World Trademark Review Podcast - Episode 1 Transcript

World Trademark Review Podcast: Episode 1 (INTA The Breach; J Scott Evans Interview) Transcript

J – J Scott Evans
T – Trevor Little

T: “Welcome to the very first World Trademark Review podcast. We will shortly be speaking to J Scott Evans, who is the 2015 president of the International Trademark Association (INTA), but before we do, as it is our first pod, I thought it would be useful to talk about our plans for the new offering from the World Trademark Review team. So I’m Trevor Little, editor of World Trademark Review, which is the world’s only independent daily news and information service which is dedicated exclusively to reporting on trademark issues for in-house and private practice lawyers around the globe. But while trademark law is a key focus for us, we really don’t see ourselves as a wholly legal platform. Instead, we look at the law from a strategic perspective, looking at how it facilitates brand creation, protection and ultimately monetisation. In short, it’s really about best practice when it comes to managing the trademark asset. Our blog, therefore, tackles the full range of trademark and brand issues, whether that’s assessing high profile disputes, considering the impact of new technologies, drilling down into the intersect of brands and politics or looking at how brand value itself can be maximised. Alongside the blog then, the podcast format will allow us to go a bit deeper than we can in just the 800 words. So our aim is to use the pod to touch upon big stories in even more depth than the blog format currently allows and to also run expanded, in-depth interviews with both key industry heavyweights and those who’s voices aren’t heard as much as they perhaps should be in industry debates. I think it’s fair to say that the trademark community is very good at working together, but as trademarks and brands rise up the corporate and political agendas, it’s important to hear from, understand and engage with those that may have a very perspective, whether coming from an anti-IP stance or just from communities that should be, but aren’t yet, fully engaged with the trademark community. So that’s our plan and I think that makes J Scott Evans the perfect first interviewee. As president of INTA, over the coming year he will be grappling with the full range of trademark issues, all of which we hope to look at in future podcasts. We didn’t have time to speak about all of them but we crammed in as much as we could. So let’s hear from him now.”

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T: “I’m joined today by J Scott Evans, who is associate general counsel at Adobe Systems and also the 2015 president of the International Trademark Association (INTA). And J Scott, thanks firstly for taking the time to speak to us today. I know you recently returned from what I presume was your first INTA delegation trip as president, which saw you heading to China for a week of high-level meetings. So to start, I just wondered if you could tell us a bit about that trip and the possible outcomes.”

J: “Well thank you Trevor so much for having me. I think we had a very successful trip to China. As you know, we’ve had a representative office in Shanghai for ten years and we have routinely taken delegations into China. Delegations consist of ICANN staff, the chief executive officer, the president and we also have [INTA] members who will attend. This year we had Chris Turk from VF Corp who went with us. It was a very successful trip; we met with government officials from the various agencies, we also met with the chief judge of the IP Tribunal within the Chinese Supreme Court and then we held two seminars, two half day seminars - one on online counterfeiting and one on building a brand. I think we had a very successful trip [because] we’re beginning to build deeper and better relationships. China is important to INTA for a myriad of reasons, but actually the main two are, I think, China has been growing a rapid market where Western brands have had some issues in regards to bad faith registrations and counterfeit issues and, also, Chinese trademark owners are getting more sophisticated and are growing their businesses and have been more liberalised in the last five to six years, and are starting to come to a peak where they are wanting to move outside of China and enter markets in Western Europe, North America, Latin America, and indoChina, outside of China itself. And I think that there’s something in both of those areas where we can offer some assistance. I think INTA feels, and I know I certainly feel personally, that China has probably done more to reform its laws and to give tools to trademark owners to protect their brands within China than any other country, and I think so often the Western press doesn't really give China the credit it deserves for all its done to help trademark owners. Is their situation perfect? No. But then no system is perfect, and I think they are trying very hard and we fed that message clearly to the Chinese officials and to the Chinese Supreme Court, and we want to help them to get new laws on the books and work with our experience that our trademark owners have in the various [places] around the world, assist their vibrant economy as it expands internationally, and offer memberships to Chinese trademark owners so they can come and take advantage of the networking platform and the ability to participate in committees and subcommittees that INTA has. That allows them to affect policies around the world in the various different regions. I think we had a very successful meeting - it was a great time.”

