The Annual Meeting of INTA in Washington, DC last month was the biggest ever, with over 9,800 people registering. In advance the Association saw 9,300 register online, with hundreds more signing up at the event. The Meeting started off strongly, with an entertaining keynote speech from Leonard Lauder (above) of The Estée Lauder Companies, and featured many packed sessions.
Lauder's sea stories
"In the Navy you don't learn from textbooks, you have sea stories instead," Lauder told attendees. The fomer chair of Estée Lauder, he joined his parents' company in 1958 when he left the US Navy. "I looked pretty sexy in that Navy uniform," he remembered.
With affecting honesty and humour, Lauder told several of these "sea stories" about the Estée Lauder brands, their successes and failures, in the hope of revealing some lessons for attendees: "In the 1950s there was a saying among advertising executives – the kind you see in the television series Mad Men today. They used to say: 'Let's get down on all fours and look at this from the client's perspective.' Well here goes," he said.
The first story described the launch of beauty brand Clinique in 1968. The company and its lawyers had searched thoroughly for similar trade marks and, satisfied there was nothing similar out there, went ahead with production. But a month before launch, the lawyers phoned to say there had been a complaint from a product called Astringent Clinique. "We looked under 'C' but we forgot to look under 'A'," said Lauder.
The mark was registered by a magazine called Cat Fancy. Lauder went to talk to the owner, who asked for 5% of Clinique's revenues in payment. The company paid $100,000 over five years instead – which has proven to be a wise decision, given Clinique's growth. "I adore that trade mark and I think the lesson is: you can never be too careful," Lauder told the audience.
He loved another brand, Origins, so much that he bought the company. But a shop in Santa Fe, New Mexico, sued, claiming Lauder and his wife had been into the shop, liked the name and launched the brand to copy it. "Now I had bought Origins two years before this woman (who cried a lot!) claimed I had gone in. But did that make me right? My lawyers advised me that I would win eventually, but only after I had lost to a jury and appealed a couple of times. It was much cheaper to settle, so we did, and I've been glad ever since. Being right is one thing, but living well is another. And I like living," Lauder told the audience, to a round of applause.
So what was the lesson from that experience? "As a lawyer it's your job to convince clients that they don't have to win every time. They are probably very successful, they probably win at business, at golf, at everything. You need to tell them not to spend all their money on you, just to be right."
|Attendees by industry type
||Attendees by region|
Google and Rosetta Stone battle
One of the most popular sessions of the entire meeting was on keyword advertising. More than 1,400 attendees crowded into the session, where Rosetta Stone counsel John Ramsey and other panellists shared their frustrations about the issue and also faced tough questions about the proper legal approach.
Ramsey could not discuss specifics of the company's closely watched case with Google over trade marks as keywords in sponsored ads, but he explained to attendees the aggravation the brand has experienced over search results incorporating the Rosetta Stone trade mark that managed to appear above links to the company's authentic site.
One example Ramsey cited was Rosetta Stone Greek, which used so-called black hat search engine optimisation (SEO) marketing techniques to drive up traffic. Examples of black hat techniques include when a site incorporates and links to words and phrases used by the trade mark owner (link farming). He added that infringing advertisers have even learned how to use geo-targeting to avoid displaying infringing ads in markets where the company has offices so as to keep them off Rosetta's radar. "Make sure you have monitors in a number of different locations and keep moving them around," urged Ramsey.
A Google representative stood up during the Q&A period to remind attendees that the search engine's ad platform has zero tolerance of counterfeiting, as well as pro-active tools for weeding out bad actors. "You can ask us to monitor your trade marks in ad text and we will take down ads that infringe," said the Google attorney.
|The keyword advertising panel|
She was followed by Professor Rebecca Tushnet of Georgetown University Law Center, who challenged the panel to explain why Rosetta Stone is accusing Google of direct – rather than contributory – trade mark infringement in its case over keyword ads. Plaintiffs in keyword ad cases have argued that Google profits from the sale of the trade marks and is therefore directly, as well as secondarily, liable. But Tushnet asked the panel why Google is not then also liable for infringement when users click on legitimate links. "You can't have it both ways," she said.
Geoff Livingston, a marketing and search engine optimisation expert who also spoke on the panel, said: "People don't take the time today to discern quality information." This makes it more crucial than ever to take creative approaches to marketing while the US law on trade marks in keyword advertising is fleshed out by the courts. Livingston encouraged brand owners to incorporate social media on their sites to drive up Google search results. He suggested brands should engage in what he called "karmic marketing" that will inspire discussion on social media platforms about the brand and its competitors, rather than discounting or discrediting competitors.
We need polar bears
Among other sessions, one highlight was the discussion of ambush marketing. It had one clear conclusion: ambush marketing is winning. Not because the law isn't strong enough to prevent brands from hijacking physical events, but because the media by which consumers watch those events has broadened so much.
"This is the tip of the iceberg," said Bruce P Keller of Debevoise & Plimpton at the session. "In the future everyone will be watching these events on split screens, with streams from the Internet."
He was referring to the example of ambush marketing that had just been given: Coca-Cola's campaign of polar bear characters reacting live to the Super Bowl through a dedicated website, CokePolarBowl.com (right). Pepsi was the official sponsor for the American football game this year, but Coca-Cola's bears proved so popular that they upstaged their competitor. The two bears, each supporting a different team, reacted in real time to the game – and even left the room when an ad for Pepsi came on. Coke, which has 534,000 Twitter followers, saw a 12% increase in Twitter activity during the game.
