It may surprise you, as it did me, to learn that today is Data Privacy Day, an “international celebration of the dignity of the individual expressed through personal information.” But Data Privacy Day also highlights the need for individuals to protect their data and how they can go about doing so.
There are many organizations out there that aim to help individuals protect their personal information and help businesses comply with data protection laws and regulations. The Online Trust Alliance is one such organization, whose mission is to create an online trust community, promoting business practices and technologies to enhance consumer trust globally. They recently released their “2011 Data Breach Incident Readiness Guide” to help businesses in breach prevention and incident management.
According to their newest guide, the true test for organizations and businesses should be the ability to answer key questions such as:
Do you know what sensitive information is maintained by your company, where it is stored and how it is kept secure?
Do you have an incident response team in place ready to respond 24/7?
Are management teams aware of security, privacy and regulatory requirements related specifically to your business?
Have you completed a privacy and security audit of all data collection activities, including cloud services, mobile devices and outsourced services?
Are you prepared to communicate to customers, partners and stockholders in the event of a breach or data loss incident?
With the White House, members of Congress, Commerce Department and the FTC calling for greater privacy controls and breach notifications, self-regulation by businesses is becoming more and more important.
Google, one of the supporters of Data Privacy Day and the initiatives of The Privacy Projects is hosting a public discussion on privacy later this afternoon with representatives from the Electronic Frontier Foundation, the FTC and the National Institute of Standards and Technology scheduled to attend. If you can’t stop by Google’s DC office for this event, don’t worry — it will be captured on video and posted to YouTube soon after.
Risk Management Magazine and Risk Management Monitor. Copyright 2011 Risk and Insurance Management Society, Inc. All rights reserved.
This practitioners’ workshop will provide in-depth and hands-on education for in-house and retained counsel who are involved in (or who expect to become involved in) litigation involving electronic discovery and digital evidence. Executives and other litigation stakeholders from large and small public and private organizations will also gain invaluable insights on how best to prepare your technical staff and information systems to respond to requests for electronically stored information (ESI). Addressed to intermediate and advanced ESI litigation practitioners, the workshop will be taught by our faculty of leading federal magistrate judges, ESI litigation practitioners, forensics experts, and technology thought leaders, all of whom have significant experience in managing all aspects of ESI litigation. This workshop is unique in that its scope is much broader and deeper than traditional e-discovery courses that address only basic ESI concepts.
The curriculum consists of case studies, a mock trial, keynote sessions and panel discussions with luminaries in the field, and small workshops for practitioners, technologists, and forensic experts. We expect the entire program will be both illuminating and entertaining. Topics will range from ESI search trends and developments to emerging digital evidence issues and ethics to evidentiary issues from a criminal perspective. The sessions will address the key rules from the Federal Rules of Civil Procedure that impact on e-discovery. There will also be plenty of time for interaction with three federal magistrate judges and for networking at the receptions at the end of each day.
The Conference will be held at the University of California – Hastings College of Law and mandatory continuing legal education (MCLE) accreditation has been requested from all states that require continuing legal education. 15.25hours of CLE credit including 1.0 hours of Ethics credit have been requested from those states recognizing a 60-minute credit hour and 18.3 hours of CLE credit including 1.0 hours of Ethics credit have been requested from those states recognizing a 50-minute credit hour.
The National Law Review is proud to be a sponsor of the 5th Annual Global IP Exchange which will bring together a group of leading IP strategists from some of the largest corporations across all industries. You will have the opportunity to debate and strategize with peers at our interactive sessions and participate in one-on-one meetings with leading solution providers. Benchmark with your peers, gain practical advice and leave the Exchange with new ideas and strategies to take back to the office.
With the re-draft of 2009 Patent Reform in the works and the landmark June, 2010 Bilski ruling, the IP landscape is set to change significantly over the next few years……and about time, too. Join us this February to hear how Global IP Executives are adapting their IP strategies to mitigate risks, balance litigation costs and raise the value of their IPR through social media.
The 5th Global IP Exchange™will bring together a group of leading IP strategists from some of the largest corporations across all industries. You will have the opportunity to debate and strategize with your peers at our interactive sessions and participate in one-on-one meetings with leading solution providers.
