Tag Archives: INTA

Best of 2013: It’s fun to stay at the U-N-T-A!

First published May 19, 2013.

Oops, wrong hashtag -- was supposed to be #inta2013

Oops, wrong hashtag — was supposed to be #inta13

Last year there was much Strum und Drang here about INTA — sorry, I mean The I-N-T-A!, which stands for International Trademark Association! (now there’s some INTA branding wisdom for ya) — annual meeting.  In a series of blog posts (here and here and here), I asked what I thought, consonant with my characteristic self-importance, were important questions to be answered.  The main one was:  Is the INTA a lobbying organization or a professional organization?

You’d think the second, because almost everyone involved is a lawyer.  But while the INTA may be of lawyers, it was not founded by or for lawyers:
roncoleman tweet INTA trademark bullying

The not-for-profit Association was founded in 1878 by 17 merchants and manufacturers who saw a need for an organization “to protect and promote the rights of trademark owners, to secure useful legislation and to give aid and encouragement to all efforts for the advancement and observance of trademark rights.”

So I didn’t even have to ask; after all, I should have known the answer to this question in the first place.

Indeed: The consensus about the quality of panel discussions is now so widespread that I don’t need to repeat it.  Even the third day’s traditional can’t-miss session — the annual roundup of case law by Ted Davis and John Welch — seemed sparsely populated.  Could that be because the facilities were so very Texas-sized?

likely2confuse tweet social mediaCould be, could be.

But that doesn’t explain a phenomenon I observed for the first time ever, though it may have been going on longer than I, naive as I am, had realized:  A lot of people who are serious trademark lawyers, including names I know well, go to INTA every year… but they don’t go to The INTA.

They come to town all right.  They book a room.  But they don’t register for The INTA.  They skip paying four figures to attend panel discussions bearing the titles of cutting-edge issues in trademark law but at which in fact the most pat nostrums are repeated, heads nodding in unanimous agreement — or, maybe worse, mock “disagreement” among the big-firm partners and their alumni who send the big-brand legal business to the law firms that placed them.

I kid the INTA about saying “The I-N-T-A” instead of, you know, “inta” — I kid The INTA because I love it, you know?  But on reflection it seems that the trick of succeeding in The INTA is perhaps in knowing what not to say — at least on the big stage.

This is just common sense if you know on which “side” (i.e., dark or light) your bread is branded.

Read More…

Trademark misuse at the AIPLA

Down at the bottom of this post is a PDF of my paper, included in the CLE materials for a panel on which I was a participant at the American Intellectual Property Law Association’s annual meeting on October 24, 2013. The panel was called “Trademarks, Goodwill and Free Speech: Does the First Amendment Give You the Right to Create a Trademark and Associated Goodwill, and Where Does That Right End?”  My scribble is called “The Misuse of Trademarks to Control Free Expression.”  In other words, regular readers of this blog will find little new there, except for the footnotes.

The program was moderated by my buddy Paul Alan Levy of Public Citizen, and the other participants were Christine Haight Farley from American University’s Washington College of Law, who gave an incisive overview of the theoretical and doctrinal issues, and Tony Zeuli of Merchant and Gould, PC, in Minneapolis, who spoke broadly as well but particularly about his successful defense against the lawsuit brought by Michael Jordan [UPDATE:  Uh oh] against the Chicago-area Jewel / Osco food store chain based on various theories arising from that distinctly modern sin, “false endorsement.”

Me?  I ranted, but I was certainly listened to.  (The core of my rant was, forget commercial speech vel non and the First Amendment — this nonsense should stop at the door of the Lanham Act itself.)  The paper below doesn’t have all that much to do with what I said.  A little bit closer, perhaps, is this PowerPoint slide presentation.

The experience was quite enjoyable, because as you may or may not know, the AIPLA is predominantly dominated by patent lawyers.

Um, let me rephrase. Read More…

Meet. The. Bloggers!

