We are indebted to the PLI Institute All-Star Briefing and to William A. Finkelstein -- member of the International Trademark Association Panel of Neutrals -- for the following insightful comments on choosing an IP mediator to assist in the resolution of your patent, trademark, or copyright infringement action.
PLI: What factors should the IP lawyer take into account when choosing a neutral in the ADR process?
WILLIAM A. FINKELSTEIN: I believe the two main factors are personality and expertise. Dealing with personality first, you have to look at a combination of yourself, your adversary, your client, the other party and the type of case, especially in trademark or IP cases, where there are primarily two types of cases.
In one, there's a prior relationship while the other involves an unrelated-party infringer, so to speak. And those are very different situations. Has there been acrimony between the parties? Do you know the personality of the other client? But sometimes the personality of your own client is extremely important. I've had many attorneys come to me as a neutral and say:
"Listen, I can't control my client. My client is absolutely stubborn," "pigheaded" or "hates the other guy," whatever it might be.
And that's an important factor in choosing a mediator as well, because basically you're talking about personality of two broad categories of mediators: the knock 'em on the head types who are very strong and can take charge and then the more conciliatory, facilitator types who kind of lay back and let the parties take a primary role.
I think most experienced mediators actually perform both roles at any given point during the mediation. Generally mediators tend to lay back and then get tough if they need to get tough. And they choose their spots.
But it's important to ask around when a list of possible mediators is proposed. Ask about the personality of the mediators and evaluate the nature of the case, the personalities of the clients and the personalities of the attorneys, as well. Depending on the circumstance, you may need a very strong mediator, such as a former judge, to control a particularly belligerent-type attorney on the other side. So that's extremely important.
The second factor for me, and especially in trademark cases, is that I am an advocate of expert mediators. There are mediators out there in the profession who, at the drop of a hat, will mediate a prison-riot to a labor dispute to a trademark case to a patent case…whatever. And they're fabulous at doing it. I think it is just so much better to have a knowledgeable mediator in the particular legal field for a number of reasons.
Obviously, the learning curve is a lot less. They will have a lot of credibility with the parties if they're asked to evaluate a case. And they also can help bridge a knowledge gap that I find often in trademark cases, where the parties and perhaps one or more of the attorneys don't know that much about the area of the law—sometimes general practitioners figure they can handle a trademark case. So you've got this knowledge and linguistic terminology gap between attorneys (and sometimes this may have led to the problem, if they are not communicating properly), and an expert mediator can help bridge that communications gap.
And finally, an expert mediator can, of course, help contribute to creative solutions of the problem. They can actually sit there, roll up their sleeves when the time comes and say, "Have you thought about a license," "Have you thought about this, that or the other thing?" Therefore, I am a prime proponent of using an expert mediator if you can find one.
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