Congratulations to Trademark and Copyright Law Blog co-editor Natasha Reed and author Josh Jarvis on their appointment as Co-Chairs of Foley Hoag’s Trademark, Copyright & Unfair Competition practice group. To celebrate their ascension, we asked them to interview each other about their practices, their histories, and their thoughts on trademark and copyright law.
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Natasha: First question! What aspect of your practice do you find most rewarding?
Josh: Launching a global brand. I’ve had the good fortune to be involved in the launches of several such trademarks from inception, helping to usher them through domestic and foreign clearance, developing worldwide application strategies, identifying and neutralizing risks, and securing registrations. It’s rewarding to see a mark go from a reasonably promising knockout search to a billboard or a store shelf in just a few years. What about you?
Natasha: Well, my reasons are pretty similar to yours, although I would add that I truly enjoy being involved in the creative process of developing a brand. I come from a creative background and worked as an assistant producer of on-air promotions for a major cable network in my previous life. Working with brand owners on not just selection and clearance of a new brand or a rebrand, but also counseling them on creative ways to strengthen the brand, set it apart from competitors, and withstand challenges to the distinctiveness of the brand is really fun for me. I also really enjoy the enforcement side of trademark and copyright law. I often work with investigators and litigate cases involving brands that are being knocked off by counterfeiters. I find that side of my practice exciting and rewarding.
Josh: Okay, next question: Why did you choose to specialize in trademark and copyright law?
Natasha: I always knew I wanted to practice law, but my work as an assistant producer and other creative work I did prior to law school led me to trademark and copyright law. In my previous job I had to go to our lawyers to clear footage, taglines, music, and scripts I wanted to use in promotional spots. When they told me I couldn’t use something it always frustrated me, because the concept of IP ownership was not entirely clear to me at that time. As time went on, I learned more about trademarks and copyrights and really took a liking to that area of the law. How did you get into this area of law?
Josh: Interesting! I’d always been interested in the creative/copyright side of things – my background is in music and web development – but other than an IP survey course in law school, I started at Foley back in 2005 as a trademark newbie. I was lucky enough to get some trademark assignments early on, and then I was hooked. For better or for worse, brands are a fixture in our lives, and learning how they work, under the law, was fascinating. For me, understanding the legal framework behind our brands, our creative works, and the always-developing interplay between these and emerging technologies, makes everyday life more enjoyable (tolerable?). Sorry, I almost got existential.
Natasha: Name one of the biggest trademark or copyright mistakes that businesses make regularly.
Josh: Number one on my list the failure to file a federal intent-to-use (ITU) application with the USPTO. Not that I’m telling you anything you don’t already know, but for the sake of our readers: once you have a bona fide intent to use a trademark in connection with certain goods or services, an ITU application essentially allows you to “lock in” a trademark priority date, even if you don’t end up using the mark for several years. We’ve run into countless companies who have had to re-brand, or suffer geographically limited trademark rights, because another company starting using a confusingly similar mark first – situations which could have been avoided with a simple, inexpensive ITU filing. What’s your number one mistake?
Natasha: One of the biggest mistakes I see all too often, even with sophisticated companies, is waiting too long to register copyrights. Failing to register a work before it is published or within three months of publication can be a big mistake, because you can’t get attorneys’ fees and statutory damages for infringements that commenced before you registered. Without statutory damages, copyright owners usually have to prove the infringement resulted in lost sales or other harm, which is often hard to prove. Statutory damages can be awarded even if you haven’t lost profits or otherwise been hurt financially from the infringement. Also, the right to seek attorney’s fees can be a game changer in copyright infringement litigation. The cost to file a copyright application is pretty small, so I usually advise clients to file often and early.
Josh: There’s clearly a theme here: ITUs and copyright apps, often and early! Shifting gears, how do you see trademark and copyright practice changing significantly over the next decade?
Natasha: That’s an interesting question. I think we already see a trend in trademark and copyright enforcement focused on online-related activities. I think this trend will only continue and may predominate trademark and copyright enforcement and litigation over the next decade. We will continue to see more online counterfeiting and piracy, cybersquatting, and infringements in social media. I think this trend will also affect our roles as legal practitioners, as we will increasingly be more involved in brand management generally for our clients. How do you see the practice changing?
Josh: That’s a really interesting point, that we’ll increasing be handling “brand management” more generally. I feel like that’s already occurring, and in non-enforcement settings as well: e.g., we’re helping companies to holistically manage their social media and online presences (and all that entails), which is complicated but also keeps us on our toes! I think another significant change will be the role AI/machine leaning plays in our practices. AI-based search engines are already changing the way that we search for confusingly similar designs, and identify infringing content, and I feel like these and other tools will continue to mature and will become fixtures in our practices. Until, of course, the AIs take over our practices. I’m only half-joking.
Natasha: Ending on a silly question: who is your favorite fictional attorney?
Josh: I answered this recently in response to a similar question on a podcast interview. It’s obviously The OC’s Sandy Cohen, public defender and stand-up dude, perfectly portrayed by Peter Gallagher and Peter Gallagher’s eyebrows. Runner-up: Al Pacino as Managing Partner John Milton/Satan in The Devil’s Advocate.
Natasha: Wow, Satan, Esq. Pretty dark, Josh! My favorite fictional attorney would probably be the lawyer from Seinfeld, Jackie Chiles, played brilliantly by actor Phil Morris as a parody of famed attorney Johnnie Cochran. He had some classic moments on Seinfeld that still crack me up. I loved his use of successive, over-the-top adjectives when arguing his point, like “It’s outrageous, egregious, preposterous.” My second runner up would have to be Annalise Keating, played by the amazing Viola Davis on the show How To Get Away with Murder.
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Thanks to the new Co-Chairs for playing along, and best of luck in their new roles at Foley Hoag.