TrademarkNow recently announced the formation of a Board of Advisors. One such member is Martin Schwimmer, a partner at Leason Ellis and the publisher of The Trademark Blog, the world’s oldest blog devoted to trademark and copyright law. We wanted to take the opportunity to introduce him to you with a few questions about his practice!
What attracted you to the world of Intellectual Property in the first place?
I think a better question is: how did I wind up in IP? There are two elements - planned and accidental. I graduated Law School in 1988. We forget but there had been a market crash and recession in 1987-88. So, I wanted to be cautious and go into what I felt to be the biggest growing field. I believed that computers and software were going to catch on - so there was that. Also, as a science fiction fan, I had always been attracted to the 'new'. As a reader and writer, I had always been attracted to the content of Intellectual Property. Plus....they were hiring!
With regard to trademarks specifically, it was accidental because in my first year I had been in a more generalist IP firm. I interviewed with Weiss Dawid (which is today Fross Zelnick) who were hiring, and I underwent a very rigorous interview process. It seemed like they make you interview with every single person in the firm. It was really every partner and I just fell in love with all of them. So, I wound up in a trademark specialist firm… by accident. And I became a partner there. I was there for ten years.
You mentioned that you are interested in Sci-Fi. Are you a Trekkie fan?
Only Star Trek Next Generation! Outside of that, it's anything - any good science fiction. I think that has always explained my fascination with the internet. I've always been really interested in what's coming next - which is why I really enjoy working with Start-Ups, for example.
Over the course of your involvement with IP, what have been the biggest changes?
I would speak to 3 major changes - International Treaties, the internet and technology.
International treaties is a little bit overlooked. When I was a baby lawyer, if your clients were interested in Europe, then you were filing 10 or 12 national applications. Today, we check off one blank for the EU on a Madrid application. That observation includes two changes right there. First, the creation of the Community Trade Mark in ’96 and the United States accession to the Madrid Protocol in the early 2000's. Also the fact that we do it all through technology now.
Regarding the internet, I guess because the internet facilitates all forms of business, it facilitates unlawful forms of business. I think that the level of unfair competition has increased dramatically because of the internet. It so happened that I was on the first domain name case; that led to me going on to the INTA internet committee when that was not a cool assignment. That led to being involved in the regulation of domain names before there was an ICANN, participating in the process that led to the creation of ICANN, and then participating in the creation of the UDRP.
As a personal matter, getting involved in that first domain name case led to getting involved in other important things. It was interesting and it was important for me professionally that a lot of my deepest professional friendships were made there - the lawyers who got into domain names early all have this kind of camaraderie, so it was socially very very important to me. Professionally, I became exposed to important concepts that have become mainstream now but weren't always. After domain name cyber-squatting, there was keyword misuse. That presents an intellectually challenging concept - is the use of a competitor’s keyword a form of trademark infringement? That seemed to lead to the question of liability of an intermediary (such as an eBay or a Microsoft or an Amazon). So I have been fortunate in being able to advise or litigate some truly cutting edge issues, starting with domain name litigation amongst others.
What shifts do you see coming for IP in the next ten years?
There are two big ones for me - Jurisdiction and Blockchain.
Jurisdiction - the first issue about domain names challenged our paradigm of the geographical area of the nation being the organising principle for trademark law. Suddenly a person in another country can acquire any domain name. You may own the trademark in your country, and the countries in which you do business, but the domain name registrant may claim that they are residing in a country where you don't do business. Yet they can wreak havoc in your home country over the internet. I think we have still not fully assimilated the issues created by the borderless internet.
We have created a non-national dispute resolution concept, the UDRP, and we have given power to a non-governmental organisation, ICANN, in the limited case of domain names. However, I think we have still not fully assimilated the issues created by the borderless internet. [In the most recent] United States election, we saw actors reportedly outside the jurisdiction of the United States (the spam bots of Macedonia to give one example) perhaps affect the outcome. We're constantly being reminded that the internet is a channel of trade, and that our nationally organised body of laws (even with harmonising treaties) are not necessarily fully equipped to react quickly enough to behavior that arises on the internet (such as spambots and ransomware and malware that affects our IoT thermostats). One of the changes I would like to see is the development of more non-national tools such as (better versions of) the UDRP and ICANN, and more harmonisation to deal with these cross border issues raised by the internet.
