Oxford, Alabama, City Council Repeals Bathroom Ordinance Targeting Transgender Individuals

The Oxford, Alabama, City Council has repealed on May 4, 2016, an ordinance it passed a week previously that barred transgender people from using a bathroom that corresponds with their gender identity. (See our article, Oxford, Alabama, City Council Adopts Ordinance Restricting Access to Bathroom Facilities Based on Biological Sex.)

The ordinance made it unlawful for a person to use a bathroom or changing facility within the jurisdiction of the City that did not correspond to the sex indicated on the individual’s birth certificate. Persons deemed to have violated the ordinance could have faced a misdemeanor charge, punishable by a fine of up to $500 or up to six months’ incarceration.

 The ordinance quickly garnered national attention and civil rights groups, including the Human Rights Campaign and the Southern Poverty Law Center, publicly condemned the ordinance. In a letter issued to the Oxford City Council prior to the repeal, the Southern Poverty Law Center, the American Civil Liberties Union, and the ACLU of Alabama stated that the ordinance violated the Equal Protection Clause by singling out transgender people for different and unequal treatment. The groups also argued that the ordinance violated the due process clause, “because of its broad reach and lack of enforcement mechanisms,” which, according to the groups, left it unclear “whether people risk arrest simply for failing to carry their birth certificates to the restroom at all times.”

The letter also stated that the ordinance violated Title IX of the Education Amendments of 1972, which prohibits sex discrimination in public schools. The letter noted a recent Fourth Circuit Court of Appeals decision, G.G. v. Gloucester Cty. Sch. Bd., No. 15-2056, 2016 LEXIS 7026 (4th Cir. Apr. 19, 2016), in which the U.S. Court of Appeals for the Fourth Circuit, in Richmond, accorded deference to the Department of Education’s interpretation of regulations governing toilets, locker rooms and shower facilities. The Department of Education opined that a school must treat transgender students consistent with their gender identity.

In a special meeting, the Council voted 3-2 to repeal the ordinance. Because the mayor was ill and had not yet signed it, the Council could vote to recall the ordinance. In repealing the ordinance, some Council members expressed concerns regarding whether the ordinance violated Title IX of the Education Amendments of 1972.

In addition to the repeal of the Oxford ordinance, the U.S. Department of Justice took a similar position in a letter dated May 4, 2016, to North Carolina Governor McCrory. The DOJ stated that North Carolina’s law restricting bathroom access to restrooms based on an individual’s biological sex and not based on an individual’s consistent gender identity violates both Title VII of the Civil Rights Act and Title IX of the Education Amendments of 1972. (See our article, Department of Justice Warns Governor that North Carolina LGBT Law is Unlawful.)

Article By Thomas A. Davis, Michelle E. Phillips & Kimberley R. Ward of Jackson Lewis P.C.

Jackson Lewis P.C. © 2016

U.S. Designations Targeting a Major Panamanian Money Laundering Organization Not Aided by the Panama Papers Leak

Yesterday, the U.S. Department of the Treasury’s Office of Foreign Assets Control (OFAC) announced designations against the Panama-based Waked Money Laundering Organization, including its leaders, network of supporters and associates, and companies. According to press reports, Colombian law enforcement arrested the organization’s leader, Nidal Ahmed Waked Hatum, at a Bogota airport the day prior to the designations.

In total, OFAC added 8 individuals and 68 business entities to the List of Specially Designated Nationals (SDN List) pursuant to the Foreign Narcotics Kingpin Designation Act (Kingpin Act). Narcotics traffickers have used these businesses to obscure the source of drug money through a variety of means, including trade-based money laundering, bulk cash smuggling, real estate development, and illicit financial services.  The designation of Balboa Bank & Trust is particularly noteworthy, as it reflects Treasury’s continued willingness to use the Kingpin Act against financial institutions.  As noted in a previous entry, OFAC had not designated a bank pursuant to the Kingpin Act prior to November 2015.

OFAC clearly anticipates that these designations will cause significant disruptions, as it concurrently issued three General Licenses authorizing certain wind down transactions involving a hotel, newspapers, and a shopping mall.  U.S. persons should carefully consider the scope and expiration dates of these licenses prior to engaging in any dealings with these designated companies.

The designations do not signal the beginning of United States government actions in response to the Panama Papers leak.  Any potential use of those documents will be limited by the legal ethical issues surrounding the use of intentionally disclosed materials likely protected by the attorney-client privilege.  In addition to the legal ethical limitations, the evidentiary which serves as the administrative record for the designations would have required several months for investigation, drafting and interagency approval.  OFAC could not have finalized such an extensive package of designations within one month of the leak.

Article By Jeremy P. Paner of Holland & Hart LLP
Copyright Holland & Hart LLP 1995-2016.