Originally posted 2011-05-05 17:33:53. Republished by Blog Post Promoter

We always have this Meet the Bloggers thing at the annual INTA meeting.  I have been co-sponsoring them along with Marty Schwimmer and John Welch since Chicago in 2007.  I did bag out when INTA met in Berlin.  Pamela Chestek joined a little later.  MTB was king of co-opted one year too, so sponsorship was kind of irrelevant, but we don’t want to there. It was a cool event that year, as it happened, anyway, and it resulted in the now-immortal pic of the Amicus Twins found at right.
"Brother from another mother"
That’s how much fun you can have at Meet the Bloggers!  Let me tell you.

(Here is last year’s post, with other pics.)

So now here comes INTA 2011 a week from this Sunday in beautiful San Francisco!  And we’re doing it differently this year.  So cool.

And… I don’t exactly understand what we’re doing.  Differently.  This year.

So here’s how Marty — well, I thought it was Marty; you’ll see what I mean (hey, I’ve been wrong about him before; there were some errors in this post, for example) — explains it:

This year, Meet The Bloggers VII (or BlogFest, as Marty insists on referring to it), will have a little bit of structure, but not so much as to detract from the drinking.

First things first – the loft at SWIG BAR,  TUESDAY May 17, 8 to 10 pm, 561 Geary Street, SF.

Everyone who is a IP law blogger  (and we are using an expansive definition of the term so as to include Twitterers, folks who contribute to their law firm’s blogs, people who wear IP-related sandwich boards, people who hear IP-related voices in their heads),  should send me a link of their choosing prior to Blogfest, and a one sentence summary of their worldview.  On BlogFest day, we (will all) publish the links in what will become the de facto authoritative IP law blog directory.  AND at BlogFest, we introduce each of you to the others (and you can say a few words and then pass the mike (or megaphone)).

Send the link and blurb to schwimmer at symbol leasonellis dot com.

Sponsorship opportunities for BlogFest are handled on a strictly cash basis.

Got that?  So, yes, I thought Marty wrote that, because it’s on his blog, but then it refers to him in the third person, which no one does any more, and I didn’t even think Marty ever did that — though it wouldn’t surprise me, it’s just not a card he’s played yet as far as I know, but fine — but there it is.

I will be there of course!  But I don’t know if I’m sponsoring, as I usually do, because, as you can see, I am having some trouble with the concept.  And no one asked me for any money, really, or for that matter much else.  So I’m not looking for trouble, but I will be there!

And I will send my link to Mr. Schwimmer.  Of course!  Will you?

UPDATE:  The IP LAW BLOGDEX is up!  And now so are pics.

 

I have met the bloggers, and they are us!

Originally posted 2011-05-18 13:07:16. Republished by Blog Post Promoter

Nice event last night at “Meet the Bloggers VII” otherwise not in the least bit known as the “IP Law BlogFestivus.”  You may want to check out the resultant IP Law BlogDex thingy too.

Good people, I’m telling you!  The only thing better than trademark bloggers is the people who want to have a drink with trademark bloggers, you get me?  Those folks have class, not to mention excellent taste.

Marty Schwimmer, Mr. Meet the Bloggers

The Host with the Most

 

 

 

 

 

 

I took a few pictures.  Though I have taken some very nice pictures over the years on my BlackBerry, a party in a dark bar is pretty well beyond the phone’s most ambitious hopes.

(UPDATE:  It could be worse.  Here’s John Welch, by the way — the shot everyone’s looking for!)

But in order to preserve history, here’s what I’ve got (click the pic for full grainy goodness):

Read More…

It’s fun to stay at the U-N-T-A!

Oops, wrong hashtag -- was supposed to be #inta2013

Oops, wrong hashtag — was supposed to be #inta13

Last year there was much Strum und Drang here about INTA — sorry, I mean The I-N-T-A!, which stands for International Trademark Association! now there’s some INTA branding wisdom for ya — annual meeting.  In a series of blog posts (here and here and here), I asked what I thought, consonant with my characteristic self-importance, were important questions to be answered.  The main one was:  Is the INTA a lobbying organization or a professional organization?

You’d think the second, because almost everyone involved is a lawyer.  But while the INTA may be of lawyers, it was not founded by or for lawyers:
roncoleman tweet INTA trademark bullying

The not-for-profit Association was founded in 1878 by 17 merchants and manufacturers who saw a need for an organization “to protect and promote the rights of trademark owners, to secure useful legislation and to give aid and encouragement to all efforts for the advancement and observance of trademark rights.”

