INTA 2024: GC want communication from IP lawyers, but not all the details

22 May 2024

INTA 2024: GC want communication from IP lawyers, but not all the details

What does a company’s general counsel want to know about the work of its IP lawyers? It might not be what you think, according to a panel of general counsel at an INTA Annual Meeting session called “Demystifying IP: Strategies for Effective Communication by Heads of IP to the General Counsel.”

One thing the assembled GC could agree upon was that they all understand the importance of a company’s brand, and beyond that, of the work the legal team does to protect the brand or brands.

“I always consider the brand the be the biggest asset that any company has,” said Hadiya Claxton, chief legal officer and global general counsel at McIlhenny Company, the maker of the Tabasco, headquartered in Avery Island, Louisiana. “When you think about the development of a company, you’re developing either a product or a service. You [may] start with patents, but at some point, patents expire, and copyrights expire. Trademarks are the only intellectual property that can continue into perpetuity if you manage it right. Intellectual property is extremely important for us as a brand to maintain our presence and our importance around the world.”

Claxton told the audience that the Tabasco brand has 98 percent brand awareness across the world, with the product being sold or marketed in more than 197 countries and territories.

“Our ability to drive our business strategy comes from our trademark,” said Willie Hernandez, senior vice president and general counsel, international, at The Coca-Cola Company in Atlanta.

“Because our ability to connect with our consumers, it’s not about the beverage in the bottle, because there are other beverages in bottles, and when you operate in 200 countries, the brands are not as known. Here in Atlanta, everybody knows The Coca-Cola Company, but when you get into newer markets for us, the more remote parts of Africa and deep into Asia, the brand doesn’t necessarily come with the same brand of awareness. Our ability to drive our connections with our consumers comes from our ability to leverage our trademark and draw some associations between the experience that someone can have with the beverage in the bottle and our brand.”

In the non-profit sector, the general counsel is generally interested in the same things, but often from a somewhat different perspective, said Laurisa Curran, interim chief legal and risk officer for the American Cancer Society in Atlanta. “I would add that [as a non-profit], we’re in a little bit different position. You don’t go into the supermarket and see our product, so it’s really important for us that there’s that level of trust with our brand, the trust that when they make a donation, they’ve made it to the right organization.”

General counsel understand that marketing a brand has changed, said Hernandez. “It comes down to evolving with our consumers. We talked about drawing associations between the brand and the experience. In the old days, we would do that by creating ads that would play during the World Cup or the Super Bowl and would be seen by a billion people, but that’s not where our consumers are today. We have to evolve into the digital world, because our consumers are getting younger and younger, and the thing that everyone in the world has is a [mobile phone], and that’s how we connect with them. It’s not the big ads that drive our trademark, it’s the small ads that reach our consumers in their local space, in their environment and, for us lawyers, in their unique regulatory environments.”

Having a thorough understanding of the business, not just a siloed portion of the legal practice, is important for in-house attorneys, said Claxton. “They must have connections with other employees across other business units and understand what everyone does, because that assists us in moving the strategy forward,” she said. More than half of her company’s in-house legal department is focussed on IP.

She said the company has what she called an “immersive onboarding experience” – one where new employees, including lawyers, spend their first two or three weeks working in various departments, including a day or two in the factory, to ensure that they know what the company does, and who does what. “That really drives the strategy of the legal department,” Claxton said.

She holds external counsel to a similar standard, making sure that they also have an understanding of the business.

Micheal Binns, director and associate general counsel, and head of patents and trade secrets at Meta in Atlanta, noted that general counsel are busy people. “We in this room like to think that trademarks are the greatest thing since sliced bread, and should occupy at least 99 percent of your time, but we also know that’s not reality. How much level of detail do you like to hear from your trademark lawyers about IP issues facing the company?”

Claxton said she needs to understand high-level strategy, whether she is working with in-house or external counsel. “I need to understand your strategy. I want to understand the thinking. What is the thinking behind wherever we’re going? As the strategy head, I need to be able to adequately articulate that to the board, and to the rest of the executive leadership team. I don’t need to hear all of the day-to-day details about what’s happening. I expect the attorneys in the legal department have a strong understanding of the details of day-to-day, but I simply don’t have time to hear those details,” she said.

“When I step into business meetings with senior leaders, we only talk about strategies to connect with our consumers,” Hernandez said. “They don’t want to talk about the law. They’re not as excited about the law as we are, so we don’t spend time talking about that. What I need from the IP team and the legal team is the advice on what regulatory barriers will be to us achieving our business strategy.”

He said that, with business in 200 countries, that means that Coca-Cola has at least 200 strategies. (With local regulations the company must file, he said, it is, in reality, closer to a thousand strategies.) “I need the legal team to dissect the strategy, work with the technical team to figure out how we’re bringing this solution to life, then figure out the legal issues. They have to go through the entire strategy to issue spot. I need to know from them where our strategy will encounter obstacles.”

- Gregory Glass, reporting from Atlanta

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