To ensure the Exchange offers the highest degree of relevancy for attendees, only senior executives responsible for IP management and strategic planning within their corporation are invited. This exclusive format allows you to connect with those peers whose insights you respect most – through exceptional networking, business meetings and strategic information sharing sessions.
The 5th Global IP Exchange™ will take place Tuesday March 1st – with pre-conference workshops on Monday February 28th. The Conference end Wednesday March 2nd and is located at the Omni Amelia Plantation Resort on Amelia Island Florida. For More Information and to Register: Click Here:
The premiere anti-counterfeiting and brand protection event goes West!
Despite tremendous efforts, our economies continue to suffer from a sharp increase in trade in fake and pirated goods, aided by the Internet which has made it easier for buyers and sellers of counterfeit goods to come together and also to distribute pirated music, movies and software. In order to ensure these traffickers of illegal goods don’t win this war, governments, law enforcement and brands must continue to engage with one another and to work toward a common goal.
To facilitate this, IQPC and Legal IQ are proud to invite you to take part in our next meeting, Anti-Counterfeiting & Brand Protection West Coast taking place January 24 – 26, 2011, at the Hotel Nikko in San Francisco, CA. CLE Credits Are Available. For More Information and to Register: http://ow.ly/3tpSp
We’ve been seeing a whole bunch of things at the National Law Review about the legal risks and risk management issues related to cloud computing. Accordingly, we’d like to share some of the better articles we’ve come across on the NLR and on Twitter…
For an Overview of What Cloud Computing or SaaS is and the Advantages and Disadvantages for Businesses, Especially Law Firms…..
Trademark types frequently encounter brand owners and managers with substantial misunderstanding and confusion about when use of the federal registration notice symbol is lawful. Most of the time a misuse or technical violation results from an honest mistake, but sometimes the misuse is, and starts out intentional, or perhaps the misuse begins to look intentional if it isn’t promptly fixed or corrected upon learning of the misuse.
Section 906 of the U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (TMEP) answers some of the most common questions regarding misuse with this guidance:
The federal registration symbol should be used only on or in connection with the goods or services that are listed in the federal registration.
The federal registration symbol may not be used with marks that are not actually registered in the USPTO.
Even if an application is pending, the federal registration symbol may not be used until the mark is registered.
Registration in a state of the United States does not entitle a person to use the federal registration notice.
A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.
This information and guidance, however, begs the question of whether misuse is a serious violation and the possible consequences of misusing the registration symbol? As you may recall, we’ve talked a bit before about possible false advertising claims against the trademark owner who misuses the symbol and a possible unclean hands defense in favor of the trademark owner’s enforcement target, especially when the misuse is accompanied by a bad faith intent to deceive.
As it turns out, we really need to add another important potential consequence to the list, one that I fear will be abused and used for pure tactical advantage in trademark enforcement efforts, namely, assertions of trademark fraud, despite the current heightened standard of fraud, with the Court of Appeals for the Federal Circuit now requiring a specific intent to deceive the Trademark Office. Actually, registration symbol misuse is not really a new ground of trademark fraud, but it has been rather uncommonly and infrequently alleged, at least in recent years.
One of the reasons for my concern of abuse stems from a recent TTAB decision permitting this rather conclusory and bare bones trademark fraud claim to survive a motion to dismiss:
Applicant knowingly and willfully used the ® symbol in connection with the term … in an attempt to deceive or mislead consumers or others in the trade into believing that the mark was registered.
A pdf of the TTAB’s decision with scant analysis — from about six weeks ago — inNorth Atlantic Operating Co., Inc. et al v. DRL Enterprises, Inc. Opposition No. 91158276), is linked here.
Relying only on the above-quoted allegation, the TTAB decided: “We find that the allegation set forth above includes the necessary pleading of intent, and specifies that applicant’s misuse was knowing and willful, and an attempt to deceive or mislead consumers.”
In contrast to most trademark fraud cases where various false and misleading statements — relied upon by the Trademark Office — are the focus of the fraud challenge, in North Atlantic Operating Co., the focus was on an alleged intent to deceive the public, as opposed to the USPTO.
