- Intimate understanding of the business’s priorities key to managing 9,000 trademarks
- A small yet dedicated in-house team allows holistic approach to brand protection
- Anti-piracy strategy is aggressive but balances not stifling fan engagement with the brand
WWE, or World Wrestling Entertainment Inc., is a huge sports entertainment brand boasting an IP portfolio of over 9,000 trademarks covering hard goods and entertainment content. At the helm of the IP department reign two central figures: Lauren Dienes-Middlen, senior vice president, assistant general counsel – intellectual property, and Matthew Winterroth, vice president, intellectual property. WTR found out the secrets to the successes of a duo who’ve worked alongside each other for almost a decade.
Managing a finite budget
The huge portfolio includes registrations of corporate marks, corporate logos, talent names, show names and designs, as well IP related to show content. Originally, WWE had relied upon external counsel for a lot of its IP work but that changed with Dienes-Middlen’s appointment: “I was brought on board 18 years ago so that we could bring the trademark prosecution in-house.”
The IP department now includes just Winterroth, two paralegals, and Dienes-Middlen. A modestly sized team has its advantages, she explains. It means that she can be involved at every level – clearance, filing, oppositions, maintaining and renewing registrations all fall within her remit. “To have the pleasure of touching all those points, we get a comprehensive sense of how to tackle it all and how to best spend the dollars most wisely in our efforts”.
Being in direct contact gives crucial insight on how to more efficiently run the IP practice, but also requires an intimate understanding of the business, explains Winterroth: “With such a large IP portfolio, it’s extremely important for us to stay on top of the programming/product pipeline and what’s going on in the company and forming the relationships needed in the company.”
Of course, the team has to garner an understanding of consumer patterns, Winterroth notes, in order to manage resources: “We’re blessed with a great budget but not an infinite budget. So we have to be proactive to work out what talent/show/product is popular where and what’s relevant to protect in certain jurisdictions.”
Keeping the outside in
Outside of the US, WWE still relies upon external counsel. A close and proactive relationship with these teams is key, Dienes-Middlen reflecting: “We have a network of great firms and we consider them partners. We always make sure to meet with our counsel at INTA annual meetings to remind them of what WWE is all about, what our goals are and what we’re focusing on.” It’s also important to keep external counsel constantly clued into WWE’s specific needs. “There’s no off-season and we’re live for most of our shows. So, our counsel have to keep up with that and they do.”
That close relationship is made easier by the fact that all IP rights reside with the company – something that is not always the case in entertainment companies. “What’s also unique to WWE, is that with the content we create, we’re the exclusive owner.” Winterroth explains. “This gives us a lot of power to decide what IP we want to protect, how we want to enforce, where we want to enforce.”
The content they own extends to the wrestling talent. “When wrestlers enter WWE, they sign an exclusive booking contract. For the duration of their tenure with WWE, we have exclusive rights to whatever ring names and characters they were using prior to signing with us,” Dienes-Middlen explains.
The content creation team then works with the wrestlers to add facets to their character and then incorporate these into the trademark portfolio. “The wrestlers understand that by assigning their rights to us, we can properly protect it and license it to our licensees. This, in turn, enables us to generate royalties products sold utilising this IP.”
At its heart, then, WWE is an IP business. As such, Vince McMahon, chairman and CEO of WWE, has prioritised IP throughout his tenure, says Dienes-Middlen. “Matt and I are both blessed in having a realistic budget for the IP we protect. Vince understands the value of the IP we own and the need for protecting it. It’s not just to protect our legitimate channels but to protect our fans against counterfeit products.”
The job of enforcement is one that sits firmly in Winterroth’s corner of the ring, and he splits the job into two facets: anti-counterfeiting and anti-piracy.
On the anti-counterfeiting side, he faces a constant uphill battle - not least because of the huge range of products they produce. WWE has product lines in clothes, sweets, toys, and stationary. “For us, the wide swathe of licensed and D2C product categories makes my job more difficult to spot counterfeit products simply from the limited details given on an online marketplace listing.”
Not being a luxury brand, WWE’s products also often pass under the radar of Customs enforcement - Winterroth adding that “compared to other companies with a certain set product line, [for which] they might have dedicated tells to spot counterfeits with” the WWE’s ever-evolving product lines make it more difficult for authorities to keep up. To combat this, the team must utilise its own in-depth knowledge of every aspect of the business – including the activity of licensees. Dienes-Middlen explains: “We can tell if something’s counterfeit or not because we have a great relationship with our internal departments that either make the product directly or are responsible for licensing that product.”
