Category: Intellectual Property

Inside Counsel presents the 12th Annual Super Conference in Chicago

The National Law Review  is pleased to bring you information about the upcoming 12th Annual Super Conference in Chicago sponsored by Inside Counsel.

Reasons why you should Attend This Year’s Event:


  1. Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:    Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.
  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

Google Maps and iPad Maps App Challenged in the Middle District of Florida

Recently The National Law Review published an article regarding Google Maps and iPad Maps Apps written by Richard S. Dellinger of Lowndes, Drosdick, Doster, Kantor & Reed, P.A.:

Panomap Technologies, LLC has filed a patent infringement claim in the Orlando federal court. The lawsuit, filed on February 24, 2012, alleges that Panomap owns exclusive rights to mapping technology used by Google Maps and by Apple on its iPhone and iPad devices. Both Google and Apple have not yet been served and have not yet had an opportunity to present their defenses to the patent infringement claims.

The Middle District of Florida is widely known as a favorable jurisdiction for patent infringement lawsuits. An article by Professor Mark Lemley of the Stanford Law School ranked the Orlando Division to be the highest based on length of time to resolution and success rates for patent holders. Annual reports by Price Waterhouse regularly rank the Middle District of Florida among the top jurisdictions for patent holders seeking a resolution of disputes.

The lawsuit lists Panomap’s corporate headquarters in Orlando, Florida.

© Lowndes, Drosdick, Doster, Kantor & Reed, PA, 2012.

Inside Counsel presents the 12th Annual Super Conference in Chicago

The National Law Review  is pleased to bring you information about the upcoming 12th Annual Super Conference in Chicago sponsored by Inside Counsel.

 

Reasons why you should Attend This Year’s Event:


  1. Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:    Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.
  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

Using Online Shame as a Defense to a Trademark Infringement Claim May Not Always Be Effective

An article regarding Trademark Infringement by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. was found recently in The National Law Review:

The Wall Street Journal had a piece recently about how the recipients of trademark infringement cease and desist letters are increasingly using ”online shame” to gain leverage in disputes with trademark owners. As “trademark bullying” is a hot topic among trademark lawyers and in the press, this article picks up on that theme. It highlights a dispute between a small online cookbook entrepeneur who allowed users to save recipes by clicking on a “K” for “Keep” and a trademark owner who asserted rights to the marks K and KEEP in a strongly worded cease and desist letter. In response, the cookbook entrepreneur posted the cease and desist letter online at chillingeffects.org, an organization that “aims to support lawful online activity against the chill of unwarranted legal threats[.]“ As the WSJ article reports, the cease and desist letter got attention and the cookbook entrepreneur is now being represented — free of charge — by legal counsel.

In the age of social media, the practice of publicly “shaming” trademark owners is increasingly common. And it can be effective. In the EAT MORE KALE vs. EAT MOR CHIKIN trademark dispute example, over 28,000 people have signed an online petition demanding that the Georgia-based fast food company, Chik-fil-A, stop bullying a small Vermont-based business that sells t-shirts bearing the slogan EAT MORE KALE. Then the Vermont Governor held a press conference expressing support for the Vermont-based business. And the story spread like wildfire throughout the national media. Clearly, many more people have become aware of the small Vermont business owner making EAT MORE KALE t-shirts in his home as a result of Chik-fil-A’s demand letter (and the social media aftermath) than would have known of this business had Chik-fil-A not sent a cease and desist letter. The potential use of social media to attempt to shame an overreaching trademark owner is clearly an important consideration in any trademark enforcement matter. Social media, when used effectively and appropriately, can quickly change the dynamics of a trademark infringement dispute.

