Former President’s Award Winner Reflects on Evolution of IP Landscape Over Last Decade
Published: September 8, 2021
With the September 10 deadline for nominations for this year’s INTA President’s Award and INTA Service Awards fast approaching, 2011 President’s Award winner David Bernstein (Debevoise & Plimpton, USA) sat down with the INTA Bulletin to reflect on the past decade in trademark law, his participation with INTA, his recent work with the Association’s International Amicus Committee, and the joy of seeing colleagues in person after months of virtual meetings.
Mr. Bernstein has earned a litany of awards for an exceptional career as a widely respected intellectual property (IP) litigator, including “Outstanding IP Litigator of the Year” from Managing Intellectual Property magazine, a top-tier ranking from World Trademark Review 1000, and one of the “top ten trademark lawyers in the world” from International Who’s Who of Trademark Lawyers.
A volunteer with INTA for more than two decades, Mr. Bernstein has served on numerous committees, including in many leadership roles. He previously served as INTA’s counsel and sat on the Association’s Board of Directors. He is currently a member of the North America Global Advisory Council and the chair of the International Amicus Committee—United States Amicus Subcommittee, a committee that he has served on for a number of terms during his INTA tenure.
Mr. Bernstein received an A.B. magna cum laude from Princeton University in 1985, an M.Sc. from the London School of Economics and Political Science in 1986, and his J.D. from Yale Law School in 1989. He is an adjunct professor at New York University School of Law and George Washington University Law School, where he teaches Advanced Trademark Law, and at the University of California at Berkeley where he teaches Trademark Practice.
What do you see as some of the most significant changes in the field of trademark law in the past decade? What are the biggest challenges facing brand practitioners today?
One massive recent change in legal practice generally, brought on by the COVID-19 pandemic, has been the rapid adoption of remote technologies. Meetings, depositions, hearings, and appeal arguments that I used to have to attend in person are now routinely held by telephone or through online video platforms.
In one of my cases, USPTO v. Booking.com, we worked with our co-counsel on the first case ever heard before the U.S. Supreme Court by telephone. In another case, we took dozens of depositions using Zoom. I have been pleasantly surprised at how effective these tools can be, and I believe that remote participation is here to stay.
Turning to trademark law itself, there is an increasing hostility to trademark claims in U.S. courts. In the past few years, we have seen more and more judges who are skeptical of trademark claims and are relying on concepts such as functionality, fair use, lack of use in commerce, genericness, and parody to deny trademark claims or even invalidate trademarks.
In one of my cases, USPTO v. Booking.com, we worked with our co-counsel on the first case ever heard before the U.S. Supreme Court by telephone.
There is, of course, a place for those defenses, many of which are designed to promote fair competition, but, in my view, the pendulum has swung too far away from trademark protection as some judges latch on to these doctrines, sometimes inappropriately, when they are skeptical of the underlying merits of the trademark claims. I think we need to reset the balance between protecting the public against confusion and ensuring fair competition. That has been a key focus of the INTA International Amicus Committee in recent years.
How has INTA’s amicus work evolved over the past decade? What impact is this having on the IP landscape?
In the United States, INTA’s amicus work is increasingly focused on cutting-edge cases in the Courts of Appeals. The Supreme Court is important, of course, and INTA will always participate in trademark cases at the Supreme Court, but once a case reaches the Supreme Court, there are many amici adding their perspective on top of the usually superb briefs by the parties.
We have found that we can have more impact on the development of the law in the Courts of Appeals, where we often are the only, or one of only a few, amici weighing in. Moreover, the legal issues are usually still in flux at the appellate stage, so we have found that we can help shape the law before the issues even need review by the Supreme Court.
For example, in a case in the Court of Appeals for the Sixth Circuit last year, INTA weighed in on the critically important question of what constitutes “use” of a trademark by an online marketplace. In that case, Redbubble claimed it was immune from liability for counterfeiting because it was merely facilitating the production of products (like T-shirts and mugs) bearing designs posted by independent artists and was therefore not itself “using” the trademarks that were being violated.
The district court agreed and dismissed the case; we argued to the Sixth Circuit that the district court took an overly narrow view of the concept of “use” in the digital marketplace. Some of the arguments that we made were points that neither party had addressed, which shows that INTA takes seriously its role as being amicus curiae—or “friend of the court” (rather than a friend to either of the parties). In that case, the Sixth Circuit not only adopted INTA’s arguments, but also specifically referenced INTA’s amicus brief, showing the impact that we can have when we participate as amicus curiae at the Court of Appeals level.
You have been active in INTA for more than two decades. Can you describe the value that INTA has brought your professional and personal life?
Professionally, engagement with INTA is vital to my success as a lawyer. INTA keeps me current on the latest developments in trademark law, helps me develop new skills to represent my clients to the best of my abilities, provides settings to meet new prospective clients, and gives me the opportunity to shape trademark law through advocacy before regulators, the courts, Congress, ICANN [the Internet Corporation for Assigned Names and Numbers], and WIPO [the World Intellectual Property Organization].
[W]e need to reset the balance between protecting the public against confusion and ensuring fair competition. That has been a key focus of the INTA International Amicus Committee in recent years.
Even more important, remaining active in the Association is also personally rewarding. For nearly 30 years, I have worked with amazing colleagues on INTA committees and have met with them at INTA events. My family and I have made life-long friends through the INTA community and relish the opportunity to see them not only at INTA events, but also to visit them on my travels around the country and the world.
You’re registered to attend the 2021 Annual Meeting Virtual+ and the in-person mini-conference taking place in Los Angeles. What are you most looking forward to at INTA’s first-ever hybrid Annual Meeting?
As effective as remote participation is for some aspects of business and litigation, it is a woefully ineffective way to stay personally connected. I have recently been seeing some of my colleagues in outdoor settings and was overwhelmed by the feeling of connection that came from seeing my associates again in person.
INTA is doing a good job of using virtual platforms for committee meetings and educational programs, but the chance to be together again in person is very exciting. For me, the upcoming mini-conference provides a unique opportunity because Debevoise & Plimpton has just opened an office in California, and I have agreed to spend time in the California office to help expand our West Coast trademark and litigation practice. Having this opportunity to meet in person with other trademark practitioners in California is very timely and will help us promote our new capabilities in California to West Coast clients.
What advice do you have for young practitioners who would like to one day to win the President’s Award?
My mentor at Debevoise, Bruce Keller, taught me to start at the lowest rung of a committee and always stay engaged. I learned that it is not enough to be on a committee—you have to be active in order to make a difference, to learn from the experience, and to grow your personal reputation and brand.
With Bruce’s guidance, I volunteered for routine jobs like taking minutes, and then for more substantive jobs like research and writing memos, and I used those volunteer projects as a platform to show my engagement with INTA and be noticed by committee leaders.
I was fortunate that more senior Association members saw my enthusiasm for INTA’s goals and dedication for its work, and they gave me opportunities to lead subcommittees, and then committees, and eventually nominated me as Counsel and to the Board of Directors, following in Bruce’s footsteps. I would encourage young practitioners to follow that path too: join a committee that fits with your passions and interests, be active in discussions, volunteer for projects, and show more senior members in the organization that you are ready to take on leadership roles.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.
© 2021 International Trademark Association
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