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Trademarks and the Internet
Program


 

 

 Wednesday, September 21

 

9:00 am–5:30 pm 
Conference Registration and Information Desk Open
9:00 am–10:00 am
Continental Breakfast
10:00 am–10:15 am  
Welcome
10:15 am–11:30 am 
GENERAL SESSION I

What’s Behind the New Technology?

Practitioners need to know how technology works so they can better understand how to apply the law.

Learn:

  • How social media websites work, and what social media companies do on and behind the scenes.
  • How search technology is changing, and how real time search and search engine optimization (SEO) are designed to work.
  • Specific issues related to smart phones and other mobile devices, trends in mobile technology, trends on apps for mobile devices, and the technology behind the applications.
  • How the latest technology impacts trademark enforcement and protection.

Moderator:
Stacey J. Johnson, VeriSign, Inc. (United States)

Speakers:
Maile Ohye, Google (United States)
Frederick Felman, MarkMonitor (United States)

 

11:30 am–11:45 am
Networking Break
11:45 am–1:15 pm 
GENERAL SESSION II

To the Right of the Dot

Uncover the possible dangers and pitfalls to using trademarks as gTLDs. 
 
Learn:

  • How to avoid implied licenses.
  • How to avoid loss of control over your brand.
  • Suggested quality control mechanisms.
  • Suggested terms in registrant agreements.
  • What underlying trademark implications may exist.

Moderator:
Fabricio Vayra, Time Warner Inc. (United States)

Speakers:
Stacey King, Richemont International Limited (United Kingdom)
Paul D. McGrady, Jr., Greenberg Traurig, LLP (United States)
Mark Partridge, Partridge IP Law P.C. (United States)
Brian J. Winterfeldt, Steptoe & Johnson LLP (United States)

 

1:15 pm–2:30 pm
Networking Lunch
2:30 pm–3:45 pm  
GENERAL SESSION III

Developing and Protecting a Brand for the Internet Age

How can the legal adviser help brands grow and survive in the fast–paced medium of the Internet world, where territory is blurred, the consumer has information overload, and respect for brands is challenged by anarchists and entrepreneurs?

Learn:

  • How to ensure your company does not genericize its brand.
  • How to provide smart advice to clients on trademark use and clearance in a medium that is globally and instantaneously visible.
  • How the IP lawyer balances the need for market–driven communication that misuses the mark, and the need to protect it.
  • How brand owners make judgment calls about use of branding on social media sites.
  • Whether going forward the law needs to change and adapt in order to deal with the jurisdictional challenges of territorial trademark rights.

Moderator:
Katrina Burchell, Unilever P.L.C. (United Kingdom)
 
Speakers:
Katrina Burchell, Unilever P.L.C. (United Kingdom)
Mark McGuire, Alice.com (United States)
Lisa W. Rosaya, Baker & McKenzie (United States)

3:45 pm–4:00 pm  
Networking Break
4:00 pm–5:15 pm  
GENERAL SESSION IV

Doing More with Less:  Effective Strategies for Policing Your Brand While on a Tight Budget

A dozen new cybersquatters … a handful of brand misuses on a new social networking site … four new infringing websites … improper logo use on a mobile app … and the list goes on and on.  As the Internet continues to expand, how can brand owners keep up with policing their marks while facing cuts to their enforcement budgets?  In this session, in–house counsel for small and large companies, as well as for–profit and not–for–profit organizations, will share strategies on how they effectively manage a large number and a wide array of infringements on the Internet, and do so with limited resources.

Learn:

  • How to prioritize and manage the numerous infringements that continue to appear on the Internet.
  • Effective strategies for tackling Internet-related infringements in the most efficient manner.
  • Ways to stay within your budget while still being diligent with policing and enforcement efforts.

Moderator:
Susan G. O’Neill, Hanson Bridgett LLP (United States)

Speakers:
Katrina Burchell, Unilever P.L.C. (United Kingdom)
Debra Hughes, American Red Cross (United States)
John Ramsey, Rosetta Stone Ltd. (United States)

 

5:15 pm 
Adjourn
5:30 pm–7:00 pm  
Networking Welcome Reception
 
 

 Thursday, September 22

 
8:00 am–6:00 pm
Conference Registration and Information Desk Open
8:00 am–9:00 am  
Continental Breakfast
9:00 am–10:15 am  
GENERAL SESSION V

ICANN and Trademarks: Why Can’t We Be Friends?

Get an inside view into the workings of the Internet Corporation for Assigned Names and Numbers (ICANN) and see how trademark owners can have an impact. Then sit back while our panel brings you up to date on the latest developments at the Internet Corporation for Assigned Names and Numbers, including a discussion on the Rights Protection Mechanisms that will be available to trademark owners in the new gTLDs. 

Learn:

  • How trademarks and ICANN intersect.
  • The latest news about the now confirmed rollout of new gTLD in 2012, including an update on the application process, as well as instructions on how to object to any new gTLD applications that trademark owners believe infringe their rights.
  • New Rights Protection Mechanisms that will be available to brand owners in connection with the rollout of new gTLDs.
  • Trademark-related issues that are on ICANN’s plate, including an update on the Whois Review Team’s work vis-à-vis the accuracy of Whois data and the privacy and proxy services.

Moderator:
Caroline G. Chicoine, Fredrikson & Byron, P.A. (United States)

Speakers:
Steven J. Metalitz, Mitchell Silberberg & Knupp LLP (United States)
Kristina Rosette, Covington & Burling LLP (United States)
Fabricio Vayra, Time Warner Inc. (United States)

 

10:15 am–10:30 am
Networking Break
10:30 am–12:00 pm  
GENERAL SESSION VI

UDRP: The Next Ten Years

ICANN describes the UDRP as one of its successes. However, with the advent of the new gTLDs, voices within ICANN are calling for the Uniform Domain Name Dispute Resolution Policy (UDRP) to be reformed. The purpose of this session is to raise general awareness of the ICANN Review of the UDRP and to explore whether the UDRP can be improved to the benefit of both complainants and respondents. 