So I didn’t even have to ask; after all, I should have known the answer to this question in the first place.

Indeed: The consensus about the quality of panel discussions is now so widespread that I don’t need to repeat it.  Even the third day’s traditional can’t-miss session — the annual roundup of case law by Ted Davis and John Welch — seemed sparsely populated.  Could that be because the facilities were so very Texas-sized?

likely2confuse tweet social mediaCould be, could be.

But that doesn’t explain a phenomenon I observed for the first time ever, though it may have been going on longer than I, naive as I am, had realized:  A lot of people who are serious trademark lawyers, including names I know well, go to INTA every year… but they don’t go to The INTA.

They come to town all right.  They book a room.  But they don’t register for The INTA.  They skip paying four figures to attend panel discussions bearing the titles of cutting-edge issues in trademark law but at which in fact the most pat nostrums are repeated, heads nodding in unanimous agreement — or, maybe worse, mock “disagreement” among the big-firm partners and their alumni who send the big-brand legal business to the law firms that placed them.

I kid the INTA about saying “The I-N-T-A” instead of, you know, “inta” — I kid the INTA because I love it, you know?  But on reflection it seems that the trick of succeeding in the INTA is perhaps in knowing what not to say — at least on the big stage.

This is just common sense if you know on which “side” (i.e., dark or light) your bread is branded.

Read More…

Meet the Bloggers – INTA, Dallas, 2013!

Meet the Bloggers 2013 - INTA Dallas

What else is there to say?

Of course you’re invited!

Best of 2012: INTA and the big tent

First posted on May 13, 2012.In the previous INTA post I raised the question of how a significant session discussing a significant topic — the effect of developments in keyword advertising cases on trademark rights on May 9th, the first day of the 2012 Annual Meeting — could have been so seriously skewed.  I promised, as they say in Washington (but not the way they mean it when they say it), to extend and  clarify my remarks.

I linked to this item from Managing Intellectual Property, the really interesting part of which will be discussed in another post.  We’ll start there, however:

More than 1,400 attendees crowded into a session on keyword advertising yesterday, where Rosetta Stone counsel John Ramsey and other panelists shared their frustrations about the issue and also faced tough questions about the proper legal approach.

Ramsey could not discuss specifics of the company’s closely watched case with Google over trademarks as keywords in sponsored ads, but he explained to attendees the aggravation the brand has experienced over search results incorporating the ROSETTA STONE trademark that managed to appear above links to the company’s authentic site.

Ramsey has every right to be aggravated:  Rosetta Stone has a serious counterfeiting problem; the real actors are essentially untouchable; and it sure as heck seems as if Google is making money off it by taking the pirates’ money for display advertising.

Trademark lawyer Ron ColemanI am not unsympathetic to the concept that intermediaries — at some level — should be held to account for their actions; as regular readers know to death by now, I have long advocated that secondary liability attach to eBay for its comparable role in this process, and remain at odds with many, including the Second Circuit, on this topic.  I was also involved in early efforts, not all of which I can disclose, to get at what seems to be willful blindness by at least some credit-card issuers – an effort regarding which, of course, some small results have finally been achieved by others.

On the other hand, as an outgrowth of my work defending entrepreneurs against fallacious trademark claims based on “unauthorized distribution” of branded merchandise as well as my First Amendment work involving bloggers, I have had the opportunity to see the Lanham Act misused a slightly different way:  As a would-be workaround of the safe harbor provision of Section 230 of the CDA.  That is, they are state-law defamation claim dressed up as federal trademark infringement suits.

Now, as dissimilar as Google and eBay may be in their purported roles as secondary infringers, gripe sites in Section 230 cases are yet another increment less similar.

Yet the claims against all three types of defendants raise related issues:

  • Infringement allegedly arising out of SEO-related techniques, such as keyword purchases, metatags and supposed “black hat” SEO
  • Network or affiliate marketing where the ad content is not controlled by the defendant
  • Claims of consumer confusion based on affiliation or sponsorship arising out of such advertisements

Would the distinction among fact patterns and defendants be acknowledged in this discussion, which was advertised as addressing SEO in trademark infringement but whose focus was the arguably unique (and, by the way, pending) case of Google v. Rosetta Stone?  I was quite interested in this panel and not unsympathetic to Rosetta’s plight.  Yet.

