WIPOD – Arbitration and Mediation Matters: Transcript of Episode 6

Empowering SMEs, Creators, and Entrepreneurs in Resolving IP and Tech Disputes Strategically through WIPO Mediation

Selin Ozturk: Welcome to WIPO Arbitration and Mediation Matters, the WIPO Arbitration and Mediation Center's podcast on intellectual property and innovation disputes. My name is Selin, and thank you for listening as this podcast aims to provide practitioners a deeper understanding of the use of alternative dispute resolution mechanisms, for example, mediation and arbitration for such disputes. Today we are joined by our very own Leandro Toscano, Head of the Business Development Unit, here at the WIPO Arbitration and Mediation Center.

Leandro will be taking us through the key advantages of using mediation as a dispute resolution method for SMEs, creators, and entrepreneurs involved in IP or tech disputes. So buckle up because we will be going in-depth into real-world examples from WIPO mediations, discovering how parties have effectively transformed conflicts into valuable business opportunities by leveraging mediation to negotiate contracts and still enforcing collaborations.

Leandro Toscano: Hi Selin, and thanks so much for having me today on this podcast.

Selin Ozturk: So to begin, could you provide a brief definition of what mediation is exactly?

Just to remind our listeners.

Leandro Toscano: Yes, of course. So mediation is basically an alternative to court litigation to resolve disputes. It's an alternative that parties can use to try to reach what is known as a win-win solution and try to get to an agreement regarding disputes in our case about IP technology and innovation. Mediation is an informal procedure. The parties can shape the process. They can appoint a suitable mediator with knowledge of the (related) substantive matters and industry practices to help them negotiate.

So this mediator won't be imposing anything on the parties, but it will be helping parties to reach a solution and hopefully to continue working together preserving their business relationships.

Selin Ozturk: That was a good digestible definition of mediation. And so what are the key advantages of using mediation as a dispute resolution method?

Leandro Toscano: Well, mediation is a flexible procedure. So the parties can agree on the way the mediation will be conducted. For example, nowadays we see most of the cases at WIPO are conducted online. So the parties, they meet via conferencing facilities and that helps a lot to contain the time and the cost of the proceedings, in particular when we are looking at international disputes. So this is a very interesting advantage in particular for SMEs, innovators, and entrepreneurs. Confidentiality is another important point to keep in mind when using a dispute resolution option and mediation under the WIPO system is confidential. So that allows parties to really engage in discussions with the mediator without having any worries about any information becoming public or being disclosed.

Having an expert as a mediator is also an important advantage, maybe in comparison to going to the courts when sometimes there are no specialized courts in IP and technology. So here the parties are free to engage someone with knowledge of the matters of different IP issues; Trademarks, Patents, Copyright, the entertainment industry, Sports, etc. And the expert will help the parties, will guide the parties to discuss and to try to reach a suitable solution for the dispute.

Selin Ozturk: To follow up, why is mediation specifically well suited for resolving IP and technology disputes? Which sectors can it benefit?

Leandro Toscano: Well, we know that IP is a specialized and technical area, so we need experts that understand the matters to help parties to resolve a dispute. We also need speed to resolve disputes in IP. We know that the market cycles are quite fast. So if we think, for example, of entering into a market related to technology, for example, mobile applications, where if we face a dispute during the development, we get stuck, we can miss an opportunity to enter into a particular market. That is a very good thing to keep in mind.

Another advantage is that, for example, in the context of a collaboration, they can renegotiate the terms of the collaboration of contract. We see this very often regarding licensing of IP assets, where parties want to continue working together, but perhaps they face a dispute and they need to renegotiate the terms of the contract by using mediation. Then they manage to keep that relationship and continue with the business.

Selin Ozturk: In what ways does mediation address the unique needs and challenges faced by creators specifically in resolving IP disputes? How can it contribute to not only the protection but also the promotion of their creative works?

Leandro Toscano: We see in the creative industries a need for dispute-resolution mechanisms that are affordable, that are fast, that can be used in a very easy way. So what we are constantly trying to do here at WIPO is to lower barriers to access the different mechanisms. Mediation is certainly a very good entry point. Mediation is something that should be considered when facing a dispute as the first alternative.

Mediation, as we know, is not mandatory in the sense that if a party is not comfortable in the context of creation, can step out at any time and maybe explore other alternatives like arbitration or court litigation. So it’s worth trying and worth having a mediation phase when we approach dispute resolution. So for creators, this is an affordable option.

So at WIPO, we have the possibility of submitting what we call an invitation to consider mediation. So we see often cases, for example, related to photographers that find that their works are being used in the digital environment without their permission, without paying any compensation for that. Oftentimes this happens in a different country, so it will be a bit difficult for the photographer to start court proceedings in that country or to stop this type of activity and claim some royalties. So there's a possibility of inviting the other party to consider, for example, negotiating some licensing fees for the use of these works. That's something that is growing and that we see creators and IP owners using more and more.

