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We learn this morning from the National Arbitration Forum that a federal district court in the District of Columbia has held that inventorship claims under 35 U.S.C. § 256 are arbitrable. In particular, the Court held that an arbitrator has the power to require parties to a technology agreement to correct a patent by changing the names of the inventors from those presently designated to those required to be designated in the event of breach.   If the respondents failed to comply, held the court, "the arbitration award could be converted into a court order for correction."  

The case is INVISTA North America, S.a.r.l. v. Rhodia Polyamide Intermediates S.A.S., No. 06-2180, 2007 WL 2230273 (D.D.C. Aug. 6, 2007),

For the full text of NAF's article on this important decision, click here. 

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Take it or Leave It?  (cartoon by Charles Fincher at LawComix.com) 

Don't get caught making unproductive settlement moves, learn from some of the best in the U.K., L.A. and Half Moon Bay in October and November. 

For our U.K. readers, Victoria Pynchon will be speaking on IP ADR in the USA: Big Ideas and Fresh Perspectives on 8 October 2007 at the Hatton Conference Centre in London.  Click here to see the day-long schedule and to sign up for early-bird discounts.  A downloadable .pdf of the conference schedule is in our sidebar to the left.

For our Southern California readers, a full-day seminar on Settlement Techniques that Give You the Winning Edge with IP ADR Bloggers Victoria Pynchon and Les J. Weinstein; Judges Alexander Williams, III (full-time settlement Judge) and Victoria Chaney (Ass't Supervising Judge of the Los Angeles Complex Litigation Court); and neutrals the Hon. John Leo Wagner (Federal Magistrate, Retired) and Jay McCauley, will take place at the Wilshire Grande in downtown Los Angeles on November 13, 2007.  Sign up here.  

If your practice crosses over with employment issues, join us for ALFA International's Labor & Employment Practice Group Seminar entitled "Employer of the Year" or "the Office": Which One Are You? (.pdf of the event brochure) at the Half Moon Bay Ritz-Carlton on October 3-5, 2007.

Once again, Victoria Pynchon will be speaking, this time with Joshua Frank, Senior Legal Counsel to DHL (moderated by James M. Peterson of San Diego's Higgs, Fletcher & Mack, LLP) on the Pro's and Con's of Employment Arbitration.

You'll have to get up early for this one -- it's scheduled from 8:45-10:00 a.m. on October 3 -- but we promise you a lively debate and fresh perspectives on an issue that might make corporate and litigation counsel want to rip those arbitration clauses out of their and their clients' employment agreements. Then again, you might just decide to rewrite those ADR Clauses altogether so that you get the best possible dispute resolution mechanism for your and your clients' work-force.

Either way, the time is ripe for reconsidering and revising the way in which you and your clients handle disputes with their employees.

JOIN US!!

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This just in from the AP, YouTube has a secret death wish.  See story excerpt and Jerry Seinfeld explaining why you don't give awards to comedians.  Nor do you take their depositions.  They are trained assassins.  

NEW YORK - YouTube wants to question comedians Jon Stewart and Stephen Colbert as part of its defense against claims that it illegally airs Internet snippets of sports and entertainment videos. 

The request, which surfaced Tuesday in court documents, was made last week to the judge presiding over lawsuits brought against YouTube by Viacom International Inc., England's top soccer league — The Football Association Premier League Ltd. — and indie music publisher Bourne Co.

To continue reading, click here.

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(right:  the triangle, on sale now at the IP ADR Blog)

Aggressive fighting wins human cock-fights and aggressive marketing corners the market in geometric shapes.  

The urge to possess and monetize just about everything continues to possess us.  And we at the IP ADR Blog wonder whether that's a good thing, or even an efficient or profitable one.

If you want your new sport (a brutal human cock-fight)  to grow into the new American pass-time, for instance, does it really make any sense to prevent  others from staging similar fights in an octagonal "ring" just because you used that shape first (or marketed it more fiercely than others)? 

Are we gearing up for a playground revolution with trademarked four-square courts and copyrighted hop scotch squares? 