My heart sank, however, when I heard John Ramsey–however understandably–utilizing the loaded vocabulary of advocacy, not reflection:  Defendants in SEO cases operate “rogue websites”; they use “black hat SEO”: they are guilty of the well-known tort of “diversion.”  Well, okay:  Rosetta is dealing with rogue sites utilizing black hat SEO that diverts traffic to trademark infringers.  Really.

But while the use of these terms by the man responsble for solving Rosetta’s counterfeiting problem is understandable, they colored the presentation at the outset.  Not that hardly anyone else seemed to mind.  Let’s put it this way:  When I turned to a neighbor sitting with me in the front row and made some comment about where this panel seemed to be going, a fellow behind me sneered, “What do you, work for Google or something?”

Read More…

INTA Annual Meeting – a century of trademarks

Originally posted 2011-05-17 21:20:33. Republished by Blog Post Promoter

Good meeting. San Francisco is a good location, even if it isn’t providing us good weather. Everything is walkable; the Moscone Center is human sized — though I’ve been shut out of not one but two sessions because the rooms they put them in were too small. These are programs I registered for in January! Not excusable, and something I have never experienced in all my years at INTA meetings.

INTA, Moscone Center by Ron Coleman INTA, Moscone Center, a photo by Ron Coleman on Flickr.

It turned out to be a good thing, because instead of attending just another social media panel, I went to a fantastic program with a true all-star panel called “A Century of Trademark Law” presided over by none other than Prof. J. Thomas McCarthy and including Eric Goldman, who besides being a bit of a blogger answers my late-night questions over Google Talk from time to time.

Very, very un-INTA.   IPKat was there too, and wrote it up but good.  That took a lot of work; instead, I live-tweeted it: Read More…

A long blog thread’s journey INTA night

Now:  I had mentioned that the Managing IP link I provided in the first INTA post alluded to some pretty interesting fireworks involving the “empty chair” in this debate, i.e., Google.  First, again, from that story:

A Google representative stood up during the Q&A period to remind attendees that the search engine’s ad platform has zero tolerance for counterfeiting, as well as proactive tools for weeding out bad actors.  “You can ask us to monitor your trademarks in ad text and we will take down ads that infringe,” said the Google attorney.

Mmmmm… yeah.  Let’s get a little more granular.  Here’s how it actually went down, courtesy of the official INTA audio (a very nice feature) after the traditional, “Any questions?”:

Hi, my name is Annabelle DanielVarda and I’m with Google… (laughter, scattered applause) … It certainly would have been nice to have had an opportunity to speak on these issues, on the panel, but I have my little piece of paper and I want to speak to some of the issues that I want to get some clarification on.

And in saying she wanted to “get some clarification on” Google Senior Trademark Counsel Annabelle DanielVarda didn’t mean, by “get,” “receive.”  For it is better, as we learned from the video from the previous post, to give than to receive!  And DanielVarda gave “clarification” or, at least, the Google party line — and, after all, we’d been treated to the anti-Google party line for an hour already.

Whether in substance she “gave” as good as she “got,” I don’t know.  But I applaud her corporate boldness — not everyone could pull this off.  This was, as I explained in an earlier post (and notwithstanding the — nervous? — laughter when she introduced herself) a somewhat hostile room.  And here she was standing up there answering the unasked question instead of asking a question, reminding everyone on her employer’s behalf that something was a little off here.  DanielVarda set up her own chair on that panel, put down Google’s marker and then, her work done, galloped off into the night.  Well, the morning.  It was dark in the room however.

LIKELIHOOD OF CONFUSION® I was so impressed with her moxie, and what I thought was a borderline scandalous omission (I have since been informed that it was not intentional, for what that’s worth) that I wanted to ask DanielVarda more.  But I have never met the lady.  So being very tech-savvy, don’t you know, and according to many possessing a little moxie myself — and possessing, too, so very little to lose — I logged onto the INTA Attendee Portal, got Annabelle DanielVarda’s contact information, and — assuming I worked the darn thing right — am pretty sure I sent her an email, explaining that I’m this guy with a blog and was going to write about what happened that morning and maybe we could talk for a minute.