Blockchain - I am working on how Blockchain could revolutionise trademark protection. And you will just have to read my article to find out what I'm talking about! (contact me when its ready!)
What are you doing strategically to prepare for those expected changes?
I read a lot. Talk to my clients about the future. I think I've been, if not fully successful at predicting the future, then at least a little successful at not being blindsided by it. The reason why I got assigned by my firm to the domain name case back in 1993, was that I had been a subscriber to WIRED magazine, which meant that I knew what a website was (before ever seeing one). I was pretty much the first practising trademark lawyer who was a blogger. That's how I was able to name it "The Trademark Blog". I guess I just read a lot to keep up. The best I can do is to not be blindsided and that's one of the reasons that I'm studying Blockchain now.
How important is IP to the success of their companies or of their clients companies?
That's a tough question. If you view all intellectual capital as some form of IP then it's essential to all of them. But, in the United States at least, of the various reasons why startups fail, some of them fail because they just can't deal with competition and unfair competition. Its not always easy to distinguish the two. I read recently about a high end furniture manufacturer. He was selling a $5,000 piece of furniture and he bitterly complained that one of the Asian B2B sites was selling a $20 version of his product. You might say wow, those Asian sites are bad, if you accept the manufacturer’s statement at face value. But those are simply two different products!. There is no $20 version of a $5,000 product, they do not compete! The manufacturer likely did suffer from IP infringement in other instances but this particular problem is not IP infringement, so the answer is not IP enforcement! It is possible that the manufacturer did not have an accurate understanding of his market was. You do not lose sales of a $5,000 item to a $20 knockoff.
So, IP is important, how to protect it is important, but also understanding being able to counsel how to distinguish between unfair competition and simple, effective competition, is important. Accept that there is going to be a manufacturer somewhere that can (lawfully) manufacture more cheaply than you. That helps you focus on what you do that is truly proprietary. The point of a brand is to signify that the value you deliver to the consumer cannot be commoditised.
What have been your most recent trademark achievements?
I represented Belmora LLC before the 4th Circuit last year. While my client’s successful motion to dismiss was reversed and the case will proceed to trial at some later point, people will realise that the decision was actually a victory for the client in that the Court held that Belmora owns the mark. Early on, I represented Tiffany in a matter in Singapore that changed the law in Singapore involving what's called reputation without use (the same principle in play in Belmora). It was an honor to be part of the team that got the highest court of a country to make a new law. Finally, I am currently representing a small not for profit pro bono against a trademark bully, and that provides a form of satisfaction too.
What best practices would you recommend to gain most advantage?
I will have to go all zen on you and say to approach each day as an absolute beginner.
What piece of advice would you give to trademark professionals starting out?
Stay the hell away from my clients!
What events are you looking forward to attending this year?
I have never been to Barcelona, so looking forward to that! There is a CLE in Denver in June for the Rocky Mountain IP Bar and that's just a beautiful place in the world. The leadership meeting of INTA, even when in the troubled city of Washington, is good just because of seeing people that I have been friends with for 25 years now. WIPO always have a great get together in Geneva for the UDRP panellists of which I am one, and that's a great bunch of people. I might not be able to swing it this year for various reasons but that is always one of my favourite get-togethers.
What are you currently reading?
From a work perspective - books about Blockchain. Also a book called Against the Gods which is a history of dealing with risk. It's ostensibly a history of insurance and things like insurance but it’s a bit broader than that.
When you aren't thinking about trademarks, what are you doing?
I'm interfering in the lives of my children. I'm sort of involved in politics these days under the circumstances. That's a recent development. I, like many people have become radicalised since last November. I’m also interested in movies, food and sports - the NBA, International Football Union and the UEFA finals. I was in Italy last month visiting my son in Milan, and bought a Juventus mug. He was actually able to go to the InterMilan/AC Milan Derby. Whenever I travel, I will always try to get a football coffee mug, and I will try to make the pilgrimage to Camp Nou to get a Barca mug during my INTA trip.
If you weren't involved in trademarks, what would you have been doing today?
Being overlooked for judgeships as a Democrat.