Annual Meeting Rewind

Gain access to some of the most popular sessions from Annual Meetings past with our just launched online collection—Annual Meeting Rewind! Catch up on the hottest topics right from your computer, on your own time. 


  • Fair Use: Comparing the Approach Under Trademark and Copyright Law

    Contains 1 Component(s) Recorded On: 05/19/2018

    Exploring the concept of fair use in both trademark and copyright law in the United States, EU, and other countries with similar federal trademark and copyright laws. (Intermediate Level)

    Pre-recorded at INTA's 2018 Annual Meeting.

    Exploring the concept of fair use in both trademark and copyright law in the United States, EU, and other countries with similar federal trademark and copyright laws. Speakers will offer comparisons between situations under trademark and copyright law, specifically with respect to parodies and comparative advertising. 

    The panel will explore the following questions:

    • Does copyright protection prevent trademark use in comparative advertising or nominative fair use situations? 
    • Does trademark protection prevent copyright fair use or fair dealing in expressive works?
    • Do the fair use concepts influence each other, and can trademark owners benefit from fair use exemptions under copyright law?
    • How are claims of exemption under the same fact pattern approached by different jurisdictions, and what is the likely outcome of such claims in different jurisdictions?

    Jacqueline Schaap (Moderator)

    Visser Schaap & Kreijger (Netherlands)

    Mireille Buyde

    Janson Baugniet (Belgium)

    Betsy Rosenblatt

    Whittier Law School (United States)

    J. Kevin Fee

    Morgan, Lewis & Bockius LLP (United States)

    Richard Watts

    Simpson Grierson (New Zealand)

  • Intersection of Rights of Publicity and Trademarks and with the First Amendment: Free Speech Rights in Advertising, Social Media, and Creative Content

    Contains 1 Component(s) Recorded On: 05/19/2018

    Speakers will discuss the intersection of rights of publicity and trademarks with First Amendment free speech rights in advertising, social media, and creative content from the perspective of actors and studios. (Intermediate Level)

    Pre-recorded at INTA's 2018 Annual Meeting.

    Speakers will discuss the intersection of rights of publicity and trademarks with First Amendment free speech rights in advertising, social media, and creative content from the perspective of actors and studios. The discussion will also include the limitations imposed by the Screen Actors Guild (SAG) Basic Agreement.

    David Grace (Moderator)

    Loeb & Loeb LLP (United States)

    Duncan Crabtree-Ireland

    Screen Actors Guild‐American Federation of Television and Radio Artists (SAG-AFTRA) (United States)

    Ben Sheffner

    Motion Picture Association of America (MPAA) (United States)

  • Working with Intermediaries to Combat the Manufacture and Trade of Counterfeit Goods in Free Trade Zones (FTZ)

    Contains 1 Component(s) Recorded On: 05/20/2018

    Balancing the economic benefit of FTZs with their vulnerability to exploitation by counterfeiters remains an ongoing struggle, particularly for brand owners and IP professionals. Counterfeiters find workarounds to avoid detection.

    Pre-recorded at INTA's 2018 Annual Meeting. 

    Balancing the economic benefit of FTZs with their vulnerability to exploitation by counterfeiters remains an ongoing struggle, particularly for brand owners and IP professionals. Counterfeiters find workarounds to avoid detection. For example, some counterfeiters ship only the manufactured parts to the free trade zone, and within the free trade zone, they then attach the brand owner’s mark to the substandard goods, and repackage, or re-label the counterfeit products. Counterfeiters create sophisticated and multi-tiered transit routes for their infringing products in order to disguise the country of origin and true destination by purposely passing through ports that lack sufficient border controls, due to lack of funding, manpower, etc. This panel will discuss what brand owners and intermediaries need to do to help customs officials identify and stop counterfeit goods in FTZ and will highlight  best practices to successfully stop the manufacture and storage of counterfeit products.

    Huib Berendschot (Moderator)

    AKD Benelux Lawyers (The Netherlands)

    Peter N. Fowler

    United States Patent and Trademark Office (USPTO) (United States)

    Bassel El Turk

    Rouse & Co International (UAE)

  • THE REDSKINS and THE SLANTS: A Review of the Causes, the Cases, and How the First Amendment Is Likely to Impact Trademark Registrations Going Forward

    Contains 1 Component(s) Recorded On: 05/21/2018

    The audience will first hear from the advocates, Simon Tam and Amanda Blackhorse, who will discuss the social causes each was looking to advance. (Intermediate Level)

    Pre-recorded at INTA's 2018 Annual Meeting. 

