A Narrow Lane - Patent Agents and Protecting Privilege

In 1993, with the help of a mentor and friend of mine, the late Q. Todd Dickinson, I passed the patent bar exam.  I was 23 and had just started law school at night.  I had zero experience writing and prosecuting patent applications.  But, I was a good test taker and I got my “Reg. #” as a result (#39314).  That gave me an official title of Patent Agent and allowed me a very limited license to represent others in their legal matters.  To be fair, it was at least 5 years until someone actually took me up on that ability . . . As it sounds, a patent agent is someone who has passed the patent bar examination but does not have a law degree or license to practice law as authorized by a State Supreme Court.  Unlike a state law license, there are no continuing education or recertification requirements to maintain the patent agent title or the ability to represent others before the USPTO.  There isn’t even an annual fee for a patent agent to keep his or her registration active.

Agent versus Attorney

A skilled patent agent is an amazing asset to a legal practice, particularly one that has a substantial technical background and/or industry experience.  They are generally hard to find, particularly ones that are already trained and proficient at drafting and navigating patent office practice.  We at Neugeboren O’Dowd utilize patent agents and lean on them regularly for their unique combination of technical know-how and patent practice skill set.  

A patent attorney is someone who, in addition to passing the patent bar exam, has also completed law school and passed at least one state bar exam.  Patent attorneys, like all attorneys, are required to complete minimum yearly continuing education and ethics compliance requirements in order to keep their law license active and maintain the ability to represent others in legal matters.

The ability of a patent agent to represent others is thus necessarily very limited and is restricted to activities “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding[s] before the [US Patent] Office involving a patent application or patent in which the practitioner is authorized to participate.” Luv N’ Care, Ltd. v. Williams Intellectual Prop. (D. Colo. Jun. 12, 2019).

The vast majority of the time patent agents are employed by a law firm and supervised by an actual lawyer.  So, the distinctions above never really become an ethical or malpractice issue since the agent is acting under the authority of a state licensed attorney, who maintains the client interaction and can appropriately give advice on matters outside the scope of a patent agent’s legal representation.  This is much like how paralegals function inside law firms.  However, cases do arise when agents are operating independently or otherwise cross the line into what is clearly legal representation outside the scope of their restricted representative activities.  The Colorado District Court ruled on one of these cases not too long ago.

Waiving Privilege

It is not hard to imagine a situation where a client hires a patent agent to initially file and prosecute a patent application and the scope of work naturally creeps into other realms.  The following are just some of the natural by-products of this type of relationship that we have observed on occasion:

  • Infringement and validity opinions or other analyses of third party patents.
  • Corporate diligence issues such as evaluating ownership, assignments, licenses, and any other transactional document that is controlled by state or international law.
  • Trademark and copyright issues.
  • Responses to cease and desist letters and other legal assertions that are in contemplation of litigation.

The problem here is not that the individual doesn’t have the skill set to give competent advice. But because they aren’t licensed to practice law there will not be an attorney-client privilege associated with those communications.  The law does recognize a very limited patent agent privilege but outside of this limited scope there is no privilege and a waiver is inevitable.  

If a patent agent gives advice on an infringement or validity issue, opposing counsel in a litigation will undeniably have access to those communications and documents during discovery.  The patent agent will be deposed; the client will be deposed; all documents and information that touched those communications will be subject to discovery with virtually no ability of the client to withhold that information based on the attorney client privilege or work product protections.  Patent applications are generally in the public domain so the use of and identification of the patent agent won’t be hard to find.  It would be the first subpoena I would send in a patent infringement litigation and a nightmare for the client on the receiving end of that request.  

Beyond Privilege Waivers

Despite the privilege problem discussed above, other more serious repercussions can develop for the individual agent.  In most states, including Colorado, these types of activities, or even the advertising of these types of activities, would constitute the unauthorized practice of law.   At least in Colorado that is a crime with the potential for jail time - nuf said about that . . . Don’t end up on this list.

Aside from the potential criminal liability, if an agent maintains a malpractice insurance policy it certainly won’t cover activities outside of this limited scope so any liability that the client endures as a result of a privilege waiver will pass to the patent agent with no insurance resource to fall back upon.  

Patent agents are a great thing for a legal practice, they just need to operate in a very narrow lane if practicing on their own, and, more appropriately, be supervised by an attorney.  If you are one practicing on your own, be cautious in the advice you give your clients.  Or better yet, come join our firm . . . 

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Keep Reading: Killing the Time Clock

Keep Reading: An NDA is Not a Condom

 


An Attorney’s Death by 1000 Cuts - Killing the Time Clock

A mentor of mine, who is also an attorney, once told me he billed nearly 2000 hours that year - 0.2 hours at a time . . .”  Do the math there.  That amounts to 10,000 separate time entries over the course of a year.  Do a little more math and you start to see how burdensome and annoying this type of revenue structure can be for a legal professional, let alone for the client on the receiving end of that bill.   Now I’m sure he was exaggerating a little for effect but for many attorneys that manage a large portfolio, have others working on their teams, or are just engaged in a lot of projects and work product review, this is not too far off from the truth, at least on some days.

