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The Yin and Yang of Licensing

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The Yin and Yang of Licensing A Chic Building Canada’s IP Approach to IP Bridges Commitment Antonio Borrelli on IP Sheila Francis on Mark Schaan discusses strategy at Marc Jacobs strategic partnerships trademark reform 11 16 18 140th Annual Meeting, Seattle daily news Tuesday May 22, 2018 The Yin and Yang of Licensing Licensing can achieve more for a company than mere financial gain, but balancing the requirements of licensor and licensee is a challenge, as Peter Scott reports. hen a licensing agreement areas. From a licensor perspective, (L. to R.) Judy McCool and Viviana Mura W works well, both parties reap the she said that good licensing brings in rewards, but negotiating and executing revenue to the company, but also serves licensor. The company sells eyewear and makes sense when seen in its an effective agreement is a matter of “give other useful purposes. for brands such as Chanel S.A. (France) entirety,” Ms. Mura added. and take,” according to Judy McCool, “When there’s a lag between seasons and DKNY (USA) under license. Ms. McCool extended the Senior Vice President Legal Affairs at of a show, it’s about figuring out ways Licensing is a “powerful way to point, noting that from a licensor’s HBO (USA). She was speaking in Session to keep fans engaged with the show,” generate revenue” for both licensee and perspective, it’s important to choose CM01 The Yin and Yang of Licensing: she said. In the case of Game of Thrones, licensor, she said, but money should your licensing partners carefully. Deep Thoughts from a Licensee and that means everything from a live not be the only consideration. “Brand alignment is really important,” Licensor yesterday, along with Viviana concert experience drawing on the music While adding brands to companies she said. A deal may look like a great Mura, Assistant General Counsel at featured in the series to a set of postage through licensing deals can be a useful opportunity in terms of revenue, but if Luxottica Group (USA). stamps featuring characters from the way of diversifying your portfolio, “you the brand doesn’t align well with your At HBO, Ms. McCool works on show, produced by Royal Mail (UK). need to consider whether a certain values, you run the risk of damaging licensing deals for multiple properties, At eyewear company Luxottica brand mixes well with your other your brand if you license it. such as TV show Game of Thrones, across Group (Italy), Ms. Mura is usually in brands, and you have to be mindful of Ms. Mura said that as well 3 many different markets and product the position of licensee rather than having a portfolio that really blends as revenue, licenses are a way 161 Exhibitors! Disparaging Marks and Mascots The 2017 decision in Matal v. Tam captured the attention of the trademark community and had serious implications for another decades-long trademark case concerning disparagement. Sarah Morgan reports. rock star and a social activist How the First Amendment Is Likely trademarks was unconstitutional, in A captivated the attention of to Impact Trademark Registrations a move that overturned more than 70 registrants yesterday with their Going Forward. years of legal practice. Come visit the Exhibition Hall, open stories during Session CM02 THE In June 2017, the Supreme Court The man who sparked this decision today from 10:00 am to 5:00 pm. REDSKINS and THE SLANTS: A of the United States held that the was Simon Tam, founding 2 Review of the Causes, the Cases, and U.S. government’s ban on disparaging member of Asian-American Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 1 NEWS Tuesday May 22, 2018 Disparaging Marks and Mascots (continued) 1 rock band The Slants. His slant gesture” as evidence that THE journey began with a film SLANTS was disparaging. in 2004—Kill Bill, directed by Quentin “We thought we could appeal using Tarantino. traditional methods,” such as surveys, “It was the first time that I had legal declarations, and expert reports,” even seen an American-produced film said Mr. Tam, but these did not work. that showed Asians as cool, confident Mr. Tam changed tactics, submitting and sexy,” he explained in yesterday’s an ethnic-neutral application. In session. Mr. Tam set about launching a the first application, Mr. Tam had rock band to “sing about our perspective submitted band posters which featured … while reappropriating this slur.” Asian themes; his second application In 2009, a friend recommended that did not indicate the band’s Asian Stephen Baird Amanda Blackhorse Mr. Tam file an application to register descent at all. But his application was a trademark, claiming that it would again rejected, using the same evidence States and Canada has existed for more of Appeals for the Fourth Circuit, “cost a few hundred bucks and only that had previously been cited. than four decades. but the case was vacated because of take six months.” The case ended up at the U.S. The first significant case that dealt with Matal v. Tam,” Ms. Blackhorse said in This was not how thing transpired. Supreme Court. Mr. Tam said