The WSJ article makes an additional point, albeit in passing. It quotes David Bernstein of Debevoise & Plimpton LLP who cautions that shaming tactics can backfire by highlighting infringing conduct. This point is important to remember. Although ”trademark bullying” stories grip the headlines, most cease and desist letter raise legitimate claims of trademark infringement. Simply posting such a letter online may not garner the sympathy that you expect (Interestingly, one comment posted to the WSJ article reflects that the EAT MORE KALE small business owner has not convinced everyone of his position despite his effective social media campaign). Moreover, a potential defendant’s online statements about the matter may simply provide more ammunition to the trademark owner to use in an eventual litigation. While “shaming” can be effective in fending off an over-reaching trademark owner, it does not work and is not appropriate in all situations.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Inside Counsel presents the 12th Annual Super Conference in Chicago

National Law Review is pleased to bring you information about the upcoming 12th Annual Super Conference sponsored by Inside Counsel .

Reasons why you should Attend This Year’s Event:

  1. Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.

Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:

  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

Are Bloggers’ Free Speech Rights Under Attack?

The National Law Review recently published an article by Jesse L. Jenike-Godshalk of Dinsmore & Shohl LLP regarding Blogger’s Free Speech:

A recent legal opinion has some concerned about just how broad free speech rights may be for bloggers who are not associated with institutional media, such as newspapers and television stations. In Obsidian Finance Group, LLC v. Cox, No. CV-11-57-HZ, slip op. (D. Or. Nov. 30, 2011), a federal judge ruled that a self-proclaimed “investigative blogger” was not “media” and, therefore, was not entitled to certain First Amendment protections that are reserved for the media.Despite the alarm that this case has generated, it actually is not a major setback for the free speech rights of bloggers.

The Case: Obsidian Finance Group, LLC v. Cox

From late 2010 to early 2011, Crystal Cox made numerous blog posts in which she accused Obsidian Finance, LLC and one of the company’s senior principals, Kevin Padrick, of corrupt, fraudulent, and illegal conduct. Obsidian and Padrick subsequently sued Cox for defamation. Rather than hiring an attorney, Cox chose to defend pro se.

In August 2011, before the case went to trial, the judge granted summary judgment to Cox with regard to all but one of her blog posts, because the posts were statements of opinion protected by the First Amendment. See Obsidian Finance Group, LLC v. Cox, No. CV-11-57-HZ, slip op. (D. Or. Aug. 23, 2011). A statement, such as a blog post, can be the basis for a defamation suit only if the statement is a provable assertion of fact. In contrast, statements of opinion are protected by the First Amendment. According to the judge, blog posts, by their very nature, are usually statements of opinion.

Prior to the trial, the judge still had several issues that he needed to resolve. Among these issues was Cox’s claim that she was “media” and therefore, based on U.S. Supreme Court precedent, the plaintiffs could not recover damages from her for defamation without proof that she was at least negligent in making the allegedly defamatory statements. The judge rejected that Cox was “media,” writing:

Defendant cites no cases indicating that a self-proclaimed “investigative blogger” is considered “media” . . . . Without any . . . authority on the issue, I decline to conclude that defendant in this case is “media” . . . .

Defendant fails to bring forth any evidence suggestive of her status as a journalist. For example, there is no evidence of (1) any education in journalism; (2) any credentials or proof of any affiliation with any recognized news entity; (3) proof of adherence to journalistic standards such as editing, fact-checking, or disclosures of conflicts of interest; (4) keeping notes of conversations and interviews conducted; (5) mutual understanding or agreement of confidentiality between the defendant and his/her sources; (6) creation of an independent product rather than assembling writings and postings of others; or (7) contacting “the other side” to get both sides of a story. Without evidence of this nature, defendant is not “media.”

Obsidian Finance Group, LLC v. Cox, No. CV-11-57-HZ, slip op. at 9 (D. Or. Nov. 30, 2011). Following this ruling, the case went to trial, and the jury found for the plaintiffs, awarding $2.5 million in damages.

Not a Major Setback

Despite the concern that this case has generated, the case is not a major setback for the free speech rights of bloggers, and it can even be regarded as a pro-free speech case. First, some of the judge’s statements suggest that bloggers enjoy expansive First Amendment rights. In his ruling on summary judgment, the judge stated that blog posts, by their very nature, are usually “opinions” and not provable assertions of fact. Such “opinion posts” are protected under the First Amendment and are not actionable as defamation—regardless of whether the writer is “media.”

