it]abundantly clear that the speechat issue in this case is protectedby the First Amendment,” saidLevin. “Any other conclusioninevitably would chill criticalsocial and political commentaryand debate.’”

But yesterday, Allen said: “I

sued American Apparel becausethey calculatingly took myname, likeness and image andused them publicly to promotetheir business.”

Loeb & Loeb representedAllen, and referred the INTADaily News to Allen’s statement.

See page 8 for a preview oftoday’s session CT22 – RecentDevelopments in U.S. TradeSecrets, Copyright and Right ofPublicity Law, at 11:45 inBallroom 6B. ■

Online auction site eBay andFrench cosmetics and per-fume company L’Oréal

have until next week to inform aFrench court of their plans tocooperate better in the fightagainst online fakes.

On May 14, the Paris Tribunalde Grande Instance ruled thateBay had fulfilled its obligation“in good faith” to help preventfake L’Oréal products from beingsold on its website. But the judge,Elisabeth Belfort, told the twoparties to discuss their disputewith a mediator. The two sidesare due back in court to discusstheir progress on May 25.

L’Oréal filed lawsuits againsteBay in France, Belgium, the UK

and Spain in 2007, claiming thatthe auction company did not doenough to counter the sale offakes on its website.

Last year the Belgian firstinstance court dismissedL’Oréal’s claims. The parties arestill waiting for a decision fromthe UK and Spanish courts.

Speaking at the ProfessorBreakfast yesterday, Mike M.Yaghmai, Senior Director andCounsel, Intellectual Property ateBay, said that he hoped the casewould curb litigation against thecompany by brand owners.

“We’d rather work with[brand owners] than go tocourt,” he said.

Woody takes $5M inpublicity suit

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L’Oréal case highlightssplit over online liability

More than 300 attendees enjoyed yesterday evening’s In-House Counsel Reception in the Cirrus Ballroom on the 35th floor of theSheraton Seattle. Welcoming them, Tiki Dare of Sun Microsystems, vice chair of the Regular Members Committee, said the busychattering showed that in-house counsel knew how to network. After the reception, raffle winners were drawn: find out the win-ners on page 21. Continued on page 4

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The INTA Daily News is produced by Managing Intellectual Propertyin association with the International Trademark Association. Printedby The Color Group. The INTA Daily News is also available online atwww.inta.org and www.managingip.com. © Euromoney InstitutionalInvestor PLC 2009. No part of this publication may be reproducedwithout prior written permission. Opinions expressed in the INTADaily News do not necessarily represent those of the INTA or any ofits members.

NEWS

Green branding 2

Survey strategies 3

Wise opinions 3

Designs debated 4

Sound advertising 4

Asia strategies 5

India/Middle East developments 6

Financing trends 6

Protect packaging 7

FEATURES

Protect your other IP rights 8

Trademark clearance tips 10

Avoid a trademark collision 12

Tackling counterfeits 14

INTERVIEW

Batur Oktay, Starbucks 16

CITY GUIDE

Nightlife and shopping 18

Vox pop 20

PREVIEW

Internet and blogging 21

Private reception photos 22-23

Schedule 24

CONTENTS

T here can be no doubt that green is in:some 80-90% of Americans say theyparticipate in eco-conscious behaviors.

And brand owners around the globe arestepping up their efforts to satisfy thedemand for green products.

There are two different ways companiescan appeal to socially conscious consumers:engaging in socially responsible corporatepractices and marketing products that makegreen claims. Yesterday’s session on Brandsand the Socially Concerned Consumer exam-ined how trademark owners can use bothtools to position their brands as environmen-tally friendly.

Thomas P. Schur of Frito-Lay (pictured)described his company’s efforts at socialresponsibility, which include reusing thecardboard cartons they use to ship prod-ucts to retailers and retooling their truckfleet to make it more fuel-efficient.According to Schur, former U.S. PresidentBill Clinton said that “a responsible busi-ness cannot avoid trying to improve theenvironment in which it operates.”

Savvy trademark owners will find ways touse their social responsibility activities tomake products more marketable to sociallyconcerned consumers. Schur said that Frito-

Lay came up with a way to tout its use ofsolar energy on packaging for its SUNCHIPSsnacks that increased sales to socially awaresnackers.

Social consciousness concerns are affect-ing the more mundane aspects of trademarkpractice as well. Katrina Burchell of Unileverpointed out a dramatic increase—especially

over the last three years—in the number ofregistrations issued for marks includingterms such as GREEN. Clearing marks withthese elements is becoming more challengingas the “eco”-register becomes more crowded.

In addition, working with eco-friendlytrademarks often raises regulatory issues,since many countries require evidence tosupport claims that a product is organic orbiodegradable. More troubling is that regu-lations differ from country to country andare still evolving. Ten days ago, the U.S.Federal Trade Commission announced thatit will hold a new series of consumer percep-tion surveys to update its Green Guides onproduct claims relatedto the environment, butnew guidelines are notlikely to be ready until2010.

Nevertheless,Burchell said trademarkowners should be care-ful in not makingclaims they can’t sup-port. “You do notwant to be accused ofgreenwashing in anycircumstances.” ■

O utside counsel should be “proactive,available and relevant,” said DoloresMoro of BATMark at a session on

strategic management of global portfoliosyesterday.

The session discussed the relationshipbetween in-house counsel and external coun-sel in an increasingly closely networked workenvironment. Paul Rawlinson of Baker &McKenzie said that high-level strategic deci-sions are usually dealt with by the in-housecounsel, but that some business and tacticalissues could be dealt with by both externaland internal counsel and the question waswhere to draw the line.

Rawlinson used the example of Unilever,which outsourced its estimated 160,000trademark registrations to Baker &McKenzie on a worldwide basis, but hasmaintained control of high-level decisions,such as which countries to register in. Aspart of the deal the firm had to adjust itssoftware to suit Unilever’s needs. “You have

to tailor your own services to the needs ofthe client,” he said.

But Moro had a different perspective. “Idon’t agree that there is a line—the best rela-tionship is one that’s integrated,” she said.She stressed the importance of in-housecounsel working closely with external coun-sel to give them a clearer idea of how theirbusiness functions. “The more the outsidecounsel knows about your business the betterhe is and the cheaper he is.”

The session highlighted the opportunitiesof new forms of communication, such asonline docket management tools that exter-nal and in-house counsel can access, and law

firm alerts. Rawlinson said that alerts can beeffective, but only if they are well directed:“The ones that capture your attention arethe ones that are tailored to your business.”He also recommended that external counselgo in person to hear a company’s quarterlyresults to keep in touch with how its businessis functioning.

David Stevens of Stevens Law Group, apatent specialist, stressed the importance oftrademark counsel taking copyright, designand patent rights into account before launch-ing a new product. He also said that clientsshould be careful about how they communi-cate on social networking sites, as he hadfound a client disclosing details on social net-working service Twitter of a product thathad not been launched. Moro added that theproliferation of new forms of communicationhad led to clients wanting things done evenquicker. “In the old days, you still got faxes.Things used to arrive in the post. I missthat!” ■

INTA hosted a reception in the Willow room of the Sheraton for Chinese-speaking members last night, giving them an opportunity to network informally and meet theassociation’s two Shanghai-based staff. Chen Min, INTA’s China Chief Representative, said that there are now more than 140 member law firms and corporations in China—a figure which has grown between 10% and 15% each year over the past five years.

INTA DAILY NEWS

Green is the new black

Working together in a digital age“The more the outsidecounsel knows about yourbusiness the better he isand the cheaper he is.”

P anelists at yesterday’s session onTrademark Surveys in US Litigationsuggested that rather than wonder-

ing whether their case needs a survey,trademark lawyers should ask: “Is mycase one of the few that can get by with-out a survey?”

Hal Poret of Guideline said that theaverage survey costs $45,000 to $50,000,but that in some cases the Internet canmake things less expensive. Online sur-veys are being given more credence, espe-cially when they deal with products thatare common consumer goods or are relat-ed to the Internet. And no matter whatthe survey’s format, often litigants need to

spend only $15,000 “to start to see howthe results are going to look.”

Much discussion involved the ques-tion of the proper “universe” of surveyrespondents. Since an expensive surveymay turn out to be worthless if it targetsthe wrong universe, Robert D. Litowitzof Finnegan, Henderson, Farabow,Garrett & Dunner, LLP advised doingsome discovery before conducting a sur-vey. During a deposition you might beable to get your opponent’s 30(b)(6) rep-resentative to tell you what your uni-verse should be. But Judge Robert S.Lasnik of the US District Court for theWestern District of Washington said the

universe issue is “outside the usual scopeof what trial judges deal with,” so expla-nations should be at a very elementarylevel.

Poret said that keeping an expert’s trialtestimony brief can be as important as thesurvey itself. Judge Lasnik agreed: 20 to30 minutes should be the limit for surveytestimony, especially when a jury isinvolved. And, he said, “juries likeexperts with British accents.”

Moderator Julia Anne Matheson, alsoof the Finnegan firm, pointed out that anumber of sample survey questionnairesare posted in the course materials sectionof the online Annual Meeting portal. ■

P ity the business owner who hasdeveloped a new product, thoughtof a new name for it and now wants

to protect it from rivals. All she wants toknow from her outside counsel iswhether she can register the name as atrademark. Instead of a yes or no answer,however, she receives a long letter full ofcaveats, disclaimers and provisos.

At a session yesterday, experiencedtrademark practitioners offered insightsinto the best way to provide the practical,commercial advice that business clients arelooking for when preparing to launch anew product or service, all while avoidinglosing the privilege usually attached tolegal advice.

“It’s important that the client is awareof whether he can protect the mark, whatthe issues may be and whether [the appli-cation] may encounter an objection,” saidBrian J. Morgan of Marks & Clerk in theUK. “Then I give some advice about howeasy or difficult it may be to enforce. It’sall about giving them the informationthat allows them to make an informeddecision—even if the mark may be freefor use.”

The panelists explained that if you arelikely to encounter problems in registeringyour mark, you should expect a telephonecall from your U.S. lawyer: “I don’t like toput negative news in a letter, partlybecause of the U.S. rules on discovery,”Susan Progoff of Ropes & Gray told theaudience. ■

Panelists from Brazil, Chile and Mexicoyesterday discussed the changing face ofIP in their respective countries. Whileall three have made great strides in IPprotection and enforcement, the speak-ers agreed that there is still much to bedone. “IP has become a very importantpolitical and economic tool, and, ifwell-managed and enforced, canbecome a tool for development,” saidSandra Leis of Dannemann Siemsen inBrazil. Other participants includedMartin Michaus of Basham Ringe yCorrea in Mexico and Juan PabloEgana of Sargent & Krahn in Chile.The panel was moderated by SantiagoO’Conor of Marval O’Farrell &Mairal.

INTA DAILY NEWS

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 3

Can I get by without a survey?

How to draftan opinionletter

W hether claiming that a cleaningproduct is environmentally friendlyor that an ice cream bar is low in

fat, brand owners should be aware ofpotential pitfalls in their advertisementsthat could result in costly litigation, saidpanelists at yesterday’s session, ‘Spinninga Branded World’ – Deception andSubstantiation in U.S. Advertising.

Charles Harwood of the U.S. FederalTrade Commission illustrated the problemwith an ad for the KLONDIKE LITEBAR, which claimed that the company’sice cream treat was 93% fat free. The slo-gan boasted: “Proof that less can tastelike more.” However, Harwood said thatan FTC investigation revealed the 93%figure did not include the dessert’s choco-late coating, resulting in charges againstthe company for making an expresslymisleading representation.

