INTA 2024: An IP lawyer’s relationship with the C-Suite

21 May 2024

INTA 2024: An IP lawyer’s relationship with the C-Suite

One of the most challenging aspects of life as an in-house IP counsel is fostering and maintaining a strong relationship with those in the C-Suite, panellists at the “Navigating Conversations with the C-Suite: The Role of IP Counsel as Strategic Advisors” said at INTA’s Annual Meeting in Atlanta.

“The role has evolved from what we traditionally think of as trademark or IP counsel,” said Theresa Conduah, a partner at Alston & Bird in Los Angeles, who moderated the session.

At any brand, you have to be more than a traditional IP counsel, said Lauren Dienes-Middlen, senior vice president and deputy general counsel at World Wrestling Entertainment in Stamford, Connecticut.

“IP is everywhere and in every part of your company and in every part of your brand,” she said. “Part of our responsibilities as an IP lawyer is to make sure the folks in the C-Suite know how involved IP is, and how important IP is and how it permeates everything.”

Dienes-Middlen said that creating that relationship with the C-Suite will help an IP lawyer to be involved earlier in product and brand decisions, rather than being forced to swoop in at the last moment to scuttle a decision that could be detrimental to the brand.

“I had to learn to insert myself into what was going on. I had to learn what was going on. You’ve got to get up out of your offices and walk around the departments and get to know people on a personal level so that they’ll call you and say, ‘Hey, we’re working on X, Y or Z. I’m not actually sure, but [maybe we need your help],’” she said. “You need to put yourself out there so that people become part of the IP process and the thought process and the creative process.”

Part of that, she said, is letting them know that much of what they do involves IP – even something as simple as licensing a font. “They don’t understand that’s intellectual property. What is the license you’re getting? What is it for? Is it commercial? Is it for editorial? Is it perpetual? If it’s not perpetual, are you going to have to pull that down in five years? To explain to them where IP comes and how it plays in the protection of your assets as a company, that’s our job.”

Aaron Weinzierl, managing counsel for IP at United Airlines in Chicago encouraged attendees to take every opportunity to educate their coworkers. “The more we educate our clients, the more we’re called in early,” he said. “They’re comfortable reaching out to us.”

The more involved you are with company executives, the more they’ll turn to you as a business partner, rather than just an IP lawyer, said Helen Omapas, senior counsel for IP at Harman International, a Samsung subsidiary based in Northridge, California.

“When I first started at Harman, I was very much of the mindset of ‘I’m a lawyer, here’s your legal advice.’ Over time, I felt maybe I was overstepping giving them business advice or even practical advice, advice about what are the PR consequences of these actions. But they actually came to me and said they appreciated it because I understood the company’s business, and they appreciated my insights and opinions and whether it was going to have any adverse consequences,” she said. “Really get to know your business. If you know the business, they’ll trust you.”

Dienes-Middlen said that business executives don’t want to spend a lot of time talking to their lawyers. “They certainly don’t want to have to figure out which lawyer to go to for different problems. You can become a go-to. It can become a bit like the bar exam where you have to be able to issue spot,” she said.

“[You want them] to understand that your goal is not to impede the creative process, but to be part of it,” she said. “In my world, when there are matches – we’re live, all the time – there are matches that are being set backstage, scripts are being written, and somebody gets injured, they’re creating another tag team and they’re asking me to clear it because they’re ready to go on in five minutes. I can’t just say ‘no, that’s not cleared.’ I have to say ‘that’s not cleared but this one is.’ I know enough about the storyline. I have to give them real advice in real time because they’re on their mobile phones. They’re not sitting on their laptops submitting a form with a request.”

When it comes to knowing the company’s business goals, the earlier a lawyer is looped in, the better said Weinzierl. “One of the benefits we have as IP lawyers is we’re often involved earlier on in business processes than lawyers in other groups may be. That gives us that advantage that, when they come to us, we’re able to help facilitate some of those discussions with other lawyers earlier.”

Dienes-Middlen said that it is important to know not only the upper-level management, but also to get to know those at lower levels. “I always want to know the people who are on the ground doing it, the people who are right behind the scenes, the folks backstage. The heads of the department have general concept questions for you, but how things are playing out are actually at a different level.”

It is also essential to tout your successes to company executives, the panellists said.

“We are a cost centre,” Dienes-Middlen said. “The only way we make money is if we’re settling cease and desist agreements. We cost money. Our job is to make them understand that it’s money that’s invested in the company. You have to make them realize you’re doing a thorough analysis and that you’re not going to be chasing something that doesn’t have a return. It might not be a financial return – it might be a PR return, a community outreach return, or it might just be that now we have that asset.”

The lawyers on the panel encouraged attendees to highlight their big wins – and sometimes the losses, too.

“It only takes one big win to remind people why we do it,” Weinzierl said. “When you have that infringement that’s causing a big problem, or the C-Suite gets an email that somebody saw one of our marks being used by somebody else, when you quickly address that and make it go away, it’s about using those opportunities that you couldn’t have done that without all the work that [the legal team] has done and the money that’s been spent.”

Using losses to help explain things is also effective, said Dienes-Middlen. “I’m not saying I ever wish to get a C&D, but if I’ve advised businesses not to do something because I think there’s a high risk, and once in a while you get a C&D that supports this, next time, they’re more likely to listen. There are real consequences if you don’t listen to legal advice.”

IP counsel should also be involved in social media and public relations, panellists said. WWE fans read what Dienes-Middlen called dirt sheets, providing gossip and projections for upcoming matches. While a business unit might want to file a trademark application, for example, immediately, her understanding of the business can give her the ability to suggest a delay might be prudent if otherwise possible, as any trademark filing will be public knowledge within about 48 hours.

She then told the story of a time when was caught off guard by traditional media. A wrestler named Stone Cold Steve Austin spontaneously popularized the phrase “Austin 3:16”, based on the Bible verse John 3:16, in one of his matches. As he traveled the WWE circuit, he began to use 3:16 in conjunction with the city he was performing in.

“It became his shtick. We filed for it, and have registrations in both Class 41 and Class 25. And then he started going from city to city and we filed for 3:16 for Class 25. Little did I know, that Stephen Colbert, on his late-night show in his opening monologue, was talking about my trademark filing in Class 25. He has Jesus come out with the belt on the show. This is what happens when I file a simple trademark sometimes,” she said. “It’s important that I be very mindful that when I file, even an opposition or an extension of time, it will be talked about in the dirt sheets. If you can anticipate this might be a be a PR concern [and it explain], you might get their buy-in, and they were part of the decision to do it.”

- Gregory Glass, reporting from Atlanta

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