The Federal Circuit has held: “The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark.”Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991). Presumably, the same conduct would sustain a petition to cancel as well. Although, the statutory support for the broader focus is unclear, it appears that an intent to deceive the USPTO is not required, so long as there is an intent to deceive the relevant public regarding registration.
Another reason for my concern stems from the apparently satisfactory yet conclusory fraud allegation. There are simply no details regarding the who, what, where, why, and when, of the alleged trademark fraud, and this failure appears to contradict recent TTAB case law confirming that fraud must be pled with particularity under Fed. R. Civ. P. 9(b). Indeed, our friend John Welch over at the TTABlog has reported multiple times on the TTAB tightening up the pleading requirements for trademark fraud claims, following the Federal Circuit’s landmark decision in In re Bose, here, here, and here.
Finally, the Federal Circuit’s Copelands’ Enterprises decision makes clear that how quickly a trademark owner corrects a misuse of the registration notice symbol after learning of the misuse, will impact the determination of whether the trademark owner is charged with an intention to deceive the public. If we couple that guidance with the current uncertainty of whether the requisite intent may be established with a reckless disregard for the truth, trademark types and the brand owners and managers they represent, are all well-advised to pay more attention to what many previously have written off as honest mistakes and technical violations with no real or significant consequences.
Only time will tell whether the registration notice symbol misuse type of trademark fraud claim will remain uncommon or gain traction in our Post-Bose world.
The National Law Review’s featured guest bloggers this week are from our friends up north at Winthrop Weinstine. In keeping with all things Halloween and a bow to pop-culture, Sharon Armstrong discusses trademark filings in relation to these spooky favorites:
What is it with zombies these days? If recent memory serves correct, it wasn’t so long ago that a pop-culture junkie like me couldn’t mention the words “creature of the night” without some girl/tween/soccer mom swooning over the likes of one Edward Cullen, the romantic hero of Stephanie Meyer’s wildly popular Twilight series. You know who you are.
And then came the zombies. I received a copy of Pride and Prejudice and Zombies about a year ago as a gift – and suddenly it seems that zombies, like vampires, are everywhere too.
A recent review of the new television series “The Walking Dead” in the New York Times explains that “[z]ombie movies didn’t die off, but they were overshadowed by vampire mania that has dominated popular culture… Finally, perhaps as a backlash against all the girlish, gothic swooning over ‘Twilight,’ zombies are making a comeback.”
If recent filing activity at the Trademark Office is any indication, then what’s left of 2010 (and 2011) may be The Year of the Zombie. The stats are as follows:
Since September 6, 2006, the date upon which Twilight was first published, the following trademark applications have been filed with the Trademark Office:
132 marks incorporating the term “zombie”
118 marks incorporating the term “vampire”
116 marks incorporating the term “demon”
83 marks incorporating the term “troll”
13 marks incorporating the term “ghoul”
9 marks incorporating the term “corpse”
Of the first two categories, and since April 4, 2009, the date upon which “Pride and Prejudice and Zombies” was published, 84 applications for marks incorporating the term “vampire” have been filed and 69 applications for marks incorporating the term “zombie” have been filed.
Tellingly, the most recent applications incorporating the term “vampire” are for the mark VAMPIRES SUCK, for a variety of goods and services.
Sharon D. Armstrong is an associate in the Intellectual Property practice group. Her practice is focused on the prosecution and enforcement of trademarks and copyrights, and Internet/domain name enforcement and acquisition. She assists clients in nearly all facets of trademark prosecution and enforcement, both foreign and domestic, administrative proceedings before the Trademark Trial and Appeal Board, and intellectual property transactions including due diligence, licensing, trademark acquisitions, settlement, consent and coexistence agreements, and other transfers of rights. Ms. Armstrong also provides assistance with intellectual property litigation and arbitration. Prior to joining Winthrop & Weinstine, Ms. Armstrong was an associate with Greenberg Traurig in Las Vegas, Nevada, a law clerk with the National Endowment for the Humanities, and an arts administrator at Los Angeles Opera. www.winthrop.com /612-604-6463
Under the category of “Who Knew” — National Law Review guest blogger James M. Singer of Pepper Hamilton LLP lets us know about a US Patent Office Pilot Program which invites public participation in the patent application process.