that it was initiated by Native American Suzan yesterday’s session. His application was rejected on the “if the government truly cared about Harjo, who was influential in starting the She went on to explain that the use grounds that it was disparaging to marginalized communities … then movement in the 1960s. She successfully of such mascots is important to Native persons of Asian descent. why didn’t they begin by canceling overturned a trademark registration Americans because there are more Mr. Tam explained that the trademark registrations for the Ku for National Football League team The than 560 recognized Native tribes in rejection from the United States Klux Klan or other hate groups?” Washington Redskins at the USPTO in the United States alone, with more in Patent and Trademark Office The case centered on Title 15 United 1999, but that decision was overturned Canada and Mexico, and these mascots (USPTO) quoted UrbanDictionary. States Code, Section 1052 (Section at the district court level and then appeals are the only image of them that the com and included photos of Miley 2(a) of the Lanham Act), under which were rejected under the doctrine of laches. public have in many cases. l Cyrus “pulling her eyes back in a trademarks that are likely to disparage Years later, Amanda Blackhorse, a people, institutions, or beliefs are social worker and activist (USA), who barred from registration. spoke on yesterday’s panel, took on the Joel MacMull, the Vice Chair WASHINGTON REDSKINS trademark. “The Supreme Court of Intellectual Property & Brand This lawsuit, Blackhorse v. Pro Football, of the United States held Management and Commercial and Inc., was filed by younger plaintiffs and that the U.S. government’s Corporate Litigation Practice Groups at therefore not barred by laches. She won ban on disparaging Mandelbaum Salsburg (USA), was part the case at the TTAB in 2014. trademarks was unconstitutional, in a move of Mr. Tam’s team at the Supreme Court. Pro Football appealed the decision “ Moderating the session’s panel, he in August 2014 but lost, with the court that overturned more than noted procedural shortcomings in the upholding the TTAB’s decision. 70 years of legal practice. rejection of the second application: “Each Again, Pro Football appealed, application must be evaluated separately, this time to the United States Court but that’s not what happened here.” Mr. MacMull added: “This should Simon Tam never have become a constitutional The Psychology of Mediation case. There was certainly enough evidence for the United States Court of aturday’s Session CSA24 The experience as they would a real Appeals for the Federal Circuit (Federal SPsychology of Mediation: mediation. Only the mediator saw Circuit) to reverse because there wasn’t Analyzing How Parties Negotiate, each side’s confidential mediation substantial evidence in support of the moderated by Kevin Hartley, a Partner statements and knew the parties’ Trademark Trial and Appeal Board’s at Trust Tree Legal (USA), involved settlement positions at the outset. (TTAB’S) decision.” a faux dispute between a family- As the mediation progressed from Following the Supreme Court’s owned, local craft brewery and a the mediator’s introduction through decision in December 2017, the multinational tequila conglomerate. a successful resolution of the dispute, Federal Circuit ruled that the Lanham Paul Havel, Partner at Miller Nash Ruth Corbin, Chair of CorbinPartners Act’s ban on “scandalous and immoral” Graham & Dunn LLP (USA), and Inc., Adjunct Professor at Osgoode trademarks was unconstitutional in Joel VandenBrink, Founder at Two Hall Law School, York University In Re: Erik Brunetti, overturning the Beers Brewing and Seattle Cider (Canada), and a psychologist well- TTAB’s decision to refuse a trademark Company (USA), represented the versed in mediation, analyzed the Joel MacMull registration for the word “Fuct.” interests of Viva Brewing Company, choices being made by each party, Stephen Baird, Chair of Winthrop & while Sarah Anne Keefe, a Partner at including the mediator. True to an Weinstine, P.A.’s Trademark and Brand Womble Bond Dickinson (USA), and actual mediation, the party caucuses Published by: World IP Review (Newton Media Limited) Management Group (USA), suggested Nathalia Mazzonetto, a Lawyer at remained confidential, with the ©Newton Media Limited 2018 that these cases mean the ban on Müller, Mazzonetto (Brazil), appeared other side stepping out of the room scandalous, immoral, and disparaging on behalf of La Fiesta, the Mexican at various times. While the audience DISCLAIMER Although every effort has been made to trademarks is “gone, at least for the time tequila company whose application could witness the exchanges, the verify the accuracy of items in the being.” to register its VIVA LA FIESTA mark unscripted private caucuses produced INTA Daily News, readers are urged to “It will be interesting to see whether for tequila was rejected in view of Viva some unexpected results for not only check independently on matters of specific the government will appeal to the Brewing’s trademark VIVA for beer.
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