Sports, Entertainment and Media Team of the Year: Netflix

The Netflix team receive the award from Rouse’s Nick Redfearn and Amanda Yang (both right)

It is not often that a trademark story goes mainstream, but that was certainly the case with a cease and desist letter sent by Netflix to a pop-up bar in Chicago using the theme of popular TV show Stranger Things.

“It was astonishing just how viral that letter went,” reflected Jeremy Kaufman, senior counsel, intellectual property at Netflix. “I had long-lost high school friends contact me about it. I was surprised that they even knew I worked at Netflix.”

As for takeaways, he commented: “The letter shows how important it is to speak with your brands’ voice when there is an opportunity to do so. Every communication is an opportunity to further (or harm) your brand. Another takeaway is to avoid formulaic approaches to enforcement. The pop-up bar was an instance of free marketing. Fans were leaving their homes, by all accounts having a good time, and most likely obsessing about and deepening their love for our series. That allowed for a light and friendly legal approach. Of course, there are instances where a more stern tone is warranted – bad actors who are ripping off our fans may not get such a clever letter.”

However, Kaufman cautions that brands need to think carefully when deciding on the tone to adopt. “To speak in your brand’s voice, you have to know it,” he warns. “I think that the letter resonated because it was authentic with our Stranger Things story. Sometimes to be an effective brand, you have to give up some control of your brand. That can be difficult, but ultimately powerful.”

While the letter received plenty of media attention, it was not the only matter occupying the minds of Netflix’s trademark team. “Our clearance practice has kept us the most busy because we are trying to name so many great new films, series, documentaries, unscripted shows, and stand-up specials,” Kaufman explains. “Our content budget is estimated to be $8 billion this year! To help us scale, we spend a good deal of time crafting our global clearance strategy – which titles to clear where. Anti-counterfeiting is another area of growth as Netflix has begun to experiment with merchandising.”

As to how enforcement decisions should be approached, Kaufman maintains that not “all unauthorised uses of a brand harm a business. In this technological age in which consumers can play with, manipulate, and publish brands, I think the vast majority of unauthorised uses are beneficial to brand owners,” he argues. “Brand owners should be delighted to be relevant enough to have consumers playing with their brands. In my view that’s free marketing that should be encouraged rather than stamped out. So before reflexively enforcing, consider what is the actual harm that is being caused. For some industries, like pharmaceuticals and airplane parts, the harm is obvious and very serious. But if there isn’t a concrete harm, consider moving along and saving your resources.”

With productions expanding internationally, Netflix’s legal function is organised into US and international teams. The latter are based in regional offices around the world, while the US team is primarily based in Los Angeles (with a presence in New York to support East Coast productions). “We have specialists who lead various sub-practices and collaborate with the IP attorneys who are working directly on our productions. These lead our trademark practice (Ali Buttars), production clearance (David Morisaki), and we are looking for a stunning colleague to lead our copyright/chain-of-title group. Our trademark portfolio is relatively small compared to our major studio counterparts. But as it grows, so will our trademark group. I expect Netflix’s IP team to double in size by the time we land in Boston for INTA 2019.”

Asked to reflect on what makes the team successful in its efforts, Kaufman cites two main factors: “First, we are highly aligned with our business, marketing, PR, government relations and litigation colleagues. We know their goals and pain points. We are involved in shaping strategy on overarching issues as well as show-specific issues. As our business grows in scope, geography and complexity, it will be a continual challenge to maintain that alignment,” he muses. “The second is our company’s mindset. Like Netflix’s larger culture, the IP team is curious. We spend a lot of time challenging whether the prevailing orthodoxy of the IP community is the right approach for Netflix. We are also constantly seeking to innovate. Sometimes we can go down the wrong rabbit hole with innovation. But experimenting is the really fun part, and we are really fortunate to be at a company that supports that.”


Other nominees:
  • adidas

  • ESPN

  • New Balance

  • World Wrestling Entertainment

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