Inside track: NASA

Generations of American children have gazed at the stars and dreamed of being an astronaut when they grow up, and the young Jeffrey L Heninger was no exception. In fact, given that his father worked alongside spacemen and rocket scientists at NASA, this was more bona fide career ambition than idle pipe dream. However, it turned out that fate had other plans in store for him.

“My father spent 20 years with NASA and I’d always grown up with the programme,” he says. “So I always wanted to be an astronaut at NASA until the age of around 13, when I found out I was colour blind and wouldn’t be able to fly. I never really thought about it since then.”

The young Heninger did manage to fulfil another archetypal childhood dream at the outset of his career, however: running away to join the circus. Before university and during his studies at the University of Virginia School of Law, he worked at Feld Entertainment, an entertainment company which owns iconic productions such as Disney On Ice, Siegfried & Roy at Las Vegas and renowned circus troupes Ringling Bros and Barnum & Bailey. Upon graduating, Heninger joined Feld full time as manager of strategic alliances and licensing – a role that lay outside the legal department, but involved a range of related responsibilities involving trademarks and intellectual property.

Three years later, Heninger took the plunge into private practice; he spent the next decade honing his skills at law firms Bracewell & Patterson (now Bracewell & Giuliani LLP) in Houston and Reed Smith in Northern Virginia. By 2010, this experience had made him the complete legal package. “You spend roughly your first six years learning to do the things that people pay lawyers to do; once you learn that, it becomes about the business of law,” he explains. “At the large law firm level particularly, it’s more about who your next client is, what the next matter is or how you’re billing the next hour than the practice of law per se. I covered a variety of tasks, from trademark registrations to oil and gas finance, entertainment law, commercial real estate finance, mergers and acquisitions, asset secured finance – I did a lot.”

It was at this crucial point in his career that Heninger’s childhood dreams were rekindled in a most unexpected way. He heard of a job vacancy in Washington DC that meant he could soon be walking down the corridors of NASA just as his father had years before him. “I didn’t think they even had commercial lawyers at NASA,” he recalls. “But I put my application in, successfully interviewed and was offered the position. They asked me in the interview why I wanted to be a NASA lawyer and I told them that I’ve been living this mission for 30 years; coming to NASA sort of felt like coming home. In fact, I pointed down the hallway and said, ‘My dad’s office was right over there.’”

Heninger began his NASA adventure in December 2010 as attorney-adviser in the 50-lawyer-strong office of general counsel. The office is divided into a commercial and IP group; an international law group; a procurement and acquisition integrity group; and a general law group, which handles matters such as ethics, employment law and fiscal law. The IP team at NASA HQ manages most copyright and trademark work, as well as wider patent issues. There are also 10 centres based across the United States dedicated to either space flight or research; each has its own chief counsel who assigns work based on what is needed at each facility.

This diffuse structure presents its own unique challenges for Heninger. “The job involves a lot of relationships and a huge diversity of people,” he acknowledges. And while on the face of it a standard legal role, the unique nature of NASA’s work also meant that the learning curve was as steep as a rocket’s trajectory in those initial weeks and months.

“At first it was like drinking from a fire hose, and compared to the practice that I’d had in the past, I had to make a complete 180,” he explains. “When you’re a private practice lawyer in the United States and your client says, ‘I want to do X, you must then ask, ‘Is X illegal?’; and if it’s not, you help them. In this role, when a client on a programme says, ‘I want to do X’, I am required to ask, ‘Is there a law that specifically permits us to do that?’. If there is not, we cannot do it. I then ask whether they are appropriated to do X, because you have to have appropriation funds to do anything. You could be authorised to walk down the hall, for example, but if you don’t have funding, you don’t walk down the hall. In terms of being a lawyer, it’s the opposite of private practice, because federal agencies operate in accordance with law, the will of Congress and the direction of the president.”