I used my Gmail address.

Maybe it got caught in the spam filter.

More likely I just don’t “get” it.  But, you know… I never really have.

INTA and the big tent (updated)

Revised from Friday’s original post.

In the previous INTA post I raised the question of how a significant session discussing a significant topic — the effect of developments in keyword advertising cases on trademark rights on May 9th, the first day of the 2012 Annual Meeting — could have been so seriously skewed.  I promised, as they say in Washington (but not the way they mean it when they say it), to extend and  clarify my remarks.

I linked to this item from Managing Intellectual Property, the really interesting part of which will be discussed in another post.  We’ll start there, however:

More than 1,400 attendees crowded into a session on keyword advertising yesterday, where Rosetta Stone counsel John Ramsey and other panelists shared their frustrations about the issue and also faced tough questions about the proper legal approach.

Ramsey could not discuss specifics of the company’s closely watched case with Google over trademarks as keywords in sponsored ads, but he explained to attendees the aggravation the brand has experienced over search results incorporating the ROSETTA STONE trademark that managed to appear above links to the company’s authentic site.

Ramsey has every right to be aggravated:  Rosetta Stone has a serious counterfeiting problem; the real actors are essentially untouchable; and it sure as heck seems as if Google is making money off it by taking the pirates’ money for display advertising.

Trademark lawyer Ron ColemanI am not unsympathetic to the concept that intermediaries — at some level — should be held to account for their actions; as regular readers know to death by now, I have long advocated that secondary liability attach to eBay for its comparable role in this process, and remain at odds with many, including the Second Circuit, on this topic.  I was also involved in early efforts, not all of which I can disclose, to get at what seems to be willful blindness by at least some credit-card issuers – an effort regarding which, of course, some small results have finally been achieved by others.

On the other hand, as an outgrowth of my work defending entrepreneurs against fallacious trademark claims based on “unauthorized distribution” of branded merchandise as well as my First Amendment work involving bloggers, I have had the opportunity to see the Lanham Act misused a slightly different way:  As a would-be workaround of the safe harbor provision of Section 230 of the CDA.  That is, they are state-law defamation claim dressed up as federal trademark infringement suits.

Now, as dissimilar as Google and eBay may be in their purported roles as secondary infringers, gripe sites in Section 230 cases are yet another increment less similar.

Yet the claims against all three types of defendants raise related issues:

  • Infringement allegedly arising out of SEO-related techniques, such as keyword purchases, metatags and supposed “black hat” SEO
  • Network or affiliate marketing where the ad content is not controlled by the defendant
  • Claims of consumer confusion based on affiliation or sponsorship arising out of such advertisements

Would the distinction among fact patterns and defendants be acknowledged in this discussion, which was advertised as addressing SEO in trademark infringement but whose focus was the arguably unique (and, by the way, pending) case of Google v. Rosetta Stone?  I was quite interested in this panel and not unsympathetic to Rosetta’s plight.  Yet.

My heart sank, however, when I heard John Ramsey — however understandably — utilizing the loaded vocabulary of advocacy, not reflection:  Defendants in SEO cases operate “rogue websites”; they use “black hat SEO”: they are guilty of the well-known tort of “diversion.”  Well, okay:  Rosetta is dealing with rogue sites utilizing black hat SEO that diverts traffic to trademark infringers.  Really.

But while the use of these terms by the man responsble for solving Rosetta’s counterfeiting problem is understandable, they colored the presentation at the outset.  Not that hardly anyone else seemed to mind.  Let’s put it this way:  When I turned to a neighbor sitting with me in the front row and made some comment about where this panel seemed to be going, a fellow behind me sneered, “What do you, work for Google or something?”

Read More…

Forward, INTA the past!

The International Trademark Association, or INTA (which calls itself “the I-N-T-A” on INTA TV… interesting branding choice there) is important. Most of the people and institutions involved in brands and brand protection are members or affiliates; many (though not all) of the most accomplished lawyers involved in trademark enforcement are active or leaders in INTA. People in the field talk about what happens at the annual meeting. INTA is influential within the practice and as an institution. And the annual meeting is a great event in most respects.

