Forum Magazine: The General Counsel as a Conduit to Innovation

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Tanya Rothe has had an interesting journey with D-Wave Systems in its evolution over the last decade, forging ahead with its first-of-a-kind quantum computing technology.

In a very unassuming building in Burnaby, British Columbia (B.C.), she goes to work each day knowing she is helping secure deals for its bleeding-edge developments. What’s interesting about Rothe and the three other in-house counsel profiled in this article is just how much they have become conduits to innovation, both inside and outside their companies.

Whether advising start-up organizations, using innovative approaches to protect intellectual property or copyright, addressing counterfeit production issues or supporting digital enterprise for customers, all share a passion for enabling their businesses to succeed and grow. And they do it as an integral part of the business, rather than a siloed function.

On the Front Lines of Brand Protection

Katie Jamieson is the only lawyer at Herschel Supply Co., a Vancouver-based global accessories brand, and is the company’s first general counsel. She oversees global expansion initiatives including corporate development, M&A and investment opportunities as well as protection of the company’s trademarks and intellectual property.

“Any counterfeit or trademark infringement is a huge problem for us and in fact all brands around the world,” says Jamieson. “Grey-market goods are a problem for us given our international distribution structure. Products are purchased from us directly through our wholesale channel but are then sold down the line without our knowledge and consent to unauthorized retailers. That means our products are ending up in places they are not supposed to be such as discount stores, and that really devalues our brand. We take that really seriously.”

Finding grey marketers has changed rapidly in the last few years. Ten years ago, a company could confront a grey marketer at a bricks-and-mortar store and deal with it. But the Internet has changed the game dramatically, making it easy for unauthorized sellers and counterfeiters to sell knockoffs.

“They can sell a lot more product … than before and pass on the cost savings to consumers,” she says.

Jamieson has been challenged by her management team to find brand protection solutions outside the traditional legal model.

With an intellectual property portfolio in 70 different countries, the grey-market and counterfeiting rules for Herschel are different in each country. Herschel uses a third-party service provider called NetNames to monitor online marketplaces and social media sites looking for specific trademark searches and logos. Their tools locate unauthorized product sales all over the world in online marketplaces such as Amazon® and eBay, and Chinese marketplaces such as Taobao. It then provides people who are dedicated to the brand to go through the enforcement and takedown process.

“Being the only lawyer here, for me to try and do that would be impossible to stay on top of it all. In the first six months alone, they took down 20 million units of unauthorized Herschel merchandise. If we did a rough translation, it was over $620 million worth of counterfeit, grey-market and fake products from the Internet,” says Jamieson. “That gives you an idea of the size and scope of the problem we are facing.”

You can read this full article in the latest issue of Forum magazine.