FDA Issues Menu Labeling Final Guidance

Tomato labelThe enforcement date will likely begin in May 2017.

The US Food and Drug Administration (FDA) issued its final guidance on April 29 on Menu Labeling (Final Guidance).[1],[2] Importantly, the FDA intends to begin enforcing the Nutrition Labeling of Standard Menu Items in Restaurants and Similar Retail Food Establishments Final Rule (Menu Labeling Final Rule)[3] one year from the date that the Final Guidance’s Notice of Availability (NOA) is published in the Federal Register. The NOA for the Final Guidance is expected to be published in early May 2016. Thus, enforcement of the Menu Labeling Final Rule will likely begin in May 2017.

The 58-page Final Guidance is largely a reprint of the previous draft guidance of the same name. The Final Guidance contains many nonsubstantive changes from the draft guidance and provides additional examples (as well as several new, revised, and/or reformatted questions and answers on topics such as covered establishments, alcoholic beverages, catered events, mobile vendors, grab-and-go items, and record-keeping requirements).
The more notable changes in the Final Guidance include the following:

  • The inclusion of examples for temporary menu items (e.g., jack o’lantern cookies or holiday gift tins of popcorn).

  • Exemptions for private off-site catering events from menu labeling, even where the catered items are standard menu items.

  • Mobile vendors who walk through entertainment venues (such as baseball parks) and sell food and beverages are not considered covered establishments, and thus are not required to comply with the Menu Labeling Final Rule.

  • Additional information provided to explain a menu board, where a “menu board” can include multiple forms of written material. The crucial factor of what constitutes a menu board is whether the written material is or is a part of the primary writing from which a customer makes an order selection.

  • Standalone coupons that can be used to place an order (i.e., the coupon contains the name of the standard menu item, the price, and the phone number/website) must provide calorie declaration. However, if a coupon does not include a web address or phone number for placing orders, then it is not considered a menu, and a calorie declaration is not required.

  • An additional description for the inclusion of sauce(s) nutrition information served in multiserving standard menu items.

  • Confirmation that the calorie declaration requirements for electronic menus and menus on the Internet are the same as the requirements for printed menus.

  • Clarification that standard menu items in different sizes are not considered variable menu items unless they come in different flavors, varieties, or combinations and are listed as a single menu item.

  • Additional examples of declarations of calories in combination meal products when a meal comes in multiple sizes with multiple choices of sides.

  • Clarification that, if a covered establishment has multiple digital menu boards with rotating displays, then the disclosure statements should appear on each rotating display of each digital menu board to help ensure that the statements are clear and conspicuous to the consumer and posted prominently.

  • Calorie declarations directly on the package of grab-and-go items should declare the calories for the entire package as they are usually prepared and offered for sale (rather than based on reference amounts customarily consumed (RACCs)).

  • Any substantiation records for nutrient values should be maintained either at the covered establishment or the corporate headquarters for the duration of the time that the standard menu items are offered for sale at the covered establishment. FDA also recognizes that it is not necessary to maintain information on nutrient values for foods that are no longer standard menu items and are no longer offered for sale at a covered establishment, because this information is no longer beneficial for consumers if they cannot purchase those items.

  • Further explanation of when FDA-required statements from responsible individuals employed at covered establishments for nutrient determinations are required, along with sample statement language.

  • Additional guidelines for alcohol—

    • For caloric declaration of multiple beers that have the same calorie amounts, a single calorie declaration can be used, provided that the declaration specifies that the calorie amount listed represents the calorie amounts for each individual beer variety.

    • Clarification that, to the extent that beers on tap are not self-serve, they are exempt from the requirements for calorie declarations of standard menu items.

    • Further explanation regarding the acceptability of covered establishments’ reliance on calorie information and nutrition information on alcohol beverage labels consistent with Alcohol and Tobacco Tax and Trade determinations.

    • Discussion about the inclusion of calorie information for “suggested” alcohol pairings.

    • The applicability of the Menu Labeling Final Rule to covered establishments that sell only one type of standard menu item (e.g., beer).

As previously stated, the Menu Labeling Final Rule and Final Guidance provide that the categories of covered establishments include not only restaurants and similar retail food establishments, but also movie theaters, amusement parks, bowling alleys, sports arenas, other entertainment venues, food service vendors, food takeout and delivery establishments, quick service restaurants, table service restaurants, convenience stores, coffee shops, bakeries, delis, grocery stores, supercenters, and fitness clubs.
However, the Common Sense Nutrition Disclosure Act of 2015, which passed in the US House of Representatives and is pending in the US Senate, would

  • direct the secretary of the US Department of Health and Human Services to issue new rules that allow a food establishment to post nutritional information exclusively on its website if the majority of its orders are placed online,

  • clarify that advertisements are not necessarily considered menus, and

  • aim to protect establishments from being sued for human error.[4]

We will continue to monitor congressional and FDA menu labeling activities.

