On Thursday afternoon, I attended the Trademark/Copyright track moderated by Natalie Hanlon-Leh of Faegre & Benson.
Elizabeth Magnuson of Oracle Corporation; Jill Chalmers of Holme Roberts & Owen; and Dianna Lyons and Kellie Norden of Western Union Inc comprised the panel discussing Trademark Monitoring and Enforcement. The panel provided a mix of in-house and private firm perspectives on managing a trademark portfolio. As is often the case, the panelists advised businesses to analyze both the legal and business risks of engaging a potential infringer. Particularly where the infringer operates a gripe site, expect a cease and desist letter to be published on the Internet. By being too assertive, the trademark owner may draw unwanted attention to the gripe site or appear a corporate bully.
In the second session, Richard Kirkpatrick of Pillsbury Winthrop Shaw Pittman LLP and Rose Hagan of Rose Hagan Fine Art provided an update on recent developments in Trademarks. Mr. Kirkpatrick’s presentation engaged the audience through a quiz of ten recent TTAB and court proceedings on likelihood of confusion. Ms. Hagan began her presentation with an update on ICANN’s plans to green light an unlimited variation of top level domains (TLD’s) and how this may impact trademark owners. From there she moved on to recent U.S. and EU cases on secondary liability for auction sites and the unsettled issue of trademark infringement through keyword sales.
Ian Ballon of Greenberg Traurig concluded the day’s session with a comprehensive update on Copyright. While U.S. Copyright law provides for strict liability, Mr. Ballon noted that many of the major recent Copyright infringement cases against p2p sites also involve issues of inducement. As a party must prove that inducement to commit infringement was intentional, these cases can be very expensive to litigate. Many of today’s cases are influenced not only by the MGM Studios, Inc. v. Grokster, Ltd. case, but also by the presiding judge in that case, Judge Steven Wilson of the Central District of California. Judge Wilson has heard many subsequent and notable Copyright cases. Providing some practical advice, Mr. Ballon believes that courts are interested in how 3rd party sites respond to C&D letters and in circumstances where the 3rd party has knowledge of infringing content.