This year’s meeting in Washington, DC was no exception.  The INTA professional staff and attorney leadership are dedicated, thoughtful and professional.  The convention center in DC is attractive, modern, technologically current, very easy to get around, and close to most hotels.  There was great WiFi in the hall, lots of free terminals and many other fine amenities. Oh, sure, I will nitpick later, because there are some frustrations that seem completely avoidable.  But this was a very good conference, and it included a lot of bona fide intellectual engagement about critical and often controversial issues.  At times.

Beyond this, however, the substance:  INTA is at a crossroads.  It often seems to be.  But this year elements and events within INTA made a number of stark paradoxes stand out.  The fault lines may be categorized as follows:

  • Identity:  Is INTA, which has a lobbying arm — INTA PAC — itself something more than a lobby, or an advocacy organization?  Is it less than a bar association or a learned society?  In short, do ideas matter?
  • Mission:  Even if the answer to the last question is, “No, we protect the rights of trademark holders, we don’t debate them” — i.e., even if overreaching is not of concern — how does such a mission square with the importance of trademark for new entrants into the world of commerce, whose use and development of brands risks being crowded out by established stakeholders?
  • Ideology:  Another possibility, neither irrational or evil, is that INTA is indeed designed to guard the prerogatives of the corporate world, not to encourage entrepreneurs, regardless of the relationship of the latter to trademarks.

But consider this:  In 2001, Meg Whitman, then-CEO of then-trademark-bête noir eBay, was the keynote speaker at INTA‘s annual meeting.  [UPDATE:  I alluded to the eBay-Google parallel a while ago.]  What she said didn’t warn the cockles of any hearts, but she got the chance to say it and was respectfully whisked away by security.

In contrast, in 2012, an entire INTA panel premised on bashing the bête noir of the moment – Google — in connection with the Rosetta Stone litigation, closed out the Google point of view entirely.  The result was the awkward moment described here (about which, more to come).

Well, eBay’s a nice company, but — Google?  We all work for Google, or for Facebook, which stands in similar shoes in terms of coloring outside the lines of standard INT-oid thinking about trademarks.  So: if INTA’s ideology is to be “corporatist,” how exactly is “disrespecting” the likes of Google going to go?

  • Internal Culture:  I don’t know if INTA was always incestuous, but it sure is now.  These days, about ten thousand trademark attorneys from around the world attend INTA’s annual meeting.  The vast majority of them speak good English.  Outside of the ranks of attendees and members are countless experienced practitioners, thinkers and experts.

Yet the annual meeting features many of the same speakers, not only year after year but even within a given year’s program — many of whom hardly need their resumes burnished at this point, even if that was ever a good enough reason for this annoying “favorite son” practice. Sour grapes?  Not entirely.  This matters, in fact, because in many respects, the panel compositions both inform and reveal some of the answers to the first three questions.

We’re going to talk about these things for a few days.  There’s a lot to talk about.

Met some bloggers!

Erik Pelton had it all in hand

What a great evening it was at Meet the Bloggers VIII at the International Trademark Association’s annual meeting in DC!  And by now, we should know.

The space was perfect — accessible, attractive, spacious but not too much with the spacious, and no blasting music.  We’re lawyers, you know?  We like words.

The crowd was charming, diverse, sophisticated, and had excellent taste in INTA events.  Some, like Peter Groves, came bearing A Dictionary of Intellectual Property Law — about which more anon.

I saw other old friends and made all kinds of interesting new ones, notably an intrepid trio from the University of Akron Law School who renewed my faith in humanity.  Well, okay, they’re nice kids and came in a wide variety of heights, anyway.

In Erik Pelton, however, all faith.  This was his baby and he gets all the credit in the world for making it all happen just so.  And you know, on second thought — he does renew my faith in humanity!

Pale Fellows Well Met

Thanks to everyone who came and hung out with us, and for other my fellow sponsors — Welch, Schwimmer and his Leason Ellis people — for letting me play.  For me, Meet the Bloggers is the two hours at INTA each year when — well, never mind.  For a change, I’ll keep it to myself.  After all, now that humanity and I are tight… why ruin it before I even get to tomorrow morning’s sessions?