Article By Robert G. Hibbert, Kathleen M. Sanzo, Christine Forgues Schlenker & Hilary L. Lewis of Morgan, Lewis & Bockius LLP
Copyright © 2016 by Morgan, Lewis & Bockius LLP. All Rights Reserved.

[1] FDA CFSAN Constituent Update, FDA Issues Final Guidance on Menu Labeling (Apr. 29, 2016), available here.

[2] A Labeling Guide for Restaurants and Retail Establishments Selling Away From-Home Foods – Part II (Menu Labeling Requirements in Accordance with 21 C.F.R. 101.11): Guidance for Industry (Apr. 2016), available here.

[3] Food Labeling; Nutrition Labeling of Standard Menu Items in Restaurants and Similar Retail Food Establishments; Calorie Labeling of Articles of Food in Vending Machines; Final Rule. 79 Fed. Reg. 71156 (Dec. 1, 2014), available here.

[4] See Text of the Common Sense Nutrition Disclosure Act of 2015, H.R. 2017 (Referred to Senate Committee Feb. 22, 2016), available here.

The Evolving Role of Today’s Law Firm Leaders

The National Law Review is in attendance at the 23rd Managing Partner Forum today in Atlanta, Georgia. NLR Managing Director Jennifer Schaller is moderating a collaborative panel discussing investing in clients. Check out the below article by founder of the Managing Partner Forum, John Remsen.

We all know that the legal profession has changed dramatically over the past two decades, resulting in a new set of challenges that yesterday’s firm leaders never had to confront. There’s an oversupply of lawyers. More demanding and less loyal clients. More demanding and less loyal partners and associates. Staggering advances in technology. Tort reform in many jurisdictions. Skyrocketing operating expenses. Mergers and acquisitions and unprecedented competition. Certainly these and other trends have created tremendous pressures for law firm leaders—who must change the way they operate if their firms are to remain viable in the long run.

Yet most aren’t keeping pace. In the midst of all the change, far too many firms haven’t changed much at all. They run essentially the same way they did 20 years ago—like loose confederations of solo practitioners sharing office space.

Why? According to nationally known lawyer-psychologist Dr. Larry Richard and his groundbreaking research on the subject, most lawyers hate change. They also love autonomy and resist rules and structure. They have little patience and want immediate results. They don’t like risk and shun the unknown. So for many firms, it’s easier just to leave things alone.

On the other hand, some firms “get it.” These firms are fundamentally changing the way they do business, with streamlined governance, standardized systems and procedures, strategic plans, and marketing and business development programs. They enforce minimum performance standards for partners and associates. Many are also divesting themselves of low-profit clients and practice groups. They are deequating underperforming shareholders and asking disruptive lawyers—even those with big books of business—to leave. These firms are emerging as the front-runners in the market because their top levels of leadership have the moxie and vision to make change happen.

The Firm Leader as Change Agent

In today’s most successful law firms, the role of managing partner has evolved significantly, from that of a “caretaker” trying not to rock the boat to that of a dynamic consensus builder and change agent. Today the managing partner is the CEO of a multimillion-dollar entity in a rapidly changing industry and needs to exercise critical leadership skills to set the example for leaders at all other levels of the firm and thus ensure the organization’s success.

Of course, knowing that you need to set the course to success and actually doing it can be difficult, given the press of countless to-dos firm leaders tackle every day. Consider this: Last year TheRemsenGroup surveyed more than 170 managing partners from firms ranging in size from 10 to 2,200 lawyers. Of those firms, 60 percent had more than 50 lawyers. When they were asked what their most important contributions were in their roles as managing partner, building consensus among shareholders and initiating change topped the list of responses. In contrast, when asked where they spent most of their time, day-to-day administration ate up way too much of it.

We also asked if these managing partners had a job description: 74 percent did not. In addition, 76 percent did not have a clearly defined exit strategy.

What can we take from this? Too many leaders at the top levels of law firms are winging it.

Steps to More Effective Leadership

A successful firm leader must be a visionary, a communicator, a negotiator, a coach, a disciplinarian, a cheerleader and a psychologist all wrapped up in one person. Needless to say, it’s not an easy job, especially when you add management responsibilities to the mix.

There are, however, steps that the top levels of firm leadership can take to enhance their effectiveness and improve the performance of their organizations. Here, in a nutshell, is the guidebook.

  • Codify the Top Leader’s Job

Every managing partner should have a well-defined job description. It should set forth the primary responsibilities of the position, the amount of time required, and how the partner will be compensated for his or her nonbillable contributions. Also, it should account for the fact that a managing partner’s time should be spent mostly in the areas of planning, communication and consensus building. Day-to-day administration functions should be delegated to a capable administrator.

