INTA politics panel

Paradigm Shift: IP Backlash—Now It’s Political

I reproduce the panel description because it is in itself a document of interest (and because, though I missed it, I heard that the conference keynote speaker devoted some time to praising ACTA)—compare the panel description to what the panelists actually said:

Paradigm shift: now it's political. Recent developments regarding ACTA and SOPA/PIPA show that intellectual property has become a hot political topic. As a result of being in the spotlight, intellectual property specialists have been stripped of their monopoly of interpreting the meaning of IP law and their credibility in the public dialogue has eroded. Activist movements which have gained creditability, have been pointing to some of these same issues for some time and have included intellectual property rights among the social systems they consider ripe for rethinking. After initial denial and a prolonged period of reluctance, the IP community is now acknowledging that they need to shed their reluctance in tackling these complex underlying issues.

This session will be devoted to discussing these changes in the IP world including the issues which anti-IP sentiment of yesterday and today have been singling out, and the issues considered important by IP experts trying to look ahead of those who harbor such sentiments. Panelists will also discuss the topic of over-protection and under-protection, and use of trademarks being presented based on empirical research of the IP system users perspective.

Moderator: Mladen Vukmir, Vukmir & Associates (Croatia)

ACTA backlash became politicized.  Is anti-ACTA anti-IP?  Some protestors carried signs: “sharing is not stealing.”  Others talked about democracy, though.  Anonymous masks also showed up in protests.  This situation requires dialogue.  EC Commissioner Kroes said that copyright might not be working, and that people were starting to hate it.  Advice: adapt or perish.

Stacey King, Richemont International Limited (United Kingdom)

Once upon a time in brand land we had control, and in past 18-20 years we’ve seen a real change in how we get our message out.  Used to enforcing by making all the decisions ourselves.  We say we have these rights; we send a letter.  Rapid change: the medium is the message.  Some mediums are hostile to particular messages.  Need to change the way in which we deliver the message even as the message stays the same.

Jessica Silbey, Suffolk University Law School (United States)

Law on the books and law in action can have huge disconnects.  Silbey has conducted numerous qualitative interviews with artists, lawyers, etc.  Role TMs play varies widely from theoretical basis/statutory basis.  Lots of variation—TM is both broad and narrow; IP is leaky, because of misfit between rules and professional practices.  Lots of overclaiming and underclaiming of rights; market actors who feel secure or face very assertive consumers tend to underclaim.  Should be more coincidence between what law says and what people do: the rules should matter; the misfit contributes to a growing disturbance/change that is politically polarizing.

Language from interviews: Language of overbreadth: the brand is “my baby.” Steve Jobs is a great example.  Would lead anyone to overreach because we protect our children at all costs. Language is everywhere once you start looking for it—like mythical copyright law, with ideas springing from the head of the creator; not historically part of TM.  Language of moral outrage—they’re using my name/identity theft.  When people describe the company value as being the brand—not the services/products provided (if we changed our name and did the same things, we’d lose 90% of our business).  Leads to idea that the brand is priceless/must be protected at all costs.  E.g., one counsel: when Sony wanted to film on our campus, though it was a true story that happened on our campus, we didn’t want them here; we didn’t want to be associated with that kind of picture.  Language of lack of choice: “had to be done” to protect the brand image.  Reputational issues analogous to ego: soft defamation claims (we don’t want to be associated with a firm like that).  Relatedly: worry about free riding without TM harm/confusion. 

Examples of underprotection: Refusing of the “marketing machine”: both individuals and companies may think that overmarketing is ugly.  Artist: I balked at the idea of “brand,” as an artist.  Worried that the brand will make us instead of “we” making the brand.  Authenticity.  Embrace branding only when message feels like “me.”  Artist now likes branding, as long as it starts with who she is and makes that her brand.  Right reasons: when the message is true to her art.  Certain market practices are more efficient safeguards of brand identity, w/o TM law.  One company talked about refraining from broad branding strategies, but didn’t have much problem because of highly structured business; competitors don’t want to come out with confusing program names.  Rational competitors will try to differentiate themselves.  Also, effective PR/invested consumers can work collaboratively on reputational policing/benefits.  The same lawyer talked about an extremely defamatory incident: name used on T-shirts and he was wondering what to do.  His customers objected and wanted action; press release said they were considering action, but never had to because the guy making the T-shirts reacted to the backlash and stopped.

Variations on brand value: the brand is everything (sells products), brand is me (persona: is that the TM owner or the user? Is that a value TM should care about?), speaking with and through brands (TM as speech, representing who the company is, again raising the question of who is speaking and who should be allowed to speak).  Very little to do with consumer search costs/goodwill traditional theory; makes TM very leaky and contributes to rule of law challenges/dissatisfaction more generally.