NASA’s branding – its name, initials and insignia – is protected not by traditional trademark law, but rather by a separate statute with its own provisions and procedures: the Space Act

source: NASA

NASA: not quite a trademark

Another reason for the daunting gradient of that learning curve is that NASA’s branding – its name, initials and insignia – is protected not by traditional trademark law, but rather by a separate statute with its own provisions and procedures: the Space Act. Among other things, the act provides that: “No person may knowingly use the words ‘National Aeronautics and Space Administration’ or the letters ‘NASA’, or any combination, variation, or colorable imitation of those words or letters, either alone or in combination with other words or letters in a manner reasonably calculated to convey that the product or service is endorsed by the agency.”

Heninger confirms that while the protection conferred by the Space Act may be “very similar” to that available under the Lanham Act, “the considerations are very different”. There is no registration process for the NASA brand, for example; although as the Space Act is not actionable outside of the United States, NASA has also built up an international trademark portfolio of trademarks that Heninger is responsible for managing. “We have registrations in the EU and seven other countries, including Canada, Germany, Japan and the UK,” he says. “The reason for having trademarks in these specific places is less a budget issue and more a matter of where we do most of our work. We mostly register in the jurisdictions of our international space station partners, primarily to protect the initials and ‘meatball’ insignia.”

New trademarks are also filed as necessary, both internationally and domestically – primarily for new innovations and agency initiatives. That said, when it comes to registration, Heninger believes that in his current role, less is very often more. “Over the years there were people who held my position who were a little more aggressive with trademark registrations and those who were less aggressive,” he explains. “I tend to have a discussion about what the goals are and what a trademark could do to affect those goals. Trademarks are all about having exclusive use of a name or identity so no one else can use it without permission. That’s what gives a trademark value.

“One of our scientists could run a competition to inspire development and research in the field of lunar robotics and call it ‘Lunarbotics’,” he continues. “If he then proceeded to ask me to register a trademark for ‘Lunarbotics’, I would tell him that a trademark would mean that only NASA could use the word, unless we entered into formal licensing deals with others. To do otherwise would mean we would lose the trademark rights we were claiming. If a high school in Washington State subsequently wanted to run its own Lunarbotics competition, would I have to look at that as an infringing activity? Actually, I would see it as a positive, because it meant that we’d inspired people. As you can see, the thought process we go through here at NASA about whether to register a trademark is completely different from that of a commercial entity because of our mission, our role and what we do for the taxpayer.”

Indeed, the taxpayer’s role in funding all of this makes Heninger acutely alive to budget, to ensure that he is spending revenues as wisely as possible. “When I was looking at the last trademark budget review, I realised it could actually be cut because of what we’re planning on doing in the future,” he says. “We weren’t looking at any international registrations and there were no renewals coming up for a little while, so we were able to be conservative in our approach. We’re always very sensitive about budget and spending our taxpayer dollars in responsible ways.”

Monitoring the universe and trademark infringement

While Heninger’s approach to registration may be somewhat different at NASA, his responsibility to protect the brand is the same as that of any other trademark counsel. The IP team monitors for infringement in-house and undertakes enforcement under both traditional trademark law and the Space Act.

“We must defend our marks regularly, most often through cease and desist letters, and we are typically very successful in that,” he explains. “A lot of our policing is to ensure the NASA insignia and identity are not used to endorse or promote any particular products, services or enterprises. The most infringed mark that we send cease-and-desist letters for is the ‘blue meatball’. When we see websites or other things that are using the insignia in connection with their products in an endorsement perspective, we will reach out to cease and desist.”

The questions that Heninger must ask when he discovers an infringement are different from the norm because they are not informed by the usual commercial concerns: “The calculus is very different for us as a federal agency, which is great for a trademark practitioner, because it really gets you thinking about the mark and questioning what the value is. How does the infringement affect our identity? Is it confusing the taxpayer? Sometimes you get very different answers. The kid who is putting up YouTube videos using the insignia is not on my radar screen; but a similar infringement by Viacom, for example, may very well be pursued.”

Meanwhile, the number of potential infringements which must be weighed in this way has soared in the internet era. “We have virtually got the wild, wild west going on out there online,” he continues. “What I’ve found is that everything is a cost-benefit analysis: do I expend exponentially greater budget to catch and police an increasingly less significant presence? I can certainly employ extraordinary means nowadays, through trolling or roving bots, to find and shut down someone using the NASA meatball on a blog or YouTube video – but I don’t know if there’s much return there for something that’s getting maybe a couple of hundred hits.”