    The audience will first hear from the advocates, Simon Tam and Amanda Blackhorse, who will discuss the social causes each was looking to advance.

    • Lawyer Stephen Baird will then discuss the origins of his Ladas Memorial award-winning article “Moral Intervention in the Trademark Arena: Banning the Registration of Scandalous and Immoral Trademarks,” 83 Trademark Rep.. 661, 788 (1993), which provided a roadmap for cancelling the REDSKINS marks. Steve will then discuss his work with Suzan Harjo against the Washington State football team which, in turn, paved the way for Amanda Blackhorse’s efforts.
    • Simon Tam’s lawyer, Joel MacMull, will then discuss Simon’s case, how it differed from the Redskins’ case, and how the matter culminated with a unanimous Supreme Court victory last term.

    Finally, the panel will discuss how, if at all, the Supreme Court’s decision in Tam may impact trademark law and branding in the future.

    Joel MacMull (Moderator)

    Mandelbaum Salsburg (United States)

    Stephen Baird

    Winthrop & Weinstine, P.A. (United States)

    Amanda Blackhorse

    Social Worker and Activist (United States)

    Simon Tam

    The Slants (United States)

  • Madison Avenue Meets Hollywood: Navigating Product Placement Deals in Movies and Television

    Contains 1 Component(s) Recorded On: 05/21/2018

    As consumers, we see product placement often. As trademark practitioners, many of us know that much more thought goes into making these deals than the general public may realize. This session will explore details of product placement in a fun and practical way. (Intermediate Level)

    Pre-recorded at INTA's 2018 Annual Meeting. 

    As consumers, we see product placement often. As trademark practitioners, many of us know that much more thought goes into making these deals than the general public may realize. This session will explore details of product placement in a fun and practical way. It will cover:

    • Discussion of product placement methods, including “reverse” product placement and broader brand integration.
    • Criticism of product placement deals and the potential for tarnishment.
    • Considerations for negotiating product placement deals, including level of control by brand owners.
    • Emerging techniques in product placement, including electronic insertion of products into older programs or to customize placement for appeal to different regions.

    Christine Hernandez (Moderator)

    The H.D. Lee Company, Inc. (United States)

    Giselle Huron

    Google (United States)

    Susan Kayser

    K&L Gates (United States)

  • The Yin and Yang of Licensing: Deep Thoughts from a Licensee and Licensor

    Contains 1 Component(s) Recorded On: 05/21/2018

    A mock trademark license negotiation, in which a licensor and licensee will discuss their perspectives. (Intermediate Level)

    Pre-recorded from INTA's 2018 Annual Meeting. 

    Join us for a mock trademark license negotiation, in which a licensor and licensee will discuss their perspectives on:

    • Reasons for licensing a brand.
    • Considerations in selecting a partner and types of due diligence.
    • The terms that make a licensing arrangement successful.
    • Key tension points and how to resolve them.
    • Success stories and nightmare experiences.

    Viviana Mura (Moderator)

    U.S. Holdings Corp. (United States)

    Judy McCool

    HBO (United States)

  • Celebrities Everywhere! Analysis of the Use of Personal and Image Rights of a Celebrity in Different Jurisdictions

    Contains 1 Component(s) Recorded On: 05/22/2018

    The intangible asset known as the right of publicity (ROP) is becoming more and more relevant in many jurisdictions around the world. However, its regulation is far from being homogeneous, which poses a great challenge to practitioners in this field. (Intermediate Level)

    Pre-recorded from INTA's 2018 Annual Meeting. 

    The intangible asset known as the right of publicity (ROP) is becoming more and more relevant in many jurisdictions around the world. However, its regulation is far from being homogeneous, which poses a great challenge to practitioners in this field. Four experts, with vast experience in the entertainment industry, and who deal with these issues regularly, will share practical cases and discuss how ROP is regulated in jurisdictions such as the U.S., France, Germany, and Latin America.

