This article originally appeared in the Spring-Summer 2016 issue of Carolina Law.
Deborah R. Gerhardt is an associate professor at UNC School of Law, specializing in the intersection of law and creativity,
and has written leading articles in trademarks, copyrights, art law, false advertising and plagiarism. Gerhardt’s research assistant, Carolyn Detmer 3L (Class of 2016), sat down with her for a conversation about intellectual property in the legal field.
What role do you see intellectual property currently playing in the legal field? Is it changing?
DEBORAH GERHARDT: Intellectual property was once a niche practice. Now it is unavoidable. To serve a huge array of clients — low-wealth entrepreneurs, high-tech businesses, artists or anyone with a website — a basic understanding of the different types of intellectual property is essential. My students and I discuss this subject all the time. They start to see that IP is everywhere — often in places they did not expect. Every organization lives and dies by its trademark: the symbol of its reputation and core values. Protecting the distinctive story of the mark is everything. If your brand loses its ability to inspire customer loyalty, the business dies. And every business has a website with copyrighted content so it must learn how to protect and share its own creative works while respecting the creative rights of others. Patented technology is also everywhere from machines to software to pharmaceuticals. Design patents are also increasingly used to protect a wider variety of products including luxury shoes and handbags. Computer and internet technology has also changed so much. IP is easier to create and also much easier to copy. The law is fascinating and evolving quickly as well, which is great, because it creates more work for my future students.
CD: I know you have done research regarding some specific areas of trademark and copyright law. Can you tell me about these areas of interest and how they have influenced your teaching?
DG: The process is organic. Teaching inspires research questions, and my research informs my teaching. Teaching more and more trademark students every year inspired me to question whether it made sense for clients to hire trademark lawyers. After all, business owners can prosecute their own applications before the United States Patent and Trademark Office (USPTO). Did it matter to have a lawyer? Was I training my students for unnecessary work? These questions are important to ask because we want to make sure we are training our students for skills that are needed — not those that are redundant. In other areas of law, political scientists have proven that having a lawyer did not correlate with a better outcome. The question “do trademark lawyers matter?” was scary but important. I recruited my data guru [Associate Dean for Administration, Assistant Dean for Academic Excellence and Clinical Associate Professor of Law] Jon P. McClanahan ’08 to mine the massive USPTO trademark data set for answers. Luckily we found that having an experienced lawyer especially when the USPTO issues an office action, did correlate with successful outcomes. In doing this research, I also discovered so many examples and interesting patterns in the data to share with my class.
CD: Tell me more about the IP program at the law school. I know it has been expanding over the last few years. Where do you ideally see it headed?
DG: For years, I have been pushing UNC to launch a startup garage! I want my students to be able to use what they learn in class to help low-wealth entrepreneurs get their businesses launched. I began working with interested students on these projects as independent studies until we formally launched our IP clinic with two students in 2014. This year we have six students in the clinic, and I understand next year 26 want to participate! I hope UNC will find the resources to grow this program so more of my students can see the law in their textbooks come alive. Every new business has a trademark for their products or service. Choosing a mark without counsel is risky because precious seed money may be lost if the mark is confusingly similar to another player in their commercial space. So for low-wealth entrepreneurs, this advice is critical from a defensive perspective, but it is also critical from an offensive perspective so we can help our clients choose names that add commercially distinctive value. One of my students last year had a “stop the presses” moment with a client who was about to go to the New York food show with a name that had been registered by a huge consumer products company. Because of my student’s advice, the client dodged a near certain lawsuit, and now has a registered mark that is commercially distinct.
CD: How is the school, and the program specifically, preparing students to meet the evolving needs of the field after graduation?
DG: My goal is to support my students as they become practice-ready lawyers for the industry they want to serve. For example, a student who follows our trademark track will have taken the basic course and the practical seminar in the second year so that she will know how to file applications, respond to office actions and draft trademark opinion letters by the time she leaves for her 2L summer job. During the third year, if she participates in the IP clinic, she will use what she learned to assist real clients, learning about how trademark clients often have advertising, copyright and contract issues. Through this work, she will deepen her substantive knowledge while she gains client development and experience advising real clients. Ideally, the student will also participate in the IP moot court competition, art law or a journal to provide more opportunities for growth and in-depth study. I love this track because it is win-win along so many dimensions! It gives our students a meaningful educational experience, an understanding of how gratifying practice is, and the practical skills give them a big advantage when looking for jobs. Our IP clinic gives low-wealth entrepreneurs access to excellent pro bono legal services. The program also helps law firms, nonprofits, businesses and the USPTO who have the good fortune to hire my fabulous IP students.
-May 5, 2016