The U.S. Patent and Trademark Office has announced an additional one-year pilot of its “Peer To Patent” pilot program, which invites public participation in the patent application process. The new program launches on October 25, 2010 and will be available through September 30, 2011.
The Peer-to-Patent program is a collaboration between the USPTO, the New York Law School, and others in which participating patent applications receive public scrutiny through comments and prior art submissions on the Peer-to-Patent website. The peer review period begins approximately one month after the patent application is published, and it lasts for three months. After the peer review period, the project sends the prior art and comments to the USPTO, and the USPTO advances the application earlier in its queue for examination. Both the USPTO and the applicant can consider the public comments and submitted prior art during the examination.
Applications that participate in the program can receive the benefit of quicker examination than they would have received if they had merely waited their ordinary turn at the USPTO. This is especially useful for technologies such as software and telecommunication inventions where the typical wait time to first Office Action often is several years. In addition, many commenters have suggested that the fact that a patent was peer reviewed patent could be useful in situations such as challenges to validity in litigation — in order words, the fact that a patent went through the program may make a jury less likely to find the patent invalid.
According to the USPTO, the Peer to Patent Program “opens the patent examination process to public participation in the belief that such participation accelerates the examination process and improves the quality of patents. Under the pilot program, inventors can opt to have their patent applications posted on the www.peertopatent.org website. . .. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination.”
Changes in the new pilot include:
eligible technology classes have expanded to include software, telecommunications, and others;
peer review time is reduced to three months (from the previous four months);
up to 1,000 applications will be accepted into the program; and
peer reviewers may submit up to six items of prior art per application (down from the previous limit of 10).
The original Peer To Patent pilot ran from June 2007 until June 2009. The original pilot included 189 patent applications, and it received over 600 items of prior art from peer reviewers. To participate in the program, a pending application must not have published more than 30 days before filing a consent form, and it must fall into an eligible technology class. Eligible classes include, among others:
260 (certain subclasses) – chemistry of carbon compounds,
380 – cryptography,
424 (certain subclasses) – drug, bio-affecting and body-treating compositions,
702, 703, 705-715, 717 and 718, which relate to certain types data processing and computers, and
Is cloud computing a shift or is it the next natural step in strategic business development? Is the cloud the right answer for your law firm or company? Is the cloud the right answer for all applications and infrastructure or is it just a piece of the puzzle? These are a just few of the many questions law firms and companies are asking themselves as they consider a move to the cloud. There are many reasons why cloud computing is a very seductive solution to the cost cutting environment we find ourselves dealing with today. However, there are many issues, legal and organizational, that must be considered to determine the validity of the cloud for each environment.
The “cloud” means different things to different people. For most of us, we have been using cloud computing technology for years without defining the term. Example cloud environments are extranets, legal research websites, online file storage and much more. By definition, the cloud is a metaphor referring to internet based computing in which applications, data, software or network functions are stored on remote servers. There are presently three types of cloud environments:
Infrastructure as a service or hardware cloud which serves as a data center,
Software as a service or the software cloud, and
Desktop applications operated within a hardware cloud.
Although we have been using the cloud in the past, the difference at this time is the potential of using the cloud for core business applications.
Why the Cloud?
For strategic business leaders, the cloud offers a way to minimize cost, increase mobility, prepare for disaster recovery, offer device flexibility, collaborate on demand and reduce downtime. Let us take a look at the different sections of a law firm and see how the cloud can affect the overall business functions.
In the information management world collaboration is key. The more a firm can offer needed collaboration tools with a client, the more the client becomes entrenched in that firm culture. The cloud provides law firms with a unique opportunity to offer clients a collaborative environment in an on-demand system. The client can truly be connected with the law firm from anywhere with any device in the world.