Second, the judge established a very low bar for what a blogger must do to enjoy the additional free speech protections that are reserved for “media.” To wit, a blogger must present some evidence that he or she is a journalist. Cox lost this issue because she presented no evidence.

The judge provided her with a list of seven types of evidence that she could have offered. This list does not create an exacting standard of proof for a blogger to meet. To be considered “media,” a blogger would not need to offer all seven types of evidence. In fact, a blogger would not necessarily need to offer any of the seven types of evidence. The list is not exhaustive, but is merely “[f]or example.” A blogger must present “evidence of this nature.” Thus, a blogger could prove that he or she is “media” by presenting types of evidence not on the list. In addition, most bloggers probably would be able to present some evidence of the types that are on the list—e.g., “proof of editing,” “keeping notes of conversations,” or “creation of an independent product rather than assembling writings and postings of others.”

Had Cox hired an attorney, the attorney almost surely would have been able to offer some evidence that Cox was “media.” Actually, had Cox hired an attorney, she might have won the entire case on summary judgment—and she would have entirely avoided the issue of whether she was “media.” Herein lies the real lesson from this case: If you are sued for defamation, get yourself an attorney.

© 2012 Dinsmore & Shohl LLP.

Cybersecurity Act of 2012 Introduced

On February 14, a bipartisan group of senators introduced to the U.S. Senate the Cybersecurity Act of 2012, under which the Department of Homeland Security (DHS) would assess the risks and vulnerabilities of critical infrastructure systems and develop security performance requirements for the systems and assets designated as covered critical infrastructure. The bill is sponsored by Homeland Security and Governmental Affairs Committee Chairman Joe Lieberman (I-CT), committee ranking member Susan Collins (R-ME), Commerce Committee Chairman Jay Rockefeller (D-WV), and Select Intelligence Committee Chairman Dianne Feinstein (D-CA). As explained in the statement announcing the measure, “[t]he bill envisions a public-private partnership to secure those systems, which, if commandeered or destroyed by a cyber attack, could cause mass deaths, evacuations, disruptions to life-sustaining services, or catastrophic damage to the economy or national security.”

Infrastructure Protection Obligations

Title I of the bill provides the key provisions of the critical infrastructure protection obligations that would be imposed by the bill. Under Title I, DHS, in consultation with entities that own or operate critical infrastructure, the Critical Infrastructure Partnership Advisory Council, the Information Sharing and Analysis Organizations, and other appropriate state and local governments, is required to conduct an assessment of cybersecurity threats, vulnerabilities, and risks to determine which sectors pose the most significant risk. Once the sectors have been prioritized based on risk, DHS, along with the other agencies and organizations, must conduct a cybersecurity risk assessment of the critical infrastructure in each sector. These risk assessments must consider the actual or assessed threat, the threatened harm to health and safety, the threat posed to national security, the risk of damage to other critical infrastructure, the risk of economic harm, and each sector’s overall resilience, among other factors. In conducting these assessments, DHS is called upon to cooperate with owners and operators of critical infrastructure.

DHS, in conjunction with the same agencies and organizations, must also develop procedures that will be used to designate certain critical infrastructure at the system or asset level as “covered critical infrastructure,” therefore making those systems and assets subject to the cybersecurity requirements developed under the bill. This infrastructure is to be identified based on an analysis of whether damage or unauthorized access to the system or asset could result in any of the following:

  • Harm to life-sustaining services that could result in mass casualties or mass evacuation
  • Catastrophic economic damage to the United States
  • “Severe degradation” of national security

Technology products themselves or services provided in support of such products may not be designated as covered critical infrastructure based solely on the finding that the products are capable of being used in covered critical infrastructure.

Following the identification of covered critical infrastructure, DHS must also develop, on a sector-by-sector basis, cybersecurity performance requirements that require the owners of covered critical infrastructure to remediate the cybersecurity risks identified through the risk assessment performed by DHS for that sector. The bill requires that, in establishing the performance requirements, DHS have a process through which it considers performance requirements proposed by asset owners, voluntary standards development organizations, and other groups, as well as existing industry practices, standards, and guidelines. If DHS determines that the existing or proposed performance requirements are insufficient, DHS is required to develop performance requirements on its own.

