SuperConference 2011: IP Enforcement Panel featuring Jennifer Wolfe and Michael Wu
SuperConference 2011 kicked off May 23 with a keynote speech by former White House deputy counsel Daniel Meltzer and a keynote panel, “Managing Up—Ways on Managing the Board, CEO & CFO,” before participants broke out for sessions on various legal topics. Below are some highlights of the sessions conducted on day 1 of the conference.
IP Enforcement: Protecting Your Brand & Content Within New Media
The Internet provides ample opportunity for innovative brand promotion. For every opportunity, however, there is a risk. Online, intellectual property has become more difficult than ever to protect. As technology progresses, in-house counsel should be aware of the IP liabilities that exist and how to defend against them. In his talk on “rogue” websites, Monster Cable Products General Counsel David Tognotti explained the growing problem of counterfeiters creating websites designed to look almost identical to those legitimately run by companies whose trademarks they are infringing.
Though there are many defenses available, including litigation, UDRP actions and involving law enforcement, Tognotti says Monster has focused its efforts on consumer awareness, relying on customers to help proctect themselves – with the right guidance and information from Monster, that is. He suggests that companies take a step back to evaluate what course of action is right for them.
“For every company, you have to analyze ‘what’s the return on investment?’” he said.
Jennifer Wolfe, managing attorney of Wolfe LPA, spoke on the subject of new Generic Top-Level Domains (gTLDs). These new domains would allow companies to create a new channel on the Internet. Instead of owning a tradtional dot-com, such as www.nike.com, a company would be able to purchase a channel, such as .nike, to which they could add a host of websites using the personalized domain extension. While purchasing these new channels would come with benefits – such as increased search engine optimization – the hefty price tag ($185,000 just to apply) could be a deterrent. Still, companies will be forced to approach this issue defensively if others with their trademark (in other jurisdictions, for example) apply for the channel. If two companies own the same trademark in different jurisdictions and clash over ownership of the channel, it would come down to a bidding war, Wolfe said.
Finally, Michael Wu and Alisa Key, general counsel and associate general counsel of Rosetta Stone, respectively, addressed issues such as brand protection from improper use of adwords. Increasingly, Wu says, Rosetta Stone has been forced to outbid infringers who purchase sponsored advertising positions in search engines based on keywords that contain the company’s trademarks. Defending against this issue can be thorny, as search engines are sometimes less-than-cooperative in helping to police the activity.
Proactive Techniques for Defending Government Investigations
One of the afternoon sessions on Day 1, “Proactive Techniques for Defending Government Investigations,” walked SuperConference attendees through the top concerns in-house counsel run into during government investigations.
The general consensus among the panelists was that in the past 10 years, the government has significantly boosted the enforcement of federal securities laws.
“The government’s position is that they have to send messages,” said David Dumouchel, shareholder at Butzel Long.
Claudius Sokenu, a partner at Arnold and Porter, noted that in light of the recent GlaxoSmithKline case, in which the associate general counsel was indicted for obstruction of justice, in-house counsel must be diligent in records keeping. “You need to document all the conversations you have with the government and have a running file,” he said.
As in-house counsel grapple with the immense cost companies can accrue during the discovery phase of an investigation, it is helpful to communicate to regulators the need to narrow the scope. However, “there’s not a lot of empathy for the cost of document collection and review,” warns Maureen Aidasani, senior counsel at Grant Thornton LLP.
As for ethical concerns, panelists reminded attendees of a few important points to keep in mind during employee interviews during investigations. “You have to give Upjohn warnings when you interview employees,” said Linda Miller, senior counsel at General Electric Company.