Stephanie Kornblum of Microsoft out-lined the steps that brand owners should

take to avoid such problems. “Our fore-most concern is making sure we’re clearand crisp with our consumers,” she said.

One factor that is integral to makingexpress representations about a product isto have sufficient substantiation, as in thecase of Microsoft’s Natural ErgonomicKeyboard 4000, which claims to help pre-vent carpal tunnel syndrome. Kornblumsaid that the company hired an outsidegovernment-approved expert on occupa-tional health and safety to do a studybefore launching the campaign.

A more subtle form of deception isimplied representation, in which an adgives the impression of a particular claim.By example, Harwood referred to aStouffer’s LEAN CUISINE ad that toutedthe product’s calorie, fat and sodium con-tent. In stating that the meal contained“less than 1 gram of sodium,” Harwoodsaid that the ad implied it was low insodium, although the FDA’s daily recom-

mended sodium intake is only 2.4 grams. Karla Sanchez of Patterson Belknap

Webb & Tyler said that proving that acompetitor’s ad is deceptive can be diffi-cult, since there are no set rules about thenumber of consumers that have to bedeceived, but that plaintiffs should gener-ally attempt to show through consumersurveys that at least 20% to 30% of con-sumers have been deluded.

For brand owners seeking to bring sucha claim against a competitor, there are sever-al avenues available, including the LanhamAct, the National Advertising Division ofthe Better Business Bureau and regulatoryagencies such as the FTC and FDA.

But Sanchez said that, especially in thecase of television ads, which usually runfor a period of only four months, obtain-ing a preliminary injunction in court is cru-cial. “You need a preliminary injunction tohave any chance of stopping the damagebefore the ad runs its course,” she said. ■

Yaghmai went on to acknowledge thatthe 24-page decision issued by the Courthad not explained in detail the rationalebehind the ruling. But he said that heexpected the judge to offer more clarity inhearings scheduled to follow the media-tion stage.

“Some brand owners want us to policetheir brands for them and to kick off peo-ple [they suspect of selling fakes] withoutmuch due process. That’s not feasible,”Yaghmai added.

He said that he believed that core ofthe opinion was that the judge wanted toknow to what extent eBay had offered towork with L’Oréal.

“Were we really engaging with them?Do we put them through the wringer whenthey file a [VeRO] report or do we make iteasy for them? [The judge] felt that therewas a workable solution,” Yaghmai said.

The issue of secondary liability ofintermediaries for sales of counterfeits is ahighly contentious one. So far, courtsaround the world have offered competingviews as to their liability. In June last year,for example, the Tribunal de Commercein Paris ruled that eBay was at “a seriousfault” by failing to keep counterfeit goodsoff its site, especially LOUIS VUITTONand CHRISTIAN DIOR bags.

In that case, the French court orderedeBay to pay €19.28 million in damages toLouis Vuitton, €17.3 million to ChristianDior Couture (also owned by the LVMHGroup) and €3.25 million to four ofLVMH’s perfume brands.

But less than a month later, the US

District Court for the Southern Districtof New York said that eBay cannot beheld liable by jewelry store Tiffany & Cofor direct or contributory trademarkinfringement.

Judge Richard Sullivan said: “Tiffanymust ultimately bear the burden of protect-ing its trademark. Policymakers may yetdecide that the law as it stands is inade-quate to protect rights owners in light ofthe increasing scope of Internet commerceand the concomitant rise in potential trade-

mark infringement. Nevertheless, under thelaw as it currently stands, it does not mat-ter whether eBay or Tiffany could moreefficiently bear the burden of policing theeBay website for Tiffany counterfeits—anopen question left unresolved by this trial.”

At Session CT51 Anticounterfeiting –Redefining the Battleground at 3:30 p.m.– 4:45 p.m today, speakers, includingDaniel Dougherty of eBay, will discussways of interrupting the Internet-facilitat-ed sale of counterfeits. ■

More information about the session, andrecent developments on anticounterfeit-ing, is on page 14.

INTA DAILY NEWS

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM4

T he U.S. should introduce a sui generisdesign right, similar to that availablein the EU, Perry J. Saidman of

Saidman DesignLaw Group told attendeesyesterday.

Speaking in a session on protection oftrade dress and product design, Saidmanadmitted U.S. design patents potentiallyoffered effective protection to designers,especially after last year’s Egyptian Goddessdecision, which “completely transformeddesign patent law.” But he said that, at acost of about $3,000 per claim, they are tooexpensive for small companies, especiallyfor market-entry protection: “You have togamble ahead of time over which of yourproducts will hit the bullseye.”

The answer, said Saidman, is clear:“Don’t examine designs. Register them likethey do in Europe.” He suggested the reg-istration could be handled by the U.S.Copyright Office.

William T. Fryer of the University ofBaltimore School of Law described theEuropean design system as “the mostadvanced in the world.” But, in a debatewith Saidman, he raised objections to theintroduction of a design system in the U.S.notably that: “Designers cannot determinewhat features in use are protected.” Healso said that a registered design wouldmake some things, such as auto repairs,more expensive.

Saidman explained a number of propos-als that have sought to extend design pro-tection in the U.S. On April 30 this year aFashion Bill was introduced in the Houseof Representatives and Saidman’s proposaldraws on this. ■

Design debatedBe blunt when broadcasting your brand

Continued from page 1

Online liability split

INTA Washington Representative Jon Kent shares a laugh with U.S. attorneys at yesterday afternoon’s INTA PAC reception.

I n an increasingly internationalizedworld, brand owners need to “be moresensitive to differences between

regions,” said Mona E. Lee of DWPartners in South Korea, moderating yes-terday’s session on East and SoutheastAsia. The panel of trademark owners dis-cussed protection and enforcement strate-gies in the region which, said Lee,accounts for one-third of the world’s pop-ulation.

Zaheera Hashim of Procter & GambleAsia stressed the need to have effectivepre-entry plans and post-filing priorities,especially in a region where there are“diverse, complex languages.” For exam-ple, she said her company had decided toadapt its PERT haircare brand in differentmarkets as its “pick-up-and-go, bouncyconnotations” were lost in some cultures.But as the brand REJOICE, it has becomenumber one in its sector in Greater China,and it has also enjoyed success as REJOYin Japan and WASH & GO in Europe.

Despite the different names used,Hashim said it is important “to make surethe brand position is the same throughoutthe region.” Betsy Bilus of PepsiCo alsohad some examples of local branding,such as PEPSI ICE CUCUMBER in Japan.“Japanese consumers are demanding andexperimental with different colors and fla-vors,” she explained. In another “bold”move, she explained that Pepsi hadlaunched a RED drink in China for theOlympics, despite its conventional bluebranding.

Bilus said that such promotions can berisky: “It’s important for us as counselors

to be involved in these decisions andmake sure they don’t go too far.” DavidH. McDonald of Wyeth added that thismeant the role of the in-house counselinvolved more than just trademark advice:“So much of what we do is more thanthat. We have to help the marketing peo-ple highlight trademark and broaderbranding-related issues.”

McDonald emphasized that the differ-ent languages and characters in Asia pres-ent both opportunities and challenges totrademark owners. For example, trade-mark offices can be stricter about what isregistrable as Wyeth discovered whenlooking to extend its CENTRUM SILVERbrand to the region. Faced with the prob-lem that “silver” could relate to the min-eral rather than the color, the companychanged the name to CENTRUMSELECT. But, to strengthen the branding,it retained silver in the color used on thepack, as well as in some of the translatedwording.

Pepsi had a similar experience whenextending its SOBE brand to Vietnam.Bilus said that, although the companywas confident it could clear the mark, for

commercial reasons it did not want towait. Instead, it launched the brand asSTING and, she said: “It was so success-ful it became a regional brand. So thathad a happy ending.”

Unfortunately, some brands have hadless fortunate experiences, particularlywhere they have not made local-languagetranslations and consumers have come upwith their own names. Examples areQUAKER (“Old Man Cereal”), KFC’sslogan Finger Lickin’ Good (“You can eatyour fingers off”) and Pepsi’s COMEALIVE (“Pepsi will raise your ancestorsfrom the dead”). Pepsi has also run intoconflicts due to the resemblance betweenits globe logo and the yin and yang devicethat is popular in Asia. “That is simply

something that we have to live with,” saidBilus. “We’re not going to win all opposi-tions. So we have to be more selectivethan we would like.”

Problems such as this reiterate the needfor holistic protection, making use ofrights such as designs and even U.S. regis-tered copyrights, as well as different typesof trademarks. McDonald said it isimportant to consider the differencesbetween upper- and lower-case versions oftrademarks, or the same mark in differentcolors, as Asian consumers might notregard them as the same. “The potentialimpact in China can be significant,” heexplained. “We have had that problem.As a result, we over-file in China,” addedBilus, while Lee said that in Korea marksmay be cancelled if they are not usedexactly as filed.

The panelists also discussed someenforcement challenges in the region,including parallel imports and shadowcompanies. Bilus said Pepsi has had tochallenge other companies that had regis-tered marks very similar to its own, butfor feminine hygiene products and realestate services, or in company names. ■

INTA DAILY NEWS

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 5

Filing strategies for Asia’s different languages

“We have to help themarketing people highlight trademarkand broader branding-related issues.” David H. McDonald

C ompanies need to look beyond the“much maligned” form of securitiza-tion when seeking ways to use their

brands to obtain finance, according to apanel yesterday.

“It will be a little while before anotherset of large securitizations takes place,”said Andrew Robinson of Deloitte in theUK, who spoke at the session.

Robinson discussed the pros and consof securitization, which involves poolingand repackaging financial assets into secu-rities that are then sold to investors.Robinson said that, although the wordsecuritization was “much maligned,” theproblems that have been caused are notconnected with the structure, but with theprocess of valuation.

He said that, when done correctly,securitization allows access to a widerpool of investors and is “bankruptcy-remote” because the assets are placed in aspecial purpose vehicle (SPV) – a compa-ny set up by investors to own the assetsbeing securitized. But he said that it isinappropriate for smaller businessesbecause the costs associated with settingup a securitization mean that a companywould need at least $25 million in assets.

Brand securitization also raises manyspecific problems for trademark counsel.For example, what happens when a com-pany wants to securitize some marks, butkeep control of its core brands? ElisabethLangworthy of Sutherland, Asbill &Brennan, who moderated the session, said

that in the U.S. transferring one mark toan SPV and not another would weakenthe distinctiveness of both marks. DonnaWhite, a lawyer for Osler Hoskin &Harcourt in Canada, said her country stillhas the notion of associated marks, whichmeans that one associated mark cannotbe transferred without the other.

People attending the session also raisedtwo other possible problems with securitiz-ing trademarks. The first is how you enforcea trademark that has been transferred to anSPV, as that SPV would have to be the filerof any enforcement action. The second com-plication is what to do when the investorsdemand perfection of a securitization, whichfor a trademark securitization would meanrecording the agreement in all countries

where the mark is registered. “Seeking per-fection is a level of nirvana we cannot possi-bly reach,” said Langworthy. “I would rec-ommend that you never agree to that – thecost is extraordinary.”

Given all these difficulties, the panelsaid that businesses wanting to use theirbrands to obtain finance would be betteroff using the simpler process of collateral-ization, which involves pledging anincome-producing asset as security for adebt borrowed. The benefits of thismethod, according to Robinson, are thatthe investor retains full control and that itcan be used by smaller businesses. “In thecurrent crisis, the more likely route is acollateralization backed with some formof equity injection,” he said. ■

INTA DAILY NEWS

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM6

New ways to find finance in the downturn

T rademark offices in the Middle Eastand India are becoming more recep-tive to nontraditional trademarks,

said panelists at a session today. Pravin Anand, of Anand & Anand in

New Delhi focused on decisions by theTrademark Office to allow the registra-tion of a sound mark for YAHOO! , aleather texture trademark for LOUISVUITTON and the ZIPPO lighter shape,which was also successfully enforced inthe Delhi High Court, “which hears 70%of IP litigation in the country.”