T: “Excellent, that sounds very good. It strikes me that this will be the first of many trips for you over the coming year and I know this week you are in the New York offices of the INTA. So I guess the presidency effectively takes time away from your day job at Adobe Systems, and I wonder if, for corporate counsel who perhaps would like to be more engaged in the INTA world but maybe find it difficult in conveying the benefits in the required financial and time commitments to senior management, what are the key arguments that you feel they should make when lobbying for budgets and time to be able to contribute to the INTA?”

J: “Well first of all, it’s just a one year term, and you have a lead up of about six years on the leadership ladder to prepare, see and get insight into this. I was hired at Adobe Systems because they were seeking someone who had a higher profile within INTA and within ICANN, and so they were sort of seeking me out. So I had a little bit of a different experience than perhaps somebody else would when they’re in an organisation where that wasn’t something the organisation was looking for. You just sort of organically fallen into it because of your leadership role at INTA. But I think it’s a chance to visit government officials around the world and to raise the profile of your company within those structures, and to be able to bring back the takeaways that you get from these governments. You - just like anything else - build a network and inform your business people and your other parts of your business about the things you’ve learned, and educate them, and I think that adds great value. The ability to have a voice in international policy and to have that voice heard, and to have your company’s name mentioned as part of that is something that can be very important and set a great standard for your organisation, it makes it look like a thought leader and I think many organisations appreciate that. And you get to be a leader of a group of some of the smartest, most creative people in the world - we are a 6,500 member organisation so we’ve got 30,000 volunteers, what a great network to be seen as the leader of and to have the honour to serve that group of people who are in many areas of the world, the leaders in their own local economies and organisations. So to have the honour to serve is humbling beyond any regard I think I can express in words.”

T: “Excellent. And now you’re in the big seat, as it were, so I guess you’re looking ahead to the coming year and some of the issues that you'll be grappling with, so it will be good to discuss some of those. Looking at your first communication, which was the press release coming out of INTA when you first took up the presidency, there were a number of issues of the association and of the wider community that you felt you would wrestle with over the next year. The first one that caught my eye related to the internet world, but rather than being gTLD related, which we will come on to, but specifically [it was about] the transition of ICANN governance away from the US government. I think it's fair to say it’s an issue that’s passed many counsel by in terms of being a key concern, and I wanted to get a sense of your perspective about why it’s something that trademark counsel should be alive to, and what activities you envision INTA will be taking around this?”