  • Appoint Strong Group Leaders

A firm needs strong leadership at all levels. Unfortunately, departments and practice groups are too often led by the most senior lawyer or the lawyer with the biggest book of business when, in fact, that may not be the right person for the job. Passion, commitment and leadership skills are required for these important roles. To help ensure the right people are put in the right positions, department heads, practice group chairs and branch office managing partners need job descriptions, just like the managing partner does.

  • Develop a Firmwide Strategic Plan

The evidence is clear. Firms that have plans outperform those that do not. Planning helps to bring everybody onto the same page, sharing the same vision for the future. Firm leaders have to embrace and encourage the planning process and the plan’s implementation at the firm, practice group and individual lawyer levels.

  • Build a Firm-First Culture

Leaders should always encourage and reward a “firm-first” mind-set and attitude among all the firm’s members. There are a variety of ways to do this, including through compensation mechanisms, but even simple steps can prove very effective. For example, insist on the term “our” clients instead of “mine” and “yours.” Leaders must do everything possible to promote trust, teamwork and fairness within the firm.

  • Lead by Example

Managing partners and practice group leaders cannot be hypocrites. They must “walk the talk” by being first in submitting their individual marketing plans, getting their time records in, mentoring younger colleagues, returning client phone calls and otherwise setting the standard for everyone in the firm.

  • Invest in the Future

According to LexisNexis’s 2007 Juris Law Firm Economic Survey, the top performing and most profitable law firms spend more per person than underperforming firms do. They are investing in the future. The lesson: Resist the temptation to enhance profitably through cost cutting. That’s a short-term fix. Profitable firms look at long-term impacts.

  • Groom Successor Leaders

The best leaders are wise enough to identify and mentor a successor for their roles. They give that person important, high-profile assignments so that the firm’s people gain trust and confidence in the successor’s leadership skills well before the torch is actually passed. In addition, managing partners in particular should have a well-defined exit strategy that is communicated to all shareholders.

  • Be Passionate

They sure don’t teach much about leadership in law schools. But that’s not an excuse for failing to strive to be the best firm leader you can be. There are many intricacies involved in steering a firm toward top performance in times of change. To learn more about them, you should attend leadership conferences and ask your firm for training. Read books and articles. Learn from other managing partners and practice group chairs. It’s important for leaders to demonstrate that they’re devoted to excellence. -After all, if the leader isn’t committed, there aren’t likely to be many followers—and the firm will stagnate as a result. Those firms with strong, passionate and committed leaders, on the other hand, will emerge as the most successful law firms of the future.

Article By John Remsen, Jr of The Remsen Group
Copyright 2016 The Remsen Group

The Evolving Role of Today's Law Firm Leaders

The National Law Review is in attendance at the 23rd Managing Partner Forum today in Atlanta, Georgia. NLR Managing Director Jennifer Schaller is moderating a collaborative panel discussing investing in clients. Check out the below article by founder of the Managing Partner Forum, John Remsen.

We all know that the legal profession has changed dramatically over the past two decades, resulting in a new set of challenges that yesterday’s firm leaders never had to confront. There’s an oversupply of lawyers. More demanding and less loyal clients. More demanding and less loyal partners and associates. Staggering advances in technology. Tort reform in many jurisdictions. Skyrocketing operating expenses. Mergers and acquisitions and unprecedented competition. Certainly these and other trends have created tremendous pressures for law firm leaders—who must change the way they operate if their firms are to remain viable in the long run.

Yet most aren’t keeping pace. In the midst of all the change, far too many firms haven’t changed much at all. They run essentially the same way they did 20 years ago—like loose confederations of solo practitioners sharing office space.

Why? According to nationally known lawyer-psychologist Dr. Larry Richard and his groundbreaking research on the subject, most lawyers hate change. They also love autonomy and resist rules and structure. They have little patience and want immediate results. They don’t like risk and shun the unknown. So for many firms, it’s easier just to leave things alone.

On the other hand, some firms “get it.” These firms are fundamentally changing the way they do business, with streamlined governance, standardized systems and procedures, strategic plans, and marketing and business development programs. They enforce minimum performance standards for partners and associates. Many are also divesting themselves of low-profit clients and practice groups. They are deequating underperforming shareholders and asking disruptive lawyers—even those with big books of business—to leave. These firms are emerging as the front-runners in the market because their top levels of leadership have the moxie and vision to make change happen.

The Firm Leader as Change Agent

In today’s most successful law firms, the role of managing partner has evolved significantly, from that of a “caretaker” trying not to rock the boat to that of a dynamic consensus builder and change agent. Today the managing partner is the CEO of a multimillion-dollar entity in a rapidly changing industry and needs to exercise critical leadership skills to set the example for leaders at all other levels of the firm and thus ensure the organization’s success.

