What has been one of your biggest achievements over the past year?
I founded Cozen O’Connor’s IP practice two decades ago with one goal in mind – to create a full-service IP boutique within an Am Law 100 firm. It has now grown to employ more than 50 top practitioners. The IP department is consistently ranked among the top trademark filers in the country and as a top trademark litigator for both plaintiffs and defendants.
I have grown my personal IP practice along similar lines. Rather than simply parachute in when crisis strikes, I serve as outside general IP counsel, particularly in the pharmaceutical and life sciences industry. I lead IP prosecution, portfolio management, global cease and desist programmes and high-stakes IP litigation. During the building of the group’s internal infrastructure and capacity, I averaged more than 2,500 billable hours each year in my trademark, trade dress protection, counterfeiting, data privacy and copyright work.
I have been assisting Fortune 500 companies in handling their global trademark portfolios and related enforcements. I have also been leading 12 active federal US lawsuits. In the past year, I have successfully led IP prosecution, portfolio management and a global cease and desist programme for the world’s largest independent global dermatology company.
What are the main challenges that clients currently face enforcing their IP rights online, and how can these be overcome?
Two of the biggest challenges in online enforcement are the pervasiveness of online infringement and the ease with which the infringing products can be transitioned to another platform once they have been stopped in one forum. As such, online enforcement has become one of the most significant challenges facing brand owners. Brand owners cannot ignore online enforcement as it can have a significant impact on the brand’s goodwill and in some instances, as with pharmaceuticals and consumer products, it can be a consumer safety issue. The formulation and implementation of a multifaceted online enforcement strategy is integral for maintaining strong IP rights. We customise each brand owner’s online enforcement strategy by incorporating its goals, objectives and resources. We assist with first obtaining trademark and copyright registrations so that we can use them to facilitate Digital Millennium Copyright Act notices and other online notices to request removal of the counterfeit goods.
How can trademark owners work with external parties such as online platforms and regulatory authorities to clamp down on counterfeiting?
Most counterfeit products originate from Asian markets, but the rise in e-commerce means that borders are fading. Having a resourceful investigation, a range of enforcement options and a nimble ability to execute can limit the impact of counterfeiting. We assist with Digital Millennium Copyright Act and other online take-down notices, registering the trademarks, copyrights and products with various border control customs offices and working with Customs to seize counterfeit products. We monitor the Internet to remove counterfeit products and work with various federal agencies and retail platforms specifically to delete counterfeit products. We also work with various financial institutions to prevent counterfeit sites from being able to obtain payment for counterfeit goods.
What effect will the Trademark Modernisation Act 2020 have on clients looking to protect their rights in the United States?
The Trademark Modernisation Act’s significant amendments to the Lanham Act are intended to remove registrations that are not in use so as to alleviate business owners’ prior difficulty in finding available marks. The act will provide trademark owners with new options to protect their brands, but the new procedures could also subject these brand owners’ applications and registrations to new and increased opposition from competitors.
The act also clarifies that irreparable harm can be presumed in requests for injunctive relief upon a finding of trademark infringement (or a showing of likelihood of success on the merits for preliminary injunctions). This clarification will reduce the evidentiary burden on trademark owners seeking injunctive relief as many circuits required a showing of harm to the brand before obtaining injunctive relief.
How do you envisage the US trademark litigation landscape evolving over the next few years?
The Supreme Court recently ruled that a plaintiff is not required to prove wilful infringement in order to seek a trademark infringer’s profits under the Lanham Act. This decision will implicate both plaintiffs and defendants in future trademark litigation. Plaintiffs may take a more aggressive approach to litigation and defendants may decide to settle cases earlier in the cycle.
Co-chair, IP Department
Camille Miller co-chairs Cozen O’Connor’s IP department. Her practice encompasses trademark, trade dress, copyright, unfair competition, cybersecurity and data breaches, right of privacy, right of publicity, domain names, counterfeiting, licensing, trade secret and franchising law, as well as all areas of IP litigation. Ms Miller received her JD from Chicago-Kent College of Law, Illinois Institute of Technology and her bachelor’s from Franklin and Marshall College.