The mobile revolution is the topic of one of today’s morning sessions. As panel moderator Larry McFarland of Kilpatrick Townsend & Stockton explains, the popularity of online and mobile technologies has added many challenges for trademark practitioners.
One of the biggest issues is that while trademark practice has long been limited by territorial boundaries, the mobile online world transcends these borders, forcing practitioners to adapt. McFarland cites enforcement as one of these challenges, where a company based in the U.S. may be trying to enforce its trademarks against infringers based in some far-flung country. In these situations, rights holders have to resort to other tools to help them achieve their goals.
“Let’s say you’re trying to enforce an injunction against a user of your mobile app or site, but the user is not in the U.S.,” he explains. “If you have site T&Cs [terms and conditions agreements] that specify the terms of use and that the law of your state applies, then you may be able to enforce an injunction you got from California, even though the user is based in Eastern Europe.”
He adds: “From my experience, courts in other countries are generally willing to enforce these contractual rights, unless it’s something completely crazy.”
The global nature of the mobile space affects not just enforcement. Many of the bread-and-butter aspects of trademark lawyers, such as clearances, registrations and general strategy, have been made much more difficult. Even seemingly fundamental issues, such as whether to use trademark markings, are more difficult in the mobile space.
For example, many rights holders do not hold registrations in all the markets that they operate in. Because mobile products and the attached trademarks will almost undoubtedly cross national boundaries, one question that arises is whether the brand owner should use trademark markings. According to McFarland this can be a thorny problem, because in some jurisdictions, there are negative consequences for claiming to have a trademark when you don’t.
The open nature of mobile space also poses new problems for trademark practitioners. Infringing user-generated content is an especially difficult issue, in part because there are no bright line rules or best practices for how to deal with this type of infringement.
“Even if it is clear from an IP perspective that a certain piece of user generated content is infringing, it is important to keep the practical issues in mind,” McFarland says. “In general, you have to be cognizant of the purpose of the user generated content—is it a fan of your product, or is it commercial with the user trying to make money off your brand?”
Because of the range of motivations behind user generated content, there is no one-size-fits-all approach to the issue. Instead, each case requires careful analysis of these realities. For example, the Internet is filled with stories of rights holders facing a backlash when enforcing their rights against infringing user-generated content. Such considerations, McFarland says, have to be part of the process when deciding the next move.
However, even if these considerations may stop brand owners from adopting draconian or overly aggressive enforcement practices, he says that brand owners shouldn’t be scared to protect their marks. As he notes, it is almost inevitable that big companies will become the subject of negative Internet publicity. The role of trademark lawyers is to have the tools to analyze these cases and to act accordingly.
CT03 Trademark Rights in a Mobile World starts today at 10:15 am in Room 1AB.
EU Digital Single Market
The European Commission is holding a consultation on the Digital Single Market, which has numerous implications for trademark owners. These include a prohibition on geo-blocking (redirecting consumers to national sites) and consumer access to pricing and promotions across all EU member states.
Toe Su Aung, co-founder of Elipe and INTA Past President, says: “We see a major issue for brands in the shaping of measures to address barriers to the free movement of goods on or off line. The debate to date has focused primarily on copyright and without any discussion of the impact on, and future role of national trademark rights.”
The Commission’s evidence report is due to be published on the 6th, and is likely to reflect concerns among trademark owners about improving enforcement and the role of intermediaries. This is expected to be followed by legislative proposals in September, so there is still time for trademark owners to influence these measures that will define the future European market.
Aung adds: “Brand owners should continue to assess their views, using a long-term business lens, on different issues covered in the strategy and consider engaging on commercial priorities.”