Learn:

  • The most common criticisms of the UDRP.
  • The priority issues for the IP community.
  • How Panel Providers work, the changes they would like to see, and whether Panel Providers will ever work more closely together.
  • What, if any, lessons can be learned from other dispute resolution solutions?
  • The impact that a watered-down UDRP will have on rights owners, and whether such a dilution can be avoided.

Moderator:
Nick Wood, Com Laude (United Kingdom)

Speakers:
Kristine Dorrain, National Arbitration Forum (United States)
Ari Goldberger, ESQwire.com P.C. (United States)
Mark Partridge, Partridge IP Law P.C. (United States)
David Roache-Turner, World Intellectual Property Organization (WIPO) (Switzerland)
Martin Schwimmer, Leason Ellis LLP (United States)
Nick Wenban-Smith, Nominet UK (United Kingdom)

 

12:00 pm–1:30 pm
Luncheon Speaker

Dr. Stephen Crocker, ICANN Board Chair, Internet Corporation for Assigned Names and Numbers (United States)
1:30 pm –3:00 pm  
GENERAL SESSION VII

Know When to Hold ‘Em
 

Brand owners generally know when to go after those who have infringed their rights, but do they know when not to? And if they do go after them, how do they deal with modern media portrayals of their actions? 

Learn about:

  • The current trend toward an IP backlash and some of the root causes of it.
  • Overreaching by brand owners, and misperception by consumers.
  • Dealing with these factors, from the perspectives of those who want to take action as well as those who must defend against such an action.

Moderator:
Stacey King, Richemont International Limited (United Kingdom)

Speakers:
Peter K. Duda, Weber Shandwick (United States)
Prof. Christine Farley, American University (United States)
Martin Schwimmer, Leason Ellis LLP (United States)

 

3:00 pm–3:15 pm
Networking Break
3:15 pm–4:30 pm  
GENERAL SESSION VIII

Social Media: Do Different Rules Apply?
 

Due to the explosion of social media, individuals and companies are utilizing these communication channels to develop products and services. These channels are giving consumers a new means to express their views about brands and the companies behind them. Which social media strategy is the right one for you?

Learn:

  • Which strategy to choose:  Should trademark owners exercise greater tolerance in social media and not pursue all infringing activity? Not having a presence doesn't avoid the issue; it merely allows someone else to host the debate. 
  • What are the issues with Facebook® Community pages?
  • Positive and creative social media strategies that are currently being used by some companies
  • How to deal with user–generated content. For example, if consumers modify your brand, who owns the rights to that brand and how can you control this?
  • Fluid trademark issues online (such as Google® Doodle, Gmail®, etc.)
  • Can you establish trademark rights by launching a brand only on social media? What about the relevant terms and conditions? 

Moderator:
Michael Wolnizer, Davies Collison Cave (Australia)

Speakers:
Debra Hughes, American Red Cross (United States)
Stacey King, Richemont International Limited (United Kingdom)
David Pashman, Meetup, Inc. (United States)
Brian J. Winterfeldt, Steptoe & Johnson LLP (United States)


4:30 pm–4:45 pm
Networking Break
4:45 pm–6:00 pm
GENERAL SESSION IX

Social Responsibility

With all of the news about online bullying and the boom in social networking, companies and their users struggle each day to set appropriate boundaries around this 21st Century phenomenon. While many times we know what the law requires us to do, sometimes we are called upon to do more. Experts in employment law and the Internet will lead us through this challenging and cutting–edge topic. 

Learn:

  • How to craft an appropriate social networking policy for your employees.
  • How to handle violations of your workplace rules vis à vis social networking.
  • How to draft appropriate terms of service for social networking sites, and effective strategies for dealing with user violations thereof.
  • The ethical implications of monitoring and reacting to social networking abuses.

Moderator:
J. Scott Evans, Yahoo! Inc.  (United States)

Speakers:
J. Scott Evans, Yahoo! Inc.  (United States)
Paul D. McGrady, Jr., Greenberg Traurig, LLP (United States)
Stephanie Quincy, Steptoe & Johnson LLP (United States)
Ellen B. Shankman, Ellen Shankman & Associates (Israel)


6:00 pm
Wrap Up / Adjournment
 

 Continuing Legal Education

 
This conference qualifies as an educational program for CLE credits. For more information, please email cle@inta.org or stop by the Registration and Information Desk at the conference.
 

 Project Team

 

INTA would like to thank the Project Team for its excellent work in planning and presenting this conference.

Chairs
Caroline G. Chicoine, Fredrikson & Byron, P.A. (United States)
J. Scott Evans, Yahoo! Inc.  (United States)

Project Team Members
Katrina Burchell, Unilever P.L.C. (United Kingdom)
Stacey Johnson, VeriSign, Inc. (United States)
Stacey King, Richemont International Limited (United Kingdom)
Susan O’Neill, Hanson Bridgett LLP (United States)
Fabricio Vayra, Time Warner Inc. (United States)
Michael Wolnizer, Davies Collison Cave (Australia)
Nick Wood, Com Laude (United Kingdom)

Staff Liaisons
Ann Eng, International Trademark Association, Director of Education (United States)
Claudio DiGangi, International Trademark Association, Manager, External Relations, Internet and the Judiciary (United States)
Stuart Ruff, International Trademark Association, Senior Meetings Planner (United States)