Of course, knowing that you need to set the course to success and actually doing it can be difficult, given the press of countless to-dos firm leaders tackle every day. Consider this: Last year TheRemsenGroup surveyed more than 170 managing partners from firms ranging in size from 10 to 2,200 lawyers. Of those firms, 60 percent had more than 50 lawyers. When they were asked what their most important contributions were in their roles as managing partner, building consensus among shareholders and initiating change topped the list of responses. In contrast, when asked where they spent most of their time, day-to-day administration ate up way too much of it.

We also asked if these managing partners had a job description: 74 percent did not. In addition, 76 percent did not have a clearly defined exit strategy.

What can we take from this? Too many leaders at the top levels of law firms are winging it.

Steps to More Effective Leadership

A successful firm leader must be a visionary, a communicator, a negotiator, a coach, a disciplinarian, a cheerleader and a psychologist all wrapped up in one person. Needless to say, it’s not an easy job, especially when you add management responsibilities to the mix.

There are, however, steps that the top levels of firm leadership can take to enhance their effectiveness and improve the performance of their organizations. Here, in a nutshell, is the guidebook.

  • Codify the Top Leader’s Job

Every managing partner should have a well-defined job description. It should set forth the primary responsibilities of the position, the amount of time required, and how the partner will be compensated for his or her nonbillable contributions. Also, it should account for the fact that a managing partner’s time should be spent mostly in the areas of planning, communication and consensus building. Day-to-day administration functions should be delegated to a capable administrator.

  • Appoint Strong Group Leaders

A firm needs strong leadership at all levels. Unfortunately, departments and practice groups are too often led by the most senior lawyer or the lawyer with the biggest book of business when, in fact, that may not be the right person for the job. Passion, commitment and leadership skills are required for these important roles. To help ensure the right people are put in the right positions, department heads, practice group chairs and branch office managing partners need job descriptions, just like the managing partner does.

  • Develop a Firmwide Strategic Plan

The evidence is clear. Firms that have plans outperform those that do not. Planning helps to bring everybody onto the same page, sharing the same vision for the future. Firm leaders have to embrace and encourage the planning process and the plan’s implementation at the firm, practice group and individual lawyer levels.

  • Build a Firm-First Culture

Leaders should always encourage and reward a “firm-first” mind-set and attitude among all the firm’s members. There are a variety of ways to do this, including through compensation mechanisms, but even simple steps can prove very effective. For example, insist on the term “our” clients instead of “mine” and “yours.” Leaders must do everything possible to promote trust, teamwork and fairness within the firm.

  • Lead by Example

Managing partners and practice group leaders cannot be hypocrites. They must “walk the talk” by being first in submitting their individual marketing plans, getting their time records in, mentoring younger colleagues, returning client phone calls and otherwise setting the standard for everyone in the firm.

  • Invest in the Future

According to LexisNexis’s 2007 Juris Law Firm Economic Survey, the top performing and most profitable law firms spend more per person than underperforming firms do. They are investing in the future. The lesson: Resist the temptation to enhance profitably through cost cutting. That’s a short-term fix. Profitable firms look at long-term impacts.

  • Groom Successor Leaders

The best leaders are wise enough to identify and mentor a successor for their roles. They give that person important, high-profile assignments so that the firm’s people gain trust and confidence in the successor’s leadership skills well before the torch is actually passed. In addition, managing partners in particular should have a well-defined exit strategy that is communicated to all shareholders.

  • Be Passionate

They sure don’t teach much about leadership in law schools. But that’s not an excuse for failing to strive to be the best firm leader you can be. There are many intricacies involved in steering a firm toward top performance in times of change. To learn more about them, you should attend leadership conferences and ask your firm for training. Read books and articles. Learn from other managing partners and practice group chairs. It’s important for leaders to demonstrate that they’re devoted to excellence. -After all, if the leader isn’t committed, there aren’t likely to be many followers—and the firm will stagnate as a result. Those firms with strong, passionate and committed leaders, on the other hand, will emerge as the most successful law firms of the future.

Article By John Remsen, Jr of The Remsen Group
Copyright 2016 The Remsen Group

Collections in Connecticut Part 1: Pre and Post-Judgement Collection Specifics

Connecticut flag

Collections in Connecticut – how to get paid if you are owed money? Collecting money owed to you or your company can be frustrating.  You or your company are owed money and have not been paid.  What are your legal options?  The following video is the first in a series of three discussing collection law in Connecticut, pre and post-judgment collection specifics and enforcing foreign judgments.

http://www.murthalaw.com/site/video-player/player.swf

Click here for Part 2 – Prejudgment Remedy – Collections in Connecticut

Click here for Part 3 – Steps in the Connecticut Collection Process

Article By Alena C. Gfeller & Robert E. Kaelin of Murtha Cullina

© Copyright 2016 Murtha Cullina

Lessons for Lawyers from Steve Jobs [VIDEO]

Apple LogoThis is Small Business Week and I’m going to share with you some inspiring talks by business visionaries in this week’s blog posts.