Anand also pointed to a series of indica-tors that show that enforcement is improv-ing in India”, including the fact that Indian

courts now recognize trans-border reputa-tion, better protect well-known marks andare using stronger remedies such as AntonPiller orders, Mareva injunctions and puni-tive damages. On the negative side, winrates in trademark cases have gone downbecause some judges have decided thattrademark law has become too strong anddefendants have become more adept atusing procedural grounds to win cases.

“The most liberal office to date in theMiddle East is the UAE TrademarksOffice,” said Omar Obeidat of Al Tamimi& Company. Obeidat looked at all thecountries in the Gulf CooperationCouncil, which comprises Bahrain,

Kuwait, Oman, Qatar, Saudi Arabia andthe United Arab Emirates. He used theexample of Mars, which won a case in

the courts in the UAE over infringementof its design for a GALAXY JEWELSchocolate box.

Mars is also one of the few companieswhose marks have been recognized as

well known by the courts in Pakistan,said Badaruddin Vellani of Vellani &Vellani. In 2001 the Sindh High Court of

Karachi had recognized MARS as a wellknown trademark and granted it an inter-im injunction. Vellani also outlined thedomain name dispute resolution policy inPakistan. ■

India and Middle East break with tradition

Some judges have decided that trademark law hasbecome too strong and defendants have become moreadept at using procedural grounds to win cases.

T he COCA-COLA bottle, FERREROROCHER and TOBLERONEchocolate, the UPS and ARSENAL

FC shields, the LEGO brick, PHILIPSthree-headed razor and CROCS shoeswere all scrutinized at yesterday’s paneldiscussion on protecting packaging inter-nationally.

Armed with examples of bottles andchocolates, panelists from Canada, China,Europe and the U.S. explained how pack-aging can be protected using differentrights, including trademarks, patents,copyright and designs, as well as throughunfair competition and passing off laws.

They also compared protection for spe-cific examples of packaging—encompass-ing product shapes, labels and functionaldesigns.

Katie Cameron of R.G.C. Jenkins inthe UK said that in Europe there is “ahuge amount of protection available” forlogos such as the UPS and ARSENALshields. As well as benefiting from copy-

right protection, they could be registra-ble as both Community trade marks anddesigns. She added that the shieldswould not be excluded from design pro-tection on the grounds that they arebased on old designs, as they have beenupdated: “The updatedness is sufficientto overcome novelty objections.”

In China, said Lian Yunze ofHylands Law Firm, the logos wouldalso be registrable today as trademarksand design patents. However, he cau-tioned that on October 1 a change tothe patent law comes into effect, whichwill rule out design patent protectionfor labels. In the U.S., moderatorChristopher J. Schulte of Merchant &Gould said he predicted the ARSENALlogo would be protectable under bothcopyright and trademark law—“provid-ed the examiner’s not a ManchesterUnited fan.”

Lian described how FERREROROCHER last year won a case at the

People’s Supreme Court inChina over the protec-tion of its packaging asa trademark. Thecompany hadfailed toenforceitsrightsagainsta looka-like productat firstinstance, but atsecond instance thejudge found that its golden foil, browncup, small label and plastic box with alarge label on it amounted to uniquepackaging. The trademark was also verywell known, having been used in thecountry since the 1980s. On March 24last year the Supreme Court upheld thedecision.

Cameron said that there are someexamples, such as the MAGLITEtorch, where applicants have found ithard to protect product shapes asCommunity trade marks in Europe

where acquired distinctiveness isnecessary: “You haveto show that themark is wellknown through-out the EuropeanUnion. So youneed a hugeamount of evi-dence atOHIM.”

Discussing the LEGO brick, PHILIPSrazor and CROCS shoes, the panelistsagreed that the functionality of eachproduct would be a significant hurdle toregistration. Justine Wiebe of Bereskin& Parr noted that the studs on theLEGO brick had been refused protec-tion by the Supreme Court of Canada,and she said the courts focus on “theparticular configuration and arrange-ment of the elements” in the product.Nevertheless, she believed that, from apersonal point of view, all three prod-ucts would be seen as distinctive by

many consumers: “I’m sym-pathetic to all three

examples.” ■

INTA DAILY NEWS

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 7

Practical packaging and product protection plans

W hen the maker of the popular Beanie Babies col-lection, Ty Inc, launched the “Marvelous Malia”and “Sweet Sasha” dolls around the same time

as US President Barack Obama was elected, the compa-ny was harshly criticized for capitalizing on the celebri-ty of Obama daughters Sasha and Malia. While Tyclaimed the dolls’ resemblance to the girls and the simi-larity of the names were merely coincidental, it eventu-ally re-marketed the girls as “Sydney” and “Mariah”,perhaps signaling recognition of the weight the UScourts have traditionally given to right of publicityclaims.

According to Jeffrey Edelstein of Manatt Phelps &Phillips: “If the Obama family had wanted to sue, theymost likely would have won”, especially since “the courtshave generally broadened the scope of publicity rights overthe years.”

Edelstein will be addressing some of the key cases in thedevelopment of this area of US law during today’s sessionCT22—Recent Developments in US Trade Secrets,

Copyright and Right ofPublicity Law. The panel willbe moderated by DanaGilland of Diageo NorthAmerica and also includesScott Feldman of Crowell &Moring and GretchenHoffman of Wong Cabello,who will discuss trends intrade secrets and copyrightlaw, respectively. The sessionwill highlight the overlap

between these related legal sectors and the importance ofunderstanding their relationship to trademark law.

When 50 cents means big bucksIn July last year, rapper 50 Cent sued fast food chain Taco

Bell in Manhattan federalcourt for “diluting the valueof his good name” when thecompany sent a public letterto reporters asking the artistto change his name to “79Cent”, “89 Cent”, or “99Cent”, as a means of pro-

moting the restaurant’s value menu. The complaint read:“Without seeking or obtaining Jackson’s authorization,defendant Taco Bell made him the star and focus of its

nationwide advertising campaign by using his name, per-sona and trademark to promote Taco Bell’s business andproducts.”

Taco Bell spokesman Rob Poetsch said: “We made agood faith, charitable offer to 50 Cent to change hisname to either 79, 89 or 99 Cent for one day by rappinghis order at a Taco Bell, and we would have been very

FEATURE: RIGHT OF PUBLICITY LAW

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM8

Protect your other IP rightsStaying on top of recent developments in other areas of IP law can help trademark owners to be more strategic in trying cases. Today’s sessionCT22 promises to include analysis of some lively non-trademark cases, including a hypothetical virtual IP scandal. Eileen McDermott reports.

•• Consider preemption—a common law claim cannot survive in acomplaint containing a CUTSA claim if both originate from thesame set of facts.

•• Require a “reasonably particular” trade secrets description—plain-tiff must provide such a description under CCP section 2019.210before serving discovery if alleging a California state law claimthat is factually dependent on the misappropriation allegation.

•• Do not sit on potential claims against customers of a misappropria-tor—quickly track down the clients who may be using tainted prod-ucts, notify them of the taint, and file legal action if necessary.

•• Obtaining civil relief or criminal penalties depends on a tradesecret remaining secret.

•• Draft license agreement expiration clauses that end licensees’rights clearly.

Source: R Scott Feldmann and Thomas E Dietrich, Top Secret:Recent Developments In Trade Secret Law

Trade secrets litigation tips

“Creative defense counsel will continue to pushthe boundaries of preemption even further.” Scott Feldmann

pleased to make [a] $10,000 donation to the charity ofhis choice.”

50 Cent is now suing the company seeking $4 million indamages and the case is pending. In a similar case lastmonth, Woody Allen sued designer American Apparel for$10 million after the company used his image on a bill-board without permission. The lawsuit prompted a nastyverbal and legal battle, with jurors to be selected for aManhattan trial later this month.

According to Edelstein, while the courts have tradition-ally weighed in on the side of celebrities in such matters,one case involving an unauthorized photo of actor DustinHoffman demonstrates the limitations of publicity rights.Hoffman sued Los Angeles Magazine over a 1997 articlein which his image was superimposed on a female model’sbody as part of an article titled “Grand Illusions.”

The actor argued that the article was being used foradvertising purposes and won the case in the district court,but an appeals court reversed the decision on FirstAmendment grounds. In its opinion, the court said:“Viewed in context, the article as a whole is a combinationof fashion photography, humor, and visual and verbal edi-torial comment on classic films and famous actors. Anycommercial aspects are ‘inextricably intertwined’ withexpressive elements, and so they cannot be separated out‘from the fully protected whole.’”

Trading secretsIn addition to publicity rights, today’ssession will examine recent trends intrade secrets law, specifically withrespect to the subject of preemptiondefenses. By providing “fun examplesfrom recent cases,” Scott Feldman sayshe plans to show attendees how to “dra-matically lower costs in litigation.” In anarticle he authored on the topic,Feldman says: “Novel preemptiondefenses have cropped up in the past fewyears and it is a safe bet that creativedefense counsel will continue to push theboundaries of preemption even further.”

Feldman plans to concentrate on cases in which theCalifornia Uniform Trade Secrets Act (CUTSA) has pre-empted common law causes of action. According toFeldman, the test for preemption is “whether the con-duct pleaded is equivalent to facts that could support amisappropriation of trade secrets claim.” Often, plain-tiffs will use synonyms for terms defined in CUTSA,such as “‘using’ or ‘disclosing’ either ‘trade secrets’ or‘confidential information’, as well as alleged ‘impropermeans’, including misrepresentations or breach of a dutyto maintain secrecy.” By targeting these terms and wip-ing out the “underbrush of an over-pleaded complaint,”Feldman says that defendants can “whittle a case downand save the litigants and the court from wastingresources on claims that were never intended for theavailable facts.”

A virtual IP pickleTogether with some timely examples of trends in copyrightlaw, the session will culminate in a hypothetical scenariothat Feldman says he created “to tie everything together.”Using the example of a Second Life marketing campaigninvolving a deal between Coke and Angelina Jolie to pro-mote a new beverage, the panelists will demonstrate thecomplexities of applying these various legal issues in a vir-tual environment.

As discussed in yesterday’s session ontrademarks in virtual worlds, one of themain problems with protecting trade-marks in online arenas such as SecondLife is that it has yet to be decided if vir-tual use translates to actual use. In thecase of trademarks, this turns on thequestion of whether selling goods withinvirtual worlds constitutes actual com-mercial use. But virtual playing fieldspose problems across other areas of lawas well. For example, when the fictionalCoke executive, Ms. Silverstar, joinsCoke’s competitor company and sets upa virtual island populated by AngelinaJolie lookalike avatars marketing a

product suspiciously similar to Coke’s new beverage, whatare the trade secrets misappropriation, reverse-passing off,copyright and right of publicity claims involved?