Anne Gundelfinger, Law Office of Anne Gundelfinger (United States)

2005 INTA task force report: less than 10 years ago, few in the public understood IP or felt personally engaged; in the digital age, consumers are not only tech savvy but may be personally engaged as never before.  Overprotection: when enforcement is perceived as unfair by a large, nonmarginal group, the rift between the legal and social norm is counterproductive for the law: we’re being ignored and to some degree for good reason.  Overall environment of perceived overreaching by IP owners; as lawyers we might distinguish between these but the average citizen connects the threads: copyright term extension; expansion of dilution; entertainment industry enforcement; challenges to fair uses; raging patent wars; dumb obvious patents; dumb descriptive TMs; TM bullying.

TM owners have been hit hard where it hurts: counterfeiting. Most of society would generally agree that counterfeiting is not good, but we’ve lost the high ground even there.  WSJ poll: readership is well-educated and leans right, believes in law & order. But even they hated SOPA, over 90%. Nonscientific but striking. 

We aren’t credible in the IP debate any more because we participated at the wrong level/are perceived as so aggressive—similar stuff with ICANN. She’s not a big defender of ICANN, but that’s why we’re losing there.  When INTA was negotiating with the engineers running the internet pre-ICANN, the engineers thought we were a big nasty group who just wanted to own everything, and that’s just gotten worse.  IP is not a legislative issue, it’s everyone’s issue: a paradigm shift to the political.  Rethink (a) substance of what we protect and (b) how we go about protecting it, use new media, interact with customers/public.  Day of nasty demand letters has passed.

Potential solutions: policy initiatives to better align TM protection with reality.  Start with the foundation: the registration system needs higher standards of distinctiveness.  Tighten up on descriptive marks, discourage over-enforcement.  Sees many companies trying to protect something descriptive, and PTO may accept it after some years of use, or maybe it’s just on the descriptive/suggestive line and gets the benefit of the doubt.  But usually enforcement is then against what’s arguably fair use, and people start to get an inflated view of their rights when they have a registration.  PTO just allowed registration of DOG GAMES for, wait for it, dog games, and that on the thinnest of use evidence.  That’s not abnormal.  Marks for web content that would’ve been presumed descriptive for books, movies, etc.—it’s not suggestive for web services even if they say it is.  Also, registrations for broad classes of goods/services where the mark isn’t really in use.  How is that behavior any different from TM trolling?  Our motives may be better, but we’re trying to draw a big line around something that doesn’t go that far.  More realism about distinctiveness—CTM is better model; no class headings, which would clear deadwood and make clearance easier and less expensive/more accessible for smaller companies.  Affirmative use requirements, to discourage squatters and trolls, and it needn’t be as complex as the US current model—Canada might be a good model of a simple use requirement.

Public education: don’t cede the ground to others.  Chilling Effects is easy to find for anyone who’s received a demand letter.  It will tell you what to do, how to hire a lawyer, what arguments are available.  Why aren’t we doing TM education basics online?  INTA’s Unreal campaign is a good example of the kinds of public education that this bar is capable of.  (Sample post from Monday: “Did you know that some counterfeit good [sic] are produced from child labor?”)

INTA has the resources.  Small companies think LegalZoom is the greatest thing since sliced bread—not unbelievably complex and expensive.  Whether or not you think LZ is good, there is certainly demand for online resources for small businesses to explain TM rights, what a C&D is and what to do, why clearance is important (many businesses don’t want to hear that, especially since the answer might be no).  Hearing that from a third party instead of a lawyer trying to sell you services is compelling.

Most fair use is pretty clear. The line isn’t that fuzzy. If people were better educated, they’d try to follow the rules.  Again, lots of other folks, like the Center for Social Media, have done a lot of great work on this: why cede the ground to others?  We could be doing that.  Why not do a project on fair use best practices in TM?  Getting some consensus among brand owners is important.  If I had an authoritative third-party resource for when clients came to me the first time screaming about brandsucks.com, would make it easier to explain that it is fair use.  Give TM owners a pass on what they don’t need to challenge to fulfill their obligations to police.

More effective PR: our key message: enforcing against infringment is not about brand protection, it is about consumer protection.  Unreal campaign is a good first example.

