July 2005

Electronic Discovery – The New New Thing

July 21, 2005

Procedure. There are fads in the law, just like everywhere else. Apologies to Michael Lewis, but there can be no doubt that, in the odd and insular world inhabited by litigators, electronic discovery is the new, new thing, and almost everyone is scrambling to catch up. It is what Y2K was from 1997 to January 1, 2000, but unlike Y2K, it’s not going away anytime soon. It easy to tell what’s hot in litigation: just watch publications like the National Law Journal and the American Lawyer and look for frequent articles on the “hot topics.” Google “electronic discovery” and you get 354,000 hits. I’ll be writing more about electronic evidence and discovery, but for now it’s worth noting that if you want to learn about this subject one resource stands tall: Kroll Ontrack. Kroll makes an effort to track and digest every case involving electronic discovery and computer forensics (look here to see this lengthy document, which can be sorted by topic or jurisdiction). Others, such as Lexis, are not far behind. You can sign up for Kroll’s newsletter here. And, if that’s not enough, you can order the monograph authored by two Kroll-employed attorneys, Electronic Discovery: What Every Lawyer Should Know. This 250 page book should make for a pleasant weekend of reading if you feel you really need to get up to speed on this topic. I should…

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Copyright Law and Parts Numbering Systems (yawn…)

July 21, 2005

Copyright. Sexy: Internet file sharing systems, Grokster, sampling, The Wind Done Gone, fair use, the legal standard for non literal infringement of computer source code. Not sexy: copyright protection for parts numbering systems. Yet, believe it or not, from time to time clients do ask whether parts numbering systems are protected. Lewis Clayton at Paul Weiss has written an article (published in the July 8, 2005 issue of the National Law Journal), discussing several recent cases dealing with parts-numbering systems and the “merger doctrine” under U.S. copyright law. Read the article here

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"Dictionaries First, Dictionaries Second, Never Dictionaries"

July 20, 2005

Patents. What should the federal courts look at first in construing the terms used in a patent, the patent specification contained in the patent itself, dictionaries or treatises? If this seems like asking how many angels can dance on the head of a pin, you’re right, but in the cloistered word of patent lawyers and judges, the answer to this question can mean the difference between failure and success. This was the issue addressed by the Federal Circuit (which handles all patent appeals in the U.S.) in the July 12, 2005 decision in Phillips v. AWH Corp. My colleagues David Jacobs and Joe Laferrera have written a short client advisory discussing this case. Read the Client Advisory here Read the decision here

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The Wayback Machine and the DMCA

July 14, 2005

Copyright, Digital Millennium Copyright Act. Quick now, what’s a good legal strategy when you’re involved in a bitterly contested trade secret, copyright and trademark case? Sue the lawyers on the other side, accusing them of hacking, of course. At worst, you’ll distract them and knock them off their game; at best, you’ll force their disqualification, pushing them out of the case and making your opponent go to the expense and inconvenience (not to be underestimated) of hiring new counsel and and getting them up to speed on the case. And, it doesn’t matter that your suit may be borderline or even frivolous. Every experienced lawyer knows that in the American legal system the risks of being sanctioned for bringing a frivolous suit are only slightly higher than finding a hundred dollar bill on a Times Square sidewalk during lunch hour. So, what happened here? First, there is an underlying trademark and trade secret suit between the similarly named “Healthcare Advocates” and “Health Advocate” that is of no particular interest to anyone except the parties. One of the issues is whether Healthcare published its alleged trade secrets on the Internet in the late 1990′s. Health Advocate, the defendant, is represented by the Harding Earley law firm, the lawyers who are at the receiving end of the lawsuit in question. Seeking to investigate Healthcare’s publications on its Internet site in the late…

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Interview With Tim Berners-Lee

July 12, 2005

Technology. Tim Berners-Lee is widely recognized as the inventor of the World Wide Web. Today, he is the Director of the World Wide Web Consortium, Senior Researcher at MIT‘s CSAIL, and Professor of Computer Science at Southampton ECS. Mr. Berners-Lee’s current project is the development of a Semantic Web, a dramatic enhancement of the current web which is described in detail here. This Spring (2005) my partner Andrew Updegrove interviewed Mr. Berners-Lee regarding the Semantic Web. To read this important interview, click here.

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The Supreme Court’s Grokster Decision – A Conversation With a Client

July 12, 2005

Following the Supreme Court’s June 27, 2005 decision in MGM v. Grokster I wrote a short article about the case, in the style of a client consulting a lawyer about a file-sharing system. Attorney: Judy, what brings you to my office today? Client: John, I have an exciting idea, and I want to run it by you to make sure it passes legal muster. I’ve been involved in indie music and film for years; I have hundreds of contacts in the entertainment industry. People don’t realize what a huge body of uncommercialized work is out there! I’ve developed the most radical peer-to-peer file-sharing software you can imagine. It makes Napster, Grokster, Morpheus and all of the others look medieval by comparison. I think that musicians and video producers will contribute their works to this network to get publicity. My revenue model will be based on banner advertising. It’s perfect! I have no cost of inventory – my only costs are computers, networking, and sales commissions for my ad reps. The best thing is that although anyone can put their files on my network, the technology creates proprietary file structures, so that people can’t grab my files, convert them into MP3s, and publish them on a competing system. Attorney: Judy, this sounds very promising. However, there are some legal issues that we should discuss. You know that on June 27th the Supreme…

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Second Circuit Holds that Use of Competitor's Name to Trigger Pop-Up Ads Does Not Violate Trademark Law

July 12, 2005

Trademark Law. Last year I wrote (together with Susan Mulholland, an attorney at my firm), an article on the WhenU line of cases. We reviewed the three legal decisions that had been published to date on the WhenU technology: two from the district courts in Virginia and Michigan holding that WhenU’s practice was permissible; and one, from the federal district court in New York holding that WhenU had violated the Lanham Act, the federal trademark statute. What does WhenU do that resulted in three federal court cases? In brief, once downloaded by a user (concealed in a “Trojan Horse” application), WhenU’s software will continuously monitor (invisibly, to the user) the user’s Internet browser to determine whether content accessed by the user matches key words stored in WhenU’s client directory. When the software finds a match for an associated key word – often a trademark or service mark – it triggers the SaveNow program to transmit a WhenU-branded pop-up ad to the user’s computer. The pop-up ad is selected from a list supplied by WhenU’s advertising clients, and may be a competitor of the owner of the mark that triggered the pop-up. The pop-up ad provides a hyperlink to the web site of WhenU’s client that, if clicked on, results in the competitor’s web site opening on the user’s computer. That was enough to send U-Haul, Wells Fargo and 1-800 CONTACTS…

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The Story of the Demoulas Fortune and the Judge’s Clerk

July 11, 2005

Yesterday’s masters of the universe are today’s cosmic dust. Anon _____________________ What Were They Thinking? A case that has received enormous attention in Massachusetts is the Massachusetts Board of Bar Overseers investigation into the activities of several attorneys for the defendants in the Demoulas case, a state court case involving claims of breach of fiduciary duty surrounding the ownership of a large New England supermarket chain. The case itself was a legal odyssey, spanning years and numerous state court decisions, but it is the aftermath of the litigation that stunned lawyers in Massachusetts and around the country. The losing defendants, dissatisfied with the decision of State Superior Court Judge Maria Lopez (who has since resigned in ignominy over a criminal molestation sentencing fiasco) and suspecting bias on her part, concocted a charade intended to induce the judge’s then law-clerk to disclose the inner workings of the judge’s chambers while the case was in litigation, and presumably prove that the judge’s clerk, rather than the judge herself, wrote the final (and most important) decision in the case. The saga of how Gary Crossen (then of Foley, Hoag & Eliot, and former ethics counsel to two Massachusetts Governors), Richard Donahue (a former President of the Massachusetts Bar Association, chair of its Commission on Professionalism and President of Nike, Inc.), and Kevin Curry, (a former Massachusetts Assistant Attorney General, lured the judge’s former…

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Lawyer/Employee Who Secretly Modifies Severance Agreement Before It Is Signed by Employer Loses His Case

July 6, 2005

A word to the wise ain’t necessary, it’s the stupid ones who need the advice. -Bill Cosby What Were They Thinking? It fascinates me when lawyers do exceptionally stupid things. One would think that the successful completion of four years of college and three years of law school (not to mention years of experience watching clients do unwise things) would inoculate lawyers against the most foolish forms of human behavior. But, of course, experience shows otherwise. Even experienced lawyers are as likely to be rendered stupid by fear, greed, hatred and jealously, and to act on those emotions, as any other highly educated person. A recently reported Massachusetts Superior Court case informs on this point. Although this case provides an interesting legal treatment of a contract issue (indeed, so interesting that the case was featured on the front page of Massachusetts Lawyers Weekly), it’s primary appeal is morbid curiosity. What was he thinking? An attorney in good standing in Massachusetts (who will remain unnamed), was employed as Director of Procurement for Navisite. To make a somewhat long story short, his employment was terminated by Navisite in early 2002. After some back and forth over the terms of his severance, Navisite agreed to give the attorney two weeks severance pay ($5,300) and to pay his first month of COBRA benefits. The lawyer, however, had other plans. After receiving this agreement from…

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