A New Years Re-Resolution

Over the last few years I have been slowly moving my clients and individual project work load over to some form of fixed fee or subscription styled billing.  Whether that is a price per project, subscription styled engagement, fixed fee for basic services, or another form of “your invoice only has one entry” type of billing practice, I haven’t encountered anyone (lawyer or client) that wants to go back to the 1950’s styled hourly billing scheme.  But, as a testament to how ingrained this type of billing scheme is new clients inevitably ask for my hourly rate.  This is the canned response I have been giving in return recently:

“While I do have an hourly rate, I really can’t stand keeping track of my time, so my goal is to always work with you for a fixed price for any particular project that you may ask me to work on.  Absent unusual circumstances, that fixed cost will include all of our firm’s time, including any and all emails, phone calls, texts, reporting, follow up, occasional employee training, hikes in the woods, bike rides, ski days, etc. in order to complete the project and keep you informed about the result in the future.”

For those clients where we are constantly performing maintenance, monitoring or general portfolio administrative services, we have been able to lump all of those individual entries into a fixed quarterly fee.  I never think about logging time for these clients and I likely save several hours a week in administrative burden.  Plus, the relationship naturally becomes better.  Clients don’t worry about calling or emailing with questions.  Budgets are easy to predict and are constant throughout the year.  Communication is more authentic and potential legal problems surface before they become actual problems because no one is afraid to talk to the lawyer . . . Plus this creates space to actually develop a relationship that is more meaningful than most attorney-client relationships and it encourages true productivity across the firm rather than an incentive to just work more.

Related - From Design Engineer to Patent Attorney

So here is my re-resolution.  For those of my clients who haven’t shifted to this model I challenge you to challenge me to make time based billing a thing of the past for you.

Productivity Versus Busyness 

This is the first section of our Firm’s Employee "Playbook":

____________________________________________________________________________________________________

Work Philosophy

Work as professionals and we will treat you as professionals, regardless of your title or assigned duties.  Be efficient and look to avoid inefficiencies.  Look for opportunities to reduce waste and improve our processes.  Don’t make work for yourself to stay busy and don’t assume we know how busy you are.  Busyness is not a virtue, it's an error in perspective.  It's easy to think that quantity of activities is quality.  Offload things that are, or have become, below your skill set and look for ways to grow and improve.  Don’t assume your manager or the partners are experts in everything, that’s why we hired you.  Don’t bite off more than you can chew and don’t oversell your capabilities.  Cry uncle before things get out of hand and we will support you.

In other words, don’t do this:

(Note - This is, of course, not my original artwork but I can’t remember where I got it.   So, I give credit to wherever it came from.  I know, I’m an IP attorney but give me a break, it was only put into our internal employee playbook as a joke)

___________________________________________________________________________________________________

Yeah, I know, everyone talks about working smarter and not harder but the legal profession is notoriously old school in this realm and lawyers are creatures of bad habits.  I know lawyers who still write their time down by hand only to have an assistant enter it for them later.  Really?  Doesn’t everyone have a custom coded time keeping system particular to their firm’s unique situation that allows infinite flexibility in how invoices are formatted, project costs are tracked, lawyers are paid, AR is reconciled, and the accountant’s books are managed?  Well, we do.  

As lawyers, particularly technology lawyers in 2021, we must be technologists as much as legal professionals.  Understanding and being able to embrace, master and use technology yourself as a part of your day to day practice in order to make your work product more deliverable is crucial.

Lawyer as Technologist

Attorneys in the modern age need to be masters of the technology they use.  Not just because it’s the 21st century and we need to know how to navigate the technology we use and that is constantly evolving, but because an efficient and profitable practice that can pass that value proposition on to their clients demands it.

From automatically generated reporting letters and brand monitoring reports to the use of artificial intelligence systems to help draft documents and even patent applications, embracing and actually implementing sophisticated systems to both run a law practice and create work product is required in a 21st century legal practice.  Sure, you need to understand the law, be able to provide strategic advice, issue spot, edit documents, etc. but to be an attorney, and particularly one practicing in technology law and intellectual property, that is just the price of admission.

Related - What Lawyers Need to Know About the Use of Artificial Intelligence

In that way we find our practice at an interesting intersection of being a legal services firm and a technology company.  That custom coded billing and timekeeping system we have - everyone in the firm knows how to use it.  So when I need to know status, totals, or other data about a client’s project I just log in and push a button.  No assistant, no accounting group, no waiting.  I often run those types of reports in real time while on the phone with a client.  Many of our firm systems are set up the same way.  And when a client reaches out directly to one of our paralegals or our office manager, they can get them the same information.

Empower Everyone Because Everyone is Smarter Than You

True value based productivity doesn’t come easy in a professional services environment where the major limiting factors to increased revenue has for a long time been the number of hours in a work day and your hourly rate.   It takes getting used to not immediately logging time for a client call and trusting that the alternative billing scheme you have set up is going to fairly compensate you nonetheless.   But come on, that's just different math.  Firm wide policies like unlimited vacation, non-hours based goals, rewarding productiveness and not busyness all help in creating the eventual firm-wide philosophical shift that is needed here.  

And never be afraid to show that someone else is more capable than you or better suited to handle a high level task.  When that client reaches out directly to your paralegal instead of you for answers on their portfolio or a project?  That’s a compliment to everyone on your team, not a threat to your workload.

So challenge me and challenge your other attorney to make this shift.  And if you do have another attorney, let’s talk . . . :)

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Keep Reading: My Brush with Big Law Burnout

 


How to Internationalize Your Intellectual Property and Brand the Right Way

How to Internationalize Your Intellectual Property and Brand the Right Way

By Craig Neugeboren and Emily Bryson

 

Internationalizing your brand or business in general is exactly what it sounds like — going global. Today’s market almost insists on internationalizing your exciting product or brand. But many businesses don’t want to put the money forward to do it, or they are forced into critical decisions that are irrevocable.  

There are two sides to this that we will look at here. There is a side that involves protecting intellectual property. That is our job at Neugeboren O'Dowd and involves working with a client on the decision-making process for trademarks and patents. 

And there is the side that looks at the business side of things, from marketing to human resources, and more. This is Emily Bryson's specialty. A lot goes into making sure a brand will succeed overseas. She works for CCW Business Solutions (Crowe UK) and educates companies that are looking to expand their business footprint beyond the United States. She offers an excellent business sense of the process and advises companies on areas where there are both tips and traps in the corporate expansion dynamic.

Craig Neugeboren on Internationalizing Trademarks

Our process here is a lot different than Emily's. We come from the position of protecting intellectual property. It's a little more self-defined due to strict legal deadlines and timelines. It's a very exacting process and methodology when it comes to protecting United States intellectual property overseas in the most cost-effective way possible.  More often than not, our deadlines and due dates are set in stone, especially on the patent side of things.

That process timeline is often the most important part of the internationalization of patents and trademarks because not adhering to those deadlines could mean the client is no longer allowed to apply again. Our job here is to provide a very clear roadmap in terms of both substance and administration of that process.

In the trademark world, you have roughly six months after an initial filing date to act. In the patent world, it's twelve months after the filing date. 

The Patent Side

Here, it's good and it's bad because having a strict timeline sometimes makes the decision making easier for the client. But on the other hand, at least on the patent side of things, the deadlines are often fatal if you miss them. If a client wants to protect their intellectual property overseas, they have to make the decision a year after their United States (or first application) case is filed. If they don't, they've permanently lost the opportunity to internationalize that property.

The other downside is in costs. From our perspective, the costs are immediate. This makes the decision making even more uneasy. First, you have the deadline to worry about, then you have the upfront costs associated with it. If after the year you decide you aren't going to pursue international patent protection, you're forever banned from trying to do so on that project. It's a very expensive decision for the client either way.

The Trademark Side

The trademark side is a little more flexible and forgivable. You still have deadlines and a timeline you have to do things by in order to retain your priority in the U.S. application filings, but it's not fatal if you wait until after that priority deadline to take your cases overseas.

Later, you can still go on and file for international trademark protection if you change your mind.

For that leeway, it does get a little more expensive if you wait.

If a client isn't sure if they are going to internationalize their trademarks, I would say, just pass for now, or file something very basic, like a Madrid Protocol application that designates one of the less expensive countries.

If the product does well in a year from now, we might revisit the conversation.

Taking Intellectual Property Global

We know how difficult these decisions are. So we may hedge a little bit for our client and do some of the bare minimum filings to give them a chance to kick the can of foreign applications down the road.

When it's a smaller company, the legal strategy is different. If they don't have an acquisition plan or are working on liquidation deals, we want them to be able to preserve their internationalization rights.

That's something we do a lot of, and we'll work alongside an attorney in the country in question to get their help. They will even look at it before we file to ensure it's compliant with local regulations.

That's something that a lot of attorneys in the United States just don't do. 

We encourage upfront conversations about going global, and it's our job to give companies the foresight they need to make the decisions they want to make, as comfortably as possible.

Smaller companies have just as many rights to internationalize as the big ones. But if they are just starting, and we're asking them about their commercialization strategy for Japan, they are going to throw up their hands and feel overwhelmed.

In the end, though, a client is not going to focus on international intellectual property protection at all if the commercialization path isn't clear. We work the legal end of things, and folks like Emily Bryson work the market side of things.

Emily Bryson on Testing the Market

As Craig said, the commercialization path with a foreign application is entirely up to the company. What I do is work with companies to educate them on the options that are available to expand their brand internationally. Today, it's easier than ever to test the market, and there are a number of ways that they can do so.

The first thing a company needs to do is understand the market they are expanding their business into. Every country is different.

What might happen with their product in China may not happen with their product in the U.K. or Brazil. Often executives are under the impression that every country operates just like the United States, and that's just not the case.  

Related: Update on China's Amended Trade Laws

The perfect time to have an initial conversation is before a specific country/market is identified. However often this process can be more of a fire drill with an immediate need to enter as soon as possible.  

How do you enter? What type of corporate structure do you need to have in place? Do you even need a corporate structure to test the market? The good news is that there are several ways you can do this! And in some instances very cost-effectively!

Companies need to understand their risk; regulatory and legal compliance. Expanding smoothly into another country without violating any laws or rules needs to be top of mind. It is also very important to understand language and cultural differences, this can define the difference between a successful business and an unsuccessful business.

Globalization Timelines

Establishing globalization timelines helps the client tremendously. Establishing a 6, 12, and/or 18-month plan is a great place to begin helping the client feel better about their commercialization path.

They want to do it though. The biggest downside from my end of internationalizing the brand is similar to Craig's. Companies should always assess their capital prior to entering any new markets.

Read more: Market Intelligence and Brand Management

Staying Competitive in a Global Market

A key part of business is staying competitive, and it's at the top of the list of things we both talk about with our clients. We help them understand what their competition is doing, and what other companies in their vertical are doing. We do this even at the early stages.

We both want to help them make the highest dollar sense of return for what they are doing. When they know what their peers have successfully done, they can take their brand and intellectual property up a notch.

We both also offer them insight into the tax advantages of internationalization as well. 

There's a lot that goes into internationalizing a brand. Emily and Craig come from two different sides of the issue, while also complementing each other very well. Let us know if it's a good time for your company to go global. We want you to succeed.


From Design Engineer to Patent Attorney – Meet Craig Neugeboren

From Design Engineer to Patent Attorney – Meet Craig Neugeboren

Design engineering is by no means a boring field. But for me, being stuck in a sea of Dilbert-occupied cubicles quickly pushed me to pursue a career in patent law.

Don’t get me wrong, I was lucky to have such a great job right out of college, but when I regularly saw so many “seasoned” engineers snoring in their office next to me and clearly wearing the same tie for 30 years, all I could think was, I don't want to be that Slimline Stapler guy. 

It wasn't always a terrible job. I worked for a good company, had a lot of close friends, and eventually landed on good projects with unique challenges. I also met my wife Heather there. But being just a little cog in this huge wheel was so boring to me. It wasn't fulfilling and the path forward was murky at best. I didn't know what I wanted, but I knew it wasn’t that. 

From a Cubicle to Law School

It didn't take long behind a cubicle wall to realize I couldn’t do it forever. Another engineer that I had become friendly with started talking about law school. He was several years in himself and mentored me a little bit on that path. 

I took the LSATs and got into Rutgers University in New Jersey, starting just over a year after I had finished my undergraduate degree. I was still working full-time, so being able to go to school in-state really helped. The law school dream was within reach.

I would work all day and then go to school at night with other “looking for a second career” students.  At work, I eventually wound up managing some big redevelopment projects, travelling regularly to the towns where there was a need, and managing the environmental remediation and overall construction. I was 23 and making presentations to town planners, historical boards, and city councils in addition to overseeing construction crews, and tweaking the construction designs as needed. In retrospect that type of role was more aligned with the advocacy I practice as a lawyer now than it was with being an engineer.

When an engineering job in California came up, I decided to take it. They offered my wife (also an engineer) a position, too. And so I eventually finished my law degree in California.

The Transition

When it was all said and done, I attended four different law schools to get my degree, which is formally from Rutgers University.  I have law school transcripts cobbled together from Rutgers, The University of the Pacific, Santa Clara University, and The University of San Francisco. But I finished law school in Silicon Valley in 1997, and with an engineering degree behind it, the job market was just wonderful.

I began to work with an intellectual property law firm in California, and that has been my practice ever since. This was the late nineties, at the beginning of the dot-com craziness. There was plenty of work from patent and trademark prosecution to the related litigation and transactional work surrounding those disciplines; everything that we do here today.

In 1998, the competition between companies for lawyers in that field was just nuts. I got two or three raises before I even began working for my firm. My original offer letter was in late '97, and by the time I actually started working in April 1998 I had received several raises.

Those were the moves in my life that started the career I’m enjoying now. In that first firm I was able to participate in some big trials in addition to the patent prosecution work, giving me the skill set that I needed to establish myself as a patent attorney.

Living in California began to get a little more hectic than we had imagined. Heather and I went from spending every weekend in the mountains to becoming new parents in the heart of Silicon Valley — and all the stress and busyness that comes with it. To bring a calmer and more predictable sense to our lives, I quit my job and moved my family from San Jose to Boulder, Colorado. I didn’t even have a job lined up when I resigned, but the market was still so good, I wasn’t worried.

Avoiding Big Law Burnout

I immediately took a job with a big national law firm. The hours were long, there was a lot of work, and I was traveling a lot for these giant, awesome cases.

At its core, the work was great. I worked with some amazing people and got a lot of really unique opportunities. I had a really good run there, but it took its toll as well.

I suffered a unique case of “Big-Law Burnout.” In a nutshell, what started off as a cut on my elbow turned into a near-sepsis scare and some hospital time where I very nearly died. During all of that, I was doing deposition designations from a hospital bed, and hooking IV antibiotic bags up on the wall at work once I left the hospital.

A perfectly normal life, right? No.

That was the beginning of the end for me in big law.

I can't say anything bad about the firm or the job, other than there was just too much work. I loved the people, they treated me very well, and they still support me and our firm today through referrals and the like. Working there gave me the skills to develop my own practice and achieve a more balanced approach to what I do now.

How a Dream Became a Firm

During a short stint in-house, I began reaching out to my clients to see what they thought about the idea of me opening my own practice, and they were ready to start working right away. By the end of the first month after hanging that shingle, I was already profitable. And it wasn't long before I was making more than I was at my last firm, with less work and of course, more control to make it fit my own lifestyle.

We've been growing steadily over the years. I met Sean O'Dowd at the previous law firm and he came over shortly after I opened up. A year later we had formally partnered up and we've enjoyed slow and steady growth over the years.

Building relationships is the most exciting part of my job. Now with a larger firm, and a stable slate of work, when a client asks me for something I can't do, or I know someone else here can do better, I can refer it to someone within our firm family that I know will treat them well.

My favorite type of client is one that calls to ask me a 90-second question and we wind up on the phone for 30 or 40 minutes chatting about everything else in life. It's that relationship that makes the engagement so much better.

In the end, the dream has become a reality; a firm that we are all proud to be a part of. Engineering is still exciting but I like taking the broad brush approach and becoming knowledgeable across a wide range of technologies and industries and knowing how to steer a company or client in the right direction.

Keep Reading: From Network Engineer to Intellectual Property Attorney: Meet Shane Percival

 


Neil Young versus the Trump Campaign — Maybe not a Heart of Gold

It's an old problem being made new again. Neil Young is suing the Trump campaign for using his song at a rally and is calling it copyright infringement.

Political parties on both sides of the aisle have been doing this for years, and it's rarely brought into the legal spotlight. But people jumped on this one. Go figure...

The average copyright case works on the basic premise, "I created something, I have a copyright on it. You need to ask for permission before you copy it or use it." It’s actually a fairly easy legal issue for the layperson to understand and most clear-cut factual patterns that fit that legal framework don’t see the light of day because there isn’t a genuine factual dispute to litigate.

But this one is a little bit different, because of how the song was used, and how the artist feels about his work being used. In part, the suit reads,

"This complaint is not intended to disrespect the rights and opinions of American citizens, who are free to support the candidate of their choosing. However, the Plaintiff in good conscience cannot allow his music to be used as a theme song for a divisive, un-American campaign of ignorance and hate." 

At its core, there may be some simple copyright infringement going on. But there is more to this story and some unique aspects of copyright law and licensing at issue.

Related: Stealing or Buying a Stairway to Heaven? 

Basics of Copyright Infringement

The "permission to use" part is at the core of most copyright cases. If the Trump campaign had their ducks in a row and received permission, the claim of copyright infringement would instantly fail.  

The default is that permission is needed for someone to use or perform the music of someone else (i.e. the author). No one is exempt regardless of their intentions or purpose. For example, churches and cover bands are no different. When a worship team or cover band plays someone else’s music, that is copyright infringement if they haven't purchased some form of license to the music. So you might notice sometimes in the lyrics on the screen, or within written words, a CCLI license number. That is for the Christian Copyright Licensing International organization that licenses that music. Performance venues usually have these types of blanket licenses in place as well to cover the performance of other’s music in their venues. Or the band itself may own a license.

Organizations are allowed to purchase these blanket performance rights to one of these clearinghouses in the music world, as long as the artist gives them (the licensing organization) permission to use that music. The organization then pays an annual fee, so they have blanket rights to use all the songs under that agreement.

While the facts are fuzzy from the Trump campaign, it is likely that they did not obtain such a license. So, Neil Young can sue for straight-up copyright infringement. 

Types of Copyright Infringement

There are two different types of clearinghouse-type licenses out there for commercial use that a political campaign might utilize. 

  • Broadcast rights are for background music in a campaign commercial that might get broadcast on television over and over. 
  • A performance license (what this case is referencing) is for music that’s played in a live setting, typically not recorded or repeated.

Understandably, the first one is harder to get and much more expensive.

Is the Trump Campaign on the Hook?

It should be an open and shut case. If the campaign purchased the performance license, then they have the right to use it and the case should just go away. My guess is that they didn't and now they're just throwing stuff together really quick because it might take weeks or months to get that license. 

There are some really interesting nuances in the copyright laws, but also in how the copyright laws affect artists in these situations. 

This case has moved a little bit since it was first filed in August. A civil summons was issued in the U.S. District Court for the Southern District of New York, with Senior U.S. District Court Judge Naomi Reice Buchwald, a Clinton appointee, receiving the assignment. It was subsequently designated to Magistrate Judge Ona T. Wang.

The Trump campaign was issued an electronic summons as well — so the case is proceeding along normal civil court timelines. An update on the case beyond that has not been released.

Related: Katy Perry Escapes Dark Horse Copyright Verdict

The Bottom Line

If the Trump campaign is found to not have a license to this song, traditional notions of remedies and copyright law come into play. That means Neil Young may be entitled to up to $150,000 per “copy” if the infringement was found to be willful. It's interesting because it was at a rally, so you would presume it's just a single instance of performing that song. But, that rally was recorded and now it's now on YouTube with more than 500,000 views/downloads/copies... 

Each click on YouTube may be considered a separate copy under copyright law, particularly if the campaign allows people to download the video. So if the stars align with Neil Young, and the Trump campaign did actually commit copyright infringement, the payout could be huge.

To apply the maximum statutory damages allowed (up to $150,000 per copy) times 522,909 views, Neil Young is looking at $65 billion. 

It obviously wouldn't happen that way when it came time to actual damages. But this is an interesting case to see how far this can go. At least the math is interesting. But math has never really been Trump’s strong suit.

Is this case the first of its kind? Not really. Both political parties have been doing this for years. But, it does illustrate just how expensive copyright infringement can get. And how simple it can be to avoid liability.


