What’s your background?I went to undergraduate school at Dickinson College in Carlisle, PA, U.S.A. and I knew I wanted to go to law school. My father is an attorney and worked in the music industry and in the copyright area. He represented a lot of rock and roll bands so I got to go to concerts like the Rolling Stones. Little did I know then that so many years later I would be back at arenas all over the US and beyond for a completely different kind of entertainment, live family entertainment. I’ve almost come full circle.
I was interested in the concept of IP from quite a young age thanks to my dad and at college I asked one of my professors if he would write a letter of recommendation to law school. He said: “A lawyer? No you don’t want to do that. If you want a recommendation, get an internship first and see if you like it.” So I asked for his help and he had a friend who was an attorney in Harrisburg, PA where I did an internship. After that I still wanted to be an attorney so he wrote the letter.
At law school I was on the law review and one of my articles was on copyright law. When I graduated from law school, I was interested in practicing IP law and wanted to be in D.C. I joined a boutique IP law firm and the major client was the U.S. Olympic Committee. So I had the privilege of working with Eric Colbert, a very well-respected IP attorney. It was very interesting and at that time I was the only female attorney in the firm.
Then I moved to another firm, Bishop, Cook, Purcell & Reynolds, which became Winston & Strawn. At the age of 27 I did a bit of soul searching and applied to different firms and some companies. I was very fortunate to get a lot of offers and then came across a blind ad and applied. It turned out to be for Feld Entertainment Inc and that was nearly 25 years ago.
How does in-house compare to private practice?I’ve worked for several law firms, including internships, and clerked for a judge, which was an incredible experience. Working for a law firm is a prerequisite for going in-house because there are certain things that are key. It was a great experience but for me working in-house is incredible and one’s ability to be a smart in-house counsel in part depends on your experience prior. You’re a better manager of outside counsel if you’ve been one.
One of the misconceptions is that people think it’s easier to work in-house, that you’re more of a paper pusher. That is absolutely not the case with this company. It’s a very fast-paced legal practice in-house and we do a tremendous amount of substantive work and closely manage in-house counsel. The client’s needs change by the minute and it’s live entertainment so you have no clue what’s going to happen.
It’s not 9 to 5, five days a week. The hours are very long and weekends we have shows all over the world. If something happens, I’m going to get a call. You’re never off. The word boredom has never passed my lips in 25 years.
What does your role involve?I am vice president and deputy general counsel. I oversee the intellectual property but I also responsible for immigration work and do a lot of contract work for the talent. I also oversee all the general liability cases and more. The non-IP work is very large and substantive. We’re very regulated and there’s a lot of interaction with federal agencies, including the Department of Agriculture. I also oversee the government relations department.
In terms of IP, my responsibility is to protect and maintain and help promote our marks, including our biggest brands RINGLING BROS and BARNUM & BAILEY and THE GREATEST SHOW ON EARTH.
Many of our employees are promoters and they will report in to me if there are suspected infringements. We’re taking one of our circus units to Mexico and not surprisingly people seek to ride our goodwill and we’ve had to shut down two entities’ practices. When the show is in town, it’s not unusual for someone to seek to ride the goodwill in our name, and say something like The Greatest Car Dealership on Earth.
Another property we present is DISNEY ON ICE. That tends to raise more copyright issues. Feld Motorsport presents monster truck shows under the mark MONSTER JAM and that can lend itself to others seeking to take advantage of the goodwill of that name. Within the MONSTER JAM property, we have many monster trucks and each of those have a name.
GRAVEDIGGER is a very famous truck and we’ve had infringements, and stores that seek to use the name. We have to be very vigilant in watching and protecting all our marks and have registrations in the US and throughout the world. All our properties perform outside the US—we’re everywhere.
How many marks do you have altogether?We have 50 trademarks. Given the kinds of services we provide, these marks lend themselves to being infringed upon or otherwise unlawfully used. It crosses over so many industries and goods in unrelated areas.
