Vote on conflicts
Attendees yesterday indicated via red and green paddles whether or not they thought various hypotheticals posed a conflict for outside counsel, during an interactive session titled Ethics: Conflict Issues in Trademark Selection, Clearance and Prosecution. Audience members voted on whether they thought James Cady of Pillsbury Winthrop Shaw & Pittman should bow out of representing one of the fictional companies seeking his help to register the same or similar marks. The hypothetical involved Veni Vidi Vision, which sought to register the mark SHAZOOM in the U.S., and BSquared, which owned the mark SHAZOOM in the U.S.
Tiki Dare of Oracle played in-house counsel for Veni Vidi Vision and Kelly Smith played in-house counsel for BSquared. Audience members from Israel, Italy and South Africa provided additional perspective, since rules governing conflicts vary by country. The takeaways for in-house counsel? 1) Be sure to communicate what potential conflicts will and will not be tolerated; 2) identify all competitors who create an automatic conflict; and 3) make enforcement strategies clear. Outside counsel whose clients are staying silent on these points should “be proactive” in asking about them, said Cady.