We don't criticize the legal reasoning of the decision reported by the WSJ Law Blog today -- an opinion penned by our own federal court Judge Dean D. Pregerson -- that the Ultimate Fighting Championship (UFC) could lawfully prevent other promoters from staging similar fights within an octagonal "ring."  

We do, however continue to question what seems to have become an absolutely frenzied mania to take possession of -- and monetize -- just about everything.  

I'd give this entire topic more thought, but need to finish packing for our upcoming Hawaiian vacation -- where no one is trademarking the scent of the ocean or the curve of the white sand beach or the waves that seem to hesitate just a moment before breaking, as if they might decide to pause there for a last cigarette. 

With those images in mind, I give you the the law on geometric shapes as reported by WSJ Law Blog Today:  Octagon -- Trademark of the Ultimate Fighting Championship excerpted here and linked below:

UFC’s owner received a trademark on the octagon-shaped fighting mat back in 1998, and the court ruled UFC established common law rights on the eight-sided fence as well. 

Last year, UFC filed a suit against [a competitor's] company after he refused to pay $2,500 a year for a license to use the octagonal fence and mat. Meacham, 39 years old, claimed octagonal fences and mats are generic to the sport and told the Law Blog that he fought in eight-sided rings long before the creation of the UFC in 1993. 

In last month’s ruling, Judge Dean D. Pregerson in Los Angeles cited the aggressive promotion of the octagon mat and ring in ruling that “there was persuasive evidence that the marketplace associates the UFC with the octagon,” leading to a likelihood “the consuming public” might confuse Meacham’s company with UFC. A jury trial will take place as early as this fall to assess damages.

Meacham . . . says the decision is tantamount to “telling some boxers they can’t box in a four-sided ring.” The court disagreed, saying promoters of mixed martial arts use rings and mats of various shapes and that the sport, unlike baseball and basketball, has no regulation size for its “playing field.”

J. Bennett Clark, an intellectual property partner at Bryan Cave in St. Louis, says the decison “comes close to providing overly broad protection for such a basic geometric shape.” That said, it’s not an outlier. . . .

Click here for the remainder of the article.

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(left:  Mr. Alcalá)

DLA Piper recently released its terrific International Arbitration Newsletter for the Summer of 2007. 

Of greatest interest to us is Juan M. Alcalá's article  Narrow Legal Issue, Broad Philosophical Divide:  Hall Street Associates, L.L.C. v. Mattel, Inc.  

"The issue before the Court," he reports, "is relatively straight forward—may parties to an arbitration agreement agree to non-statutory grounds for vacating an arbitration award (including de novo review of legal findings)?"

The First, Third, Fourth, Fifth, and Sixth Circuits all appear to answer the question in the affirmative. See, e.g., Puerto Rico Telephone Co., Inc. v. U.S. Phone Mfg. Corp., 427 F.2d 21 (1st Cir. 2005), cert. denied, 126 S.Ct. 1785 (2006); Roadway Package System, Inc. v. Kayser, 257 F.3d 287 (3rd Cir. 2001), cert. denied, 534 U.S. 1020 (2001); Syncor Int’l Corp. v. McLeland, 120 F.3d 262 (4th Cir. 1997), cert. denied, 522 U.S. 1110 (1998); Gateway Technologies, Inc. v. MCI Telecommunications Corp., 64 F.3d 993 (5th Cir. 1995); Jacada, Ltd. v. Int’l Mktg. Strategies, 401 F.3d 701 (6th Cir.), cert. denied, 126 S.Ct. 735 (2005).

The Ninth and Tenth Circuits disagree. See Kyocera v. Prudential-Bache Trade Services, Inc., 341 F.3d 987 (9th Cir. 2003) and Bowen v. Amoco Pipeline, Inc., 254 F.3d 925 (10th Cir. 2001).

This simple legal issue, however, is premised on a fundamental philosophical divide concerning the purpose of the FAA. Those courts favoring expanded review of arbitration awards argue that the FAA’s ultimate purpose is to enforce the terms of the arbitration agreement. Those courts with a narrow interpretation of the FAA contend that allowing private parties to contract for broader review standards would “jeopardize the very benefits of arbitration, rendering informal arbitration merely a prelude to a more cumbersome and time-consuming judicial review process.” Kyocera, 341 F.3d at 999

For the remainder of this cogent, timely and thorough analysis, click here.

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(right:  Signs of Human 4 by Zach Stern)

In his recent Concurring Opinions post Art in an Age of Digital Reproduction, Frank Pasquale takes the time to discuss the pro's and con's of expanded "moral rights" in artwork.  Excerpt below, link above.

 
I recently went to the Art Institute of Chicago to see the Jeff Wall show. I’d seen some of his photographs in the newspaper, but I wasn’t buying the critical praise. .  .  

I’m glad I did. One of his pieces, Dead Troops Talk (a vision after an ambush of a Red Army patrol, near Moqor, Afghanistan, winter 1986), struck me as a Dulce et Decorum Est for our time. The visual monotony of a desert landscape and dull Russian officers’ uniforms is relieved only by gore and improbably animated faces, some laughing profanely, others enigmatically contemplating their fate. The startlingly inventive “Flooded Grave” . . . is set in a drab cemetery and features an open, water-filled tomb filled with a riotously colorful array of sea anemones and urchins. All the work was backlit, achieving a luminosity no printed page (or monitor I've seen) can convey.

Which brought me back to my initial lack of enthusiasm for Wall’s work. Did the newspaper copy mislead me? Would thumbnails on the web have done the same thing? . . . I’m . . .  wondering about the extent to which an artist might want the power to stop inferior copies of his or her work, if only to avoid misimpressions like mine.

On the other hand, I’d never have even gone to the show if I hadn’t seen the reproductions in the New York Times article on Wall. So I'm not sold on the need to, say, expand moral rights so as to permit artists to assure that only those appreciating the "real presence" of the work itself can see any copy of it.

BLOGGING WITH IMAGES FROM THE INTERNET

Because I use so many images to illustrate this blog and the Settle It Now Negotiation Blog, I'm keenly interested in the apparently contradictory interests of making an author's work available to an audience likely to appreciate it and keeping one's hands off another's work without first obtaining permission. 

In my own case, I've found that simply asking permission, giving credit and providing a link to a web site of the artist's choosing generally (99%) results not simply in permission but also in gratitude for the exposure.

Because posting a few thoughts on the blog, along with a vivid image, is such a spontaneous act (at least in my case) there were times in the past when I did not seek permission before posting but only gave credit and linked to the artist's site.  I figured everyone googled themselves occasionally, the artist would see his or her name, take a quick look at the context and object if the use was objectionable, in which case I'd promptly remove it.    

That, as you can imagine, finally led to a dispute, in consequence of which I no longer post any images other than those for which I've received permission, which I firmly believe constitute "fair use" or those with creative commons licenses (like the one above).

The ability to download material already on the internet in just a few seconds makes it difficult for even an IP specialist to resist.   

Nevertheless, I have learned my lesson and hence only link to but do not post a Jeff Wall image here.

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People ask me all the time now "why should I join LinkedIn" because I am always talking about it.      

Here's one reason :  LinkedIn aggregates wisdom, experience, knowledge and study through its Question and Answer function. 

Example:

Greg Barry of the Van Hyst Group (someone in my network) asked the following question of my LinkedIn Network:  

Will the recent Supreme Court decision on patents have a significant impact on technology businesses? How will the competitive landscape change, now that mashups are less protected by patents than before?

Barry was gracious enough to include a link to a summary of the case along with his question here.

More than half a dozen ridiculously highly qualified people in my network provided a thoughtful informed answer (see below).  

Julie Turner :  Experienced Intellectual Property & Business Litigator 

If you look at this whole process from prosecution to litigation, the question that KSR v. Teleflex raises for me is whether a patent applicant should conduct a *more* extensive prior art search and disclose more prior art to the patent examiner as part of his application process, or whether KSR provides a disincentive to doing so.

I imagine one fall-out will be greater deference given to patent examiners who reject a claim on obviousness grounds. Examiners are notorious for making at least an initial rejection. However, prosecution remains, for the most part, an ex parte proceeding. So it may be easier to go up against an examiner, who has limited resources and time, to argue one's way into a patent than to later go up against a team of highly paid lawyers who will scour the earth for every possible piece of prior art tucked into shoe boxes around the world.