While many attendees might not encounter these issuesin their daily practices, Feldman stresses the importance ofstaying informed about other areas of law. “I have foundthat I’ve won a number of cases based on the overlapbetween these areas,” says Feldman. “It’s about knockingout claims because they are inconsistent with other areasof the law and recognizing where one area of law stopsand another picks up. That knowledge can make one a bet-ter trademark practitioner.” ■

FEATURE: RIGHT OF PUBLICITY LAW

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 9

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H ow do you choose which clients to take? Whattypes of searches do you perform and how exten-sive are they? What systems do you use for appli-

cation and docketing? These are just some of the ques-tions that will be addressed in today’s session on bestpractices in trademark clearance (CT50—Law Firm BestPractices in Trademark Clearance, Prosecution andPortfolio Management), moderated by sole practitionerJoan Dillon, who has worked in-house for companiesincluding Purina, US Steel and Levi Strauss & Co, aswell as at large firms such as Kilpatrick Stockton andKing & Spalding.

Dillon has been attending the INTA Annual Meetingsince 1967 and says that the idea for the session grew outof nostalgia for “the old days” of the Annual Meeting,

“when we sat around at Buck Hill Falls and talked aboutthe nuts and bolts.” While today’s Annual Meeting offerssophisticated sessions and intricate presentations on keytopics, Dillon says she saw a need for a space in whichpractitioners from a cross-section of practices could sharethe somewhat less glamorous aspects of their day-to-dayroutine.

“What I learned at the general practice and large IPfirms was that a lot of people engaged in their ownpersonal practices,” says Dillon. “There was no gener-al rule for trademark clearance and I doubt there isnow.”

Christine James of Kilpatrick Stockton, who will alsobe speaking at today’s session, agrees that larger firmscould benefit from a candid dialogue like the one Dillonhopes to promote. “It sounds simple, but getting togetherand talking about best practices probably went on a bitmore when the Annual Meeting was a smaller, more inti-mate discussion,” says James.

The panelists were chosen to represent a range oftypes of US law firms, from sole practitioners to largeIP boutiques and general practice firms. In addition toJames, the panel will include Stanley Cohen of CaesarRivise Bernstein Cohen & Pokotilow, a mid-sized lawfirm; Anne Hiaring of the Law Offices of AnneHiaring, a small IP firm; and Lawrence Robins ofFinnegan Henderson Farabow Garrett & Dunner, alarge IP firm.

To search or not to searchOne of the topics at the heart of any discussion on besttrademark practices is how and to what extent to performtrademark searches. Dillon says that her experience work-ing in large firms taught her that there is often a lack ofcoordination and communication among practitioners inthe same firm on this subject. “I was concerned about mal-practice,” says Dillon. “If I do a search one way and mycolleague does it another way, and his search finds some-thing that I don’t, he’d be the worst witness against me ina malpractice suit.”

For this reason, Dillon has asked each of the pan-elists to discuss their daily search habits. While Dillonsays she rarely does preliminary searches, for instance,Hiaring, who runs her own small IP firm, always con-ducts preliminary searches of USPTO records and theInternet.

The paralegal predicamentAnother variable when it comes to searching has to dowith whether or not and when to use paralegals to conductsearches. The question can often be a contentious one.“The extent to which paralegals should be doing work is along-established, well-discussed debate,” says James.“We’re keenly aware of the need to keep paralegal worktruly paralegal and to not ask them to function as attor-neys, but assistance with searching and filing is in parale-gal purview.”

FEATURE: TRADEMARK CLEARANCE

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM10

Share your trademark practice tipsThe Annual Meeting has become larger than life over the years, from the complexity of the topics to the splendor of the parties. But, as EileenMcDermott reports, today’s session CT50 aims to bring the discussion back to basics.

“If I do a search oneway and my colleaguedoes it another way,and his search finds

something that I don’t, he’d bethe worst witness against me ina malpractice suit.” Joan Dillon

Several panelists use paralegals to conduct prelimi-nary searches, while others even have them file and signapplications. James points out that utilizing paralegalsfor such work can minimize client costs, a factor thatcan’t be taken too lightly these days. “Given the eco-nomic climate, it’s imperative to continue to thinkstrategically about how you best staff a given project,”she says.

Practicing for a new economyLearning how other practitioners save their clients moneymight be one of the biggest draws for the session. “It willbe interesting to see how practices change with the econo-my,” says James. “I think that by having a candid discus-sion about how you do business, the audience will takeaway tips and tricks about how to improve their prac-tices.” James adds that the session will be particularlyhelpful to those starting up their own firms, which hasbecome an increasing trend, as larger firms struggle to rideout the economic storm.

Becoming sensitive to clients’ needs as they struggle toadapt to a spiraling economy can include considerationssuch as using the Madrid Protocol and CTM systems,auditing portfolios and being more strategic about whichfilings to pursue. “Efficient filing schemes are not econo-my-driven, they’re strategically driven,” says James.“There are challenges facing the world’s economy, butclients are still focused on making decisions to protecttheir marks. [This session] is going to help us all do thebest we can for our clients and learn from each other.”

Wisdom from the couchWhether you’re looking for tips to save your clients somecash or you’re just curious to see how your habits compareto those of your peers, today’s session is bound to provideyou with a new tool or two for your trademark belt.“What we’re coming out of this with is best practice tips,and people can take away what they want from that,” saysDillon.

But aside from the session’s practical aspects, Dillonalso hopes that the panel will succeed in fostering an infor-mal, straightforward atmosphere in which practitionerscan take a break from some of the more academic discus-sions to engage in a conversation about the bare bones oftrademark work, since even the simplest exchanges canoften have a profound impact. “I really learned how topractice from the people I sat on the couch with during myfirst two or three years of being an INTA member,” saysDillon. “I’m hopefulthat the session will beentertaining and thatpeople will be drawninto it and learn some-thing.” ■

FEATURE: TRADEMARK CLEARANCE

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 1 1

• Smaller trademark firms should be marketing to the larger IPand general practice firms for referral work.

• If the client is capable, have it do some preliminary searching.• If you are with a larger group of practitioners try to be on the

same page when it comes to the level of drill-down work insearches.

• Weigh the pros and cons of preliminary searching with respectto its cost/benefit ratios.

• Use the Madrid System where it is cost-efficient and there is nodanger of central attack.

• Decide what the firm practice will be with regard to how far yougo in issuing reminders and let clients know what your policy is.

• Watch your docket like a hawk. A missed docket date is themost objective form of malpractice exposure.

• Stay alert to foreign prosecution practice quirks, benefits andcosts, and cultivate your foreign associates for the best assis-tance.

Source: Joan Dillon

Some best practice tips “Efficient filing schemesare not economy-driven,they’re strategicallydriven.” Christine James

Join the growing list.

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Online resources

www.uspto.gov/main/trademarks.htmwww.oami.europa.eu

I f you thought that trademark management was allabout the law, think again. Being a strategic brandplanner involves a great deal of math, says Paul Reidl,

a past president of INTA. Reidl, one of the panelists ontoday’s session on brand collision, believes that trademarkpractitioners who need to protect their brands across juris-dictions and over time need to perform some difficultsums. “It’s all about a calculus of evolution,” he says.

For those for whom math is not a strong point, he goeson to explain how practitioners must consider the array offactors that impact on their clients’ ability to protect theirmarks in any given jurisdiction. These range from the sub-stantive law that clarifies how the courts should assessconcepts relating to trademarks in each country, to thestrength of the mark itself and the changing nature ofgoods and services offered by brand owners.

“The calculus is a multi-varied function. All of thesefactors collide—and they all change over time,” Reidl says.“As a strategic brand planner, you have to think aboutwhat happens when something you didn’t envisage yester-day becomes reality today.”

Legal differencesOne of the most important issues that a trademark practi-tioner must consider when performing searches and clear-ance work for a client is the differences in approachbetween IP offices and the courts around the world.

One example of this is the test used to determine thelikelihood of confusion: this varies from jurisdiction tojurisdiction—from the narrow civil law concepts in LatinAmerica to the far broader concepts in the US. “In manyLatin American countries they tend to take trademarkclasses very seriously and presume that there will be nolikelihood of confusion as long as the goods or services inquestion are in different classes,” says Reidl. As a result, hesays that practitioners there may often be well-advised togive a client’s proposed trademark the green light, eventhough the same advice could carry far more risks of liti-gation in the US.

Strength of the markOne important issue that must be factored into the brandmanagement equation is the strength of the proposedtrademark. How strong a mark is in any single market will

help determine whether it is your mark—or your rival’s—that triumphs in any IP dispute. Of course it may be possi-ble to have a strong mark in a market where you do noteven sell your goods and services, as a result of globaladvertising campaigns.

In November last year, Europe’s top court clarified howit would deal with colliding marks when it responded toquestions put to it by the Court of Appeal in London relat-ing to a dispute between Intel and CPM over the use of themark INTELMARK. Intel complained that any use of

FEATURE: TRADEMARK COLLISION

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM12

Trademarks and the calculus of evolutionAs companies expand and globalization makes the world ever smaller, it’s almost inevitablethat brands will collide. Emma Barraclough considers a formula for avoiding a clash.

You can avoid a trademark clash becoming a trademark collision bynegotiating an agreement with your brand name rival to ensurethat your two marks can coexist peacefully. Here’s how: • Conduct a thorough trademark clearance for your proposed

mark. This should include both trademark registers and alsoless obvious databases, such as company registries and eventelephone directories

• Search in overseas markets if the company has any plans toextend its brand abroad

• Don’t sign a coexistence agreement merely to avoid litigation—itmay be advisable to thrash out the issues early on with yourtrademark rival to establish which party has the stronger rightsrather than conclude a deal that leads to more problems fur-ther down the line

• When drafting a coexistence agreement make sure that it dealswith the fundamentals: How will the marks coexist? Will it easeconfusion for consumers? Is it enforceable? Have you ensuredthat the agreement will die after the marks are abandoned?

How to avoid a collision

“As a strategic brandplanner, you have tothink about what happens when

something you didn’t envisageyesterday becomes realitytoday.” Paul Reidl

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INTELMARK would dilute its famous mark. But in itsdecision, the European Court of Justice raised the bar forfamous brand owners wishing to prove dilution in Europewhen it clarified its interpretation of Article 4(4)(a) of theEU Trade Marks Directive.

This Article bars the registration of trademarks that areidentical or similar to earlier marks registered for non-sim-ilar goods or services, where the earlier mark has a reputa-tion and the use of the later mark “would take unfair

advantage of, or be detrimental to, the distinctive charac-ter or repute” of the earlier mark.

The Court said that the fact that an earlier mark has a“huge reputation”; that its goods or services are dissimilarto those of the later mark; that the earlier mark is unique;and that for the average consumer “the later mark calls theearlier mark to mind” is “not sufficient” to establish thatthe use of the later mark “takes or would take advantageof, or is or would be detrimental to, the distinctive charac-ter or the repute of the earlier mark”.

The Court did say that the use of the later mark may bedetrimental to the distinctive character of the earlier markwith a reputation “even if that mark is not unique”. Itadded that a “first use” of the later mark may suffice “tobe detrimental to the distinctive character” of the earliermark. But it said that proof of this detriment “requires evi-dence of a change in the economic behaviour” of the aver-age consumer buying the goods or services covered by theearlier mark, “or a serious likelihood that such a changewill occur in the future”.

This means famous-brand owners wanting to oppose orinvalidate a later mark will have to provide evidence show-ing such a change in consumers’ “economic behaviour”—a test that many practitioners say will be hard to satisfy. In

cases where famous-brand owners can show there is con-fusion, they should still be on safe ground. But if they arerelying on showing that there is detriment, they have amuch more difficult task.

You say you want a (technological) revolutionAnother variable in Reidl’s brand collision equation is thatof the evolving nature of the goods and services that com-panies provide.

Cast your mind back to 1981. NoInternet, no MP3 players, no email, nodownloads, not even an AppleMACINTOSH. No wonder then, thatthe lawyers and business managerswho negotiated to resolve a trademarkdispute between the Beatles’ AppleCorps record label and AppleComputer failed to spot how the way

in which markets would change and technology evolvewould later scupper their coexistence agreement.