The first is one of the most famous commencement speeches ever given — the 2005 Stanford commencement address by Steve Jobs. One of my favorite lessons from Jobs’ talk is “Don’t be trapped by dogma — which is living with the results of other people’s thinking.”

The most successful lawyers I know have followed the less-traveled road to success. They have freed themselves from conventional thinking within the legal profession. They have marketed when others have not. They were among the first to adopt alternative fee structures while others lost clients to the hidebound billable hour. They have recruited Superstars for their firms while others were happy just to fill office chairs.

Our success in helping more than 18,000 lawyers grow their firms has always been rooted in contrarian thinking.   When firms have believed that the best path to fill their coffers was to be everything to everyone, we have demonstrated the profitable power of specialization. When firms have clung to traditional advertising, we have shown lawyers that the road to better ROI lies in isolating a target market and reaching out to them one-on-one for a more engaging experience. When the legal professional scoffed at Internet marketing and social media, we proved how having a strong online presence led to more leads.

Steve Jobs was a contrarian his whole life. Listen to Jobs speak about seeing opportunities in setbacks — even his own death, which was much closer than he knew at that time:

Article By Stephen Fairley of The Rainmaker Institute
© The Rainmaker Institute, All Rights Reserved

Artist Formerly Known as a Trademark: Prince

Prince logoI’m sure his name came immediately to mind when you read that title: Prince. That was, at least, before he changed it to the unpronounceable, androgynous “Love Symbol.” While many thought this was a marketing stunt, Prince’s “formerly known as” campaign was actually an attempt to skirt a heated legal battle with his record label, Warner Bros., by creating and producing music under a new trademark. Now that the regal record-breaking artist has passed, however, it will be interesting to see where the royalty chips will fall.

Sleepless in Seattle was in, Cheers was out and Haddaway asked the all-important question, “What is Love?” We were all a little Dazed and Confused. It was 1993 when the very public trademark battle began. “Why You Wanna Treat Me So Bad?” Prince asked Warner Bros. when they refused to release his extensive back-log of music. It seemed Warner was more focused on going “Round and Round” the promotion circuit than producing more Prince records, leaving a pile of his hand-crafted gems to sit and collect dust. Finding Warner “Delirious” in this regard and seeing their refusal as a “Sign o’ the Times,” Prince decided to “Kiss” his label goodbye and produce music under a new trademark, the unpronounceable Love Symbol, subsequently copyrighted as “Love Symbol #2.”

“The first step I have taken toward the ultimate goal of emancipation from the chains that bind me to Warner Bros. was to change my name from Prince to the Love Symbol. Prince is the name that my mother gave me at birth. Warner Bros. took the name, trademarked it, and used it as the main marketing tool to promote all of the music that I wrote. The company owns the name Prince and all related music marketed under Prince. I became merely a pawn used to produce more money for Warner Bros.”

Prince claimed in a public statement about the trademark dispute, boldly sporting the word “SLAVE” on his cheek.

While the Love Symbol album didn’t really earn him “Diamonds and Pearls,” it did garner some attention, selling millions of copies worldwide, and laid down some heavy “Purple Rain” on Warner’s Prince promo-party. Prince was waiting for the sun to set on “1999” when his contract with Warner Bros. would expire so he could begin producing music once again under his rightful, trademarked name—Prince—in 2000. Post-“Emancipation,” Prince embarked on a long and lustrous music-making career, earning world-wide critical acclaim and induction into the Rock Star Hall of Fame when he was first eligible in 2004.

With the royal Prince’s passing and his songs playing on every satellite station right now, we couldn’t help but mull over this old trademark tango and wonder what you thought? Was Prince’s bold Love Symbol move successful? Do you predict any royalty fall-out, now that he has passed, over royalties that were earned under the “Love Symbol” trademark as opposed to “Prince?”

Article By Annie Dike of IMS ExpertServices
© Copyright 2002-2016 IMS ExpertServices, All Rights Reserved.

Artist Formerly Known as a Trademark: Prince

TrademarkI’m sure his name came immediately to mind when you read that title: Prince. That was, at least, before he changed it to the unpronounceable, androgynous “Love Symbol.” While many thought this was a marketing stunt, Prince’s “formerly known as” campaign was actually an attempt to skirt a heated legal battle with his record label, Warner Bros., by creating and producing music under a new trademark. Now that the regal record-breaking artist has passed, however, it will be interesting to see where the royalty chips will fall.