So what I think this means is that clever patentees will cite more prior art and receive stronger patents.

As to the impact on Silicon Valley -- patents are still critically important. However, given the S.Ct.'s triad of decisions (eBay, Microsoft v. AT&T, KSR), patentees are in a weaker position in terms of available remedies (and, hence, negotiating power) and are less likely to bring suit on patents of questionable validity (fairly obvious improvements).

This is a *great* thing for technology development and innovation in my book. I agree with Jeffrey that most of the positive value in the electronics/computer world comes from actual innovation and lead-to-market. (In fact, this was a main thesis of my argument, published 10 years ago in the California Law Review.) I think we will see fewer patent "extortions" (marginal patents asserted to get a settlement) and more meritorious patent suits.

Silicon Valley engineers should be celebrating.

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There are some publicly reported disputes that fairly scream out for comment by a mediator with integrative solutions at the tip of her fingers. 

The Red Cross/Johnson & Johnson trademark dispute reported today by the Wall Street Journal Law Blog is one of them.  

First the facts.  The Red Cross -- which is really a movement comprised of several separate and distinct organizations -- has been engaged in humanitarian work world-wide since 1863 (the Int'l Committee of the Red Cross); 1919 (the International Federation of Red Cross and Red Crescent Societies); and, at various other dates (the 185 National Red Cross and Red Crescent Societies in nearly every country in the world).

The Red Cross on white background was the original protection symbol declared at the 1864 Geneva Convention.  Article 7 of the 1864 Geneva Convention, Chapter VII ("The distinctive emblem").

This is the Johnson & Johnson logo (right).  The first ready-made, ready-to-use surgical dressings were pioneered by J&J in the mid-1880's.  According to its web site, this also marked the birth of the company.

I don't know if J&J used the red cross logo as early as the 1880's, but the Red Cross, which first used it twenty years before J&J was "born" clearly used it first.

OK There are a Lot of Legal Issues Here

I can name those legal issues in three notes, Bob.  But as my friend Richard Millen is fond of saying:  "People (natural and fictitious) don't have legal problems.  Lawyers have legal problems.  People have people [and businesses business) problems."

(My husband (also a lawyer) was just in the room discussing the "legal issues" of ownership with me.  I say, "I'm not writing about ownership.  I have zero interest in ownership and J&J ought to have zero interest in it in this case too," to which he agrees, as he leaves the room still talking about ownership issues.  We can't help it, we're litigators). 

So I'm not even going to begin with a legal analysis (or end with one for that matter).  I'm going to begin (and end) with a strategic business analysis.  Here it is:  IS J&J SO OUT OF ITS FREAKING MIND THAT IT CAN'T NEGOTIATE A RESOLUTION WITH THE RED CROSS WHICH DONATES ALL OF THE PROCEEDS OF SALES USING THE RED CROSS LOGO TO HUMANITARIAN AGENCIES?

I can't resist this top-of-my-head list of potential ways to serve both the Red Cross' fund-raising and J&J's advertising interests at the same time.  

1. cross-licenses (duh)
2. a certain percentage of J&J profits go to Red Cross sponsored initiatives
3. the Red Cross lends its name and logo to certain J&J products in the same way the International Olympic Committee does for products -- you know -- J&J, Official Sponsor of the Red Cross Initiative to Heal Darfur.    
4. the Red Cross places J&J logos on its own products that meet J&J standards.
5. the two companies jointly sponsor a rock festival; the half-time show at the Super Bowl; an Olympic event; festivities associated with the World Cup; etc., etc.
6. J&J donates much needed ambulances carrying both the J&J and the Red Cross logos to war torn areas of the world (I won't suggest that similar ambulances be used at sporting events . . . too grim, even for a band-aid company). 

That's it for free advice.  I invite any and all of my mediator friends who want to spend a couple of brain cells on the issue to leave their integrative solutions here.

In the meantime, see Bad PR Move over at Patent Baristas and the IPKat coverage here.  

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(Thanks as always to the generosity of the fabulous Charles Fincher at LawComix.com for the greatest law cartoons ever!)

And many additional thanks to Mark Partridge over at the Guiding Rights Blog for sharing this thunderbolt with us:  there were sixteen trademark, twenty-three copyright and seventy-one patent cases tried in the entire U.S. Federal System last year (the only place they can be tried for our foreign readers). 

I don't know what percentage of the total cases filed that is, but I can't believe it is more than one percent.

One of the most common questions I get from attorney-students when I teach Deposition Skills for  the National Institute of Trial Advocacy as I did last week-end is this:

"Should we conduct a killer cross-examination during the deposition or save it for trial?" 

My answer? 

You're not going to trial. 

Don't save anything unless it's for a strategic litigation as opposed to trial tactic.  You'll "try" your case, if at all, to a mediator.  Don't save it for me.

In all fairness to IP trial attorneys, I assume that a great percentage of IP litigation now takes place in arbitration.  If anyone knows how many IP cases are arbitrated every year, please feel free to pass that number along.

And thanks for the statistics Mark!

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(photo:  Lock and Key by Lord Cuauhtli)

I've already seen counsel use the Wayback Machine -- which has archived 85 billion web pages from 1996 to a few months ago -- to show prior art during the mediation of a patent dispute.  

The fact that this excellent means of independent sleuthing might constitute a crime would never have occurred to me.  But that's what creative lawyers are for Jack!  Finding ways to make the other side pay for the unfair advantage of opposing counsel's hard work and creativity. (though it appears the crux of the issue here is "getting lucky" when the Wayback Machine provided screen shots it shouldn't have).

Before proceeding on this topic, I want you to close your eyes for a moment and imagine a different world.  One in which the collective education, creativity, knowledge and experience of the world's litigators could be used collaboratively to . . . . let's say . . . meet the United Nation's Millennium Goals! 

No?  That being the case, here's the new law on using the Wayback Machine to prove your case, whether you prevail by virtue of hard work, good luck or a combination of the two.  

Bottom line -- it's not a crime either to use the Wayback Machine to prove your case nor to reap the benefit of "getting lucky" when it malfunctions.  

Read the opinion here.  Excerpt below:

Healthcare Advocates has not shown that the Harding firm viewed any images that they
were not entitled to see. The facts show that the Harding firm made requests via their web
browsers to the Wayback Machine to view archived web pages, and those requests were filled. 

Kimber Titus testified that she typed the web address she sought into the Wayback Machine, hit the “Take Me Back” button, and a list of screen shots available for viewing was presented. She clicked on the dates individually, and when an image appeared on her computer screen she printed a copy. (Id. at 78.) Ms. Titus testified that sometimes clicking on a date returned the “Robots.txt Query Exclusion” message. 

When this occurred, she clicked on the link that said “search here for all pages,” and was
provided with the list of dates from which she continued searching. No evidence has been
presented showing that the Harding firm did anything to get past the blocking mechanism. The facts show that the Wayback Machine gave Ms. Titus the ability to view archived screen shots of Healthcare Advocates’ website.

No evidence has been presented showing that the Harding firm exceeded that access. The
facts do not show that the Harding firm did anything other than use the Wayback Machine in the manner it was intended to be used. Gideon Lenkey testified that the Harding firm accessed the Internet Archive’s website with only an ordinary web browser, they did not employ any special tools. He wrote that the Harding firm obtained these images because Internet Archive’s servers experienced a condition that made them forget about protective controls.

“On some occasions and for reasons unknown these two servers would determine that robots.txt file did not exist on the HCA site and on those occasions would deliver the protected content.” The Harding firm only viewed the archived screen shots that the Wayback Machine provided.

As the facts do not show that the Harding firm exceeded the access provided, Plaintiff
attempts to convince this Court that determination of this issue must focus on the fact that the Harding firm viewed archived screen shots that the copyright holder did not want them to see. Healthcare Advocates argues that the Harding firm’s access was unauthorized because the images were viewed without its explicit permission. This fact is irrelevant. The statute only penalizes persons who exceed authorization.

The Harding firm was given the power to view the images by the Wayback Machine. While the screen shots may have been returned in error, they were ultimately provided. The Harding firm requested archived images from Internet Archive’s database, and those requests were filled. The Harding firm got lucky, because the servers were
malfunctioning, but getting lucky is not equivalent to exceeding authorized access.

There's a lot more in this case of benefit to litigators -- particularly the cautionary tales about electronic evidence and counsel's obligation to preserve "caches" on their hard drives.

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(photo by Tom Magliery) 

Today's post is brought to you by the letter "E" for emotion.

First of all -- let's not kid ourselves about lawyers, business executives, managers and inventors.  People have been known to draw guns from their waist-bands, pull knives from their boots, engage in fisticuffs or, key one another's cars in suburban shopping malls when Driver A concludes that Driver B has "stolen" "his" parking place.  People have been murdered for this.

But what of the person asserting dominion over the challenged and coveted parking space?  For how long has he owned it?  Generally?  On a typical sunny Southern California day? 

60 seconds?

Now I want you to think about the anger that I've so often seen erupt in a separate caucus when an attorney ventures, for the first time that day, to suggest that the most recent offer to settle a patent dispute is not bad really, particularly given the -- well -- potential problems with the litigation . . . .

Listen, there's nothing wrong with emotion. 

We're territorial.  And when we've created something out of whole cloth, the sweat of our brow, our own hard-earned dollars, ingenuity, creativity, courage, intellect, and, ambition -- our intellectual property -- we're perfectly well justified in getting a little bit heated when someone says they invented it (or patented it) or used its name or imagineered it first.

Why It's So Important to Acknowledge and "Surf" our Emotions in Negotiating Settlement

As Harvard Professor Daniel L. Shapiro (author of Beyond Reason) explains in his terrific essay Untapped Power:  Emotions in Negotiation (the Negotiator's Fieldbook, Schneider & Honeyman, Eds.), emotions can have the following negative impact on negotiations:

• suppressing "resentment, anger or other strong emotions can debilitate a negotiator's cognitive and behavioral functioning" by: 
  • causing us to act in ways that do not serve our long-term interests;
  • consuming "important cognitive energy" that might otherwise be available to "process information [and] think about important substantive or process issues;" or, 
  • incline us to stereotype our "adversary" in negative terms that interfere with cooperative attempts to explore benefits that might be available to both, while
• acting out our anger also has negative consequences such as:
  • communicating to our bargaining partner a degree of hostility that reflects our willingness to go to extremes and unwillingness to soberly reflect upon potential solutions -- conditions that too often lead to premature impasse.

So What's a Justifiably Distressed Negotiator to Do?

Recognizing our anger (rather than denying it) while at the same time choosing to stress the potential for positive fellow-feeling appears to ensure a far more favorable outcome than angry or even aggressive moves at the bargaining table.  

As Shapiro explains:

[N]egotiators in a positive mood achieve more optimally integrative outcomes, use fewer aggressive behaviors and report higher enjoyment of their interaction.  As parties build affiliation with one another and develop fulfilling roles, they become more engaged in their negotiation tasks and experience a state of "flow," a peak motivational experience that is intrinsically and personally rewarding.

The power of positive emotions toward the agreement and toward the other [have the additional benefit of] overrid[ing] the temptation for parties to dishonor their commitments.

Positive emotions also foster cognitive expansion . . . , aid negotiators' attempts to problem-solve creative options to satisfy their interests [and] . . . trigger the release of . . . dopamine, which in turn fosters improved cognitive ability . . . 

[As researcher Barbara Fredrickson has found] certain positive emotions -- including joy, interest, contentment and pride -- all share the ability to broaden attentional, cognitive, and behvioral ability . . . 

[Alice] Isen's research [also] suggests that people experiencing positive affect demonstrate thinking that is flexible, creative, integrative and effcient.  Each of these characteristics is important for an interest-based negotiator, who is trying to brainstorm creative options that satisfy each party's interests.

There you have it.  Not some kum-bay-ya whoo-hoo west coast new age feel-good freak, but a Harvard Professor who has negotiated international business and diplomatic agreements throughout the world reports that acknowledging one's anger, managing it and choosing to use one's positive emotions during any bargaining session will ultimately help us drive the best commercial bargain available.  