Fewer applications or errors and easier upgrades are phrases application and support specialists love to hear. The cloud environment can make them a reality. The cloud offers software functionality to users regardless of locality or device. Therefore, fewer setups, downloads and support hours are spent dealing with application changes and upgrades. This new environment aids a law firm in flexibility allowing the firm to change applications as rapidly as the needs of the users change.
The main concern of most in the applications world is support. How do current structured IT staffs support an environment when the applications are not local? What will be the skill set of an applications and desktop support staff individual with applications in the cloud? These are areas IT departments must address before making the move to the cloud.
The cloud offers business and cost savings in a very unique way. The upfront costs of moving to the cloud are large. However, over time the cost savings from increased efficiency and reduced hardware, software, support and downtime help to offset the upfront costs. The biggest hurdle for cloud computing may not be cost but instead data security. It is easy to argue that a law firm or company can protect its data when it lives in a server room on site with a locked door but how do IT departments protect their data when it sits thousands of miles away on servers not owned by the company? Law firms will need to determine if this is a deal breaker or is this an area of contract negotiation with the cloud provider.
What are the contractual issues?
Now that we see the potential of cost savings, flexibility, mobility and more, we will address the contractual issues and concerns each law firm will need to consider. The first step in any contractual negotiation is due diligence of both parties. Law firms must evaluate news, law suits, current events, financial stability, customer references, provider longevity and any other possible information that could affect the contractual obligation fulfillment. Only then can the contract negations begin.
The largest areas of concern in the cloud are data security and privacy. A demonstration of these concerns is seen in the 2009 complaint filed with the Federal Trade Commission (FTC) by the Electronic Privacy Information Center (EPIC) regarding cloud services of Google. In the complaint, EPIC alleges Google did not adequately safeguard the confidential information obtained from clients. This complaint raises serious questions for the vendor to address and draft into the contract. Questions to ask include where the data is stored, what are the physical security measures to protect the data, is a shared resource used in storage, what is the security during transmission, what are the disaster recovery measures and what are security incident response times. In addition, questions around data migration and transition should be addressed.
Another issue to consider is legal compliance. Highly regulated industries such as health care facilities falling under HIPAA must think twice about moving information to the cloud. Vendors are expected to maintain the data at the same standard required of the company. This can become a contractual deal breaker if the vendor will not agree to the higher standards. The regulated industries affect law firms that maintain work product and client information for clients working in these regulated industries. Law firms must now consider the standards guaranteed to their clients when moving to the cloud and verify the vendor will agree to that level of maintenance.
A point that is only just beginning to emerge in the cloud discussion is the level of control and ownership of the servers and data existing on the servers. Questions to consider are data termination and vendor claims and rights to the data. The control influences discovery, liability and litigation hold processes. Negotiation can help prevent future claims of spoliation.
Performance, reliability and service features shape the day to day experience of users in the cloud. Therefore, inquiring about disaster recovery set up, scalability of applications, process for upgrades and feature releases, suspension of services, offline capabilities, base subscription services and add-on services of applications can affect the contract obligations of the vendor, expectations of the client and most importantly cost of the contract.
Global performance and legal compliance of data across international borders are concerns for many large law firms. Is the vendor only offering a cloud solution that is U.S. based? This is a discussion point for the contract and can possibly be a deal breaker when adhering to EU standards of compliance.
All of the above contract negotiation points lead to the largest decision, cost. What is included in the cost of the cloud services? What is not included? And the final and most important question to ask, whether the move to the cloud is a benefit if the law firm already owns the software licenses and hardware to maintain the status quo.
What will the courts be deciding?
The courts are well aware of the cloud computing movement. In Oregon v. Bellar, 217 P. 3d 1094 (Or. App. 2009), the court took note that 69% of U.S. residents that are online utilize at least one cloud site. Due to the unique custodial issues involved with cloud computing, the cloud can present challenges to e-discovery and jurisdictional questions. Decisions concerning these issues are just starting to appear but with conflicting rulings. The question of what the courts will decided has yet to be seen.
What will the future bring?