    Join us to learn more about:

    • Understanding what ROP is and what aspects it includes.
    • The regulations of ROP may vary from jurisdiction to jurisdiction and the similarities and contrasts among them.
    • Common pitfalls encountered by practitioners of different jurisdictions.
    • The main challenges when enforcing ROP in various jurisdictions.

    Abraham Diaz (Moderator)

    OLIVARES Y COMPAÑÍA, S.C. (OLIVARES) (Mexico)

    Brooke Singer

    Davis & Gilbert LLP (United States)

    Ricardo Alberto Antequera

    Estudio Antequera Parilli & Rodriguez (Venezuela)

    Michel Bejot

    Bernard Hertz Bejot Societé d’Avocats (France)

    Thomas Hertl

    ARNECKE SIBETH (Germany)

  • Protecting Unregistered Marks via Passing Off and Unfair Competition: Reputation Versus Goodwill (and Everything In-Between)

    Contains 1 Component(s) Recorded On: 05/22/2018

    Regarding the decision by the UK Supreme Court in the Starbucks (HK) case, the common law approach to reputation vs. goodwill and its implications for passing off will be discussed. (Advanced Level)

    Pre-recorded from INTA's 2018 Annual Meeting. 

    Regarding the decision by the UK Supreme Court in the Starbucks (HK) case, the common law approach to reputation vs. goodwill and its implications for passing off will be discussed, including:

    • Overview of the Starbucks (HK) case, including the common law test for passing off under UK law. 
    • Why the common law distinguishes between reputation and goodwill and what the substantive differences are between them? 
    • Should the online environment require a reconsideration of the common law rule?
    • The diversity in treatment between reputation vs. goodwill in other common law jurisdictions (such as Australia, New Zealand, and the United States); where they agree with the UK approach and where they don’t.
    • The civil law approach to these questions, focusing on Europe: 
      • Does the distinction between reputation and goodwill apply or are there other appropriate legal constructs?       
      • How do these legal constructs play out in an action for unfair competition or Paris Convention 6bis/well-known marks?
      • Is use within the jurisdiction considered a requirement for protection?
      • Are there other possible causes of action?           
    • Implications for practice, including strategic considerations, case management, and evidentiary requirements.

    Carlo Sala (Moderator)

    Studio Associato (Italy)

    Anna Carboni

    Wiggin LLP (United Kingdom)

    Myrtha Hurtado Rivas

    Novartis Pharma AG (Switzerland)

    Marina Perraki

    Tsibanoulis & Partners Law Firm (Greece)

  • Industry Breakout: Food Revolution: Branding and Trademark Issues Arising in the Rapidly Changing Food Industry

    Contains 1 Component(s) Recorded On: 05/22/2018

    No brands are more familiar with consumers than their food brands and the food they love. The food industry is going through a dramatic change in what we eat, how we buy it, and how brands are used. (Intermediate Level)

    Pre-recorded from INTA's 2018 Annual Meeting. 

    This panel, representing packaged food, fast food, confection, retail, and ecommerce experts, will discuss and debate how trademark professions must respond to the changes, including such topics as:

    • How the e-commerce of food will change your job.
    • Emerging importance of trade dress for food products and the associated challenges.
    • The clash of brands between packaged food, fast food, and meal kits.
    • When private brands collide: Why Kroger sued Lidl.

    William Miller (Moderator)

    General Mills (United States)

    Sandra Buja

    Walmart, Inc. (United States)

    Michael Kelly

    Amazon.com, Inc. (United States)

    Mark Leonard

    Jelly Belly (United States)

    Toam Rubinstein

    Reed Smith (United States)

  • “That’s Not Fair!” (or Funny): Trademark Fair Use in the Digital Age

    Contains 1 Component(s) Recorded On: 05/23/2018

    Join us for a discussion with a Ninth Circuit Judge, as we explore trending fair use issues. (Intermediate to Advanced Level)

    Pre-recorded from INTA's 2018 Annual Meeting. 

    Join us for a discussion with a Ninth Circuit Judge, as we explore trending fair use issues, including:

    • Tarnishment in the digital age. 
    • Nominative fair use in dilution cases.
    • Third-party marks in social media, including video. 
    • Companies’ expressed need to use logos in mobile and Internet settings.

    Signe Naeve (Moderator)

    Starbucks (United States)

    Judge Margaret McKeown

    Ninth Circuit Court of Appeals (United States)

    Kathryn Spelman

    Lane Powell (United States)