J: “Sure. I think that the internet and ICANN as a DNS governance body has been very important to trademark owners over the last 15 years, and INTA - as a founding member of the intellectual property constituency - has been actively involved in this matter since the very beginning. But we've had oversight by the US government, and however loose that may have been, it did somehow provide sort of a carrot-and-a-stick approach to ICANN and had some way of holding them in line. So if you weren’t satisfied with how ICANN was operating, you had someone you could go to and file a grievance or complaint or have them look into it, and be a - not really a policeman - but just a mediator of interest if those interests were not aligning correctly. And that’s going away, so the big question is: How is that going to evolve? What is going to be the new model? And I don’t think anyone can answer that right now. And I think INTA and trademarks owners all around the world should be very focused on making sure that the proper structures and procedures are put into place so ICANN can be held accountable for the decisions it makes, so there’s some sort of mechanism should a decision be poorly taken that there can be some sort mechanism to have that looked at and reviewed and discussed other than it being a “fait accompli”. I think also one of the biggest issues for me personally, and I would say it should be for everyone in the trademark community and really for citizens of the world, is the fact that the government advisory committee within ICANN has become increasingly proactive and, for example, they- I’m sure you’re very aware - have denied and have continued to deny Amazon the dot Amazon top level domain, claiming it is somehow a geographical indicator. Now that’s just not true, it’s not a geographic indication, and there is no law that I’m aware of in my 22 years of practice that supports that conclusion. It’s my understanding that the structure of ICANN that the governance advisory committee’s role is to look at the policies and procedures of ICANN, and those that it is proposing, and to say ‘in the international world, you need to be aware of the laws that exist, and let us explain the treaties that exist here or the laws that exist in certain countries, and how that is going to affect your procedure, you may want to tweak it to become in compliance with those particular things’ to sort of counsel and advise rather than becoming, what I think they’ve become, a ‘super legislature’ where they’re seeking to get a protection for Amazon, the name of a river, something they couldn’t get in any national faura. Geographic indications have been a hot topic and a hotbed issue since probably the 1920s or 1930s, but the proper floor for discussion of those are international trade negotiations and treaty negotiations, not a super legislature, a group of unaligned government officials - one group may be from the department of commerce, the other maybe a telecommunications department within a particular country, so they’re not even the same level of officials coming together and pushing through some sort of restriction on the internet that doesn’t align with international law or any local law. I think that is really troubling. What’s more troubling - not just that it’s a trademark issue so let’s take geographical indication out of it - but let’s say, if this is set as a precedent, what happens when the next issue is gay rights? Or women’s issues? And some group of countries or tow-towing regime says ‘this offends us morally, so we should have no more content related to women’s issues on the web’. And I think this should disturb everyone, not just as trademark owners or brand owners, but as citizens of the world, and I think we need to be at the table, we need to be very clear that this sort of mechanism is not going to be acceptable. That is not a multi-stakeholderism, we will not accept it and we are not going to allow it to occur.”

T: “When you look at the ICANN world generally, I think it's fair to say you have been a very regular face in that environment over the past few years, and I think from an early stage there were a lot of brand owners that were plugged into the ICANN world with the expansion into new domains and the governmental issues that you just mentioned. There’s still a lot of brand owners and trademark counsel who have not engaged in this issue yet, and I wonder if you were to say to them ‘this is what you should be doing, and this is how you could be doing it’. How can more brand owners that are perhaps minded to get involved, do so?

J: “Well here’s what I find so amazing. If I walked into any corporate board room and said ‘they’re going to turn over the governance of the power grid that runs all the electricity into all of our facilities to an international body where everyone is going to have an equal vote and nobody really knows who’s in control, would that scare you as a corporation?’. Because the internet is no longer what it was 10 or 15 years ago, where for many companies it was just a magazine ad. It was simply a way to advertise - it was new and exciting. That’s not what it is today. Many businesses today, if the internet isn’t working, they’re losing millions and millions of dollars of revenue, their employees cannot be productive, and so here we have this utility that most businesses rely on to conduct their daily businesses and they’re not engaged at all. They’re not engaged at all and I think that’s a big mistake. And I think businesses need to wake up. It’s not just a trademark issue. Yes, brand issues have been highlighted because brand issues were probably some of the most prevalent, but now the internet has got more robust and mature, the business issues are getting far beyond just trademark issues. Trademark issues and counterfeiting issues are still one of the top five issues, but they’re not the only issues. And I think businesses need to wake up, they need to get engaged, they need to be involved, and they need to drive this mechanism to ensure the utility that their entire infrastructure may be build around continues to be open, free, malleable and innovative.”

T: “I think we can talk about the gTLD and ICANN world, and the issues surrounding it, for many a day. But just because you mentioned innovation, I’d like to turn to another technological development that is still in its early stages but is really rising up the agenda and is certainly something that, when I’ve been at conferences, I’ve had more people ask about. And that’s 3D printing. I know the INTA has an event in March in New York that’s going to be looking at this specific issue and some of the IP dimensions, but I wondered what you see as a possible impact of this new mode of production to the trademark community going forward? And how impactful will it actually be?”