As we stated earlier, many of us have been using the cloud for years without calling it the cloud. The difference surrounds the movement of core business functions such as email and document management to the cloud. In the past, these features have been kept at a local level. But as you see above, this is changing. As more and more cloud providers make their way to the forefront, this movement will only increase. The question is whether the cloud is the right solution for your law firm?
Meredith L. Williams is Baker Donelson’s Director of Knowledge Management. Although trained as a lawyer, she is not actively engaged in the practice of law. Instead, she oversees BakerNet, the Firm’s industry-leading intranet, and coordinates strategic growth on behalf of the Firm in knowledge management, competitive intelligence and technology. Ms. Williams is widely recognized as a leading authority in knowledge management issues for the legal field, and is a frequent presenter and author on knowledge management and competitive intelligence. 901-577-2353 / www.BakerDonelson.com
Many business transactions start with a nondisclosure agreement (NDA). Often, one of the first deal points to be negotiated is whose “form” NDA will controls. However, it’s common for both parties to overlook the fact that there is no “one-size-fits all” form NDA.
Before entering into an NDA, each party should examine the terms to ensure that the agreement makes sense for the party’s business. Each party should ensure that the agreement adequately protects its own information, while not going so far as to subject the party to confidentiality procedures that can create issues down the road.
Issues to consider when entering into an NDA include:
Nature of the disclosure: Are you more likely to be the discloser or the recipient of confidential information? If your client will be a discloser, then a strong agreement may benefit the client. If you will only be the recipient, then you might seek a less stringent agreement.
Duration of the confidentiality obligation: Some NDAs require information to be kept confidential forever. Others have a more limited term, such as 2 to 3 years. A long term is valuable if the disclosure involves proprietary manufacturing processes, chemical compositions, or similar information. However, if you are disclosing information that will become publicly known anyway — such as design details for a soon-to-be-sold product, or information that will be published in a patent application — then a term greater than 2 or 3 years may only benefit the other party.
Consistency with corporate procedures: Each party should review the terms of the agreement to ensure that the agreement does impose obligations with which it cannot comply. For example, if you need to disclose the information to contractors who aren’t employees, be sure that the agreement permits that. I’ve also seen NDAs stating that all individuals who will have access to the information must sign a confidentiality agreement that specifically refers to the NDA. Will you require your employees to sign a new agreement that specifically refers to this agreement? When faced with this type of obligation, consider whether or not you are prepared to comply.
Purpose / Non-use clause: It’s standard for an NDA to prohibit the recipient from disclosing the information. However, does it also restrict the recipient from internally using the information for its own benefit? Does it clearly limit the purpose for which the recipient can use the information? “Purpose” clauses are often filled in after all other terms are negotiated. Parties should take care so that the purpose clause is as carefully drafted as any other clause.
These are just a few areas that parties should consider before signing a confidentiality agreement. Rather than simply signing an ‘off the shelf” form, each party should carefully review the agreement with its attorneys to ensure that the document fits the business need.
James M. Singer is a partner in the Intellectual Property Practice Group of Pepper Hamilton LLP. A registered patent attorney, Mr. Singer provides strategic counseling that helps businesses identify, acquire, license, protect and maximize the value of intangible assets. Mr. Singer is the author and co-author of several publications, and he publishes IP Spotlight, a blog about topics relevant to the intersection of business and intellectual property law, at http://www.ipspotlight.com/. He also is a frequent public speaker on issues relating to technology and the law, and is recognized in Intellectual Asset Management (IAM) Licensing 250: The World’s Leading Patent and Technology Licensing Lawyers 2010. 412-454-5023 /www.pepperlaw.com
Trademark types frequently encounter brand owners and managers with substantial misunderstanding and confusion about when use of the federal registration notice symbol is lawful. Most of the time a misuse or technical violation results from an honest mistake, but sometimes the misuse is, and starts out intentional, or perhaps the misuse begins to look intentional if it isn’t promptly fixed or corrected upon learning of the misuse.
technologies such as software and telecommunication inventions where the typical wait time to first Office Action often is several years. In addition, many commenters have suggested that the fact that a patent was peer reviewed patent could be useful in situations such as challenges to validity in litigation — in order words, the fact that a patent went through the program may make a jury less likely to find the patent invalid.
