An exciting event birthed the idea for Underwriters Laboratories: the 1893 Chicago World’s Fair. William Henry Merrill was at the Fair helping to inspect electrical installations. And that experience showed him the need for a company to evaluate and certify new technology. So Merrill founded UL in 1894.
Now, people around the world know UL for its work helping to ensure consumer product safety ever since. In the past decade, UL has expanded the scope of the products it evaluates for safety, security, and sustainability.
UL’s IP Leader
In addition to maintaining 1,600 different safety standards, having its certification mark appear on more than 22 billion products globally, and reaching more than three billion consumers worldwide, Paul Brown, vice president of IP and litigation, is in charge of defending UL against lawsuits, managing risk, and protecting the company’s intellectual property portfolio.
“At our heart, we’re a dynamic IP and technology company,” Brown says. “Naturally, that includes testing consumer products. But our IP portfolio includes a wide range of trademarks, patents, copyrights, and trade secrets, as well as software tools and platforms in areas such as sustainability, cybersecurity, and transaction security.”
“At our heart, we’re a dynamic IP and technology company. Naturally, that includes testing consumer products, but our IP portfolio includes a wide range of trademarks, patents, copyrights, and trade secrets, as well as software tools and platforms in areas like sustainability, cybersecurity, and transaction security.”
Anticounterfeiting Actions
Brown and his IP department work with UL’s robust anticounterfeiting team and law enforcement around the world. Together, they work to remove products bearing counterfeit UL certification marks from the marketplace. They then hold counterfeiters accountable for their crimes. These strategies are crucial. Counterfeit marks can create a false sense of security that products comply with safety standards. The truth, however, is that counterfeit products are often low-quality, and, in some cases, extremely dangerous.
By cohosting brand protection conferences with Interpol, Europol, and local government sponsors, UL brings together law enforcement and brand owners to network. It also brings them together to discuss strategies for combating counterfeiting and other forms of IP crime. In partnership with Interpol, the company also provides world-class IP education online to law enforcement agencies and other stakeholders in twenty languages through its International IP Crime Investigators College.
Three years ago, Brown added a civil brand protection program to complement these efforts.
“We can often stop misuse of our trademarks through cease and desist letters and negotiation without lawsuits,” Brown says. “In others instances, we want to send a clear message and will go to court to get an injunction or pursue compensation. We’re committed to protecting ourselves and our clients’ investment in UL certification.”
Sound Legal Advice
When it comes to working with in-house legal departments, Brown offers these recommendations.
- Business teams should understand contracts.
Clarity on all provisions, their specific wording, and the reasons behind them provides competitive and operational benefits.
- Invest in internal networking.
Networking obviously gets careers underway. But making internal connections also improves insight into operational details and strategies as well as the key players who need to be included to solve issues quickly and efficiently.
- Don’t be afraid of engaging with lawyers.
A good lawyer is trained to be a problem solver, not a naysayer.
Hazardous Hoverboards
One of UL’s more recent public actions came in the wake of exploding lithium ion batteries in hoverboards during the 2015-2016 holiday season. At the same time that the company was learning of the problem, it was also receiving inquiries from consumers, the media, and government agencies.
In less than six months, Brown helped the legal team and UL specialists to successfully develop hoverboard safety testing standards. Soon after, the US Consumer Product Safety Commission (CPSC) sent out a directive that required all hoverboards available for sale to meet the UL standard.
As a result, UL filed a lawsuit against hoverboard counterfeiter Space Chariot. And it won a summary judgment motion in US federal court. The judge found that Space Chariot had willfully counterfeited UL’s certification mark and awarded UL $1 million in damages.
“The hoverboard situation required extensive cross-functional cooperation and coordination to respond quickly and effectively to address the risks to consumers,” Brown says. “The action against Space Chariot demonstrated the lengths to which we will go to protect our reputation.”
Expanding UL’s Scope
Over the past decade, UL has diversified into a wide range of industries and services. The company’s GreenGuard certification helps ensure that products are within acceptable levels for chemical emissions. The Wercs solution provides chemical safety data sheet authoring capabilities. It also helps to ensure that global supply chains are in compliance with all applicable regulations. This, in turn, helps assure manufacturers that their products meet regulatory requirements. It also guides retailers to the most appropriate products for their inventory.
As technology continues to evolve, so does the company. For years, it has been helping to protect electronic transactions, including mobile payments, EMV chip functionality, and other security services. As with hoverboards, its expertise in lithium ion battery safety has extended its reach to everything from e-cigarettes to drones.
No matter where technology heads, Brown believes that UL will always play a role. That role is in developing standards, reducing risks, and improving compliance.
“Our industry is unique in that customers and competitors are united in improving safety and fighting counterfeiting,” he says. “I’m proud of how UL has helped bring the international community together to address these important issues.”
Winston & Strawn congratulates Paul Brown on being recognized for his excellence in lawyering. Paul’s leadership, expertise and dedication and commitment to protecting the business are inspiring. – Patrick Doyle (Partner), Jacqueline McLaughlin (Partner) & Becky Troutman (Partner)
