decision to assert IP claims is not entirely a rational decision.99 Many
times, the interviewed lawyers identified client-specific
characteristics that were relevant to enforcement decisions. One
significant factor was whether the client was an “aggressive” enforcer
of its IP rights. All of the lawyers agreed that certain of their clients
had a company culture of aggressive trademark or copyright
enforcement, which often shaped how the lawyers provided legal
advice. Generally, the lawyers explained, the more aggressive the
client, the more amenable the lawyer would be to “push the envelope”
in enforcing rights. Two lawyers provided examples where a
particularly aggressive IP enforcement client’s trademark had been
selected by the company’s CEO. Because of that, both the clients and
the lawyers understood that aggressive enforcement efforts were
expected. On the other hand, a number of lawyers made it clear that
they had certain clients who were very sensitive to potential negative
publicity that might ensue from aggressive IP enforcement. For these
clients, the lawyers stated, it made more sense to avoid enforcing
claims that may appear to be weak. There is thus variation in
enforcement practices based not simply on the legal merits but also on
the variable of client culture, particularly the issue of how sensitive
the IP client is to public opinion and company image.
In sum, the present research shows that law clearly matters for
both IP lawyers and their clients in deciding whether and against
whom to assert trademark or copyrights—but only to a certain extent.
Other factors are important as well and may greatly influence the
decision to assert rights. Trademark and copyright owners are often
much more likely to attempt to enforce their IP rights when the
alleged infringer is a competitor. In that circumstance, the IP rights
are sometimes asserted as a means to gain competitive advantage in
the marketplace rather than merely to vindicate legal rights. In
contrast, enforcement is generally less likely when the potential target
has some non-competitive relationship with the trademark or
copyright owner. The examples that were most often cited included
targets who were customers or distributors of the IP owner. The two
movie studio in-house IP lawyers interviewed for this study
specifically stated that enforcing rights against fans, who are typically