Jonathan Cohen is trying to prove that trademarks have a sound. Specifically, he's attempting to trademark the famous lion's roar that Metro-Goldwyn-Mayer has used at the start of virtually all of its movies since the late 1950s.

With precedent in the United States, where the trademark was filed in 1986, Mr. Cohen and his law firm filed an application in 1992 with the Canadian equivalent - the Canadian Intellectual Property Office.

Mr. Cohen patiently waited 18 years for a resolution, but was defeated on a technicality. Since one can't see the sound, the office ruled, there was no way to trademark it under Canadian trademark law. And no, a sonogram of the roar did not count.

He and his firm, Kanata-based Shapiro Cohen, subsequently applied to the Federal Court of Appeal. Mr. Cohen said he is optimistic they'll be successful, although they're still waiting on a decision.

"If you look at the definition of drawing (in the act), it is broad. It could include a sonogram or video delineating it."

Mr. Cohen is no stranger to new frontiers. After all, he was working on intellectual property protection on the Internet back in its Wild West days of cybersquatters buying up domain names by the dozen, sitting on them and then receiving riches from companies reluctantly paying out to buy them back. At the time, there was no established grievance process to deal with this problem.

"I've seen the field that I'm in go from a relatively backwater, small area of law in which very few people were interested, to absolute mainstream," he recalled.

He picked up a few stories along the way, too.

A new Internet sheriff in town

In the early days of the Internet, just a single registrar handled requests for most registrations: Network Solutions, which gained the right under a 1993 co-operative agreement with the United States government. The exception was top-level country domains such as .ca; at the time, registration was done by a volunteer organization at the University of British Columbia. (Canadian registrations are today handled by the Canadian Internet Registration Authority.)

By 1998, the United States was ready to open it up to competition. Mr. Cohen was a part of those early discussions.

This culminated in 1999 when the Internet Corporation for Assigned Names and Numbers allowed five new companies to register: America Online, CORE (Internet Council of Registrars), France Telecom/Oléane, Melbourne IT and register.com. According to a press release from the time, 29 other applicants were lined up to participate, pending approvals.

Mr. Cohen, previously an ICANN board member, was elected chair of the ICANN intellectual property constituency working group in 1999.

"We invited individuals who had an interest in intellectual property ... to participate and crystallize the issues from an intellectual property perspective that we felt needed to be brought to the attention of the Internet and the board when it was considering action in various areas," he said.

Grievances

While Mr. Cohen was chair of the working group, the ICANN constituency helped establish a grievance process for companies who felt their brand name was being unduly infringed upon by others' domain registrations.

The terms were initially set out by the World Intellectual Property Organization and then worked into an acceptable form within the ICANN working group, Mr. Cohen said.

It sent one message to the cybersquatters, Mr. Cohen said: "The parking lot has been paved, guys. The Wild West is over."

Recently, according to intellectual property firm Marks & Clerk's Coleen Morrison, ICANN considered changing the process as several new "top-level" domain names were introduced, including .shop and .xxx.

That decision has been postponed until the community has the chance to see how it plays out with some new changes adopted for the top-level domains. For example, there is now a process where anyone in the world can take steps to register their trademark and receive advance notice if a registered domain name is similar to their trademark.

But Ms. Morrison, a former colleague of Mr. Cohen and a part of the International Federation of Intellectual Property Attorneys, said she's pleased with how effective the grievance process has been so far.

"It's functional, it's effective, and we can't do better than this right now."

The rise of Internet privacy concerns

These days, the new frontier of the Internet is information collection - how much of your data companies can track and use - and to what extent anonymous posters must be revealed when the police come knocking.

"There has always been tension between the openness of the Internet - the ability to get any information that you want to market yourselves, to research any subject - and at the same time, the potential for incredible invasion of privacy for people's personal information, which is now increasingly online," Mr. Cohen said.

While saying it's important that people cannot commit "serious crimes through the Internet" without detection, he cautioned that it is best not to swing too far to the side of enforcement.

"I think it's extremely important that there be some oversight and reasonable limits on what police and law enforcement can do because ... it only takes one person who isn't (honest) to cause havoc."

May the case be with you

In 1977, 20th Century Fox discovered a person in Vancouver who had mass-produced a Star Wars board game ahead of the summer release of the first movie, A New Hope.

"They were, to say the least, mildly upset," Mr. Cohen recalled. So the studio gave him a ring.

According to Mr. Cohen, Star Wars was the first film to really understand the link between the movie and tie-in merchandising and licensing.

"Part of our case was to show the significant scope of the licensing program and its importance and value as a new method for capitalizing on the projected popularity of a film and its characters, and that the licensing program was closely ‘controlled' to ensure the public got quality products," Mr. Cohen said.

"A rogue manufacturer would not be under anyone's control and could cause real damage to the extensive and very valuable licensing program, and to the value of the Star Wars mark. I needed to see and refer to all these products in our evidence to show how significant and wide-ranging the licensing program was to be."

In preparation, the studio sent Mr. Cohen original Star Wars memorabilia so he knew what it looked like.

After he won the case, Mr. Cohen asked if he could keep the products for his children.

"They said I could have them all," Mr. Cohen said. To this day he still has much of it, including a full-size Chewbacca and a press kit replete with pictures and descriptions of the film.

Dealing with the fame game

Mr. Cohen has had his share of international attention. He testified before a U.S. Congress trademark committee in 1999 and has travelled to 90 countries representing ICANN and other trademark organizations.

"So few people get a chance to test themselves, to step out on the world stage ... and to find out that you're OK is tremendously personally satisfying," he said.

While pointing out he isn't a recognizable face to a person on the street, he has had his measure of fame. The experience was humbling, he said.

"It happened to me at a stage of my life and my career where all I could think was, I am lucky. It is so cool. It didn't affect my ego or anything else at all. I thought I was tremendously lucky to stumble into this opportunity to play a very small role at the beginning and the centre of this incredible society-changing phenomenon called the Internet."

[HT - Ottawa Business Journal]

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