That is because the 1981 agreement restricted AppleComputer to using the marks for computer goods andservices—but not for computer equipment adapted for usein recording or reproducing music. In return Apple Corpsagreed not to use its trademarks in connection with com-puters and computing systems.

Another dispute in the late 1980s led to a new agree-ment being signed in 1991. This expanded AppleComputer’s use of the marks, but kept the dividing linebetween Apple Computer’s field of use and musical con-tent. Of course back in 1991 no-one could have predict-ed how the development of the Internet and computersoftware would make the ITUNES service possible. In asubsequent row between the two companies, AppleCorps alleged that Apple Computer had overstepped thebounds of the agreement in its marketing of its ITUNESservice.

The judge considered each of the alleged breaches anddecided that Apple Computer “has not crossed the line”between its permitted field of use and musical content. Inhis ruling, High Court Judge Mr Justice Mann rejectedApple Corps’ claims. He held that Apple Computer’s use

of the Apple logo on its ITUNES music service was “a rea-sonable and fair use on and in connection with the serv-ice”. Under the new agreement between the two compa-nies, the US company will own all of the disputed trade-marks containing the word “Apple” and will license cer-tain trademarks to the Beatles’ record label. Underscoringits move into new technology markets, in January 2007,Apple Computer, Inc dropped the word computer from itsname to become Apple, Inc.

“Who would have thought that one of Apple’s majorrevenues would be music when its main business began aspersonal computers?” says Reidl. “At the time, a smallMP3 player that could hold thousands of songs wouldhave seemed like something out of science fiction.” Hesays that the Apple case demonstrates how evolution is away of life. “It will come slowly in some countries andindustries but ultimately change will come. My advice isthat you shouldn’t make assumptions—it’s simple but it’soften forgotten.” ■

FEATURE: TRADEMARK COLLISION

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 13

• Rival breweries Anheuser-Busch and Budejovicky Budvar havebeen involved in more than 40 legal disputes and 70 administra-tive proceeding before IP offices around the world, fromCambodia to Tajikistan. In the latest round of the long-runningdispute over the BUDWEISER mark, in March Europe’s Court ofFirst Instance upheld OHIM’s decision to reject Anheuser-Busch’sapplication for a Community trade mark on the grounds that itwas identical and/or similar to rights owned by the CzechRepublic’s Budejovicky Budvar.

• In 2002, the World Wrestling Federation lost to the World WildlifeFund in its battle to use the initials WWF in a dispute relating toalleged breaches of a 1994 agreement over the use of the let-ters WWF. The agreement settled some 54 litigation proceedingsin 21 jurisdictions. Following the decision by London’s Court ofAppeal, the wrestling group changed its name to WorldWrestling Entertainment. But that wasn’t the end to the legalwrangling—and the lawyers’ bills. Five years later, the Court ofAppeal overturned a lower judge’s ruling that the Fund was enti-tled to seek damages from the Federation for relaxing theirrights under the 1994 agreement.

When two can’t tango

“Who would have thought that one of Apple’smajor revenues would be music when its mainbusiness began as personal computers?”

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FEATURE: ANTICOUNTERFEITING

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM14

W hile the representatives of the developed worldargue behind closed doors about the small print ofACTA—the Anti-Counterfeiting Trade Agreement

that will provide a new weapon in the fight against fakes—trademark owners still have to deal with the dailyheadache of counterfeit goods being sold in greater num-bers and in more places than ever before.

Reliable data on the worldwide sale of fakes is hard tocome by, but all surveys agree that the problem is increas-ing, and that, especially in the middle of a financial crisis,counterfeiting is a cost that companies could do without.The International Anti-Counterfeiting Coalition estimatesthat the trade in fakes costs U.S. businesses between $200billion and $250 billion annually. Getting the messagethrough to consumers that buying fakes is wrong is a long-term goal, but in the short term companies need to find away to move counterfeiting from being a low-risk activityto being a high-risk undertaking.

To do this trademark owners need to adopt a tacticalapproach. In developing countries such as China orThailand, going after every stall-holder selling fakes willdemolish your enforcement budget and achieve little. “Youhave to focus on the narrow points,” says BruceLongbottom of Eli Lilly, one of the speakers at today’s ses-sion CT51 Anticounterfeiting—Redefining the Battlefield.

One of these narrow points has been to target the land-lords of the markets selling fakes, rather than going afterevery stall holder. Over the past few years, a number ofcompanies, notably the luxury goods sector, have tried thisapproach and applied it online, where online auction siteshave been treated as landlords engaging in contributoryinfringement.

The most important point is to choose your battlescarefully. “We are looking at the issue of when you collab-

orate and when you confront,” says Jeremy Newman, apartner of Rouse and the moderator of today’s session.

Losing the battle but winning the warAlthough the most high-profile case of landlord liabilityconcerns the infamous Silk Street Market in Beijing and itsdisingenuous landlord (see box), brand owners have hadmore success elsewhere. In Australia, Louis Vuitton

launched a campaign against landlords of markets sellingfakes in 2003. Of 27 markets that initially received legalwarnings, 22 chose to cooperate. The Carrara market onthe Gold Coast in Queensland was one of the few thatchose not to and in 2005 Louis Vuitton launched a caseagainst Toea and John Rosenlund, the owner and landlordrespectively of the market.

Louis Vuitton argued that the respondents were liablefor trademark infringement because they had not takeneffective steps to stop the stall holders from selling fakeproducts, despite being put on notice. The Trade MarksAct 1995 has no provision creating civil liability for aidingtrade mark infringement, so the brand owner argued thecase under tort law.

The Federal Court rejected the claim in November2006, stating: “It would have been virtually impossiblefor the respondents to control stallholders so as to pre-vent infringement, save in the case of the most blatantmisconduct.” Louis Vuitton did not appeal. StephenStern, a partner of Corrs Chambers Westgarth whoadvised the luxury goods maker on the case, admits thatthe result “wasn’t all we wanted” but believes that thecase and the preceding warning letters had an effect,noting that one of the reasons that the judge dismissedthe case is that he decided that the landlord was exercis-ing a degree of vigilance: “The case stood for the prin-ciple that you can’t just sit there and do nothing aboutcounterfeits.”

After the case, a coalition comprising Tommy Hilfiger,Gucci, Lacoste, Quicksilver, Nike, Foster’s, Caterpillar,LV, Christian Dior and Vans embarked on a market land-lord liability program that has had further success.According to Stern, the coalition has written to around 47different markets, of which about 33 have signed written

undertakings saying that they willcomply with the program and therehas been a marked drop in the num-ber of counterfeit versions of thosebrands for sale.

The same strategy has alsoworked in Korea. In August last yearthe Seoul Central District Courtsided with Burberry in an action

against SamsungTesco for trademark infringement andunfair competition. SamsungTesco owns one of SouthKorea’s largest department stores, called Homeplus.From two of these a lessee called World Home Shoppingwas selling counterfeit Burberry goods. In one of thestores the court found SamsungTesco was liable becauseit had authorized Homeplus to allow World HomeShopping to sell the goods.

Taking the fight onlineWhile the landlord liability approach has proven effectivein the bricks-and-mortar world, the situation online ismore complicated, with a lot still resting on high-profilelitigation on both sides of the Atlantic.

In one corner stand the luxury brand owners, angryat the way in which online auctions have made it somuch easier for counterfeits to be distributed online,often to consumers who think they are buying the realthing at knockdown prices. In the other corner areonline auction sites, who say that they are doing all theycan to prevent the sale of fakes among active users andclaim that the percentage of goods traded that are coun-terfeit is miniscule.

The key question to be decided is whether online auc-tion sites are only obliged to respond to notice and take-down requests from trademark owners, or should it policethe auctions itself. In the U.S. the test case is Tiffany veBay. In the first instance the court concluded that eBaywas not liable for contributory infringement because:“Quite simply, the law demands more specific knowledgeas to which items are infringing and which seller is listingthose items before requiring eBay to take action.” Tiffanyhas appealed the decision.

In Europe, trademark owners have a number of dif-ferent cases to watch. The most high profile so far hasbeen the case between Louis Vuitton Moet Hennessy

A fresh approach to counterfeiting Whether battling counterfeiters online or in street markets, a proactive and targeted strategyis necessary. Peter Ollier looks at what tactics trademark owners are adopting.

It is not every day you hear an IP counsel for a luxarygood counsel praising an online auction website. But ata brand protection forum organised by the FrenchChamber of Commerce in Hong Kong in March thisyear Marc Frisanco, head of IP for Richemont, wentout of his way to do just that. The object of his affec-tion was a French company called PriceMinister thathas 10 million registered users. “They have proactivescreening of all goods offered for sale,” he said, arguingthat this has enabled the company to eliminate 98% ofall fake goods.

Created in August 2000, PriceMinister is based inParis, employs over 160 people and has launchedSpanish and UK subsidiaries. The company uses amodel in which the seller lists their product for free, thebuyer pays PriceMinister, the seller then sends the prod-uct and PriceMinister then pays the seller, but onlyafter the buyer has confirmed that he is happy with theproduct.

Yes, PriceMinister

“It would have been virtually impossible forthe respondents to control stallholders so asto prevent infringement, save in the case ofthe most blatant misconduct.”

(LVMH) and eBay in Paris. The Tribunal de Commercein Paris ruled on June 30 2008 that eBay was at “aserious fault” by failing to keep counterfeit goods offtheir site, especially the Louis Vuitton and ChristianDior bags.

The court ordered eBay to pay €19.28 million indamages to Louis Vuitton, €17.3 million to ChristianDior Couture (also owned by the LVMH) and €3.25million to four of LVMH’s perfume brands. eBay hasappealed.

Elsewhere, the Brussels Commercial Court dismissedL’Oréal’s claim that eBay was responsible for counter-feits being sold on auctions on its site. The court saidthat eBay does not have “a general monitoring obliga-tion” of what it offers on the website and that it was notrequired to police its site to prevent counterfeit goodsfrom being sold. L’Oréal has appealed. The French cos-metics company has also brought cases in France,Germany, the UK and Spain—some new decisions areexpected soon.

Dan Dougherty, senior director, IP for eBay, told theINTA Daily News that he does not expect a decision ineither the LVMH case in Paris or the Tiffany case in NewYork before the end of this year.

Dougherty, who will also be presenting at today’s ses-sion, says that eBay’s efforts to prevent counterfeiting onits site are “extensive, costly and effective.” These includeguidelines on prohibited and restricted items, onsite cam-paigns, a security center, prevention through seller verifica-tion and the verified rights owner program (VeRO), whichprovides a notice and takedown system for rights owners.Dougherty also explained that eBay has worked withrights owners to introduce a system for reporting usersthat have previously been suspended for selling fakes.“Some great ideas and efforts are the result of rights ownersuggestions,” he says.

But this has not been enough for some trademark own-ers, who point to the success that other online auctioncompanies have had in reducing the sale of counterfeits(see box). eBay argues that some brand owners object notto the sale counterfeits, but to the fact that the Internet hastaken away control of how their goods are distributed.

“Some rights owners, including luxury brand companies,wish to control the distribution and sale of legitimategoods—to the detriment of consumers,” says Dougherty.

The legal battles over online liability have a long way torun, but Longbottom believes that, with the exception of

France, courts in most coun-tries have accepted that someform of notice and takedownsystem is likely to be enoughto exempt online auctionsites from liability. This couldlead to “a cottage industry ofvendors and service providersto send out notice and take-down notices,” he says.