Sometimes, special measures are necessary. At the yearly WrestleMania, a huge event that attracts 80,000-90,000 fans from all over the world, Dienes-Middlen obtains a temporary restraining order to seize counterfeit merchandise at the scene. “On the day of the event, I work with local law enforcement to survey, identify and seize the counterfeit merchandise being sold so we can show the court the need to have the ability to seize the counterfeit merchandise at all our US live events.”
The anti-counterfeiting game has, of course, changed since Winterroth joined the organisation. Big border seizures from China, India, Singapore, and the Middle East are less frequent, with online marketplaces being the new bane. Another new challenge has come from print-to-order e-commerce platforms. “These print-on-demand marketplaces pop up and steal our IP as we’re creating it on our live programming. They don’t carry any inventory themselves and have no risk to them. They’re a thorn in our side we’re addressing.”
Damning the streamers
If counterfeiting has evolved, then piracy has undergone a paradigm shift under Winterroth’s watchful eye. “When I first started, WWE didn’t have a strong live streaming enforcement programme as it wasn’t necessary; instead concentrating on monitoring for user-generated content and peer-to-peer piracy directly downloaded by users. While those are still persistent issues, we’ve almost completely switched our focus to combatting the live streaming threat.”
The live streaming threat stems from the gargantuan amount of content WWE is constantly putting out. They broadcast on pay tv, multiple digital platforms, and their own over-the-top SVOD [streaming video on demand] network. They also have social media partnerships with YouTube, Twitter, Facebook, Snapchat, and so on. “We now monitor on all of our audio-visual programming in some fashion, everywhere, including on social media platforms that have grown their live streaming capabilities in the past few years.” Winterroth adds.
With live streaming there is an additional complication – the need for immediate takedown. “With pay per view (PPV) you need someone responding and taking action in real-time, not three days later when everybody has already viewed the entire show.” Yet Dienes-Middlen notes the issues particular to the company’s task. “Our PPV content airs on a Sunday night. That’s not when someone is manning a website to respond to a takedown notice. We have to alert them ahead of time to ensure that someone will be responsive to our takedown demands during the live feed.”
To keep ahead of the game, Winterroth is involved with the Coalition Against Online Video Piracy (COAVP) and the International Anti-Counterfeiting Coalition (IACC), where brands and IP stakeholders network and devise solutions together to combat piracy. “Although some of these companies could be viewed as competitors, anti-piracy and anti-counterfeiting strategy is something we work on together.” Winterroth says.
Enforcing against fans
A delicate balancing act has to be trodden for WWE to enforce efficiently enough to protect their brand whilst not damaging a dedicated fanbase, acknowledges Winterroth: “The people who are pirating our content are also fans of ours and going to the live events.” Therefore, the team needs to be very conscious about what content is actually at risk of damaging the brand to find what is worth taking down.
Choosing what to takedown is complicated additionally by WWE’s social media presence. “We know it’s the way that the younger generations are consuming media, and we know it’s the place to engage our fans.” Winterroth says. “That provides a challenge as each different type of programming and platform have different internal rules on how we enforce and what we ignore to market the brand.”
It’s on social media that the duo have encountered the vast majority of user-generated infringement. “We don’t want to shut down every possible avenue for people to talk about our content.” Dienes-Middlen notes. “We want to invite conversation. We have fans we need to engage with and we want to be mindful and respectful of that. We think that we’ve struck that delicate balance.”
Working as the IP counsel for a brand like WWE has kept Dienes-Middlen and Winterroth on their toes. But it’s a challenge they relish. The key to their success on WWE’s in-house, they believe, is being active members of the business. “One of the things I think is most important for in-house counsel to do is get out your office, walk around the building, get to know the other people, and talk to them.” Dienes-Middlen advises.
The advantages to an openly communicating in-house has allowed them to stay in touch with the departments making the products they’re protecting. It’s this approach that has brought the external counsel, vendors, and creative department together to work so cohesively. “A lot of the times, in other companies, in-house counsel is seen as something you “have” to deal with and that a call from Legal is a bad thing. We can’t be seen like that.” Dienes-Middlen says. “WWE is a creative company; Legal never wants to be an obstacle to the creative process.”
This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe