Quick Hits: Supreme Court Arguments, Unpublished Mass Appeals Court Decisions, Trademark Law Decision

May 30, 2008

The “Oyez” web site now presents oral arguments before the Supreme Court in multimedia: As you listen to the argument you see a synchronized transcript, and a photo of the judge or lawyer speaking appears every time there is a change in speaker. This multimedia presentation makes the experience of listening to these arguments much easier and more pleasant. Link here. The Massachusetts Appeals Court has made its unpublished decisions available here. This is particularly helpful, since these decisions are difficult to obtain, and on February 25, 2008, the Court issued a ruling permitting unpublished decisions to be cited for their “persuasive value.” This modified a 23 year old court rule that unpublished decisions could not be cited as legal authority. Massachusetts Federal District Court Judge F. Dennis Saylor, IV has issued a written decision in Commerce Bank and Trust Co. v. TD Banknorth, Inc. (see below). Judge Saylor found a likelihood of confusion between “Commerce Bank” and “TD Commerce Bank,” and issued a preliminary injunction in favor of the plaintiff. While this decision is unexceptional, it is a helpful road map to trademark law in this district, and is another example of Judge Saylor’s crisp and comprehensive writing style. Commerce Bank PI Decision – Upload a doc Read this doc on Scribd: Commerce Bank PI Decision

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Interesting Documents: "Order for Discovery of Computer Memory Devices" in ConnectU v. Facebook

May 20, 2008

Here is an example of just how complex electronic discovery can become when the stakes are high, and the lawyers are prepared to negotiate an extremely detailed discovery protocol. This document is from the ConnectU v. Facebook litigation, in which ConnectU alleges that the founders of Facebook misappropriated ConnectU ideas and technology. The Order is signed by Magistrate Collings, who is known to be one of the most experienced and sophisticated judges in the Federal District of Massachusetts when it comes to issues of electronic discovery. I’m sure that even he was challenged by this document. Order for Discovery of Computer Memory Devices – Upload a doc Read this doc on Scribd: Order for Discovery of Computer Memory Devices

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Behind The Scenes at Bear Stearns

April 23, 2008

I recently wrote about the Bear Stearns v. Sharon case. (See here and here). Here is a link to a Business Week article, “Bailing out of Bear,” that tells the gruesome story behind the Bear Stearns financial debacle and Bears’ suit against Doug Sharon, the star broker at Bear Stearns who left for Morgan Stanley.

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Treble Damages Now Mandatory Under Massachusetts Wage Statute

April 18, 2008

Until the recent passage of a new state law (effective July 13, 2008), the Massachusetts Wage Statute contained a provision that provided for trebled damages at the discretion of the judge. An “innocent” violator had a chance of avoiding treble damages; a repeat offender was likely to get whacked. No more. As of July 13th, treble damages are mandatory. My partner Joe Laferrera has written a Client Advisory explaining in more detail this change in the law. Click here to read the Advisory.

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SJC Approves Joint Defense Agreements in Massachusetts

February 7, 2008

Lately, I’ve had a number of cases where the lawyer for a co-defendant wants to cooperate. Because this usually involves sharing attorney-client privileged information, we agree that our discussions are covered by the “joint defense privilege,” and sometimes enter into a “joint defense agreement.” Recent discussions in this area reminded me that I never mentioned the Massachusetts Supreme Judicial Court’s 2007 decision in Hanover Insurance Company v. Rapo & Jepsen Insurance Services, Inc., where the SJC, for the first time, gave broad approval to cooperation between attorneys whose clients share a common interest. The court held (or sugggested) that the “common interest doctrine,” which enables joint defense agreements, covers not only co-defendants, but co-plaintiffs, nonparties to litigation, and a party and a nonparty. A shared interest agreement need not be in writing, and the clients need not have been aware of it or consented to it. The interests of the parties need not be identical, as long as they are similar. Not an earthshaking decision, since many attorneys assumed this to be the law, but worth a mention, now that it clearly is the law in Massachusetts.

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First Circuit Decision on Copyright Preemption

December 18, 2007

The First Circuit has published a complex decision involving copyright preemption of a state law claim for an accounting of profits between co-authors of a copyrighted work. The case, Cambridge Literary Properties, Ltd. v.W. GoebelPorzellanfabrik G.m.b.H & Co. KG (1st Cir. Dec. 13, 2007), has a tortured procedural history. In fact, the First Circuit issued an earlier decision in the case as far back as 2002. The case is quite complex, and involves the chain of copyright ownership in the famous Hummel figurines designed in Germany in 1931 The fundamental holding is that the federal Copyright statute bars a state law action for an accounting of profits between co-owners (co-owners of a copyright work are have a duty to account to each other for profits) because the condition precedent for that claim — co-authorship status — is premised on copyright law, which has a three year statute of limitations. Here the co-ownership claim was barred by this statute of limitations. First Circuit Judge Conrad K, Cyr, who recently assumed senior status on the First Circuit, wrote a strong dissent, calling the majority’s decision “unprecedented and potentially pernicious,” and arguing that the majority improperly interposed federal law to frustrate what was properly a state law issue. This case addresses some very thorny issues involving the intersection of federal copyright law and state law claims, and will bear close scrutiny by litigants…

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Angel Financing Could Do With A Little Streamlining