Follow the moneyEven cases where courtshold that online auctionsites are not liable couldhave an effect by showingthe intent of brand ownersto tackle the problem. Butbrand owners need to beinnovative about how theyprogress from here and con-sider targeting other narrowpoints in the chain by whichfakes moves from factoriesto consumers. Longbottomsuggests targeting searchengines that provide linksdirect to sites selling coun-terfeits and credit card com-panies that facilitate pay-ments of fake goods. “Ifthose eight to 10 companiescould become more cooper-ative we could solve a lot ofproblems,” he says.

One method that has beenunderused so far is to useanti-money laundering legis-lation derived from anti-ter-ror and anti-drug laws. Overthe last few years these lawshave proliferated in differentcountries. For example, allEU member states have

adopted provisions deriving from the Second MoneyLaundering Directive, but according to Roland Mallinson, apartner of Taylor Wessing in London: “It seems few, if any,such actions have been brought aside from one in the UK andyet the potential to do so would appear to exist at least in allmember states of the European Union.”

The case Mallinson refers to is Wendy Fair Markets.The defendants—the owners of a market that was sellingcounterfeits—were convicted on two counts of moneylaundering and a confiscation order of £250,000($363,000) was made against the company. These convic-tions were later overturned on appeal due to a technicali-ty, though the court did not overturn the principle estab-

lished in the first case that the Proceeds of OrganizedCrime Act can be used in these circumstances. Other pos-sible targets that brand owners could go after using thismethod include suppliers of machinery to make counter-feits, delivery companies, payment transferors and Internetcompanies.

Although there is nothing like a big-money court casefor attracting media attention and creating drama, a lotof progress can be made outside the courts. Trademarkowners have to work out when to confront and when tocooperate: “It’s about notclosing down options at theoutset,” says Newman. Ifthey do choose to confrontthose facilitating the sale offakes, brand owners needto use all possible legalremedies. In particular,when dealing with onlineauction sites, newapproaches are neededbecause as Newman says:“The business model is notgoing away”. ■

FEATURE: ANTICOUNTERFEITING

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 15

While many trademark lawyers claim to enjoygetting their hands dirty doing enforcementwork, few would have wanted to be in theshoes of Beijing’s IntellecPro as they werebarricaded in their offices this February bystall holders angry that their businesses hadbeen temporarily closed down for sellingcounterfeits.

“Over 40 of the stallholders crammedinto our reception area. We tried to lockoffice doors but some of them still rushedinto our rooms and scratched our files anddocuments, banging on desk partitions withwater bottles,” Zhao Tianying, a legal con-sultant at IntellecPro told the INTA DailyNews.

The protests were part of a four-yearbattle that has been waged between a coali-tion of brand owners comprising Burberry,Chanel, Gucci, Louis Vuitton and Prada tomake the landlord of the famous fakeshotspot liable for allowing counterfeits to besold there. In September last year the land-lord and the coalition signed an agreementwhich required the landlord to temporarilyclose shops when the brand owners providedevidence that fakes were being sold there.But when the brand owners tried to put thisinto practice, stallholders protested and thelandlord wrote a long letter making falseaccusations against the lawyers involved andclaiming that the evidence of fake-sellingwas insufficient.

“Clearly, threats of further protests arebring used to persuade local governmentauthorities that the landlord is practicallyunable to terminate infringing vendors with-out posing grave risks to social stability,”said Joe Simone, a partner of Baker &McKenzie, who has been advising the coali-tion over the last four years.

The stall holders have sued the chairmanof IntellecPro in a case that the ChaoyangDistrict Court began hearing in April thisyear, while more civil suits against the land-lord of the Silk Market are predicted unlessthe parties can negotiate a new, more effec-tive agreement.

While the Silk Market remains a potent

symbol of China’s problems with counterfeit-ing, the landlord program is seeing somesuccess elsewhere in the country. InShenzhen the Luohu market has begun tocrack down on counterfeit sellers and therehave been some successes in Guangzhou,where 10 stallholders have been fined.

Silk market battles continue

“Some rights owners, includingluxury brand companies, wish tocontrol the distribution and saleof legitimate goods—to thedetriment of consumers.”Dan Dougherty

“Over 40 of the stallholders crammed into ourreception area. We tried to lock office doors butsome of them still rushed into our rooms andscratched our files and documents, banging ondesk partitions with water bottles.” Zhao Tianying

Online resources

www.ccapcongress.netwww.iacc.orgwww.iccwbo.org/bascapwww.inta.orgwww.interpol.intwww.qbpc.or.cnwww.thetruecosts.orgwww.uschamber.comwww.wcoomd.orgwww.wipo.int

What is the Starbucks business model? We have over 16,000 stores worldwide,the majority in North America, the UKand Japan. Our business model is that ofa coffee house and retail store, and thenwe also have a food services businesswhere we sell coffee and other productsto cafeterias and in the grocery channel.We also have an entertainment business(Starbucks Hear Music), which is largelymusic-focused.

How long have you been with the companyand what does your role entail? I’ve been with the company for over

seven years. Before Starbucks, I was sen-ior corporate counsel at the softwarecompany Adobe Systems, managing its

anti-piracy program, copyright litiga-tion and trademark portfolio. Beforemoving in-house, I was a litigator atFoster Pepper & Shefelman, focusing onintellectual property and employmentlitigation.

My role at Starbucks is global in nature;we have an IP team in Seattle that includesfive lawyers and six paralegals and wehead all IP for the company globally. Wehave lawyers in other offices who handlelocal issues, but all of the IP is done out ofSeattle. I handle a portion of our trade-mark portfolio and the patent programand I advise on IP litigation.

How large is your IP portfolio?On the trademark side, we have about10,000 filings altogether and we have about

140 patents. We also license our brands in avery limited sense—we don’t license to one-offs to brand their products. Overseas, we’lllicense our brand to a single operator, butthat’s a license of the entire retail brandexperience. In the US, we license to HostMarriott—for example, in airports.

What are the main countries that pose aproblem?The problem countries vary from year toyear, but we seem to have the most issuesin the US, followed by China, Mexico andBrazil.

Is counterfeiting a major issue?Not really—the margin is very low. We’llsee forms of counterfeiting, like jewelrythat uses our logo, for instance.

Is online infringement a problem? We don’t have much of a problem withonline trademark infringement—we’ll seeillegitimate coupons posted sometimes,spamming and other issues that are morerelated to consumer fraud.

What’s your enforcement strategy? Our first step is to send cease and desistletters—probably about 95% of enforce-ment matters are resolved after the first let-ter. In some cases, a follow-up call is neces-sary and in some cases we’ll take the lastpossible resort, which is litigation.

How often are you involved in litigation?We have between two and 10 trademarklawsuits somewhere in the world in a givenyear. We’re only occasionally a defendantin trademark cases and we’ve had somepatent cases in the last few years, but wetry to respect the brands and IP of other

INTERVIEW: BATUR OKTAY, STARBUCKS

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM16

Protecting a brand name brew Batur Oktay is director and corporate counsel at Starbucks Coffee Company in Seattle, where he manages worldwide patent and trademarkportfolios, works on IP litigation, drafts and advises on contracts and also handles copyright and trade secrets matters. Oktay spoke with EileenMcDermott about some of the challenges of defending the brand name of the world’s most well-known cup of Joe.

“The more famous the brand becomes, the moreinfringements we see”

companies, because we expect the same. Alot of disputes never materialize because ofour relationships with our competitors.Usually, we’ll pick up the phone and calleach other if there’s a problem—those rela-tionships are really crucial.

Do you use the Madrid systemfor filing your marks?We don’t use Madridbecause we useCanada as our homecountry and they’renot a member.However, we useCTM filings in theEU and the AndeanPact in LatinAmerica.

Would you use the sys-tem if Canada were toaccede? If Canada were to join the Madridsystem, we’d have to reassess the pros andcons and consider whether to use it.

Do you have a problem with the tradedress of your stores being infringed? That’s an interesting question—we’realways looking at other ways to protect the

Starbucks experience, but I haven’t seen acase yet where the trade dress of a storewas mimicked without also copying thelogo of the store. In many countries there isno basis for trade dress of a store’s environ-ment, except in conjunction with also copy-

ing the store’s core mark.

How important is the con-cept of famous marks

to protecting a brandlike Starbucks?It’s one of the keyissues for us. Wehave 10,000 fil-ings, in nearlyevery country ofthe world. I’ve

found that, regard-less of how elaborate

the doctrine is in a par-ticular country, if we have

a large presence there, theargument of fame is much easier to

prove. If we don’t have a large presence,then we try to rely on internationaltreaties, but it’s much easier to argue fame.

How has the economic downturn impactedyour IP strategy? The biggest impact is that we’ve had to cut

costs, so we’re taking more work in-house. We’re still pursuing cases and fil-ings, but we’re not relying as much onoutside counsel.

Have you asked outside counsel to cutcosts for you?We’re always very careful about costs andmost outside counsel have been veryresponsive to our requests, as a result ofhaving to adapt to a new economy. I haveseen firms offer flat rates, for instance. Ihaven’t seen anyone offer lower rates yet,but I’ve seen rate freezes. Universally,firms have responded positively to ourproposals.

What topics are you most interested inlearning more about at INTA this year?The subjects I like to learn about mostare IP issues that are new or novel in spe-cific countries, such as a new piece oflegislation. I’m always on the lookoutfor how trademark dilution is going tobe treated in other countries, forinstance.

What is the main challenge to enforcingsuch a global brand? You would think that the volume ofinfringement would go down as a brand’s

fame increased, but I’ve found that themore famous the brand becomes, the moreinfringements we see. And the morefamous we become in one country, themore likely we are to see infringement inan adjacent country where we don’t have apresence.

So, growing the fame of the brand andstaying on top of our case load as we dothat is the key challenge. ■

INTERVIEW: BATUR OKTAY, STARBUCKS

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 17

• STARBUCKS DOUBLESHOT energy+coffee• FRAPPUCCINO beverages• TAZO teas• STARBUCKS liqueurs• STARBUCKS chocolate

Some Starbucks brands

• Starbucks opened its first store in Seattle’sPike Place Market in 1971

• Starbucks has 410 stores in the state ofWashington and a total of 7,138 US co-operat-ed stores and 4,399 US licensed stores.Internationally, the company has 5,338 totalstores.

Starbucks fun facts

Jackson, Etti & EduCorporate Commercial • Dispute Resolution • Intellectual Property

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managingip.com

Meet Managing IP’s editorsWednesday, 11am-12noon

Stand 721

Bars

The Purple Café and Wine Bar1225 4th Avenuewww.thepurplecafe.com

Purple, which combines an extensive winecellar with local food specialties, came todowntown Seattle in 2006. It has won numer-ous awards and commendations and is highlyrecommended by visitors.

Vessel1312 5th Ave (between University and Union)www.vesselseattle.comListed by Esquire magazine as one of thebest bars in America 2008, Vessel offersbeer, wines and a wide range of cocktails. It ishoused in the historic Skinner Building nextto the 5th Avenue Theater.

Pyramid Ale House1201 First Avenue Southwww.pyramidbrew.comA Seattle institution, the Pyramid Ale Houseoffers a wide range of brews, as well as foodand merchandise, and has a beer garden thatis open before Mariners games. Try thePyramid Sampler if you want to discovermore about the local beer.

Pike Pub & Brewery1415 First Avenuewww.pikebrewing.com

A family-owned pub in Pike Place Market,where you can experience a wide range oflocal and international beers. Hoppy Hour isfrom 4pm to 6pm Monday to Friday. TheMarket also features numerous Irish pubs,such as Kells and the Owl & Thistle, and barssuch as Shea’s Lounge with views out to sea.

