LJN Newsletters

Until recently, courts have had relatively little to say about the practice of keyword advertising — ie, triggering Internet advertisements to appear when users search for a keyword identical to a competitor's trademark. Practitioners could look only to a single decision denying Playboy Enterprises, Inc.'s ("PEI") motion for a preliminary injunction against Netscape Communications Corp. ("Netscape") and Excite, Inc. ("Excite"). Now, four courts have recently issued decisions reaching starkly different results on keyword advertising practices, including a Ninth Circuit decision reversing summary judgment that had been entered against PEI in its litigation with Netscape and Excite. While much remains to be resolved, certain factors have been particularly influential.

Highlights of the latest intellectual property news and cases from around the country.

Few jobs in the world are more rewarding than the role of a marketing professional at a law firm. Where else can someone talk to the greatest legal minds, reporters from the Wall Street Journal and the General Counsel of a Fortune 500 company in one day? Add to this the situation where the concept of marketing is changing almost on a daily basis, and you have a dream position for a talented, visionary marketing guru. However, as any in-house veteran will tell you, some aspects of the actual job were not specifically mentioned in the job description. Professionals strongly lobby for grandiose titles such as Chief Marketing Officer or Global Director of Business Development when they first enter their firm. It looks great on a business card. It also really impresses people at your next high school reunion and can compensate for the extra 20 pounds you might be carrying since people last saw you on prom night.

Discussions about cross-selling in law firms remind me of the well-publicized discussions a few years ago in the scientific world about cold fusion. Both represent their respective professions' Holy Grail, but no one has really made much meaningful progress toward either, in part because there are some very real and persistent barriers. More significantly in the case of cross-selling, the problem is self-created. By associating themselves and their value to clients exclusively with their practice specialty, lawyers create and perpetuate a product-centric focus that is the root of the cross-selling problem.

Over the last 10 years, I have attended a number of leadership, management and other seminars pertaining to the direction that law firms must take in order to be successful in the 21st century. What ensued was years of frustration. I never felt like our firm fit into any of the categories of law firms that would prosper in the ever-changing legal environment. We weren't a national, regional or international law firm. We weren't a boutique. Yet each year our firm grew both in size and financially. In 2003, our profits-per-equity-member reached $425,000. We are competitive economically with the large law firms, yet we are having more fun.

By way of Europe and, more specifically, London, a certain brand of "forum" ' the PM Forum ' has arrived in North America. The PM Forum, the world's largest marketing association serving the professional services industry, has launched the PM Forum North America, bringing together professionals from the world of law, accounting, consulting and real estate.

On Oct. 23, the New Jersey tax court issued a decision that most tax experts expect will change the direction state income taxation has been taking for the past decade. The new direction will reopen an opportunity for franchisors and other licensors of intellectual property such as trademarks and patents to avoid paying state income taxes by using intellectual property holding companies based in tax-haven states such as Delaware and Nevada.

A standard plot element of time-travel science fiction is that those journeying to the past must first be sternly warned that anything they do to change the past — stop the car before it plunges over the cliff, warn the wagon train of the bandits lurking ahead, select paper instead of plastic at the checkout line — has unforeseeable consequences that could render the future (and hence, the present) completely unrecognizable. The idea, of course, is that what happens in the past affects the future.