This content is from: Trademarks

Interview: Jeremy Kaufman, Fox

Fox must strike a delicate balance between protecting its IP and not prompting backlashes from fans. Jeremy Kaufman explains the entertainment giant’s trademark strategy.

Jeremy Kaufman, FoxHow long have you been at Fox and what is your background?

I have been at Fox for five-and-a-half years. I am a vice president in the intellectual property group. Before that, I was at Disney doing both entertainment law for a short bit of time with their prime time television production company and then with their IP group. I was at Disney for three years, and then before that in private practice for five.

What does the role entail?

We have six attorneys in the IP group, which is led by INTA Past President Mei-lan Stark. Of those six attorneys, one is a patent attorney and the rest of us are copyright and trademark attorneys.

In my role I work mainly with our television businesses and our consumer products group. I also manage Fox’s anti-counterfeiting efforts for our consumer products group. I view the role of in-house counsel as being a partner within the business units to help them fulfill their creative and business goals while hopefully not getting into too much trouble. That means not only helping them recognize and gauge risk, but working together with the business people to find ways to mitigate the risks so that they won’t hamper the business. As you can imagine, in the entertainment industry I have to work with some creative types such as a film director and a television show runner who can become wedded to a particular aspect of their project that might be risky. Telling them no is rarely an option. So that process of finding creative solutions that don’t impinge on their artistic visions is probably the most rewarding part of my job.

How many brands then does that mean you are dealing with?

Probably too many to count. We are in the midst of pilot season. That means over the past three months we are creating 20 new shows, which means 20 new brands and that’s just the past three months. It is always in flux because what was once the hot show 10 years ago there is no market for any more. So we have this constant turnover. But that means we are always busy and have interesting work to do.

Ultimately, Fox is in the business of great story telling. That’s what we create and sell and that’s a purely an IP business. So securing and licensing and enforcing our trademark rights is paramount to our business, whether we are going to license to broadcast a new television series or create a “Simpsons” theme park attraction or sell a “Sound of Music” DVD the value of those transactions are largely derived from the underlying intellectual property. Our IP department is asked to consult on an incredibly broad array of business issues and that is the fun part.

What does Fox use outside counsel for?

Our in-house department is all U.S. attorneys. That means for our international practice, which is always growing, it seems, we have to rely on our international counsel for really all aspects of the trademark practice—clearance, prosecution and enforcement. We also rely on outside counsel for spillover clearance work during busy times and of course to handle litigations that come up from time to time.

When assessing potential law firms to use, what are the qualities you look for?

The qualities I look for in outside counsel are, first and foremost, are they going to provide practical advice? That requires knowing our business and specialized bits of trademark law that apply to film and entertainment. That leads to outside counsel being able to provide more creative advice because it enables them to go beyond just identifying risk. It allows them to help us solve legal problems by advising on the practical business risks, or by proposing maybe business solutions to those problems

A finer point is the ability to give prompt and very concise advice. In-house counsel are just as busy as their outside counterparts and so counsel that can respond quickly and very concisely are very valued. We don’t need a detailed explanation of every single strategy, especially ones outside counsel believe are doomed anyhow.

The other thing I really appreciate about certain outside counsel is the ability to give very specific advice about risk levels and stick with that advice. I know that’s very hard to do. But it is very helpful so that we can communicate the risks to our business counterparts.

So one pet peeve of mine is receiving advice that is just too vague to be helpful. There is nothing worse than getting a memo that says there is a less than 50% chance of prevailing. That’s almost meaningless because there is a huge difference between a 1% chance of prevailing and a 49% chance of prevailing—both of those are under 50%. I know it is hard for outside counsel to give estimates, but just do it and stand by it and we’ll all be in the same boat together.

How do you balance protecting IP and not discouraging fans who may not know they are infringing?

That is one of our biggest challenges actually. We have a complicated relationship with some of our super fans because our properties can create such enormous passions in them, and that can motivate our fans to do unhelpful things. For example, with comic book or science fiction franchises like Aliens or X-Men there is an insatiable demand for the latest news on every tidbit on those franchises. That demand can result in leaks of set photos or scripts or other things that are going to be spoilers, which are called spoilers for a reason—they can spoil the viewing experience for everyone else. That is very tricky. Sometimes that is more of a security issue than anything else but it’s a challenge.

A more extreme version of how that passion can create IP challenges is with shows such as “Firefly”. The fans of that show are so moved by the series that they have on more than one occasion created unauthorized prequels or sequels to the TV series. They have written scripts and got actors and cameras and created their own filmed entertainment based on our intellectual property. Dealing with those situations is challenging because on the one hand we just can’t allow those infringements to happen because our right to do prequels and sequels are among the most valuable we own, but also we don’t want to alienate our most ardent fans. So it is always a most delicate enforcement issue that we have to walk the line on.

What effect do you see from recent Supreme Court trademark decisions?

One of the big topics of conversation is the most recent Supreme Court case [B&B Hardware v Hargis Industries]. It basically says that oppositions before the USPTO can have a precedential effect on infringement actions in trial courts. That’s going to make us think twice about where to start challenges to trademark rights. I don’t think we have worked it through, in part because that Supreme Court case has the caveat that it is limited to just those facts in that instance. That’s something we are going to be talking to a lot of people about at INTA. Sometimes even if you say it is only to be applied narrowly over time the narrow becomes wide.

How are the new gTLDs affecting you?

We have applied for the .fox gTLD and we are excited about that. We think it presents some advantages to our business. One of those advantages is practical, which is that it provides enhanced security for our websites that will be hosted on our gTLD. We are especially conscious of that in the wake of the Sony hack and other cyber attacks on major corporations.

While there are a lot of initial upfront costs, we also think there will eventually be cost savings because we won’t need to do country code-specific registrations, we won’t need to buy domain names from squatters, and so there could be over the very long term some cost savings.

Thirdly, it could become a really valuable marketing tool. For example, we own a U.S. television network called Fox and that network is comprised of local affiliates and the way those local affiliates domain names have been created is not uniform. This provides a way to make that uniform for each single affiliate. We are also excited that we can use it as the place for a hosted store so that consumers know they are getting authentic goods in a secure and safe manner.

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