Shopping

Nordstrom500 Pine Stshop.nordstrom.comNordstrom can trace its origins back to 1901,when it was founded by a Swedish immigrantand sold just shoes. Today, its flagship depart-ment store in downtown Seattle covers383,000 square feet and sells men’s,women’s and children’s fashions, shoes, cos-metics and accessories. Nearby is PacificPlace, a mall with Michelle Obama-favorite JCrew as well as Club Monaco, BCBG andTiffany & Co.

Westlake Center400 Pine Stwww.westlakecenter.comThis mall contains a big mix of brand namestores and local traders over four stories, aswell as a food court, bistro and café. If youneed to get all your presents and souvenirs ina hurry, this is the place to come.

Elliott Bay Book Company101 South Main Streetwww.elliottbaybook.comIn the historic Pioneer Square District, theElliott Bay Book Company offers more than150,000 titles in a reader-friendly environ-ment, including used, signed and limited-edi-tion books. The family-owned store wasfounded in 1973 and also houses a café andregular author readings—see the website forlistings.

Jack’s Fish SpotPike Place Marketwww.jacksfishspot.comIf you’ve enjoyed Seattle’s seafood while stay-

ing here and would like to take some home(Customs regulations permitting), try thisPike Place Market stalwart. They will packagethe fish to give you a smell-free journey orship it directly for you. Order on the websiteor go down to Pike Place and check out thevarious fishmongers there.

Ye Olde Curiosity Shop1001 Alaskan Way (Pier 54)www.yeoldecuriosityshop.comIf you’re really stuck for a souvenir, try thestore that some call Seattle’s most famous.Buy a chocolate-covered insect, spider sta-pler, Mt St Helens ash jewelry, a joker dollar,Last Supper mints or any of hundreds ofother novelty items. While you’re there, checkout the shrunken heads, the black diamondand the fortune-telling machines.

CITY GUIDE: NIGHTLIFE AND SHOPPING

Listings provided by Managing IPVisit www.managingip.com or booth 721 for more details

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SEATTLE: NIGHTLIFE AND SHOPPING

Seattle’s CityPass costs $54 (a saving of$48) for adults and includes admission tosix local attractions: the SeattleAquarium, Argosy Cruises Seattle HarborTour, Seattle Space Needle, PacificScience Center, Woodland Park Zoo andthe Museum of Flight or Experience MusicProject/Science Fiction Museum. Buyonline at http://www.citypass.com

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM18

Live musicThe WaMu Theater near thesports fields hosts acts such asThe Prodigy, Earth Wind & Fireand Pink, but nothing was sched-uled for this week when the INTADaily News went to press. Checkwamutheater.com for updates.The Sasquatch! Music Festival istaking place at the open-airGorge Amphitheatre (east ofSeattle on the I-90) this weekend.Bands include Kings of Leon,Yeah Yeah Yeahs and The Decemberists. A pre-party takes place at the Crocodile Café on 2200Second Ave, on Wednesday. The Crocodile, a rock music institution, welcomes Lady Sovereignon Thursday, and Mike Watt & The Missingmen on Friday: details at thecrocodile.com.

Also in Seattle, catch Karrin Allyson at the Jazz Alley in Belltown and The Flatlanders,Jackopierce, Taylor Hicks and Gypsy Soul at The Triple Door in Downtown over the next fewdays. The Emerald Queen Casino in nearby Tacoma welcomes KC and the Sunshine Band onMay 22. View the Seattle Post-Intelligencer’s website (www.seattlepi.com) for full listings.

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Note that state law prohibits the sale of alcohol after 2am.

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 19

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Chang Tsi & PartnersSecuring Your Rights in A Changing China

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I’m the president of the Turkish PatentOffice and we’ve seen trademark appli-cations fall by 10% so far in 2009. But Ithink that people should invest in theirmarks even in the downturn. That waythey can turn the crisis into an opportu-nity.

Habip Asan, Turkish Patent Institute,Turkey

VVOOXXPOPQUESTION: How willthe economic downturnaffect trademarks?

India hasn’t experienced the downturnto the same degree as the U.S. andEurope. In India filings are still going upbecause awareness of IP is growing. ButI suppose incoming work may slow a lit-tle bit.

Vipul N. Bhuta, Aditya & Associates, India

If you look at the history of economiccrises, people actually become more cre-ative. The paradox is that there shouldbe more marks to register but in realitysome of these don’t get registeredbecause of budgets.

Aderemi Adekile, Royal Heritage, Nigeria

I don’t think it will affect things much.People understand that trademarks willbe important once the economy recov-ers. Clients are becoming more preciseabout budgets but they are doing almostthe same number of filings as before.

Julia N. Semeniy, Konnov & Sozanovsky,Ukraine

In the Philippines the downturn has ledto fewer filings. I expect that there willbe fewer defensive filings and that peo-ple will make more deliberate choices asto what marks to protect.

Gilbert R.T. Reyes, Poblador Bautista &Reyes, Philippines

We haven’t felt it affect us that much inAsia so far. From what we’ve heard, IP isholding up better than corporate lawgiven that there’s not much M&A goingon right now.

Samuel Seow, Samuel Seow LawCorporation, Singapore

I think people are opposing fewer marks.But of course that’s not what we wouldadvise them to do. It’s important to becost conscious but it’s also important toprotect your brand.

Tashia A. Bunch, Fish & Richardson,United States

Our clients’ budgets are getting tighter.They want cheaper fees from serviceproviders. We need to provide a competi-tive price or else we won’t win theirorders.

Junko Kanayama, Thomson Reuters,Japan

We just came out of bankruptcy onFriday – we sold the brand to a companyand we’re now operating on a strictlylicensing model. I think more businessesare moving toward the licensing modelbecause it can be very cost effective.

Colleen Sarenpa, Polaroid BrandServices, United States

It will have an especially significantimpact in South America, since theeconomies of most Latin American coun-tries are being further weakened by newpolitical regimes.

Paúl Romero Osorio, Andrade & Andrade,Ecuador

I haven’t seen any impact from theIndian angle. The value of trademarksmight have gone down, but only tem-porarily. Goodwill equals strength in acrisis.

Ramesh Mehta, Mehta & MehtaAssociates, India

From a business perspective, we’realways concerned that hasty decisionsmight create problems later on.

Bruce Hall, Pioneer Hi-Bred, UnitedStates

People should take advantage of thedownturn to protect their marks moreaggressively — and more intelligently.They should determine which are theirkey brands and consider whether to swapnational filings for a CTM. Now really isthe right time to carry out an IP audit.

Florence Verhoestraete, NautaDutilh,Netherlands

Trademarks – and IP generally – are notalways at the top of the list of prioritiesfor companies so I think they will be oneof the first things to be hit. But of courseas an IP professional I would say thatthat is a mistake.

Maria I. Ionnides, Christodoulos G.Vassiliades & Co., Cyprus

Applicants will become more cost con-scious and focus more on strategic pri-orities in terms of products and markets.But I don’t think it will affect their will-ingness to defend a mark. If there hasbeen an infringement they will still act.

Ann Levy, Bletry & Associes, France

I think it makes trademarks more impor-tant and more valuable. It forces you toretrench behind the brand. Lots ofclients are returning to their corebrands, trimming the outlying brandsand enforcing their marks more aggres-sively.

Antony J. McShane, Neal GerberEisenberg, United States

The first quarter of 2009 was at least20% to 30% better for us, so it has hada great effect on our business. If peopleare starving, they become inventive. Idon’t think the behavior of consumerswill change because of the crisis – theworst is behind us.

Rolf Claessen, dompatent von KreislerSelting Werner, Germany

VOX POP: YOUR VIEWS

INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM20

I f you registered for the Annual Meeting online, arereading the INTA Daily News on your mobile deviceor are following the Meeting co-chairs’ comments on

Twitter, you need no persuading about the way theInternet is changing your business. Tomorrow’s session onthe latest developments in Internet law and the impact ofblogging on trademarks will analyze how these changesare affecting IP practice and protection.

The issues that will be addressed are some of the mostcomplex for today’s IP practitioners, such as the legalityof keyword advertising and the business impact of socialnetworking. “Twitter and Facebook are already impor-tant for trademark practitioners,” said Glenn S. Bacal ofHolme Roberts & Owen, who is moderating tomorrow’ssession. Such social networking sites are posing a similarthreat to that from cybersquatters, with brand ownershaving to police pages to stop their rights beinginfringed.

“I had a case where one poster on Twitter used a client’strademark as a username and the content was gross,” saysBacal. He adds that Twitter’s policy on trademark abusewas “very thin” at the beginning, but in his case theoffending username was stopped and handed over to hisclient.

As more businesses and organizations use social net-working sites for building markets, relating to consumersand advertising to potential clients, problems are likely toescalate. And, says Bacal: “More companies are going torealize they should have done something early on.”

Among other topics to be discussed tomorrow are useof trademarks on the Internet, domain names and disputesover keywords, such as Google’s AdWords program. Thesession will feature Ian C. Ballon of Greenberg Traurig andDavid Franklyn of the University of San Francisco Schoolof Law, who will provide perspectives from law firm prac-tice and academia respectively.

In addition, there will be a presentation from RachelMatteo-Boehm, of Holme Roberts Owen, who is a mediaspecialist. “Media lawyers look at a lot of the same issuesas trademark lawyers but in a bizarrely different con-struct,” says Bacal. “It is helpful for trademark lawyers toget exposure to that world.”

Tomorrow’s session will also include a discussion ofblogs that cover trademark and related developments. Aswell as reviewing some of the most popular blogs, the pan-elists will look at their impact on trademark practice,including the more rapid dissemination of information, thechallenge to traditional sources such as textbooks and theencouragement of debate. Bacal said blogs have become

more popular in trademarks than in many other areas oflaw: “Most IP lawyers see themselves as having to be morecutting-edge. It’s the nature of the practice.”

But he added that blogs are also a “double-edgedsword,” potentially opening their authors up to liabili-ties. This is particularly true for legal practitioners, asopposed to academics, he said, as opponents in disputesmight use comments made in blogs against the bloggers.

“You’ll definitelycheck to see whetherthey’ve made a state-ment that’s inconsis-tent with a positionthey’re taking. If youhave a chance, you’lluse it.” ■

PREVIEW: INTERNET AND BLOGGING

WWW.MANAGINGIP.COM INTA DAILY NEWS TUESDAY, MAY 19 2009 21

New online trademark issues to be discussedJames Nurton previews a session tomorrow that will look at the latest developments affecting brands online, as well as the issues raised byblogs that write about trademarks.

Trademark owners who wish to stopcompetitors using their brands askeywords to bring up advertisementswon an important victory lastmonth, after the US Court ofAppeals for the Second Circuit saidthat Google’s use of a company’strademarks in selling trademarkedwords to advertisers is “actionable.”

The dispute arose in 2004 whenRescuecom, a company that offersonsite computer services and sales,accused Google of trademarkinfringement, false designation oforigin and trademark dilution forallowing Rescuecom’s competitors topurchase its trademark as a keywordin Google’s AdWords program. TheAdWords program allows advertisersto purchase certain keywords thatwill trigger their ads when a Googleuser conducts a search for that key-word.

The question of whether the saleof words on the Internet in the formof sponsored links and keywords canbe trademark infringement has divid-ed courts. Until the Rescuecom deci-sion, some practitioners had seen theSecond Circuit as out of step withother US appeals courts, though thecases it had previously dealt withhad rather different facts. In Europe,courts have also struggled with key-word advertising. Courts in Austria,France, Germany and theNetherlands have referred questions

to the European Court of Justice,which is expected to give its opinionson the cases within the next twoyears.

