Chung went to Cornell University, attended law school in Albany and she has worked in New York ever since. It’s no wonder that she identifies as a New York lawyer. After law school, Chung discovered a growing interest in IP litigation: “I found it really challenging. I thought it was interesting to be a part of these businesses from that perspective. It’s not real estate law, it’s not human resources – it was just different and interesting.”
She says: “There tends to be a lot of litigators in New York. I guess if you were to talk to someone who lives and works in Texas, Chicago or California, you might start to get a sense of how culturally, it’s a little bit different.”
“We work with people who do not think anything of working until midnight. We sort of joke that in New York City, we start working nearly at 10 in the morning and work until midnight while some of our counterparts in the country might start around nine o’clock and leave at eight.”
In spite of the long working hours to which she has become accustomed, Chung remembers her early days in the patent profession with fondness: “I interned at a local patent law firm. I liked it there, but I started my career as a criminal prosecutor.”
“I really wanted some litigating experience and I got that. I joined a patent boutique in New York City and between that first firm and a few others after that, I spent about eight years in total doing patent litigation. From there, I just sort of found my way to Time Inc, managing their global IP portfolio.”
After some time as a criminal prosecutor, Chung worked in private practice as a pharmaceutical patent litigator where she received the opportunity to represent New York State as an assistant counsel. Chung says: “I thought that it could be interesting and so I ended up joining the New York State (NYS) Department Of Economic Development and that is the agency tasked with helping to develop New York, bring in business and figure out ways to grow economies in different parts of the state.” Two years later, Chung moved on to Time Inc where she now works as assistant general counsel.
To date, Chung has enjoyed a mixture of legal roles both within and outside the IP profession. She has provided legal counsel to the state, private companies and public firms. The main variant between each sector, Chung says, is “the level of access you have to the public”.
As a criminal prosecutor, Chung learned more about dealing with people and different issues. While she admits that this was difficult at times, she adds: “I think it has made me a little bit more aware of the human issues and the psychology of why people do what they do. It made me a little bit more thoughtful about that.”
“Sometimes, I will get engaged in back-and-forth with an adversary and I will stop and think: ‘Why is the other side pushing so hard to do this?’ It’s probably because they have spent a lot of money to get to this point so if I want them to do what I want, I have to be cognisant of that.”
New York: the city and the state
Chung finds that people often fail to differentiate New York State with New York City: “New York City is for the most part, fine. It’s constantly growing and developing. There is always something going on.”
“You have pockets of growth around the Albany region which is where the state capital is, or around Buffalo, but for the most part, the rest of the state is pretty depressed. I worked on all kinds of economic growth development programmes to bring businesses to New York.”
During her time as assistant counsel, Chung says that she particularly enjoyed working on I LOVE NY - a “fun mark” for marketing the State’s tourism board.
Digital brand protection
At Time Inc, Chung works with a group of about 20 lawyers to manage general enforcement, the international trade mark portfolio and a small amount of patents. Time Inc, a spin-off of Time Warner, owns over 90 brands worldwide. Around 25 of these are handled by Time Inc UK and the rest by Chung.
“I have my own team – a trade mark administrator and a couple of paralegals, so we do IP enforcement in-house and then we have a handful of US firms that we will go to if things need to escalate. Abroad, I have a whole roster of attorneys that I rely on.”
In recent years, Chung has noticed an increase in online enforcement. She says: “This is probably because, though we are known historically as more of a print magazine company, our digital footprint is growing massively. This has got its own challenges.” She adds: “A lot of the problem is that it is hard to find somebody who is responsible. So much of the problem is that there is anonymity to doing things online.”
Chung says that Time Inc’s publications have been subjected to IP crime in the past: “One problem we have is that people will do something called ‘scraping’ to our websites. They create a website, create and register a domain name and basically lift our website.”
“It is hard to figure out who is actually doing it. We go to the domain registrar to figure out if we can get contact information, but often it’s very difficult.” Chung says that some hosts will shut down such websites voluntarily but in other instances, such cases can lead to Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings and require assistance from outside counsel.
Online IP court: the future?
In 2011, the CJEU launched e-Curia, an online database by which lawyers can submit and exchange procedural documents for the review of the CJEU and General Court. The success of the database has prompted some IP professionals to ask whether we could see the formation of an online IP court in the future. Chung says: “I think that is probably the direction that we are headed in. One thing to take into consideration will be how expensive it will be to do that and how easy it would be to get access to it.”
Chung highlights concerns about the enforcement of judgments handed down by an online IP court: “Is it going to be as easy as having the registrar on the other end just pull the plug, because you got the decision? What prevents the person from just doing it again? There are probably billions of permutations of every domain name, so it’s a ‘Whac-A-Mole’ problem.”
Concerning the competencies of online court judges, Chung says that patent cases will require “specialised knowledge of the legal issues and industry”. In trade mark matters, she says: “I think if someone just understands the basics of trade mark law relative to various jurisdictions and then apply common sense, I think that would go a long way.”
Ultimately, Chung says that judgments handed down in online IP disputes must be fair: “You want to always be able to balance somebody who is legitimately using a domain name, using their own marks and maybe somebody is unhappy with it. How do you deal with competitors?”
Chung used her work as Time Inc to illustrate her point: “A lot of our brands and marks are quite frankly words in the English language like ‘Time’ and ‘Life’. I don’t want to take a position that somehow, no one in the world can use those words. What I do not want is people using it in a way that confuses consumers into thinking that another product is ours or that we have an affiliation to it.”
“This is a fair way to look at it, but not everyone is going to look at it that way. It is always going to be key to make sure that everyone involved gets their proper due process and the chance to defend themselves, at least if that is what they need to do.”