That is something important, I think, to keep in mind, and perhaps it’s not so well known. Here at WIPO, we are always happy to support, of course (respecting our neutrality) we are always happy to support creators, innovators, and SMEs to understand how to use this range of tools, including mediation.

Selin Ozturk: And so to follow up and to provide our listeners a little bit more insight, do you think you could walk us through the general process of how mediation works? For example, where would a creator or an entrepreneur know where to begin?

Leandro Toscano: So mediation is quite an easy-to-understand procedure. So in order to start mediation under the WIPO system, you have a few ways. So you could include, for example, if you have a contract with the other party, for example, in a software development agreement or in a trademark licensing agreement, or a co-production of a movie, you can include a Clause agreeing with the other party to refer any future potential dispute to WIPO mediation. So if something happens, then any party can start the mediation before WIPO. That is one way.

There are situations where you already have a contract with the other party, but you did not include a reference to WIPO mediation there. Still, once the dispute arises, the parties can agree to refer that matter to WIPO mediation by signing an agreement. We have models on our website. So there's something very simple there, no big formalities. You do not have to prepare a complaint. You do not have to add evidence at that stage or anything like that. So it's very simple. There's also the possibility that I mentioned before of inviting someone to consider mediation and of course, it's a consensual mechanism. So the other party needs to agree to participate, but that's a very simple process. So you can complete an online form on our website and then WIPO will help parties to try to agree on going to mediation. And if they need the assistance of a mediator, then WIPO has at least over 2000 experts from around the world that can be engaged as mediators in the case. And there's also the possibility if you are already litigating in court, so agreeing with the other party to suspend court proceedings and try mediation to resolve your dispute in a faster way.

Selin Ozturk: How can SMEs and creators strategically use mediation in different ways to prevent and resolve such disputes? Could you provide case examples?

Leandro Toscano: So we have seen WIPO mediation being used in different ways. For example, we had a case involving a number of companies in Europe and the United States of America. These companies had trademarks that were similar and there was a risk of confusion and they were operating in the same market.

They wanted to prevent any dispute from happening, so they agreed to engage a WIPO mediator to help them to negotiate a trademark coexistence agreement and to prevent any potential dispute. So that's an example of using mediation to avoid having IP-related disputes.

We have seen other situations where, for example, in the TV format industry, where a producer of a show that was successful in a country wanted to expand to another jurisdiction and finds out that there was another show that started a bit later on this first show and that included elements of the first show. So wanted to explore the possibility of collaborating, maybe having some sort of licensing agreement, and agreed with the other party to engage an expert in the TV format industry, a WIPO mediator, to help the parties negotiate a licensing agreement. So that's another example of using mediation to create business opportunities.

Then we have seen more recently cases in the sphere of video games and e-sports, where, for example, there are some sort of copyright issues in the game storyline or the use of music or image rights and the parties want to negotiate how to use these rights in the context of a video game. And we have also seen cases where e-sports teams had some issues related to competitions and prices in the context of competition. Through mediation, they explored ways to resolve a dispute. So as you can see, mediation can be used in different ways. It allows you to arrive to creative solutions that sometimes you cannot get through the court system. And this is when mediation can also add extra value.

Selin Ozturk: What can we expect of IP mediation and its potential impact?

Leandro Toscano: What we see is an increase in the use of these alternative dispute resolution mechanisms, in particular mediation. So in many countries nowadays in legislation, we see references to the use of mediation to resolve IP disputes, in particular in the area of copyright and content. So governments are encouraging the use of mediation to resolve IP disputes.

We see also an active participation of intellectual property and copyright offices. So here at WIPO, we partner with a large number of organizations in different regions to either raise awareness or also provide these mediation services. So if you are an entrepreneur, an SME, or a creator, and you are facing a dispute, you can always contact us. We can inform you of the different options that you may have, depending on what type of disputes and depending on where you are located. So we're very happy to assist you in this regard. And hopefully, by using mediation more and more, we will see a lower impact of disputes in the creative processes and innovation processes, and hopefully, we will be in a position to provide assistance to all these interested parties that are involved, unfortunately, in disputes and they want to resolve the dispute to continue with their normal business activity. So I think the future seems to be quite promising. Hopefully, with the help of the whole IP ecosystem, we'll be able to use mediation more and more so it can become the default option when resolving IP disputes.

Selin Ozturk: Thank you very much, Leandro, for walking us through how creators, SMEs, and entrepreneurs can benefit from the use of mediation. As we wrap up this very insightful episode, we hope you gained a deeper understanding of the power of mediation in resolving IP and tech disputes. Stay tuned for our next episode as we continue to explore the ever-evolving landscape of alternative dispute resolution and its impact on the vibrant world of innovation and intellectual property.