Sleepless in Seattle was in, Cheers was out and Haddaway asked the all-important question, “What is Love?” We were all a little Dazed and Confused. It was 1993 when the very public trademark battle began. “Why You Wanna Treat Me So Bad?” Prince asked Warner Bros. when they refused to release his extensive back-log of music. It seemed Warner was more focused on going “Round and Round” the promotion circuit than producing more Prince records, leaving a pile of his hand-crafted gems to sit and collect dust. Finding Warner “Delirious” in this regard and seeing their refusal as a “Sign o’ the Times,” Prince decided to “Kiss” his label goodbye and produce music under a new trademark, the unpronounceable Love Symbol, subsequently copyrighted as “Love Symbol #2.”

“The first step I have taken toward the ultimate goal of emancipation from the chains that bind me to Warner Bros. was to change my name from Prince to the Love Symbol. Prince is the name that my mother gave me at birth. Warner Bros. took the name, trademarked it, and used it as the main marketing tool to promote all of the music that I wrote. The company owns the name Prince and all related music marketed under Prince. I became merely a pawn used to produce more money for Warner Bros.”

Prince claimed in a public statement about the trademark dispute, boldly sporting the word “SLAVE” on his cheek.

While the Love Symbol album didn’t really earn him “Diamonds and Pearls,” it did garner some attention, selling millions of copies worldwide, and laid down some heavy “Purple Rain” on Warner’s Prince promo-party. Prince was waiting for the sun to set on “1999” when his contract with Warner Bros. would expire so he could begin producing music once again under his rightful, trademarked name—Prince—in 2000. Post-“Emancipation,” Prince embarked on a long and lustrous music-making career, earning world-wide critical acclaim and induction into the Rock Star Hall of Fame when he was first eligible in 2004.

With the royal Prince’s passing and his songs playing on every satellite station right now, we couldn’t help but mull over this old trademark tango and wonder what you thought? Was Prince’s bold Love Symbol move successful? Do you predict any royalty fall-out, now that he has passed, over royalties that were earned under the “Love Symbol” trademark as opposed to “Prince?”

Article By Annie Dike of IMS ExpertServices

© Copyright 2002-2016 IMS ExpertServices, All Rights Reserved.

Defend Trade Secrets Act. It’s Coming: What You Need to Know

The Defend Trade Secrets Act (DTSA) is headed to President Barack Obama for his signature, and there is little doubt that President Obama will sign it into law. Below is a summary of what you need to know about this soon-to-be law, including what you should be talking to your employment law counsel about in terms of modifying employment contracts and agreements.

What is the DTSA?

The DTSA will effectively “federalize” trade secrets law and allow companies or individuals with trade secrets to file private civil lawsuits under the Federal Economic Espionage Act (the Espionage Act).

What does “federalizing” trade secrets law mean?

The federalization of trade secrets law is a game changer. Pre-DTSA, trade secrets law was a state law issue. While most states dealt with trade secrets by adopting some versions of the Uniform Trade Secrets Act, the laws (and court’s interpretation of them) varied significantly from state to state. The variations led to many hotly contested procedural issues for example forum, venue and choice-of-law.

What is the purpose of the DTSA?

The DTSA’s specified purpose is to create a nationwide law that tightens trade secrets protections to align them with those given to patents, copyrights, and trademarks. It makes the issue a federal one so that federal law and courts can control the subject area, which will provide more certainty for litigants in trade secrets cases.

What will the DTSA protect?

Federal law regarding intellectual property has been fought on three fronts: copyrights, patents, and trademarks. Now, trade secrets will enter the federal protection arena.

The DTSA will allow “[a]n owner of a trade secret that is misappropriated [to] bring a civil action…if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce.” Oddly enough, however, the DTSA itself does not define “trade secret.” The Espionage Act, however, does.

How will the DTSA protect trade secrets? (Hint: Seizure provision)

As set forth above, the DTSA will allow trade secret owners whose trade secrets have been misappropriated to file civil actions in federal court. It also provides for theft protections abroad, but much of this part of the law is yet to be determined.

In addition to allowing victims to be awarded damages for wrongful takings, the DTSA contains a seizure provision that allows for the seizure of stolen trade secrets in “extraordinary circumstances” upon an “ex parte application,” and “affidavit or verified complaint.” This seizure provision is something completely new in the trade secrets context, as no state law has ever provided a plaintiff with this remedy.

Although it is unclear what situations courts will eventually qualify as “extraordinary circumstances,” the threshold appears to be slightly higher than that required to obtain a temporary restraining order under the Federal Rules of Civil Procedure. In fact, the first requirement for a court issuing a seizure order is the determination that “an order issued pursuant to Rule 65 of the Federal Rules of Civil Procedure or other form of equitable relief…[would] be inadequate…because the party to which the order would be issued would evade, avoid, or otherwise not comply with such an order.” These additional requirements must also be met before the court will grant a seizure:

  • an immediate and irreparable injury;

  • the harm to the applicant outweighs the harm to the legitimate interest;

  • a showing that the person misappropriated the trade secrets by improper means or conspired to misappropriate through improper means;

  • a description (with reasonable particularity) of the matter to be seized and the location of the matter to be seized (if reasonable under the circumstance); and

  • the person(s) against whom seizure would be ordered would destroy, move, hide or make the trade secrets inaccessible if they were provided notice of the application.