How do you deal with it?I may hear about a potential infringement from an employee or a publicist in a particular city, or a radio station that has an ad booking. I even hear about it from my own children, who are now 18 and 22. When something comes in we will look at it and determine whether we think it’s a problem. If it is we will proceed. We don’t say if it’s small scale we won’t worry because I think that’s a very slippery slope. It depends whether it’s unlawful usage or not, rather than when it’s big or small.
I always ask myself: if I send a cease-and-desist letter, am I able and in the right to take that next step if the entity does not listen? I don’t want to send a letter that doesn’t have merit. You shouldn’t just blindly assert rights when the rights are not there. If someone is acting unlawfully, the approach is: what can we do about it? If it’s not an infringement, I’m not going to go after them.
We educate our folks internally. When we have new promoters helping to promote our show, we’ll educate them. They may run promotions with other businesses, such as local grocery stores. They are tasked with making sure the partner knows what they’re allowed to do and not do. We educate potential partners and licensees, which we have a department devoted to. Part of their job is to educate about what is permissible and what is not, and what is appropriate usage.
What about online?One can spend the entre day registering domains. You could go crazy and spend millions. It’s so evolving one can’t keep up. We analyze in conjunction with our IT department which domains are the most important. Ringling.com and ElephantCenter.com are domains we use and we direct some others to those sites, as well as common misspellings.
We have gone after entities that have registered domains that we believe are infringing our marks.
What about new gTLDs?That’s quite costly. To date we have not done that.
What’s the relationship with Disney?We are the exclusive licensee for Disney for ice shows and have been for many years. We are the exclusive producer and presenter domestically and internationally. More recently we have become the exclusive licensee for Disney Live, which are live stage shows for a younger audience.
We don’t seem to have too much of a problem with people using the DISNEY ON ICE brand, compared to other properties such as MONSTER JAM and the truck names.
Do you have problems with fans?Our motor sports clients are super devoted and very passionate about this type of entertainment. They have a propensity to post about it and there is an analysis about whether it’s commercial or non-commercial. There is a balance to make as we don’t want to discourage our patrons and we appreciate their support. On the other hand, a lot of our motor sports are shown on television so we can’t have someone showing them on the Internet without permission. It’s delicate. We’re always looking at that. Some of it is an education: someone once said to us “I love your show and I’m promoting it by selling t-shirts.” They’re really very innocent and one has to explain why it’s not ok.
From a copyright perspective, it may be that they take our artwork. Then there can be an overlap with copyright and trademark. Typically, someone will take a photograph of something of ours, like a truck, and reproduce it. That’s both copyright and trademark infringement.We have a lot of licenses. We have a strong relationship with Mattel for example so we can’t let someone else make toy trucks using our rights.
How big is your team?We have a general counsel and two attorneys who do our international work. We have two other attorneys who do contract work and other legal issues. Many outside counsel are surprised at the amount of work done in-house and the substantive nature of it.
What kind of work do you go to outside counsel for?I want an attorney that’s really interested in our business. We’re a unique company in my mind. We’re providing entertainment services and the goods are an extension of that. It’s important for me to work with an attorney who knows the business and is willing to learn the business. One can advocate best when one believes in what one’s advocating. For example, if you have a concern about animals in the circus, I don’t want you to work for me. This is who we are and you have to accept us as we are.
Also I’m hiring the attorney not just the firm. It’s the lawyers that are the firm. The firm is a secondary consideration. I want to be able to speak shorthand to the attorney: here’s my issue, I don’t want a 40-page memo, I want someone I can get a quick answer from if I need it. The firm that respects the in-house substantive knowledge we have and doesn’t try to tell us what we know. It’s important for outside counsel to recognize where they have expertise and can add something and where we have the expertise.
In-house I’m smart enough to know when I don’t have the expertise so the role of outside counsel can be larger or smaller depending on the issue.