Non-Disclosure Agreement

An NDA is Not a Condom

Public service announcement reminder from back in your school days — Condoms are only 97% effective. Public service announcement from your lawyer — NDAs, or non-disclosure agreements, are even less so when you think they also act as a prophylactic device.

While an NDA isn’t a prophylactic, that isn’t to say they aren’t helpful in putting preventive measures in place since they can be an effective legal remedy to prevent the misappropriation of trade secrets. After that, their effectiveness wanes. Once the confidential information protected by an NDA is misappropriated or otherwise publicly disclosed (intentionally or accidentally), the toothpaste is out of the tube and you can't put it back in.

What we tell our clients is that how you act after an NDA is signed is more important than the NDA itself. In other words, be careful about keeping that toothpaste in the tube.

What is a Non-Disclosure Agreement?

Nondisclosure agreements are very basic documents. It's a simple form that is ubiquitous in most business environments. People throw them around easily. Effective versions of them can even be downloaded from the internet.

Generally, most NDAs are self-explanatory and don’t present a lot of contentious issues between the parties. They are typically used in a situation where two parties want to share information about a company's products, technology, or confidential information in furtherance of some form of collaboration, deal, or another business arrangement. 

NDAs are a common way to obligate parties to keep their respective trade secrets, well, secret. 

Where we see problems is that most people — when they have an NDA in place — feel like they can talk about anything and share everything under the sun. In effect, they start blabbing too much and about things that aren’t necessary to get the deal done.

An NDA is just a piece of paper, like any other contract. It's not a prophylactic device. It’s just a contract that gives you the ability to sue someone for misappropriation of your own trade secrets.

So, if you (or the other party) inappropriately discloses confidential information to someone, and a nondisclosure agreement is in place, the irreparable harm of your trade secrets being in the public domain is difficult — if not impossible — to recapture.

Related: Is a Trade Secret Right for You?

You Can't Unring the Bell – The Problem With Enforcing NDAs

At that point, the "teller" could be sued for trade secret misappropriation, or more easily, breach of contract. But, the bell cannot be unrung. You can't put the toothpaste back in the tube. The cat is out of the bag. Choose your cliche but the damage is done and the confidential information may be out in the public domain with no way to effectively make it secret again.

The remedy in these situations is to sue and ask for immediate injunctive relief to stop the faucet from dripping. But there's water already in the sink, right? This is what is referred to as irrevocable harm so often mentioned in an NDA and other contracts.  

Even with immediate court intervention, you might never be able to cure the breach or find a remedy that would fix what just happened. The agreement that was to prevent that from happening is just a piece of paper and as the title of this article suggests isn’t capable of preventing this type of “leak.”  Yeah, that was gross but I couldn’t resist.

There's no guarantee the person will actually respect the obligations in that agreement. So what I tell my clients is just that, the NDA is not a prophylactic. My advice to them is always the same.

Do not tell third parties anything that is not absolutely necessary for them to know. Focus on the purpose of your discussion, rather than information that is outside the scope of the meeting or other information exchange.

Implementing NDAs Properly

A lot of times the people negotiating the NDA are higher-ups. It's the engineers and the technologists who are actually the ones in a conference room collaborating with a third party.

Oftentimes the type of instruction about the implementation of the NDA is more important than the NDA itself. How you act when you're in a situation where confidential information can be shared is critical and those instructions need to be given to the ones on the ground. 

Don't tell them anything you don't need to tell them. It's that simple.

That advice goes both ways. You may be the one in a situation where someone else is saying a little too much, and you want to protect yourself there too. Don't ever be afraid to just say, "Hey, what you just said is kind of beyond the scope of what I was willing to talk about today. Do we really need to have that disclosed for this conversation?”

Implementing an NDA effectively requires the responsibility of both parties, and it's all in the details.

Related: New Injunction Policy Boosts Power of Essential Patents

It's All in the Details

Most NDAs are generalized and broad in scope, but you can put details in the picture as well. The more details you have in there, like labeling the document as confidential, the stronger your agreement.

If it's electronic, it should have some sort of legend on it. It’s also important to say verbally and in writing; "What I'm about to tell you is confidential and falls under the scope of this nondisclosure agreement."

If you don't do that, or forget, follow it up. You want a good paper trail to show that you're actually treating your information as confidential. The first thing a court will look at if you want to enforce an NDA is whether you actually treated the information as confidential. If you, or your company, have loose rules about access to confidential information, a court may actually find that it isn’t confidential at all.

NDAs don’t have to be specific, most are broad and generalized. The goal is to have an engagement with a third party, exchange information, and be comfortable talking about things.

Problems with NDAs arise when you're exchanging information that you just don't need to. If it's not necessary, don't talk about it. Even if you don't know specifically what you can't talk about, most NDAs will have a broad or blanket definition of what is confidential.

Other details to consider are with larger companies that might have dozens, if not hundreds, of individual nondisclosure agreements with various people and parties. Managing that can be a problem.

So it's not just about keeping track of who you have agreements with, but also keeping track of when they expire, or what you need to do in order to terminate the agreements. Understanding which ones will automatically renew without action is also an important detail to track.

Those can come into play and bite you later if, for instance, you want to sell your company and the suitor is doing some diligence and realizes you've got a thousand NDAs out there, all of which are still in force.