That campaign was seen by the speakers as something of a retaliation for Pepsi's successful football advert during the 2010 World Cup in South Africa. The video, in which players such as Messi and Drogba played on a pitch created by hundreds of South Africans, was designed just to play online and became incredibly popular.
With that kind of competition between big brands, strong ambush marketing laws – such as those introduced by the UK ahead of this summer's Olympic Games – are just one tool for brand owners. Everyone needs their own social media campaign.
Surfer Dudes, Bull Run and Craig Ditt
Strategies against counterfeiting were discussed across the Annual Meeting. In one session, a hypothetical story was used to discuss potential approaches.
Lawyers at the regional update session considered the trade mark woes of a fictional business, Lami, which had grown from being a small T-shirt-making operation endorsed by the star of a California-based TV show about surfers, to a company that makes cufflinks, shirts and ties – as worn by Ditt in a career-reviving show about Wall Street traders.
Moderator Ravi Ravindran of Ravindran Associates explained how the company had registered its mark around the world in the 1970s for T-shirts and that the registrations have been maintained by a diligent trade mark attorney.
Unfortunately the attorney had not been instructed to advise the company on its decision to refresh its mark, and consequently the updated version of the Lami mark on its new products had not been registered.
After the company's CEO discovered fake versions of its products on sale in Phuket during a holiday in Thailand, he ordered Joe Blow, the company's lawyer, to stop the counterfeits. But investigations revealed fakes on sale not just in Thailand but across southeast Asia – in part due to the cult status of Crad Ditt in the region.
Nettaya Warncke of Domnern Somgiat and Boonma Law Office Ltd said that civil action in Thailand could cost far more than the company would get back in damages and that it was unclear whether criminal law provisions could be used to protect marks on goods for which they are not registered. "It's a complicated area of the law and the police don't like complications," she said.
The scenario that would help Lami most, said Warncke, would be if Blow discovered the counterfeiters using the Lami mark on T-shirts, for which it does have a registered mark. If so, they could ask the police to conduct a raid, allowing officers to seize the rest of the knock-off products.
Barry Yen of SKYS in Hong Kong outlined the rules in Hong Kong and Singapore, explaining that their common law systems would require Lami to produce plenty of evidence that its mark is well known if it wants to take action under passing-off provisions. He added that Lami may be able to assert copyright law, and explained how Hong Kong Customs officials can help in the fight against fakes.
Kenneth McInnes of Hodgkinson McInnes Patents in Australia had some advice for Joe Blow about the rules in his home country and in Indonesia – a country with a population of some 250 million people, making it one of the most important markets in the region.
"In theory Indonesia has TRIPs-compliant laws that should do the businesses, but in reality that's not the case," he said. "Border protection is not very effective. It's better than it was 15 years ago but it's up to IP owners to take self-help measures."
McInnes advised Blow to take a pragmatic, commercial approach to tackling counterfeits in the country, given the high number of small players, the practical difficulties of bringing a civil action and corruption within enforcement agencies. "Lami's best option will be to wallpaper retailers with warning letters," he said.
|INTA community projects|
| As well as the sessions at the INTA Annual Meeting, several community projects and campaigns served as highlights. INTA launched its Unreal campaign, intended to educate teenagers about the dangers of counterfeiting (see page 90) and there was a well-attended blood drive.
On Saturday, attendees also helped prepare kits aimed at providing care for people living with AIDS. So what goes into a World Vision kit? Aside from antibacterial soap, washcloths and latex gloves – a little bit of care: each kit comes with a handwritten note from the kit builder to the caregiver.
"What we've found is the caregiver grabs that note and keeps that note and are so touched – not only that someone took time out of their day, but also has encouraged them to keep going," said Jeff Fields, World Vision's corporate relations senior director in the US.
INTA partnered with World Vision for its Volunteer Service Project. Headquartered in Washington State, World Vision is a humanitarian organisation that provides emergency assistance to communities affected by disaster, civil conflict and poverty.
Unable to meet the demand with general donations, World Vision started hosting kit-building events throughout the US. "We thought of turning it into a team-building event," Fields said. "At sales meetings, people take an hour out of that and allow staff to really do something that's meaningful that will touch them and tug at their heartstrings. It's a feel-good event where they can come away thinking, 'we did something'."
Since 2006, the Caregiver Kit programme has assembled about 317,000 kits sent around the world. The kits treat those living with AIDS and protect an estimated 77,000 community-based volunteer caregivers.
World Vision coordinates the bulk purchase of kit contents. Once complete, the kits are taken to World Vision's global distribution centres, where a team determines where to send them. Most likely, the kits from Washington will go to Zambia, Uganda, Swaziland or Zimbabwe.
This year seemed the perfect time to host a kit-building event at the Annual Meeting, said Fields. "Here, we know we're going to be touching multiple companies … At the least, we can get somebody interested and have them be a champion for us."
World vision kit contents
- 10 bars of antibacterial soap
- 1 container of petroleum jelly
- 1 box of disposable latex gloves
- 1 tube of antifungal cream
- 1 bag of cotton balls (200-count)
- 4 colored washcloths
- 1 notebook and 4 pens
- 1 LED flashlight with batteries
- 1 bottle of acetaminophen
- 10 oral rehydration salt sachets
- 12 water purification packets
- 1 regular kit or refill pack
- 1 handwritten note to the caregiver