Once the covered critical infrastructure is identified and the performance requirements defined, asset owners will be required to take steps to secure the covered critical infrastructure assets and systems, and to that end the bill tasks DHS with promulgating regulations to require covered critical infrastructure owners to do the following:

  • Receive notifications of cybersecurity risks
  • Implement cybersecurity protections that the owner “determines to be best suited to satisfy” the performance requirements
  • Maintain continuity of operations and incident response plans
  • Report cybersecurity incidents

Each owner of covered critical infrastructure will be required to certify yearly that it has implemented cybersecurity protections sufficient to satisfy DHS’s approved security performance requirements or to submit a third-party assessment regarding compliance with those performance requirements that satisfies certain standards for the training, certification, and independence of the assessors.

The bill provides that DHS may exempt from the performance requirements any system or asset if the owner can demonstrate that the system or asset is sufficiently protected against the risks identified by DHS or that compliance with the performance requirements would not “substantially” improve the security of the system or asset.

Enforcement

The enforcement regime proposed by the bill provides that any federal agency with responsibility for security of the covered critical infrastructure at issue may enforce the regulations. However, DHS itself may enforce the regulations (i) if there is no other appropriate agency, (ii) if DHS is requested to do so by the agency with responsibility for the security of the covered critical infrastructure in question, or (iii) if the agency with responsibility for the security of the covered critical infrastructure fails to take enforcement action as requested by DHS. Civil penalties are available for violations of section 105 of the bill, under which the performance requirements are established. However, no private right of action would exist.

Owners and operators of covered critical infrastructure would be exempt from punitive damages related to identified cybersecurity risks so long as they have implemented security measures that satisfy the performance requirements, are substantially compliant with the performance requirements, and have completed the annual assessments.

Avoiding Duplicative Regulation

While the cybersecurity obligations imposed by this bill would be far-reaching and could conceivably overlap with the Critical Infrastructure Protection (CIP) Reliability Standards approved by the Federal Energy Regulatory Commission (FERC) for certain bulk-power system infrastructure, the bill attempts to carve out existing cybersecurity protections, and provides several mechanisms to ensure that critical infrastructure that is already regulated will not receive duplicative regulation under this proposal.

When developing performance requirements, DHS is required to determine whether there are existing regulations in effect that cover the identified critical infrastructure and address the risks identified by DHS. If such regulations are in place, DHS is instructed to develop performance requirements only if the existing regulations do not provide an appropriate level of security. This will likely require an analysis of the existing CIP Reliability Standards by DHS, including an analysis of whether those standards cover all of the covered critical infrastructure for the electric sector identified by DHS, and whether those standards provide a sufficient level of security to protect against the risks identified by DHS.

Another method by which the existing CIP Reliability Standards framework may remain unchanged is the presidential exemption authority provided under the bill. Pursuant to that provision, the President is authorized to exempt critical infrastructure from these requirements if the appropriate “sector-specific regulatory agency” (FERC for electric infrastructure) “has sufficient specific requirements and enforcement mechanisms to effectively mitigate” the risks identified by DHS.

Additionally, DHS and the other “sector-specific agencies” with responsibility for regulating critical infrastructure security are required to coordinate their efforts to eliminate duplicative reporting or compliance requirements. Similarly, any new rules developed by sector-specific agencies must be coordinated with DHS to ensure that they are consistent with DHS’s efforts.

Copyright © 2012 by Morgan, Lewis & Bockius LLP.

Inside Counsel presents the 12th Annual Super Conference in Chicago

National Law Review is pleased to bring you information about the upcoming 12th Annual Super Conference sponsored by Inside Counsel .

Reasons why you should Attend This Year’s Event:

  1. Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.

Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:

  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

8th Annual Asian ITechLaw Conference

The National Law Review is pleased to bring you information on the upcoming 8th Annual Asian ITechLaw Conference:

ITech --8th Annual Asian ITechLaw Conference on February 23 and 24, 2012

As National Law Review member you are entitled to a 10% discount to the

8th ITechLaw International Asian Conference

ITechLaw’s 8th annual run of the very popular International Asian Conference will take place in Bangalore – the high technology capital of India.

The theme for India VIII is Technology Law in an Era of Changing Business Paradigms. For a glimpse of what is lined up for a discerning attendee like you, please visit http://www.itechlaw-india.com. Be sure to be one of the first to sign up for this landmark India event.

  • 8th Consecutive event of the ITechLaw India series
  • A ringside view of Indian IT, Media and Telecom Law
  • Supported by several of the largest law firms and global associations
  • ITechLaw’s CyberSpaceCamp® to be held on February 22, 2012
  • Contemporary topics addressed by leading experts drawn from some of the best global law firms
  • Engaging debates with panelists from industry, regulatory authorities and in-house legal departments
  • Interactive sessions on issues affecting the largest IT bases in the world
  • Welcome Reception and Art Show, promoting emerging Indian artistes, allowing delegates to network with local corporates and invited guests
  • Gala Dinner and Networking Luncheons – ample networking opportunities to meet fellow professionals
  • I – Win Tea Meeting
  • In – House Counsel Breakfast Meeting
  • Exclusive golf outings on February 22 and 25, 2012
  • Make the trip a memorable experience by taking an excursion to exotic destinations across southern India, such as Mysore, Kerala and Tamil Nadu

Look forward to a considerable amount of debate and brainstorming. Social meets such as luncheons and gala dinners will enable attendees to indulge into fruitful networking with prospects, contacts and peers from around the world.

See you at the 8th ITechLaw International Asian Conference.

The Inside Job: Can Employees Walk Out The Door With Your Company's IP?

Recently in The National Law Review was an article by Katie L. Clark, Rohan Massey, and Hiroshi Sheraton of McDermott Will & Emery regarding IP Security:

With the economic downturn forcing redundancies, most employers are aware that the Q1 period brings an increase in employee movement. But have employers considered how much value could be walking out the door when an employee leaves? In today’s “knowledge economy”, businesses increasingly understand the value of intangible assets in the form of information.  Yet few businesses give thought to how and where those assets reside, or consider how much can be lost or passed to a competitor when employees move on.

The ease with which knowledge can be taken by employees has increased exponentially in recent times.  USB drives are now large enough to store literally millions of documents and cloud computing can provide limitless secure storage.  The increase in remote working also allows employees to download your documents and information in the privacy of their own homes.

There is also a growing international market for transferable knowledge, making the temptation even greater for employees to maximise their value to their new employer.  Emerging economies, with different laws, regulations, and cultural values, provide a ready market into which intellectual capital can be dispersed.

This issue affects every industry.  A number of high profile cases in the United States and China have seen former employees jailed for theft of trade secrets relating to consumer electronics and financial trading software, but every business has a wealth of internal knowledge that is used to give it a competitive advantage over its rivals.  Business plans, presentations, strategies, customer lists, market positioning, and protocols and procedures are all valuable assets that can find their way to new employers.

Most worryingly, this movement of information is not confined to “rogue” employees.  Many salespeople will claim that their address books of contacts belong to them, not to their employer.  Each type and level of employee and each type of business is likely to have a different understanding of what belongs to the company.  In addition, international cultural differences play an enormous role in determining where employees perceive the boundary to be between legitimate and illicit use of information.

So, how do you distinguish between what an employee is free to take away and what should remain with the business before it’s too late?  What procedures should be in place to maximise the intangible value retained by the business when employees move?  To what extent do data protection and privacy laws permit monitoring of employees’ activities?  What procedures are available when employees are suspected of taking valuable information and/or passing it to competitors?

In 2012, McDermott will be running a number of IP- and employment-focused seminars to provide an overview of how intellectual property and employment laws can help your company to protect it, and the policies and procedures that can be used to mitigate value walking out the door.

© 2012 McDermott Will & Emery