"E" is therefore not simply for emotion.  It's also for efficiency, effectiveness and excellence as well.

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I want you to know that I do tire of being my own PR machine.  So it's more than incredibly gratifying when someone else takes on the task.

I am therefore quite immodestly posting here Gini Nelson's Engaging Conflicts newsletter which contains an interview with me about my shift from litigation to mediation.

The quote above about questions and answers is something I say in this interview.  A little zen koan.  It is not, I repeat not, meant to be disrespectful of my brothers and sisters at the bar, all of whom are doing a more socially productive and difficult job every day of the week than anyone other than their loved ones could possibly imagine.  And keeping it quite to themselves in the stoic way litigators have about them. 

Here's the quotation's context:

Gini: What do you think are the big questions to be answered next in the conflict management field?

Vickie: What I love about conflict management is that it raises the big questions without ever (I hope) answering them. Answers are for lawyers. Questions are for mediators because conflict management is a one-on-one endeavor and the answers are personal and hence unique. Questions require that we learn to live more or less comfortably with completely contradictory truths. The closer we come to institutionalizing our practice, the closer we come to answering questions and losing our way.

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We continue our on-going series "Our Readers Write" with Blackwell Sanders attorney Mark S. Hostetler.

Slip this CD into your car's player and spend the most valuable thirty minutes of the year with Mark S. Hostetler, Of Counsel in Blackwell Sanders St. Louis Missouri office, as he discusses what every executive needs to know about negotiating the legal issues critical to the success of every  advertising and marketing campaign.

The CD and accompanying text -- part of the Virtual Leadership Seminar -- include an overview of the laws that affect advertising and marketing, the steps to take to insure compliance, and the dangers to avoid to prevent unwanted legal entanglements with regulatory agencies.  

Topics covered include:

1. A detailed look at the most important laws governing advertising and marketing;
2. a step by step guide for implementing a successful strategy;
3. the 5-7 mistakes most often made and how to avoid them;
4. specific negotiation strategies;
5. roles and motivations of each party; 
6. a seasoned attorney's strategy for working with some of the world's largest companies; and,
7. case Studies of specific situations and what you can learn from them.

Mr. Hostetler's background includes broad management experience in corporate, regulatory, legislative, marketing, antitrust, sales and operational matters.  He is the former Vice President of a leading food company with numerous market leading brands and over twenty production facilities. 

He has extensive experience dealing with the Food and Drug Administration and the United States Department of Agriculture.  He has represented clients before the National Advertising Division, the National Advertising Review Board, the Federal Trade Commission and the United States Justice Department, and various state attorneys general. 

Mr. Hostetler is a sought-after speaker at numerous industry conventions and bar association seminars and adjunct professor on advertising and marketing quality control and other process and operational topics.

Thanks for sharing Mark!

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We start a new feature today called "Our Readers Write" in which we feature IP practice and strategy books written by people practicing in firms whose attorneys read our blog (we have our ways!)

Today we feature Patton Boggs partner Talcott J. Franklin's book Protecting the Brand: A Concise Guide to Promoting, Maintaining, and Protecting a Company’s Most Valuable Asset (Barricade Books).

As explained by the Patton Boggs Trademark Website, in Protecting the Brand, Mr. Franklin

explains trademark law in a simple and easy-to-understand manner, while illustrating how advertisers, marketing professionals, executives, and entrepreneurs consistently and unknowingly work to destroy the very brands they seek to promote.

Protecting the Brand has been widely praised, including by former United States Patent and Trademark Office Director Q. Todd Dickinson, who referred to it as a “valuable and highly readable treatise.” Similarly, Judge Sydnor Thompson, formerly of the North Carolina Court of Appeals, lauded the work by stating that it “successfully pierces the veil of what for many lawyers and most laymen has heretofore been a virtually impenetrable mystery.”

“Understanding the intricacies of trademark law and being able to present an educated view of this inherently complex area is an achievement in itself,” says Patton Boggs Managing Partner Stuart Pape. “In Protecting the Brand, Tal Franklin not only accomplishes this difficult task, he puts forth a thorough yet succinct guide that is amazingly easy to read no matter what one’s knowledge of the topic, while offering exceptional instruction on how to ensure that your company is fully protecting and utilizing the potential of its brand.”

