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INTA seeks new amicus opportunities

Amicus curiae filings can have a persuasive effect on courts in complex trademark cases. James Nurton examines the work of INTA’s International Amicus Committee and summarises some of its recent activities

Wanted: innovative, challenging trademark cases; must affect brand owners in a fundamental way and raise novel points of law; submissions from emerging jurisdictions preferred. That is the notice that could be attached to the International Amicus Committee, which is responsible for selecting cases where INTA should intervene, and then drafting briefs for the relevant court.

U.S. Subcommittee Chair David Bernstein of Debevoise & Plimpton says the Committee has “definitely been more active in the past few years” but adds that it is constantly looking for opportunities to file more briefs, especially in jurisdictions where there is not a long history of amicus curiae (friends of the court). In the past year, briefs have been submitted in Canada and the EU as well as the U.S. (see box) and Committee Chair Ayala Deutsch of NBA Properties, Inc. says she is keen to see activity in Latin America and Asia as well.

“INTA members should be thinking about this in the same way as people on our Committee,” says Deutsch. “We particularly welcome informal outreach to INTA staff or to our subcommittee chairs.” INTA’s website includes a page where members can submit cases that they think would be appropriate for an amicus submission, but interested observers or even the parties themselves can also approach Committee members directly. (If a party in the case contacts INTA, it needs to notify opposing counsel.)

All suggestions will be considered rigorously—“We’ve had some very spirited debates,” says Deutsch—before a recommendation is made to the Executive Committee. That group may adopt the Amicus Committee’s recommendation, decide not to file or even take a different position. “I can think of two specific examples where the Subcommittee recommended one thing and the Executive Committee did it differently,” says Bernstein. “They’re our client and they represent the INTA membership, so we do what they want.”
One point to note about the whole process is that it is confidential: Committee members will not discuss the merits of submissions outside of their meetings and if a decision is made not to file a brief, no one outside of the Committee will ever know that a request was made.

Brand owners’ interests

So what kinds of cases is INTA looking for? Committee Vice Chair Anna Carboni of Powell Gilbert says the Association is “particularly interested where a court is veering towards a decision adverse to brand owners.” She stresses that in Europe this generally means cases that have an impact beyond a single party or a single country. The Nokia case, for example, concerned what role the EU should play in tackling the global trade in counterfeits.

Bernstein adds that the most effective interventions are where the brief delivers on its title to be “a friend of the court.” He explains: “A lot of briefs are filed as friends of the parties. Judges don’t find those helpful or persuasive. Trying to be a friend of the court or a friend of the law is the best way to think about the legal problems.” Deutsch adds that INTA must not promote, and must not be perceived to be promoting, the interest of any particular party in the case, but instead must put forward “the perspective of the trademark community on the legal issues.” This principle is particularly noticeable where both the parties in the case are INTA members.
In some instances, INTA has already agreed on a policy on a particular issues. This makes it easy for the Committee to write a brief, says Bernstein: “The hard thinking has already been done.” Examples are the amicus briefs in the Starbucks and Levi Strauss cases, which both concerned dilution—something INTA has a well-developed view on. By contrast, a number of recent cases where the Association has filed briefs, such as Rosetta Stone v. Google and Tiffany v. eBay involve new issues where there is no established policy and the Committee needs to discuss the issues raised in the dispute. Sometimes this work can be useful, even if a brief is not filed, says Deutsch: “An issue might come up in a brief we’re considering filing. We may not file it but the thinking might help for the future.”

How to get your case heard

Bernstein estimates that in about 50% of cases the Committee will decide that an INTA intervention is warranted, so it is well worth making the effort to suggest relevant disputes to consider-particularly if you are active on another committee that believes the issue raised is important.

But there are a few tips to bear in mind. First, the Committee is already likely to be aware of a case by the time it gets to a high court, such as the U.S. Supreme Court. Increasingly, therefore, INTA is considering filing briefs in U.S. Federal Courts of Appeal and even state courts, says Bernstein: “Our view is that important law is being made before the case gets to the Supreme Court.” Carboni adds that in Europe the most interesting cases are often those that result in referrals being made to the Court of Justice of the EU but that, in such cases, it is normally necessary to seek to file the brief before the national court.

That highlights a second point to remember: get in early. Normally there is a deadline after which amicus briefs cannot be filed. It means observers need to know about a case early on in the proceedings and present it to INTA as soon as possible so that the relevant Subcommittee can review the arguments in good time.

Third, and most importantly, says Deutsch, consider whether the case raises issues in areas where INTA is already active, such as dilution and online counterfeiting, or whether it affects statutes or treaties where the Association has been involved. INTA will not intervene on questions of fact, so the legal principles at stake have to be clear. “We’re ready to swing into action when the right case comes up,” says Deutsch.

She adds that the Committee is particularly keen to hear from members in countries that do not have a long tradition of filing amicus briefs. There may be scepticism among some judges about accepting amicus filings, but once they realize how they are intended to help, and that INTA represents brand owners worldwide, you may be surprised how receptive they will be. “I think there’s a recognition that if there’s an important trademark issue then if anyone should intervene, INTA should,” says Carboni.

Some pending cases in which INTA has filed briefs

Fleischer Studios Inc. v. A.V.E.L.A., Inc. (U.S., 2011)

INTA requested that the U.S. Court of Appeals for the Ninth Circuit should rehear this case, concerning the Betty Boop character, to correct two errors in the panel’s decision regarding the doctrine of aesthetic functionality and the overlap between copyright and trademark rights. Bernstein says this is an example of a case where “an issue pops up that you don’t anticipate.” Committee members were monitoring the dispute from an early stage and reached out to the court directly. The case is pending.

Masterpiece Inc. v. Alavida Lifestyles Inc. (Canada, 2010)

INTA filed a brief calling on Canada’s Supreme Court to clarify that the fact that two parties’ marks were not used in the same geographical area on the date the junior user applied to register its mark is not relevant to determining likelihood of confusion. INTA’s counsel took part in an oral hearing some months back, and a decision is expected later this year. “The Court was very interested in what INTA had to say. Our submission made the issue much clearer,” says Committee member Ian MacPhee of Lapointe Rosenstein Marchand Melançon. “This is a good example of where INTA’s intervention can play a very healthy role in trying to clarify what the law should be.”

Nokia Corporation v. Her Majesty’s Commissioners of Revenue and Customs (UK/EU, 2010)

In this case, INTA first submitted a brief to the England & Wales Court of Appeal recommending that it refer a question to the Court of Justice of the EU on whether the EU Counterfeit Goods Regulation allows Customs authorities to seize counterfeit goods in transit. The Court of Appeal referred the case, and granted INTA leave to intervene. At the oral hearing in November 2010, the Association argued that Customs should be able to seize goods in transit. The Advocate General’s opinion was published in February, and a decision is expected in the next few months. “This is the first CJ case in which INTA was heard as an independent party,” says Carboni.

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