On March 7–8, 2013, Philadelphia, Pennsylvania, USA was the epicenter for IP practitioners seeking clarity and actionable advice in the areas of global brand portfolio management, enforcement in social media, and opportunities and challenges in the new generic top-level domain (gTLD) landscape. Some 177 participants from around the globe braved blustery conditions to attend nine fast-paced sessions held over two days.
Attendees received a warm welcome from Conference Co-Chairs Sarah Deutsch (Verizon Communications, USA) and Brian Winterfeldt (Steptoe & Johnson LLP, USA), who then introduced the first panel, which focused on “Global Brand Management in an Online World.” Two of the topics covered were filing strategies in the online space and protecting brands in online media. Panelist Susan Kawaguchi (Facebook, USA) advised that “Facebook faces a lot of infringement, and effective online enforcement requires a broad sweep to get results.” She indicated that her enforcement strategy includes monitoring domain names, marketplaces, paid search results, social media sites and apps. J. Scott Evans (Yahoo!, USA) counseled, “Do your homework and know the policies for the platforms you are complaining to. Sixty-five percent of the complaints Yahoo receives are shot back, as people don’t read our policies.” J. Scott also advised practitioners to “interact with people who understand the technology early on,” a theme that was carried on through several of the sessions that followed. Weighing into the discussion, Fred Feldman (Mark Monitor, USA) told attendees that filing lawsuits is the most effective way for brand owners to take down large swaths of infringements quickly.
The next session, “Going Mobile,” focused on protecting brands and building a brand strategy in mobile apps. The session showed that app development comes with a multitude of risks, including impersonation, false association, piracy, copyright and patent infringement, trademark and logo abuse, and distribution of viruses. Christine Hsieh (Google, USA) encouraged the group to “reach out to the developers in the first instance. If the app is very egregious or if the developer is not responsive, then fill out the Google Play trademark complaint form.” Another suggestion made was to file a Digital Millennium Copyright Act complaint for image/logo/icon use if the mark is protected by copyright, as this would provide for a worldwide suspension of the app rather than a local suspension.
After a lunch break, the conference resumed with a session on “Social Media Enforcement,” aptly subtitled @Embrace the Chaos by moderator Sally Abel (Fenwick & West LLP, USA). Sally led the panel through a gamut of issues, such as developing an enforcement strategy in social media, the challenges of combating counterfeits, nonprofit concerns, and strategies to protect your budget and social media image. Anthony Falzone (Pinterest, USA) assured attendees that his site takes a hard line on counterfeiting: “Connecting people to fakes is a bad thing, so we wipe it out.” Lori Schulman (ASCD, USA) advised the group to “create empathy with your alleged infringer, who doesn’t understand trademark law and dilution issues. Trademark law, at the end of the day, is about consumer protection.”
The last session of the day centered on “Best Practices in Global Domain Name Management.” Mona Lee (Hanol Law Offices, Korea) spoke about the importance of knowing what you own, especially concerning country code TLDs. Susan Kawaguchi urged attendees to get involved at ICANN: “Many people who vote at ICANN have nothing to lose,” Susan said. “Anyone who has a business online should be involved.” Alfred W. Zaher (Blank Rome LLP) suggested a periodic comparison of domain name portfolios and trademark portfolios.
The next day’s sessions turned the focus to the new gTLD landscape, beginning with a brief status report by Brian Winterfeldt. Brian touched on ICANN’s key milestones, including the opening of the Trademark Clearinghouse on March 26, 2013 (in connection with which he detailed the associated costs), and advised of the date for the earliest potential sunrise period (July 31, 2013).
During the session “New gTLDs: Opportunity or Formula for Disaster?,” Andrew Abrams (Google, USA) spoke about the 98 gTLDs Google had applied for. He predicted that “these gTLDs will provide endless opportunities to users; a lot of innovation will come.” Jonathon Nevett (Donuts Inc., USA) added, “The domain space has been constrained for a while, and it’s hard to get a good name—this is the way to go.” Other panelists, however, expressed their concern that the introduction of the new gTLDs is merely a money grab by ICANN, without sufficient protections, and a fresh wave of crime could be unleashed.
The highlight of the conference was the session “New gTLDs—The View of Government Agencies and NGOs.” Shaundra Watson (U.S. Federal Trade Commission, USA) warned that the introduction of the new gTLDs will bring with it the risk of increased consumer confusion and likelihood of fraud. Robert Flaim (Federal Bureau of Investigation, USA) emphasized that a commitment to an accurate WHOIS needs to be honored. He explained, “Evidence is fleeting on the Internet, so demanding subpoenas as a first step for Internet investigations slows things down, often killing an investigation.” Anjali Hansen (Better Business Bureau, USA) reflected that “in the existing space it is so difficult to police consumer issues, and this will be exponentially worse with the roll-out of the new gTLDs.”
During the session “Scaling the New Internet Landscape to Your Organization,” panelist Vanessa Soman (Martha Stewart Living Omnimedia Inc., USA) was enthused rather than daunted by the introduction of the new gTLDs. She advised attendees that “this is a good time to audit your portfolio and let deadwood go,” and counseled them to “use tools you already have. You will be well served and not have to file for everything.” However, J. Scott Evans expressed his concern that “brand owners are not banding together. We are not brave enough to cut it off by not buying everything.” During the concluding session of the conference, “Global Cybersquatting Challenges in 2013 and Beyond,” Rick McMurtry (Turner Broadcasting System, USA) spoke about his advocacy for a loser-pays, default judgment Uniform Rapid Suspension (URS). With this model, brand owners would not have to register their trademarks up front.
Brian Winterfeldt explained that while they were planning the conference, one goal was “to provide the most up-to-date and cutting-edge information on the Internet, particularly important information on the new gTLDs and how this rapid expansion will affect brand owners and consumers.” Sarah Deutsch added, “We wanted to ensure that all attendees would be able to fully understand the presentations, regardless of their level of involvement or daily interaction with Internet matters. The key to any program is to make sure it is sophisticated enough to reach the experts, yet simple enough for any newbie. The movers and shakers in the field of Internet and trademark enforcement are in some way a part of this conference. Almost everyone who is anyone in this space is either a speaker or an attendee.”
The conference received many positive reviews from attendees. David M. Kohane (Cole, Schotz, Meisel, Forman & Leonard, P.A., USA) said, “I attended the conference to hear from the most experienced practitioners, brand owners, and vendors in the field, both through formal presentations and through informal discussions. I found the conference extremely helpful—the organizers and speakers did a great job, covering the topic comprehensively and balancing between providing important detail and valuable ‘treetop-level’ perspectives.” Charles Shaban (Abu-Ghazaleh Intellectual Property, Jordan) told us he “attended to be able to stay up-to-date with the latest important issues for trademarks owners on the Internet, including the new ICANN gTLDs program, social media and best practices in general, to follow and make recommendations to our clients about protecting their interests on the Internet. The event was up to my expectations and I got the needed information.”