To read the reviews of Protecting the Brand, please click here. To order Protecting the Brand, please click here.

I haven't read it yet myself but am putting it on a long reading list to follow my trek through the generously meaty new Negotiator's Fieldbook that I recently mentioned here and which landed with a resounding thud on my front doorstep yesterday afternoon.

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In 3-D Negotiation by Lax and Sebenius (listen in your car for eight bucks here) the authors quote former GO Technologies CEO Jerry Kaplan on the working value of the contracts we lawyers draft to memorialize "the deal."

[Lawyers] tend to confuse "the deal," the working understanding between two parties, with "the contract," the written words that attempt to capture that understanding at a point in time.  Words are good for capturing some tings, such as the rules of chess, but not for others, such as how to ride a bicycle.  What makes deals work are not the written words but . . . personal relationships between the individuals charged with making them work.

3-D Negotiation, Chapter Eleven, Negotiate the Spirit of the Deal at 168.

As I'm always saying, the technology companies are "getting" it faster than any other industry in town.  Lax and Sebenius go on to quote Dick Allen, Sun Microsystems' Global Commodity Manager for Memory, who oversaw a billion-plus dollars of purchasers annually.  He too focused his attention on the "ongoing social contract" rather than the precise contractual terms.  When asked for comment, he stressed that

both Sun and our suppliers sign a letter of agreement and put it in a draw.  [I] like[] to keep [my] agreements down to 3 or 4 pages, as opposed to the 30- or 40- page documents the legal staff would prefer in order to cover all contingencies.  The Commodity Team feels that the key to a successful ongoing relationship is based on trust that has been built up over many years, rather than in the words of a legal contract.

. . . Sun shares a lot of technological and strategic information with its suppliers.  This relationship is not based on contracts or monetary exchange during the development phase, but on the common goal of profitably bringing new technology to market.

I have nothing to add.  To wisdom this profound, I simply listen, stay alert for an opportunity to use it in my own business, and then attempt to apply it there.

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Today's post is brought to you by the letter "C."  

The happy little fellow at left is a Capuchin monkey, many of whom have been trained to work for "money" by researchers. (where's PETA when you need them?)

As Forbes Online reported last year in Primate Economics, these monkeys refuse to work if they observe one of their fellows "earning" an unequal share of the rewards.

What does the Capuchin consider "unequal?" Probably pretty much the same thing we do.

Forbes reports that the Capuchin will more or less happily "work" for a "CEO" monkey until the CEO begins to "earn" five times as much food as the "worker" does.

When that critical inequity is reached, the laborer rebels and refuses to work, leaving both monkeys without "income." 

In other words, the capuchin would rather go hungry than participate in a reward system that is radically inequitable. 

And it's not just quantifiable inequities that cause the Capuchin to "strike."  He will also digs his heels in and refuse to go to the office if he sees a co-worker receiving better quality compensation.

The "money" researchers have trained the Capuchin to work takes the form of pebbles that can be traded for food, such as cucumbers.  The Capuchin will happily work for cucumber-trading pebbles unless he sees one of his co-workers receiving more desireable grapes for the same amount of "money."

If this qualitative inequity continues, the cucumber-earner becomes agitated, throws his pebbles out of his cage and eventually refuses to perform any further tasks for the researchers whatsoever.

The obvious take away?

If you want to negotiate the settlement of an IP dispute, you must find a way to "spin" your proposal as fair and reasonable under the circumstances.  It's not just about numbers, it's about the reasons for numbers.

In a post-scarcity economy, primates (read:  people) are less concerned about absolute rewards (wages, goods, standards of living) than they are about how those rewards compare to their fellows'.  As the researchers conclude:

Rewards in a market economy [must be shared].  [The] the essential flaw in systems like communism [however, is that] people are expected to share resources without regard to how much work they do.

We're willing to cooperate.  We just need to be assured that the system in which we labor possesses a reasonable degree of reciprocity. 

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