A seizure order is enforceable by federal law enforcement officials and the materials seized are to be deposited to the custody of the court.

While such seizures may be difficult when dealing with small bits of data or data that can be easily copied or disseminated, the DTSA provides something else no other trade secrets law offers: it allows the moving party to request that the seized information is encrypted in the custody of the court.

Is there anything else interesting about the DTSA? (Hint: Whistleblower protection)

Yes. It has an immunity protection for whistleblowers. That provision essentially provides that an individual, who reveals the disclosure of a trade secret in confidence to a federal, state, or local government official, or to an attorney, may not be held criminally or civilly liable under any federal or state trade secrets law.

Also, an individual who files a lawsuit for retaliation by an employee for reporting a suspected violation of law may disclose the trade secret to his or her attorney and use the trade secret information in the court proceeding.

What are the pros?

The advantage of the DTSA is that, for companies that operate across state and national borders and that have their trade secrets threatened by competitors across the world, state laws were previously insufficient to properly protect those companies. The DTSA will help shore up the protection of trade secrets, likely reduce jurisdictional court battles that are typical at the outset of trade secret litigation in state court, and provide litigants with federal jurisdiction.

What are the cons?

The DTSA does not preempt state trade secret laws. As such, while a litigant may bring a federal trade secrets lawsuit, that same litigant may also be able to bring a claim under state law as well. While it adds uniformity of trade secrets law at the federal level, it does nothing for the myriad of trade secrets laws at the state level. In reality, this means that a litigant is more likely to face a federal trade secrets misappropriations claim and similar state law claims. While this provides uniformity at the federal level, it does not to clarify the patchwork of state laws, and makes trade secret litigation more complex by providing more litigation options to trade secret holders. While some may see this as a good thing, because it provides multiple avenues for recovery, others prefer uniformity.

While it is not necessarily true that companies should expect to see more litigation, they should be prepared to litigate these cases on the federal stage, as well as remain up-to-date on all relevant state laws.

What should my company’s next steps be to ensure compliance and corporate readiness?

Internal Controls

Companies should check their internal controls to ensure they are properly protecting their trade secrets. Some beginning action items should include the following:

  • Audit and Identify: Perform an audit of corporate assets to identify and designate trade secrets and determine where trade secrets are maintained and who has access to them.

  • Protect: Take steps to properly and adequately protect trade secrets. For electronically available or accessible information, ensure trade secrets are username and password protected and only made available or accessible to those who need access. Encrypting electronic information will also reduce the chance that it can be taken, opened, read, and disseminated outside the company’s information systems. For tangible trade secrets, ensure trade secrets are physically locked or that physical access to them is password, keycard or otherwise protected and that only those who need access have it.

  • Revise Agreements: Many companies allow third-parties access to the property, premises, data, networks, etc. Companies should review their vendor agreements, non-disclosure agreements, and other confidentiality and other non-disclosure-type agreements to ensure they are sufficient to identify and protect corporate trade secrets.

  • Revise Policies: Companies should review their privacy policies, including corporate security and electronic use policies to ensure they are sufficient to identify and protect their corporate trade secrets. This includes reviewing non-compete, non-disclosure, and other privacy-related agreements and policies the company may have with its employees.

Dealing with Employees

The DTSA requires that employers provide notice of the DTSA’s immunity “in any contract or agreement with an employee that governs the use of trade secret or other confidential information.” Companies can comply with this requirement by cross-referencing a policy document provided to the employee that sets forth the employer’s internal mechanism for reporting a suspected violation of law. If the employer fails to do this, the employer cannot be awarded exemplary damages or attorneys’ fees in an action against an employee to whom notice was not provided. This is required for all contracts and agreements that are entered into or updated after the DTSA’s enactment date.

The takeaway for this requirement is that companies with employees should sharpen their pencils because they have contracts and agreements to modify.

Dealing with Competitors

Companies can now act swiftly against a competitor attempting to misappropriate trade secrets. Under the appropriate “extraordinary circumstances,” the ability to file an ex parte motion in federal court for the seizure of any misappropriated property provides companies with a way to actually keep these trade secrets, well, secret. In addition, the automatic access to federal courts provides companies with a forum that is often better suited to handle complex interstate and international litigation, not to mention complicated technical issues, and decreases initial costs related to procedural battles.

Article By Sara H. Jodka & Emma R. Wolfe
© Copyright 2016 Dickinson Wright PLLC