2. Repeat Player Experience as Advantage
The interviewed lawyers also identified a second advantage that
may stem from repeat player status, something often referred to as
“the experience factor.” The lawyers expressed a belief that having
both a lawyer and client that are routinely involved in enforcing
trademark and copyright claims provided both with advantages
stemming from their deeper understanding as to what can and can’t
work in the IP disputing process. In addition, it provided greater
expertise on the relevant law, insight into the types of circumstances
that might constitute infringement, and how they might be handled
effectively. When asked to explain, one lawyer expressed her belief
that her trademark clients especially understood how far they can
push smaller companies and individual enforcement targets. Another
lawyer agreed, but also stressed that deep experience in the disputing
process provided his client greater confidence when enforcing
trademarks and copyrights, even against large company targets.
3. Selective Enforcement as Advantage
One additional repeat-player advantage identified by the
interviewed lawyers is the clients’ ability to selectively enforce their
IP rights. This was described as the ability to “choose your fights,” to
select enforcement targets based in part on an understanding as to
whether the dispute would likely be routine or entail undue risk. The
example that most often came up when discussing this topic was
cases involving apparent strong defenses to infringement, such as fair
use in copyright or a defense based on parody in trademark law.
Several lawyers stated that their clients learned over time that such
cases could be challenging to enforce and sometimes bring unwanted
negative publicity, so they sometimes took this into account and
focused on easier targets.
E. Resistance Is Not (Necessarily) Futile: Limits on IP
Enforcement
One of the more prominent themes from the lawyer interviews is
the practical limit of trademark and copyright enforcement. Although
many of the lawyers agreed that their trademark and copyright clients
can—and do, sometimes—enforce even weak IP rights successfully,
they also frequently qualified such statements by indicating that there
are limits to enforcement efforts. The lawyers often remarked that
they were aware that enforcement can bring unwanted negative
publicity. And they stated that while some clients have little concern