J: “My prediction is that it will be as revolutionary and innovative to trademark law as the internet was in the 1990s. And the reason I say that is, what do you do when somebody can replicate your product in their home? But they don’t put your brand on it, right? Because counterfeiting for many years has been policed majority-ways through trademark law - somebody has put a brand on the product that is identical or similar to your brand. What happens when you don’t have that happening, they’re just taking the configuration of your product and selling lookalikes, based on something they built in their home? So I think design patents and European design registrations are going to be more important. For many years, trademark provision, I know certainly when I was in private practice, looked at design patents as something that was superfluous unless you were in certain very specific industries, and trade dress law and trade configuration registrations were sort of murky and difficult, and when you did a cost-benefit analysis for small to medium enterprise, it probably wasn’t worth pursuing any of that. I think that will all change. And I think that one of the reasons we’re holding this seminar on March 10 and 11 in New York is because we think we have the opportunity to look and discuss these issues that are high level, and begin to understand what the revolution and innovation is going to be, and where and how the law may need to adapt or adjust or advise or use the law or the mechanisms of protections that currently exist that need to focus on our everyday practice. And so I would encourage anyone that has any manufacturing clients or anyone who has seen how the internet has revolutionised their law practice to come and participate in this, because it’s a chance to be on the ground floor and to really affect positive change. I think there are some good aspects to 3D printing. I think around two years ago, I read an article on the front page of the Wall Street Journal, where they predicted that for certain replacement parts of their automobiles, they believe that their customers will be 3D printing them in their own home. So I do think it offers some very good and useful uses, it’ll allow people to manufacture and pass along a more efficient way to do replacement parts, for instance, and that will lead to more competitive and efficient markets. Also 3D printing, like the internet, will allow many, many young entrepreneurs to enter a market with low-to-no capital outlay and that always brings great innovations, and everyone benefits from that. So I don’t want to say that it’s a completely negative situation, but with every new technology, there are issues that blindside us and there are always nefarious parties that want to use these technologies in a way that’s not necessarily positive. This is an opportunity to get ahead of those issues and start thinking about that, so we’re not caught off-guard when it enters the mainstream in a big way.”

T: “Absolutely, at this stage it’s brands getting ahead of the curve. And when I say brands, I use that word quite deliberately because one of the themes of your presidency - as outlined in the press release that went out - you identified a desire to broaden the scope of the discussion of trademarks to encompass brands specifically, and I wonder when you talk about widening this discussion brand, what do you practically mean and how can this actually be achieved?”

J: “Ok, I think that when you talk about trademarks, and we’re the ‘International Trademark Association’, right, so when you talk about trademarks; trademarks are a legal certificate that is issued by an issuing authority, a government authority or a regional government authority, that give you a certain amount of rights and obligations, and effective mechanisms within the law to protect those rights. So that’s what a trademark is. But a brand, a trademark is only part of a brand - it’s the legal side of the brand, it’s sort of the nuts and bolts of a brand, but a brand is an emotional attachment that consumers have - an affinity they have for certain products. A love, if you want, and I think in a world where consumers have so much power, because social media gives consumers so much power, that trademark counsel and practitioners need to understand that the world has changed and we’re not just talking about legal rights any more, we’re talking about managing and working with marketers and brand managers within your own organisation to steward a brand - and a brand is so much bigger and so much more emotional than what a trademark is. And I think we need to understand that it’s really bigger than that. We have an obligation to work with our business people to make sure that that ethereal thing that is a brand, that is so very valuable in the mind of consumers and on your balance sheet, is protected and that we’re being creative and innovative, and we’re not forgetting that emotion, that raw sense of loyalty that consumers feel for products that they love and enjoy.”

