What led you to a career in IP law, and what advice would you offer anyone considering a similar path?
As a law student, I was fortunate to find work in a boutique IP law firm. I found the subject matter fascinating and even considered (for a short period) training to become a patent attorney, before realising that trademarks and copyright interested me more. Over the years, I have discovered that the combination of trademark portfolio management, copyright advice and drafting licensing and technology transfer agreements enables me to learn something new every day while keeping me constantly on my toes (this is not as uncomfortable as it may sound).
It is my belief that in order to develop a successful career as an IP lawyer, you must be an excellent commercial lawyer, with a good grounding in contract and corporate law, as well as a lot of patience and a good sense of humour. I am in favour of training in both disciplines – commercial and intellectual property – in parallel. This kind of training is best found in general practice law firms – although I began my career at an IP boutique and will always be grateful for the basics that I learned there.
Your practice includes a unique focus on IP issues in the online gaming industry. What are the biggest challenges facing rights holders in this space?
Trademarks, domain names and proprietary content are all crucial elements in the online gaming industry, which must be protected and enforced. Online marketing relies to a great extent on a robust trademark and domain name portfolio. This is a heavily regulated field, where regulatory, tax and commercial considerations all affect the operator’s business decisions. Complying with numerous legal regimes while keeping up with the rapid pace required of a competitive and dynamic online business is a major challenge and there is a constant risk that operators may overstep an IP boundary of which they were not even aware. As IP counsel to several operators in this space, my team and I routinely teach our clients the dos and don’ts of content use on the Internet (including – as every parent knows – that ‘everyone else is doing it’ is not sufficient justification).
What are your top tips for managing a truly global trademark portfolio?
First, keep abreast of developments in the client’s business; they will not always tell you everything you need to know about new jurisdictions or new trademarks for which applications should be filed before they are launched. Second, do the best clearance searches available with the client’s budget (although bear in mind that there is no such thing as 100% certainty); do not file applications for unnecessary trademarks. Third, choose associates that you trust in each jurisdiction – having a personal relationship with the people you work with is extremely helpful. Finally, always keep the big picture in mind and remember that (almost) no client has an unlimited budget.
What are the most important tools to help you do your job well?
My most important resource is my team; they are knowledgeable, smart and dedicated partners, associates and paralegals. Personal relationships with practitioners worldwide are a huge bonus. Good docketing software is a plus and a good search provider is a must.
How do you see IP practices and/or the law firm environment evolving in the coming years?
After a year in the shadow of the covid-19 pandemic, this question is harder to answer than ever before. Traditional law firms that were reluctant to embrace remote working have been forced to try it and have discovered both its benefits and its drawbacks. I am certain that we will see more flexible working arrangements even in this most traditional of areas. While the legal community in general and the IP community in particular love to meet to exchange views and business cards and to build those valuable personal relationships that we all rely on, frequent and extensive overseas travel is likely a thing of the past, with virtual platforms continuing to take the place of many in-person meetings. Although I remain a firm believer in the value of face-to-face meetings and I eagerly look forward to meeting my overseas friends and colleagues as soon as it is safe to do so, the claim can no longer be made that in-person meetings are an absolute necessity where virtual platforms such as Zoom, Microsoft Teams and Google Meet are available.
Karen L Elburg
Partner and Head of IP Practice
[email protected]
Karen Elburg heads the Herzog, Fox & Neeman IP practice, a virtual IP boutique within a full-service law firm. With an LLB from Bar Ilan University in Israel, Ms Elburg deals with trademark prosecution, copyright advice, licensing, technology transfers, transactional intellectual property and M&A support. Her areas of expertise include advising on trademark strategies, worldwide portfolio management and the trademark/ domain name interface, with a unique specialty in IP issues in the online gaming industry.