But it is not only cost that stays Heninger’s hand in many cases; as NASA is a government agency which functions at the will of the taxpayer, it would be particularly vulnerable to negative public reaction were it seen to be overzealous in the enforcement of its brand.

“I try to be sensitive to the NASA community when considering whether to send a cease and desist letter, while at the same time trying to be even-handed and fair,” he says. “It’s not my job to pick and choose between which websites get to surreptitiously use the insignia and which don’t. We try to be even-handed by essentially advising the parties that they appear to be using the NASA insignia to promote or endorse, and we are not permitted to do that. The insignia, from a trademark perspective, is often our identity and so we take a brand logo approach to enforcement. Putting on a website ‘NASA is great’ is obviously not a problem – but putting on your website ‘NASA loves us’ is suggesting an endorsement or promotion that is not allowed.”

Heninger observes that his cease and desist letters tend to be positively received, and suggests that in some ways the enforcement of NASA marks – whether traditional or protected by the Space Act – is easier because most infringements are accidental.

“Most people aren’t intending to infringe maliciously – they’re not doing it to ‘get one over’ on NASA,” he points out. “In fact, sometimes they are trying to pay homage to the agency; and when we contact them, they are often good natured and unaware they were doing anything wrong. I’ve found in this position, as opposed to the commercial side, that people are very receptive in wanting to comply with the rules and do what they can to support the agency. I’ve been with clients in the past where there wasn’t that goodwill and I saw a lot less respect for the marks. For the same reason that people want to associate with your brand, they are willing to work with you to do it the right way.”

And for any recidivists that stubbornly persist in infringing, Heninger can call on the full might of the US government in the next step of the enforcement process. “NASA has the authority to police its marks, but it doesn’t have the authority to file lawsuits – the US Department of Justice litigates matters on behalf of federal agencies,” he explains. “So if an infringement got to the point where we needed a civil proceeding to enjoin an action, then we would engage the US attorney general and the Department of Justice. If I ever suggest to someone that the next stage is an action filed by the Department of Justice, that’s sort of an ‘Oh shoot’ moment – that’s scarier than the biggest blue-blood law firm out there.”

The challenge of being part of the government

The power to wield such a potent weapon is just one of the unique features that characterise Heninger’s role as counsel in a government agency. Others are so alien as to seem bemusing to civilians. Last year’s US government shutdown, for example, meant that Heninger – along with approximately 800,000 federal employees – was not permitted to work for a period that ultimately lasted for 16 days.

“Essentially, Congress and the taxpayer were telling us that they didn’t want us to work right now,” he says. “On the first morning of the shutdown we had four hours to wrap up affairs, including a final meeting, and then we shut off our phones and went home. The government-issued BlackBerry was turned off and only when the news announced that the shutdown was over could it be turned on again. It was a nice illustration of the fact that as a federal agency, we are beholden to Congress and the US taxpayer. When they tell us to work, we work; and when they tell us not to work, we don’t.”

As Heninger started at NASA a year into the Obama presidency, he has not yet witnessed first hand the effects of a change in administration. With both Republican and Democrat contenders reportedly on the brink of announcing their intention to run in the 2016 presidential race, questions now are starting to be asked about what might happen after the next election.

“I’ve asked whether it’s really different when there’s an administrative change, especially if an administration changes parties,” says Heninger. “I’ve been told that if a president comes in and sets their own space agenda, it will certainly affect NASA’s mission and might affect whether we need to do a trademark search for new ventures, such as a vehicle going to Mars, an asteroid or the moon. But for what we do, which is fundamental to the identity of the agency, I don’t anticipate much changing with a different administration from an IP perspective.”

As the United States starts making preparations for a new president, and NASA continues to explore new frontiers in space, it is comforting to know that the agency’s IP counsel face many of the same challenges and obstacles in protecting trademarks as every other Earth-bound practitioner.