King: drop a bit of laziness in how we analyze and enforce our rights.  We have a responsibility as members of the bar to manage our clients. We spend so much time explaining why we need a budget to get the rights in the first place that when they then come to us and say “stop all this stuff,” it’s hard to say “here’s where you should enforce and here’s where you shouldn’t.”  Tell them when they’ve gone too far.  Counterfeiting is massive; it’s easy to hand off to outside counsel/third party, but if you don’t watch what they’re doing they’ll get lazy too and send tons of letters to everyone.

Always hear that “we have to enforce or we’ll lose our rights.”  That’s true, but not about everything.  There isn’t statutory or case law that says you have to enforce against everything.  Consumer protection focus beats brand protection focus.

Enforcement is where the public is seeing us overreach.  That’s what affects them. More aware now than ever before.  But this awareness isn’t always fully informed or accurate, which makes it dangerous for rights holders: they mix copyright, TM, and patent.  (Then, um, INTA perhaps shouldn’t encourage that?)  Creates a “brand owners are out to get you” image.  We are our own worst enemies: Hasbro promised free Nerf guns, but sent C&D instead, then sent lawyers to blogger’s house.  Nestle threatened people modifying Nestle’s logo as part of Greenpeace campaign against Nestle practices.  LV’s threat against fashion law conference at Penn using LV-like background for poster.  Other people do not think of these things the way brand owners do: all they see is bullying.  See no message behind why it was sent.

Hasbro blogger: people have extended the story past what happened—Hasbro didn’t break into my house or send police to me.  But the point is that people believed these inaccurate messages.  Blogger updated his post: Hasbro acknowledged that it was “possible” that this was “badly handled.”  (You think?)  These are techniques used for decades, but now they are visible to the public and we need to look at how they come across.  People see it as feudalism/monopolies.  Trickling up to judges, case law, things like SOPA/PIPA/ACTA. 

Important to enforce where there is a legitimate need.  Use available tools to communicate why it’s important and be smarter about enforcement.  If you lose consumer protection message, you lose the reason for the right.

Recent post on Ron Coleman’s blog: TM dilution concerns made it appropriate for LV to react to Penn Law.  But what they did do was over the top, and not good lawyering, since this was not just any C&D recipient.  What you send out could be seen by everyone—people may post the letters and ask their communities what to do about them.

Q: in terms of education, let’s talk about judges and lawyers.  People won’t move up through the ranks in-house and corporate law firms by saying no. The concept of establishing a penumbra of rights is rational—lawyers are supposed to push the bounds to achieve ends for their clients. So you need to speak to the judges.  Some judges get it, and most don’t.  Many rely on their clerks.  Judges may think TM is silly if they’re spending all day on drug cases; don’t necessarily pay a lot of attention; tendency to defer to brands they can identify.  What role for INTA in talking to judges?

Gundelfinger: we do more education with judges around the world than here.  But doesn’t agree that a lawyer’s success depends on saying yes.  She succeeded that way: when she discussed with clients the legal as well as business interests.  Courage can take you a long way.

King: if we don’t start saying no, we harm clients in the long run.

Q: talk to tech groups, get out of the TM bubble.  Transparent processes can work.  Writing bills with exclusion of tech sector doesn’t work.

Q from GSA lawyer: backlash from taxpayers.  Open Gov initiatives lead public to think that they can take our TMs.  I try to educate the public; but what do you do when a wounded Marine who’s lost two legs creates a website using the Marines logo?  Can get nasty political undertones—people think that a political party is behind it.

King: friendly, on the phone to start.  More & more people will work with you if you explain why it’s important.  But if that doesn’t work, you do have to act.

Silbey: ask why they need to use the seal.  How do you get your message out?  It requires delicate conversation.

Q: I have hundreds of thousands of vendors stealing my TM.  What am I supposed to do?  (I would like some more information about what this “theft” is.  How much of this is nominative fair use?  Why does any TM owner have a right to suppress the use of a logo by random bloggers?  Perhaps some entities are pretending to be federal agencies, and that should be stopped, but does anyone actually think this former Marine is operating an official Marines site?  As for the contractors, can’t you consider contracts?)

Q: are these panelists consistent with INTA’s public position, expressing sympathy to ACTA?

Gundelfinger: the problem ACTA etc. are trying to solve is genuine.  The internet has enabled counterfeiters in ways we still don’t fully understand.  The question is how to address the problem and who you make responsible.  Critics have legitimate concerns, and supporters do too.  These negotiations were no more secret than anything else, but the environment has changed.  (Peter Yu among others points out that this is not true w/r/t past WIPO negotiations, which were more open; certain countries preferred less open fora and thus shifted from WIPO.)

“The Other White Meat”: for a year after the controversy, the Google search results were full of reports on the parody: that’s a great way to destroy TM value.