Rescuecom claims that Googlesuggested its trademark to its com-petitors as a keyword, causing thesearcher “to believe mistakenly thata competitor’s advertisement (andwebsite link) is sponsored by,endorsed by, approved by, or affiliat-ed with Rescuecom.” The USDistrict Court for the NorthernDistrict of New York dismissedRescuecom’s appeal, citing the NewYork Court of Appeals’ decision in1-800 Contacts v WhenU.com,which involved pop-up advertise-ments generated by keyword search-es.

In that case, the Court ruled thatthe ads did not constitute “use incommerce,” as required under theLanham Act to prove trademarkinfringement. But on April 10 the USCourt of Appeals for the SecondCircuit said that it disagreed with thelower court’s reading of the 1-800case. The decision said: “In contrastto 1-800, where we emphasized thatthe defendant made no use whatso-ever of the plaintiff’s trademark, herewhat Google is recommending andselling to its advertisers isRescuecom’s trademark. Second, incontrast with the facts of 1-800where the defendant did not ‘use or

display,’ much less sell, trademarksas search terms to its advertisers,here Google displays, offers and sellsRescuecom’s mark to Google’s adver-tising customers when selling itsadvertising services. The Court there-fore deemed Rescuecom’s claimsagainst Google “actionable” andremanded the case for further pro-ceedings.

A spokesperson for Google said:“We are disappointed with thisearly-stage decision, but we remainconfident that our trademark policystrikes the proper balance betweentrademark owners’ interests and con-sumer choice. These claims are with-out merit, and we will continue todefend vigorously against them.”

Rescuecom CEO David Milmansaid that the company is happy withthe decision and that “it will go along way toward protecting the sig-nificant investment companies likeRescuecom make in developing theirbrand names on the Internet.” Headded: “This decision completelydiscredits Google’s argument that itshould be permitted to auction offthe most well-known trademarks inthe world to the highest bidder,regardless of how doing so may con-fuse consumers.”

In-house counsel Edmund JGegan acted for Rescuecom andMichael Page of Keker & Van Nestrepresented Google.

Keywords: the Rescuecom case

Online resources

http://thettablog.blogspot.comhttp://www.trademarkblog.comhttp://www.likelihoodofconfusion.comhttp://spicyipindia.blogspot.comhttp://www.ipkat.com

One Free 2009 US & International Trademark LawHandbook – Available in August 2009 (3 total)• Robert Boad (BP)• Thea Jokerst (Amazon)• David Gooder (Brown-Forman)

One Free INTA Program Registration – ExcludesAnnual Meeting & Leadership Meeting (1 total)• Guido Baumgartner (Coty Prestige)

One Free 2010 INTA Annual Meeting Registration –Boston, MA, USA (1 total)• William Cohrs (Exxon Mobil Corporation)

All winners will be contacted post-Annual Meeting.Congratulations!

INTA’s academic members became students for the day when they raised questions following talks given by David S. Gooderof Jack Daniels and Mike M. Yaghmai of eBay at the Professor Breakfast yesterday. 2009 In-House Counsel

Reception Raffle Winners

H K Acharya treated their guests to Indiangifts at a reception in the Roosevelt Hotel.Arochi brought Mexican glamour to theFairmont Hotel for their reception to cele-

brate their 15th anniversary.BATMark welcomed guests to the chic ball-room of the W Hotel.Bereskin & Parr had their reception in thegrand surroundings of the Northern Lights

Dome room at the Arctic Hotel.Bircham Dyson Bell held their reception inthe Twist Restaurant and Lounge. Guests

were treated to canapés and a sight of the bar’sfamous discoball pig hanging from the ceiling.

The Boult Wade Tennant party was heldamong the inspiring exhibits of the Canliss

glass gallery.Guests at Brinks Hofer’s reception at JilliansBilliards were able to unwind while playing

pool, table tennis and arcade games.Cassels Brock hosted a musical reception atthe funky downtown Triple Door Musiquarium. Davies Collison Cave held their Australian-themed reception on the roof terrace at the

Red Lion Hotel where guests mingled with wildlifefrom down under.

IP bloggers from around the world gatheredin the stunning waterfront offices of Gibson

& Dunn.CT Corsearch took their guests to the ballgame with exclusive seats and hot dogs

included. One lucky guest even got to throw theopening pitch.

Speakers from Fosters Group, Microsoft,LEGO and VeriSign discussed the latest

issues affecting brand owners online at theMelbourne IT breakfast.

Fitzpatrick Cella’s partiers were invited to aharborside reception at the Waterfront

Seafood Grill at pier 70.The Union Station Hall offered an airy recep-tion for Fross Zelnick’s guests who enjoyed

food and wines in spacious style. Attendees rounded off their Sunday night atthe Loeb & Loeb dessert reception at Olive 8.Guests at MBHB’s reception in Fado’s Irishpub enjoyed a choice of dozens of imported

beers on tap as well as live music.

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INTA DAILY NEWS TUESDAY, MAY 19 2009 WWW.MANAGINGIP.COM22

Yesterday’s receptions

Learn about counterfeiting issuesaround the world and how theyaffect consumers, businesses andgovernments. Visit INTA’sAnticounterfeiting Booth and ourmember experts to learn more aboutthese issues and INTA’s approach toanticounterfeiting in these regions!

Middle East, Africa & South Asia

11:00am Shwetasree Majumder,Fidus Law Chambers

12:00pm Shravan Kumar Bansal,United Overseas TradeMark

1:30pm Faisal Daudpota, Al-Tamimi & Company

2:00pm Charne le Roux, Adams &Adams

Europe, Eastern Europe & CentralAsia

3:00pm Riccardo G. Cajola,Cajola & Associati

INTAAnticounterfeitingBooth

This free luncheon 1:30pm –3:30pm today is exclusively for In-House Counsel attendees.

Enjoy lunch and a great networkingopportunity with other in-house coun-sel, as well as a presentation on FiveStrategies and Some Simple Tips forCredible Green Marketing withImpact by Jacquelyn Ottman, founderand CEO of J. Ottman Consulting Inc.(New York City), the foremost expertson green marketing in the U.S.

If you did not register for this lunch-eon in advance, simply come toGrand Ballroom C of the SheratonSeattle Hotel & Towers by 1:15 p.m.

But don’t come late! This is a limit-ed seating event and the remain-ing seats will be offered on aFIRST-COME, FIRST-SERVED basis.

CORRECTION: In yesterday’s article on Building your brandin the BRIC economies the wrong photo accompanied aquote by Mario Soerensen Garcia of Soerensen GarciaAdvogados Associados. We apologize for any confusioncaused.

Make your voice heard!Attend today’s meeting with ICANNImplementation Recommendation Team(IRT) members on new gTLDs, from1:15pm to 2:45pm in Ballroom 6A.

Space is still avail-able for the In-HouseCounsel Luncheon!

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Today’s Schedule: Tuesday, May 19, 2009All Events take place at the Washington State Convention & Trade Center (WSCTC) unless otherwise indicated.Consult the Final Program for times and locations of invitation-only events.

7:30 am – 5:00 pm REGISTRATION Hall 4D Skybridge7:30 am – 5:00 pm HOSPITALITY Hall 4B/C8:00 am – 10:00 am TOUR BOOTH Hall 4D Skybridge8:00 am – 10:00 am BREAKFAST TABLE TOPICS Rooms 602-6048:00 am – 10:00 am COMMITTEE MEETINGS

ACEC – European Union 204Enforcement — Discovery Practices and Procedures 307Membership Services Committee Rooms 619-620Nontraditional Marks (NTM) Full Committee (8:00am – 8:30am) Room 611NTM — East Asia & Pacific Subcommittee (8:30am – 10:00am) Room 308NTM — Europe & Central Asia Subcommittee (8:30am – 10:00am) Room 201NTM — Latin America & Caribbean Subcommittee (8:30am – 10:00am) Room 301NTM — Middle East, Africa & South Asia Subcommittee (8:30am – 10:00am) Room 211NTM — North America Rooms 616-617

9:00 am – 4: 00 pm EXHIBITION HALL Hall 4E/F10:15 am – 11:15 am Latin America Council Room 20410:15 am – 11:30 am CONCURRENT SESSIONS

CT01 Winning Strategies for Depositions in U.S. Trademark Cases Ballroom 6ECT02 Trademark Ethics 201 — Investigate This! Is it Legal? Is it Ethical? Ballroom 6CCT03 BRIC (Brazil, Russia, India and China) — Looking to the Future of Protection, Enforcement and Exploitation Ballroom 6BIT01 Sports and Entertainment Industry Breakout — Reality TM Ballroom 6AWT01 Mediation Workshop Rooms 606-607

11:30am – 12:30pm Europe Council Room 61511:45 am – 1:00 pm CONCURRENT SESSIONS

CT20 “Looking for the Truth” — Trademark Portfolio Audits and Due Diligence Ballroom 6ECT21 Getting in Shape for Global Design Protection Rooms 606-607CT22 Recent Developments in U.S. Trade Secrets, Copyright and Right of Publicity Law Ballroom 6BCT23 Just Pretend They Are All Naked — How to Be a Better Public Speaker Ballroom 6CIT20 Consumer Goods and Retail Services Industry Breakout — Parallel Trade and Exhaustion of Rights in the Consumer World: What Does the Consumer Want? Ballroom 6A

1:15 pm – 2:30 pm ICANN IMPLEMENTATION RECOMMENDATION TEAM PUBLIC SESSION Ballroom 6A1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS Rooms 602-6041:15 pm – 3:15 pm COMMITTEE MEETINGS

ACEC — East Asia & Pacific Subcommittee Room 211Adjunct Faculty Special Interest Group Room 612Enforcement — Preliminary Relief Subcommittee Room 203Parallel Imports Committee Room 201Publications Committee Room 206TMR International Annual Review Task Force Rooms 619-620TOPC — China Trademark Office Subcommittee Room 305TOPC — Madrid System Subcommittee Room 208

1:30 pm – 3:00 pm IN-HOUSE COUNSEL LUNCHEON Sheraton Seattle Grand Ballroom C3:30 pm – 4:45 pm CONCURRENT SESSIONS

CT50 Law Firm Best Practices in Trademark Clearance, Prosecution and Portfolio Management Ballroom 6ECT51 Anticounterfeiting — Redefining the Battlefield Ballroom 6CCT52 Regional Update: Europe — Trademark Use and Abuse Ballroom 6BIT50 Internet Industry Breakout — Trademarks and the Web 2.0 Ballroom 6AWT50 Market Evolution and Brand Collision — Implications for Brand Owners of Nature of Goods and Services in an Evolving World Rooms 606-607

3:30 pm – 5:00 pm STUDENT PANEL PRESENTATION Sheraton Seattle Willow Room3:30 pm – 5:30 pm COMMITTEE MEETINGS

ACEC — Eastern Europe & Central Asia Subcommittee Room 307China Bulletin Editorial Board Room 202Enforcement — Monetary Remedies Subcommittee Room 203Enforcement — Trade Names Subcommittee Room 305TOPC — Asia-Pacific TMO Relations Subcommittee Room 211TOPC — Latin America TMO Relations Subcommittee Room 301TOPC — OAPI/ARIPO Subcommittee Room 308TOPC — OHIM Subcommittee Room 615TOPC — USPTO Subcommittee Room 3BRegular Member Committee Room 612

5:30 pm – 7:30 pm YOUNG PRACTITIONERS & LAW STUDENT HAPPY HOUR Sheraton Seattle Aspen Room