“Hopefully what all the constituencies will get from the meeting is a better understanding of the panoply of benefits they can gain from INTA,” says Carla Oakley, Morgan Lewis & Bockius partner and co-vice chair of the INTA Academic Committee. “Hopefully they walk away with substantive knowledge they didn’t have before the meeting—things they can use either in their practice, in their teaching or in their student life.”
Tailored to students and professors, today’s activities range from networking opportunities to panels featuring prominent legal commentators. An all-academic panel about functionality features professors Dan Burk, Eric Goldman and Mark Lemley—all from California law schools. “We wanted to take advantage of some of the professors who are local here and have strong reputations in the area,” Oakley says.
With nearly 430 registered this year, the number of the Annual Meeting’s academic participants has grown in recent years. The organization uses social media to reach out to potential members, with a growing segment from outside the US. Recently, INTA hosted academic-related programs in Belgium, Spain and Brazil.
“Having professor members join INTA really raises the level of discussion and debate regarding trademark issues,” says committee chair Kelly McCarthy, partner at Sideman & Bancroft and chair of the Academic Committee. “It allows the organization to gain access to their minds and get us thinking about ways to do things, new concepts, changes in the law that may not be at the forefront of our practices yet.” Conversely, INTA provides them a platform to interact with attorneys who are in the trenches. Among the day’s activities is a talk led by in-house counsel from The Coca-Cola Company and Apple.
Students, meanwhile, benefit from meeting practicing attorneys and getting a glimpse of what their careers might look like should they become trademark lawyers. This is the first Annual Meeting that includes talks about networking, resume writing and career opportunities. “This kind of practical stuff is just not being taught in law schools to a lot of law students,” McCarthy says. “Having a program like this specifically designed for law students interested in IP is a treasure.”
Committee members say getting students involved early in their careers increases the likelihood they’ll keep participating in the Association once they enter the field. “It raises the profile of the organization with the lawyers of tomorrow,” McCarthy says. “They take with them an understanding of the organization, and hopefully we’ve done well by them as students.”
A new spin on the functionality doctrine
The day kicks off with the panel “Functionality: Not just for plaintiffs anymore?” Burk, Goldman and Lemley, law professors at the University of California, Irvine; Santa Clara University and Stanford University, respectively, will address cases in recent years that have prompted academics to reassess the functionality doctrine. One such case is Rosetta Stone v. Google.
“The functionality doctrine looks at the trademark owner’s use of the mark,” says Susan Montgomery, who teaches at Northeastern University and is moderating the panel. “In Rosetta Stone, the court didn’t look at the trademark owners’ use of the mark. Instead, it looked at the way Google, the defendant, was using it. Is this a case of turning the functionality doctrine on its head?”
On his blog, Goldman explores the Eastern District of Virginia’s ruling that Google’s use of trademarks as keyword ads triggers qualifies under the functionality doctrine. The court says that keyword ads “have an essential indexing function because they enable Google to readily identify in its database relevant information in response to a web user’s query.”
“This is correct, of course, but doctrinally I think this conclusion better fits into a doctrinal conclusion that Google isn’t using the trademark as a mark,” Goldman writes. “Nevertheless, Google and other keyword advertising sellers will be thrilled if other courts accept the functionality defense.”
Burk will address Internet trademarks that are communicative and functional symbols. He proposes that these marks—he calls them cybermarks—don’t deserve to be treated as trademarks. “Such cybermarks are not merely indicators of product source, but function both as symbolic indicia for human recognition and as strings of computer code in the operation of automated search and indexing mechanisms,” Burk wrote in an article in the Minnesota Law Review. “Application of trademark law’s functionality doctrine, perhaps with some modest amendment, could begin to resolve disputes over the use of cybermarks.”
A prolific writer, Lemley teaches at Stanford Law School and is the director of the university’s law, science and technology program as well as its LLM program. INTA’s Academic Committee said the three are a natural fit for what’s intended to be a conversational event. The professors know each other and bring to the table varying perspectives. “That was the goal in constructing this panel-not only reporting the law, but getting different points of view to where the law should be going,” Oakley says. Montgomery adds that those attending the panel should ask themselves the following: Is this a pivotal development in trademark law? If so, how will it impact my practice or my trademark?
Drawing people in
Some of the day’s other highlights include a scholarship symposium where professors can develop their papers and receive feedback from other academics and practitioners. It’s the second year the meeting is holding the symposium, for the first time with participants from outside the U.S.
Students will have a working lunch led by members of the Academic Committee. The discussion will focus on student outreach programs and future programming plans. “We’re trying to get a stronghold in organizing as many law schools as possible and identifying at least one student per school to advocate participation,” McCarthy says. “These people who are showing interest to come to this program really are the ones we’re looking to go back to their schools and be advocates there.”
For professors, lunch involves briefings from in-house IP counsel. “Professors also want to remember what the day-to-day matters are because that can have an effect on policy and law changes,” McCarthy says. “It’s a good way to open up that communication.”
One of the last activities of the day is a meeting for adjunct professors. Panelists David Franklyn and J. Thomas McCarthy, of the University of San Francisco School of Law, will share teaching styles and examination techniques. “There’s a big interest in that group,” says co-vice chair Karina Dimidjian-Lecomte, partner at Casalonga in Paris and co-vice chair of the Academic Committee. “This program in particular will draw people in.”
Rosetta Stone and functionality
Rosetta Stone sued Google for trademark infringement based on Google’s practice of selling AdWords including Rosetta Stone’s trademarks to competitors.
The US District Court for the Eastern District of Virginia found that Google could not be held liable for trademark infringement, contributory trademark infringement, vicarious trademark infringement, trademark dilution, unfair competition or unjust enrichment for allowing advertisers to purchase Rosetta Stone’s trademarks to use as keywords to trigger sponsored links.
Addressing the issue of intent to infringe, the court said that Google’s approach to aggregating information and providing advertising space is “akin to a newspaper or magazine selling advertising space.” Since Google does not sell its own products, “any argument that Google is trying to palm off its goods as those of Rosetta Stone’s is unfounded,” said Judge Gerald Bruce Lee.
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