That might be a problem. Bigger companies might have a contract manager role to take care of all of that, but smaller and mid-sized companies might not. Those NDAs may get lost in the shuffle.

Practice Safe Disclosure

The most important thing to remember with NDAs is they are not a prophylactic device to prevent all preventable mishaps. Practice safe disclosure. 

If you have any questions about protecting your information and non-disclosure agreements, contact us. We are here to help.


COVID and the Constitution

The First Amendment to the Constitution does not give you the right to yell “fire” in a crowded theater. That is unless the theater is actually on fire. That’s not my quote. I heard it or read it recently on a newscast or webcast or blog post that was buried within 1000 other snippets and quotes and news of the day and I haven’t been able to track it down again.

So, my apologies (and credit) to the original author or speaker, whoever that may be. Wouldn’t it be nice if it were 50 years ago and we all got our news from the same source? If that were the case I could say “Walter Cronkite said...” But now I have no idea who said it. It just wasn’t me.

The legal case that led to that metaphor took years to develop and was based on a constitutional argument under the First Amendment guarantee of freedom of speech. Like most things under the Constitution, the freedom of speech is not absolute. If the primary purpose of your speech is likely to incite imminent lawless action, it is not protected. Most would agree with this interpretation I think. But with COVID-19 there has been rapid adoption of new laws and regulations from the municipal to the federal level that has changed our lives as a result of the pandemic. Some of these are mundane, or even fall under the heading of “why didn’t we always do things that way.” Like home delivery of beer and wine, or telemedicine, or video notary services, or extending deadlines in the patent and trademark office, or making your restaurant kitchen workers wear masks. Did I mention home delivery of beer and wine...?

But others are much more controversial and are highlighting the powers that our executives may have always had at their disposal but never had reason to use. They are certainly raising new questions in terms of testing against constitutional scrutiny. Even the CDC has emergency federal powers now that can arguably circumvent our due process rights in order to implement health safeguards. It is one of the reasons we are all so afraid right now. We thought the changes would be temporary, and it feels more and more like they are not.

One thing we do know, as we have already discussed here, is that a vaccine has been prioritized at multiple levels both nationally and globally. Once that implementation takes effect, life will slowly return to normal. Until then, however, strong emotions around the unknown prevail.

I’ve had so many interesting and challenging discussions over the last 6 months about how this new normal aligns with the Constitution. Many of them focus on how we deal with aspects of the new normal that most certainly push up against the guardrails of the Constitution? Especially when that push comes from both sides of the political and social spectrum and all have at least some basic level of legitimacy on their faces. I feel like this is the first time (at least for my generation) we have needed to think about our constitutional freedoms in a more than colloquial or academic way. It’s not that society has never had to wrestle with these types of issues before but I don’t know that it has ever happened this quickly and on so many fronts. We all want a binary result but the Constitution is hardly a binary document.  More people are becoming educated about what the Constitution says which is always a good thing.

This fear is not just superficial. One in three Americans is now suffering from mental health disorders that they may not even know they have — anxiety, depression, and more. My 98-year-old grandfather, who fought as a marine in World War II and still has 100% of his cognitive abilities is experiencing depression for possibly the first time in his life because of the enhanced isolation protocols at his assisted living facility. No common meals, no playing cards, no socialization. Wearing a mask takes on a whole new burden to someone who already has trouble hearing.

First Amendment: Speech, Assembly, and Religion

The Covid-19 pandemic has undoubtedly affected our freedom to assemble, which carries over into our freedom to speak, to worship, to travel, to work, and to recreate. Frustrations around this cross the political aisle and are being experienced at every level of government across the nation. Exercising the new laws started slowly but has resulted in new regulations that impact everyday life in profound ways. When a law impacts one person, it has the power to profoundly affect an entire family. The tertiary impacts of today’s new normal are significant and cannot be ignored.

Freedom to Assemble and Speech

Before COVID-19, almost everything we did required some form of assembly and/or speech. Our freedoms to assemble, whether that is to worship, work, protest, attend concerts, or simply recreate have all been affected by COVID.  Worshipping and otherwise gathering remotely doesn’t feel the same, and just doesn’t meet the same need that meeting people face to face does. My church has now been able to gather outside in limited numbers, and for the most part, everyone understands the risk of pushing the boundaries and puts aside what might be a legitimate complaint of unconstitutional regulation so that our community stays safe. But people still worry that there’s not an end to this new normal. 

Fifth Amendment: Liberty to Travel 

In 1958, the Supreme Court wrote in Kent v. Dulles (357 U.S. 116) that “the right to travel is a part of the liberty of which the citizen cannot be deprived without due process of law under the Fifth Amendment. Freedom of movement across frontiers in either direction and inside frontiers as well was a part of our heritage. Freedom of movement is basic in our scheme of values.”

Now, we live in a new normal where we all wrestle with stay-at-home orders, travel bans, and other restrictions on our ability to freely move about and work. Again, most people are putting aside what might be an unconstitutional infringement on our rights so that our community stays safe.

The Right to a Speedy Trial and Competent Counsel

Due process of law that is primarily captured in the sixth and tenth amendment rights are also restricted. The Sixth Amendment secures freedom to counsel and speedy trials, but the courts are in a long circle of delay right now. Access to the courts is reshaped. Being charged with a crime now could meet untold extensions.  How does being required to wear a mask affect the right to confront your accuser or cross-examine a witness at trial?  Every stage from arraignment to voir dire and jury assembly is disrupted by delays during COVID-19, and this will impact the lives and families of all of those involved.

