INTA: Corporate Call To Action On New Domains, Social Media, Counterfeiting

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Washington, DC – Corporations need to become more involved in the battles being fought over the internet – from expanding top-level domain names, protecting brands on social media, to counterfeiting and internet security – or they are going to be left on the sidelines as policy is created both in the United States and elsewhere, speakers at the International Trademark Association (INTA) said yesterday.

There is an “increased hostility to IP,” said Gregg Marrazzo, INTA president and senior vice president and deputy general counsel at the The Estée Lauder Companies, said during INTA’s 134th Annual Meeting. “We see more discussions of IP on social media, more stories in the news and, unfortunately, more protests in the street, especially at the intersection of IP rights and the internet.”

Murrazzo said much of the perceived “anti-IP” sentiment around the world is the result of misconceptions, particularly as they related to the user experience on the internet. He cited the Anti-Counterfeiting Trade Agreement (ACTA) as an example of good policy at risk of being rejected in the European Union, mainly over concerns that it will restrict the public’s use of the internet.

“This fear is unfounded,” he said. The EU vote on ACTA, scheduled for July, he added, has become a “more difficult vote as a result of widely disseminated misconceptions.”

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Many trademark owners and governments are also concerned about the lack of adequate trademark protection, internet security and other negative effects they believe will result from actions by the Internet Corporation for Assigned Names and Numbers (ICANN), which on 12 January opened a first window for applications for new generic top level domains (gTLDs), expected to be made public soon.

“Right now, the battle is on gTLDs, but there are battles in the coming years over control of the internet. We need companies involved,” added INTA Executive Director Alan Drewsen.

“The possibility of seeing dot-anything on the web” raises many issues for companies and trademark holders, Murrazzo added. “Cybersquatters, counterfeiters and pirates will take maximum advantage of the new gTLD programs. This is unacceptable to legitimate trademark owners.”

Leonard Lauder, son of The Estée Lauder Companies founders Estée and Joseph Lauder and chairman emeritus of the company, cited the many challenges facing brands and companies in the international marketplace, such as trademark and trade dress issues, a brand or product name meaning different things in different countries – possibly with a negative connotation – and the increasing use of symbols in place of brand names to cross language barriers.

“You have to be alert – you have to have peripheral vision when dealing with this international world,” Lauder said. “Each brand has its own DNA and its own distribution strategy.”

Trademarks and Trolling

When it comes to protecting trademarks and brands on the Internet – particularly on social media sites like Facebook and Twitter – there’s only so much trademark owners can do, a number of legal experts said.

“Social media also presents us with tremendous opportunities – it gives us additional platforms to promote our brands,” Marrazzo said. “Social media permits us to educate the public in ways that were just not available to us in the past,” he continued, expanding brands’ reach to countries and people throughout the world, of varying ages and backgrounds.

But social media also poses a whole new frontier for trademark owners to patrol. But freedom of expression and other civil liberties issues pose a problem.

“When we are in this space, we are going to have to pick our battles. We can’t fight everything” or play “whack-a-mole,” said Ellen Shankman of Ellen Shankman & Associates.

An increasing problem in regards to trolling is what’s called “non-traditional trolling,” when entities use trademark law to gain exclusive rights over words, phrases, concepts – even cultural movements like Occupy Wall Street – that should not be able to be owned. “We’re talking about owning the unownable,” said Adam Cohen of Kane Kessler, PC, in the United States.

It’s the responsibility of trademark community to strike balance between over-aggressive enforcement and legitimate trademark protection, he added.

Going after things like so-called “gripe sites” – which use well-recognizable names in negative ways in URLS (e.g., www.homedepotsucks.com), is likely not worth the time, money, or effort, Cohen added. Plus, the US Department of Commerce last year released a “trademark bullies” report [pdf] studying whether trademark owners are using their trademark rights in an overly aggressive enforcement effort, and the effect of abusive trademark litigation tactics on small businesses.

“I think most brands have probably come to the conclusion there’s not a lot you can do from a trademark perspective,” Cohen said. “It is a fact of life” and going after such hijackers too aggressively is more likely to be viewed as an attempt to control public discourse about their brands in the courts. “That has not been well-received, judicially,” Cohen added. “You need to really keep in mind how far to take your trademark rights.”

Another trend in trademarks being seen across the world is an increase in registrations – and attempts at registrations – of non-conventional trademarks such as three-dimensional designs. These designs can include colours, holograms, scents, tastes – even certain building designs.

But even well-recognised global brands like Coca-Cola are having a hard time convincing patent offices to register three-dimensional image of a product as a trademark. The problem, in most cases, is distinctiveness, said Loke-Khoon Tan, partner at Baker & McKenzie in Hong Kong.

WIPO Indigenous Process: ‘The Pace of a Snail’

Officials from Canada, Zimbabwe, Australia and the World Intellectual Property Organization (WIPO), stressed the increased need for protection of indigenous rights to traditional knowledge, folklore and traditional cultural expressions.

“I think that very clearly a recognition, not just internationally, but regionally” that “these rights need to be addressed and some protection mechanisms and formula need to be” put into place, said Marcus Hopperger of the brands and designs section of WIPO.

The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), established years ago, aims to convene a high-level treaty negotiation, possibly next year, on this issue. The 22nd session of the group will be held 9-13 July to discuss possibly legal instrument(s) on these issues.

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“The more people who are involved, the slower the mechanism gets” to find common ground, Hopperger said. “It might well take some time before the outcome of that process will lead to one or several international instruments.”

The process has been criticised by some who say developed countries are dragging their feet, but Hopperger said it’s a priority of the committee to expedite the negotiations.

“The accelerated pace is the pace of a snail,” said Marion Heathcote, partner at Davies Collision Cave in Australia, who pointed out that there are 300 million indigenous people and 700,000 indigenous cultures. “It’s not what is about what’s legally allowable – it’s not about being told what you can and cannot do. … it’s all about what’s morally and ethically correct.”

Liza Porteus Viana may be reached at lizapviana@gmail.com.

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