May the enforcement be with you
In-house counsel for some of the biggest names in their respective businesses shared their best strategies on enforcing brands in the digital environment in a panel on Monday.
Moderator Esther Ono, Turner Broadcasting’s corporate legal manager of trademarks, asked each of the five speakers to present how they would approach enforcement on one of five digital platforms, using Cartoon Network’s newly rebranded and rebooted POWERPUFF GIRLS TV show as a test case.
When a website infringes a brand, effective enforcement is all about asking the right questions. Amy Grayem, Assistant General Counsel, Marketing & Intellectual Property for Nationwide Insurance, suggested that a brand’s first step in enforcement should be a thorough internal investigation to ensure the correct identification of a the infringer. Most importantly, in-house counsel should ask: “What’s the business impact? What’s the financial impact?” Sometimes it’s really just a business decision, said Grayem, and it’s best not to pursue the infringer, “but you need to make sure you have all the information.” Armed with this information, a brand can decide whether it’s most appropriate to send a cease and desist letter to the infringer, or to the site host—Grayem’s usual preference—or, if it seems likely that the infringer will persist with other hosts, to litigate.
If a brand’s domain name is the victim of cybersquatting, the UDRP will become their best friend, according to Verizon’s Patrick Flaherty. He suggested that, in order to catch infringers, brands use watch services, in addition to performing their own searches and paying attention to third-party reports. If a cease and desist letter is not sufficient to stop the cybersquatter, Flaherty gave the audience tips for successfully filing a UDRP, such as including screenshots of the infringing site and the results of a Whois lookup of the domain name owner.
“If we don’t have a strong App Store presence, we’re missing out,” said Allisen Pawlenty-Altman, Amazon’s Corporate Counsel, and infringers would be too. On average, people check their phones 46 times a day, making mobile games and apps a critical platform on which to enforce brands. But, Pawlenty-Altman cautioned, it’s important to choose an approach with care, taking the PR perspective into consideration; if an infringer is “expressing love for our brand that isn’t really appropriate, maybe a soft approach is best,” she said.
As Facebook’s Director and Associate General Counsel (Trademark Practice), Kathleen Elaine Johnston and her team “have a dual perspective of being both an online platform and a brand owner; we’re on both sides,” she said. From her experience as a representative of either side, she encouraged brand owners to use the forms provided by online marketplaces. “They’re there because these businesses have invested in building out these programs and this is going to be the fastest way to get [the infringer’s] attention,” she said.
Geri Lynn Elias, Vice President and Intellectual Property Counsel for Kate Spade, spoke about the importance of engagement and brand protection on social media. “You cannot not be in the space at this point in time without knowing how to educate your business people” about the advantages and risks of social media, she said. Advantages—such as the speed and ease with which information spreads on social media and its immunity from a company’s control—expose companies in negative ways as well as positive ones. For this reason, she stressed that proper clearance and educating all members of a company to be its “eyes and ears” are invaluable to brand protection.