You Say, The Price of My Love’s Not a Price That You’re Willing to Pay... 

The Constitution is one of the most brilliant documents in the world. The pandemic has resulted in a breadth of mandatory restrictions that, at least on their face, raise constitutional questions, but more importantly have elevated the discourse about how brilliant our founding fathers were in crafting this guiding document. If you haven’t done so, sit down and read it from cover to cover.

The conversations that result will be challenging for sure, but if you aren’t ready to dig in at that level — at least watch Hamilton and listen carefully to what King George wanted instead...  Da da da dat da dat da da da da ya da!

Related: Living a White Collar Quarantine?


No Smoking Gun Required – Lost Profits More Broadly Available for Trademark Infringement

Recovering a trademark owner’s lost profits due to infringement has always been difficult. Typically, the court requires some level of malice/intentionality on the side of the trademark infringer in order for the trademark owner to recover lost profits. Showing malice or intent is a challenge because you need to show the infringer's state of mind. How do you do that? Without a “smoking gun” email saying, “I know I infringed, but I don't care, and I’m going to keep on infringing,” it’s almost impossible to prove.  Only once in my legal career did I have that type of blatant admission from the other party. And yeah, we won that case... 

But that could soon change.

On April 21, 2020, the US Supreme Court ruled that the Lanham Act enables a trademark owner to recover profits from a trademark infringer without necessarily proving willfulness. This update to the interpretation of Section 43 (a) of the Lanham Act changes the landscape of trademark infringement law considerably. However, no cases have been tried using this update… so far.

The Lanham Act

The Lanham Act – passed in 1946 – is the primary federal trademark statute of law in the United States. The Act prohibits trademark infringement, trademark dilution, false advertising, and also provides remedies for acts of counterfeiting. It allows for an award of damages for these violations, but varies widely in interpretation across the different Federal Circuits. Generally speaking, the Act does not provide for a specific amount of statutory damages (outside of cases involving outright counterfeiting). Instead, it provides for a range of damages which vary depending on the conduct of the infringer and the totality of facts presented in the case.

The application of lost profits in trademark cases is inherently subjective. Until this recent ruling it relied entirely on intent and the deliberate actions of the infringer, a very abstract inquiry involving ascertaining the state of mind of the infringer. 

To put a set statutory damage amount into trademark infringement law could be considered heavy-handed for an underlying legal issue that's already a gray area. 

How do we account for trademark infringement? In copyright infringement law there are statutory damages, but it's relatively easy to account for how many copies of the copyrighted work were made. 

In the trademark world, you may not be able to count how many times the infringer used the mark. Maybe they put the mark on every single product, but didn’t sell all the products. Maybe the infringer is just advertising online – how many people saw the trademark in that case? Hard to prove. What about social media use of the brand that didn’t necessarily result in a sale? It’s a rabbit hole.

Litigation Strategies 

Clients always want to sue a trademark infringer for money damages. Typically, I tell my clients the most important thing is to stop the trademark infringer from using the mark and stop the brand confusion that is diluting the value of their own product and associated branding. We want to stop letting consumers get confused as to the source of the goods so that my client can start selling all of the products that they should rightfully be selling, rather than the infringer.

That injunctive relief is the most potent part of trademark law.

From an affirmative standpoint, this new interpretation of Section 43 (a) of the Lanham Act certainly shakes-up the equation. As a plaintiff, it's easier to show that you are entitled to their profits, and it lets us up the rhetoric a little bit in how we, as lawyers, can assert the case in a cease and desist letter, or the language we can use in the complaint. 

If we are defending the trademark infringer, we will need to counsel our client so they understand that they can’t just rebrand and expect the case to go away. This new interpretation might encourage plaintiffs to push trademark infringement cases a little further for a settlement.

We have been very focused on stopping the use of a trademark, and not so focused on any type of past damages in the settlement negotiation. Now, that will change because we have a heavier hammer to hold over the defendant. 

Related: Beyoncé, Blue Ivy, and the Kardashians: The (Big) Business of Trademarks

Why Change the Law?

This Supreme Court ruling on 43 (a) was decided in April 2020, so it has not been litigated yet. It will be interesting to see how the district courts use this ruling to determine damages, what is still available for trial, and what the statutory damages numbers are going to be. 

The change is driven by the fact that different circuit courts around the country applied a different standard of the Lanham Act in their rulings. The Supreme Court did not look at these differing interpretations as a massively important trademark issue, they clarified the Act because of the widely varying interpretation of it.

That's one of the jobs of the Supreme Court – to resolve laws that are being interpreted differently around the country to make them more consistent. It was simply administerial work by the Supreme Court to resolve varying opinions. 

Since we have not yet seen judgments based on this new update, we will have to wait and see how it’s applied in trademark infringement cases. 

I am excited to bring you an update once we can see how the law is interpreted and used in a real-world case. It could make a serious change to trademark infringement litigation.

Drop us a message to find out how we can help you reclaim your IP.

Related: USPTO Updates Trademark Filing Requirements - But Will Spam Stop?