1 August 2012Trademarks

INTA meeting 2011: San Francisco

The Rt. Hon. Lord Justice Sir Robin Jacob, who took up the Sir Hugh Laddie Chair in IP Law at University College London on May 2, looked at the present state of trademark law by examining how it has developed in the past across major jurisdictions. He also made predictions about how it might develop in the future.

British trademark law has had longer to establish than European trademark law, Jacob explained, and in that time, traders have attempted to increase the amount of protection that a trademark can afford them. Traders have pushed the limits of trademark protection “backwards” because “they want to enclose."

Contemporary European continental law does not have the “same suspicion of monopolies” as British common law. “It’s happier with fuzzier rules of law such as unfair competition,” he said.

Current European trademark law is “very pro trademark owner” compared to the US and the Far East, Jacob added: “My own view is that in European terms, we will find some pulling back [from that in the future].”

Jacob also said that he does not expect the US to become more protective of brands in the future because the “common law will be against it”, and he said that he suspects that “it will not happen in the Far East either."

Trademark use

In a separate panel, several academics discussed how ‘trademark use’ is defined in trademark law and how courts approach it in keyword advertising cases.

Dan Burk, the chancellor’s professor of law at the University of California, Irvine, said that many of the cases concerning keywords that are also trademarks talk about trademark use. The problem is “no one is entirely certain what that means".

Mark Lemley, William H. Neukom professor of law at Stanford University’s law school, explained that this uncertainty has led courts to consider ‘functionality’ when looking at a defendant’s use of a trademark. Traditionally, plaintiffs have had to prove whether their trademarks were functional or not.

Lemley said that US courts wanted something to show that trademarks could be used in a context outside of branding or source identifying, a task originally intended for trademark use. He added that courts are “reaching out” to consider functionality. “[To the courts it] seems like a good use; after all, the defendant [in a keyword advertising case] is using the trademark in a functional sense.”

Online gaming

A panel of private practice counsel from the US, Canada and South Korea, as well as an in-house counsel from the US, discussed trademark issues in virtual worlds such as massively multiplayer online role-playing games, a genre of computer role-playing games in which lots of players interact with one another within a virtual environment.

South Korea is an important jurisdiction for online gaming. The industry is worth billions of dollars and gamers can participate in professional, televised leagues. Ik-Hyun Seo, a partner at Cho & Partners, said that avatar personas “can be protected by trademark and copyright [law] in Korea”.

There is some leeway for videogame publishers looking to use real brands in online games, according to John Crittenden, a partner at Cooley LLP in San Francisco. He said that brands can be part of the online game’s story because “first amendment rights give users some latitude”. But the brands must remain unaltered.

“Arguably, unaltered brands are artistically relevant to the purpose of the game,” he said.

Other conference highlights included a panel discussion about trademark portfolios in merger and acquisition transactions. Elizabeth Bradley, an in-house counsel at Kraft Foods, gave some practical advice on how to deal with large corporate transactions that primarily involve intellectual property.

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