November 15, 2007

Investments by angel groups have become too complicated. As groups get more aggressive in pursuing profits, and seek more protection against downside risk, their deals have become as complex as venture capital deals. This complexity costs time and money, reducing the benefit to both investors and companies. By streamlining the transaction structure, angel groups could simplify negotiations, shorten the time it takes to do a deal, reduce transaction costs, put more money to work building new companies and ultimately improve their own returns. Click here to continue reading this article, by my partner Bill Contente, which was published in the November 9, 2007 issue of the Boston Business Journal. And, as long as I’m shamelessly showing off all the brilliant people I’ve been able to surround myself with, here is an article recently published by my partner Andy Updegrove in the October 26, 2007 issue of Mass High Tech: How often have you heard it said that “patents foster innovation?” That phrase rings true in pharmaceuticals, where investment requirements are enormous and failure common. But does it also apply in areas such as software? Does it really take the promise of a legal monopoly to motivate a typical founder or CTO to innovate? And what about the advantages patents give big companies over emerging ones, simply because the former can credibly threaten expensive patent litigation while the latter cannot? Click…

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November 13, 2007

ScotusBlog is, in my view, an example of just how good a legal blog can be. A group of lawyers at Akin Gump, assisted by attorneys at several other firms and universities, provide in-depth, daily briefing and commentary on the Supreme Court of the United States (SCOTUS). If you are inclined to follow the Supreme Court, this is the first place to go. You may never need to go elsewhere. Now ScotusBlog has added ScotusWiki, a companion site that provides comprehensive information on each SCOTUS case and will, presumably, allow universal editing, a la Wikipedia. However, even in its current, nascent form the wiki is facsinating. The editors dedicate a page to each case, where they provide a case summary and links to all of the briefs, and more, for each case. For example, here is a link to the page dedicated to Stoneridge v. Scientific-Atlanta, a case that received enormous attention leading up to oral argument. The issue was under what (if any) circumstances private investors can sue accountants, lawyers, financial advisors or other businesses that allegedly participate in a scheme to violate the federal securities laws. The wiki page dedicated to this case includes the opinion below, the cert petitions, the briefs on the merits (including the many amici briefs), a summary of the issues, a link to the oral argument transcript, and articles, blogs and podcasts concerning…

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Copyright and Fair Use: The LA Sheriff's Department and the Grateful Dead

July 3, 2007

I’d fallen behind on some reading, but in catching up I noticed two copyright “fair use” cases that I thought were pretty interesting. The first was decided by the 9th Circuit Court of Appeals in California. This case is similar to a situation that we encounter often, but on a scale that I’ve never seen before. Briefly, the L.A. County Sheriff’s Department entered into a license that allowed it to make approximately 3600 copies of a software program on its computers. Through inadvertence, poor record keeping, or poor supervision, the Sheriff’s Department installed the software on approximately 6,000 computers. Exceeding the scope of a license is copyright infringement, and the software owner so claimed. The Sheriff’s Department’s main line of defense was that it’s actions were “fair use.” In all the cases I’ve handled of this nature, it had never occurred to me to assert a fair use defense, and I don’t regret my failure to come up with this imaginative defense. The Sheriff’s Department lost on all of the “fair use factors.“ Amazingly, this case went through trial and then appeal, with the Sheriff’s Department losing at every stage, and the software owners being awarded a fairly large judgment for its troubles. This is representative of how difficult it is to sue a government entity. They often will fight long beyond the point that a private defendant would have…

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Incase v. Timex: Rare Trade Secret Case From First Circuit

June 21, 2007

It’s rare for a trade secret case to reach the First Circuit Court of Appeals. In fact, based on a Westlaw search only about five cases dealing with trade secret issues (except in passing) have reached the First Circuit in the last ten years. So, a trade secret decision from a court of that eminence is worth noting. In Incase Inc. v. Timex Corp., Incase (a packaging design and manufacturing company based in Hopedale, Massachusetts), sued Timex after Timex commissioned Incase to design watch packaging for the secure retail display of Timex watches. After Incase designed the cases Timex bought some cases from Incase, but far fewer than had been discussed. Instead, Timex off-shored most of the manufacturing work to a Philippines company, using Incase’s designs and prototypes. The Philippine product was very similar to the Incase design. An Incase employee stumbled across Timex watches displayed in the Philippine company’s package in a Target store. Miffed, Incase began a long and arduous litigation against Timex. After a trial in federal court in Boston before Judge F. Dennis Saylor, the jury found in favor of Incase on several claims, of which only the trade secret claim is of interest here. Judge Saylor, however, took the trade secret verdict away from Incase following the trial (yes, judges can do that), holding that Incase did not take reasonable steps to preserve the secrecy…

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Jury Trials In IP Cases – "Not"

June 6, 2007

A few months ago I wrote a blog entry titled “Jury Trials In Massachusetts – “Not” Today I received an email/promotion from the ABA promoting some IP books and treatises. The email also contained these statistics. Since they come from the ABA IP Litigation Committee, I give them a high degree of reliability: Number of IP cases filed in 2002: 7,445 Number resolved by trial verdict: 140 That’s 1.9% of IP cases filed in 2002 resolved by trial verdict. The balance were either decided on summary judgment or settlement. Discouraging for lawyers who like to get into court, to say the least. No one can forsee the future, but it would surprise me if this trend reverses itself in the lifetime of anyone reading this post. Civil trials have become too expensive and too risky to “go the distance”. Society is rapidly coming up with ways to avoid trials in the commercial context: arbitration, mediation, better contracts and agreements to start with, higher sophistication among decision makers, and the realization that litigation is often a losers game for both side.

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Establishing a Technorati Profile (readers can ignore)

October 23, 2006

Technorati Profile If you’re curious, this process is explained here.

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