T: “And the brand narrative brings me onto another issue that has been very much a trademark issue to date, which is about plain packaging. Last week we had the UK government announce plans that they’re going to introduce legislation of plain packaging tobacco products hopefully before the election in May, so there’s a real push here to get the plain packaging legislation through the houses. One of the arguments for brand engagement on this issue relates to the domino effect, in that plain packaging in one sector could spread to other products - whether that’s alcohol, sugary food or drinks - but so far the media narrative around this issue has really been about big tobacco versus health, and the brand message and the brand narrative has been lost in all that. I wonder if you feel that the brand perspective will prove persuasive in this debate, and whether there’s more that can be done to ensure that voice can be heard?”

J: “Well I think that issues surrounding tobacco and other highly-regulated products can be extremely emotional, and I'm not here to debate public policy on health issues. What I do think is that when you look at studies, it shows that in many developed and emerging economies, tobacco is usually the first highly regulated product that gets a lot of strictures against it, right after that comes alcohol, and then beyond that comes food. And so there’s empirical evidence that shows that it’s true, and so I don’t think it’s speculation to say that this is going to spread - I mean, there have already been stories in the last five or six years in the United States regarding sugary drinks, they’ve had certain regulations on the local level - in New York state, for instance, with regards to soft drinks and fast food - and I think it’s not beyond the pale to think that there will be a domino effect. I think it is a big issue because the reality is government institutions collect tax dollars from all of these products, and they have granted trademark owners the right to use the brands on the products for which they collect tax. And so they should be allowed, as long as the product is a legal product (a fast food hamburger, a pharma product), they should be allowed to use their brands to educate their consumers, so that consumers can make the same smart choices they do for those products as they do for a new jacket at Ted Baker, for example. So I think there’s a lot of emotionalism that gets put around it, and it gets used to try and say that this is only for certain products, but I’m not so sure - it’s similar to what I said about the government advisory committee at ICANN, they want you to focus on that it’s only this one issue, but it’s the process and the concept that should be disturbing to brand owners. And INTA is going to work very hard to say that isn’t a tobacco issue, this is a brand owner issue, and we are going to work very hard to get that message out.”

T: “Great. It’s clear you’ve got  a very busy year ahead of you, and I’m conscious I don’t want to take too much of your time today. Before we end though, I just wanted to see if there’s anything else you wanted to comment on, or any message you have for the trademark community now that you’re in the big seat at INTA.”

J: “Yeah, what I’d like to say is that I would ask that all of us, on any side of any issue, assume good intentions. I think so many times in policy debates or in debates on tough issues like plain packaging or online counterfeiting or keywords or ad words, that people assume bad intentions. And that’s not necessarily true. I’ve worked for an online platform and I can tell you that 9% of the people that work for that company are just coming to work every day and doing the best job that they can do to support their families and enjoy their lives. There’s no evil intent and they all want to get to the right place because protecting consumers is as much a value to online platforms, to tobacco owners, to purveyors of liquor, to everyone as it is to people who have a divergent interest in the business world. So we’re all trying to get to the same place. So let’s all assume good intentions and positivity and come together as reasonable, educated people and try to make creative, innovative solutions for those problems that do exist. And work together in a constructive manner.”

T: “I think that’s the perfect note to end on. I really appreciate you taking the time to chat to me today J Scott and if not before, I hope we catch up in San Diego at the INTA Annual Meeting in May.”

J: “I hope we can see as many people as possible in San Diego, ya’ll come and see us, alright?”

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T: “So that brings us to end of our first World Trademark Review podcast. While we tried to cram in quite a lot, there was plenty we didn’t get time to discuss with J Scott and hopefully we’ll be talking to him again in the future, perhaps when we take the pod on the road to the INTA Annual Meeting. Going forward, we’ll be looking to post further pods in the coming weeks, but in the meantime if you have any feedback about the podcast or any issues that you feel we should be looking at, please do get in touch, either on Twitter (@wtrmagazine) or by email (podcast@worldtrademarkreview.com). So thanks for listening, and if you want to keep up with all things trademarks between the podcasts, please do check out our blog at www.worldtrademarkreview.com.