Unsurprising Speculation on Bratz Litigation Resolution: Licensing Agreement in the Works
Doll Dispute Edges Toward a Deal from the Los Angeles Daily Journal (for subscribers only; excerpt below)
RIVERSIDE - The Bratz doll copyright fight appears to be edging closer to a settlement, with lawyers for two dueling toy manufacturers reviewing a mediator's proposal with their clients in attempts to resolve their differences.
By Jason W. Armstrong
Daily Journal Staff WriterThe jurist overseeing the case, U.S. District Judge Stephen G. Larson, said in a case filing late Tuesday that "progress was made" at a court-ordered settlement conference Monday. He didn't go into specifics.
Last month, the court-appointed mediator, Pierre-Richard Prosper, told the judge in a hearing that while he felt the parties still had a lot of work to do to reach a settlement, they were "closer than ever" to resolving the five-year-old case, in which Mattel is fighting for control of rival MGA Entertainment's popular Bratz line. Larson then postponed discovery for a second phase of the trial to give the lawyers a chance to discuss a possible settlement with Prosper.
Although the lawyers aren't discussing the settlement talks, some intellectual property experts have speculated that resolution options for the case could include a licensing agreement in which MGA would continue making the dolls and pay Mattel a chunk of the proceeds.
The case is Bryant v. Mattel, CV04-9049 (C.D. Cal, filed 2004).
Thinking Outside the Box to Deliver Greater Client Satisfaction During Hard Economic Times
Live Telephone SeminarADR in IP Litigation from ALI-ABA
Wednesday February 18, 2009 from 1:00-2:00 pm EST
Why Attend?
In a difficult economy, intellectual property protection and assertion is more important than ever. The combined stressors of a poor fiscal climate and shrinking legal budgets place a significant strain on any business dependent upon IP assets. as companies face difficult economic decisions, it is increasingly difficult to fit the expense and extended uncertainty of copyright, patent and trademark litigation into a forward looking business plan. This one-hour seminar explores the use of alternative dispute resolution as a means of protecting intellectual property and business activity, while minimizing the expense and devotion of time related to traditional IP litigation.
What You Will Learn
This program examines how to move an IP dispute toward alternative dispute resolution; best practices for controlling the expense and length of the process; and best practices for successful alternative dispute resolution. Whether you are an experienced IP practitioner or simply one grappling with IP issues in your general commercial practice, knowing how to offer your clients a wide array of ADR options might make the difference between a practice that survives and one that thrives. The seminar will cover the following topics:
How to choose between litigation and ADR.
- The most successful strategies for guiding your dispute into the best ADR forum at the most productive time.
- The five basic rules of “distributive” or “fixed sum” bargaining that will give you the “edge” in all future settlement negotiations.
- The five ways to “expand the fixed sum pie” by exploring and exploiting the client interests underlying your own and your opponents’ legal positions.
- The Ten Mediation/Settlement Conference Traps for the Unwary.
Invest just 60 minutes at your home or office to learn about alternative dispute resolution in the IP field from this duo of experts. This audio program comes to you live on Wednesday, February 18, 2009, 1:00-2:00 pm EST, via your phone or your computer. Materials corresponding to the course may be downloaded or viewed online.
Planning Chair
R. David Donoghue, Esquire, Holland & Knight LLP, Chicago, IL
Faculty
Victoria Pynchon, Esquire, Settle It Now Dispute Resolution Services, Beverly Hills, CA
Collaboration Agreements for Creatives
Turns out the term "Hollywood Contract" is not an oxymoron after all. Not if you follow the three-part series Why Every Writing Team Should Have a Written Collaboration Agreement over at Theater and Entertainment Law. And don't think you don't need one of these if you are part of a young writing team just starting in business with a friend. I recently mediated a litigated dispute between two life-long friends with the loss of the friendship being the highest cost of the parties' failure to spell out the terms of their agreement.
An ounce of IP Prevention is worth a pound of litigation cure.
As blogger and entertainment attorney Gordon P. Firemark explains:
In the absence of a collaboration agreement, the parties may or may not be considered partners. The work they create may or may not be considered a “joint work”, and thus ownership and control of the disposition of the work called into question. While it is true that these issues tend only to arise in situations where the team has broken up, or is in the process of doing so, the existence of a collaboration agreement can be useful in managing the parties’ separation. In some respects, a collaboration agreement is the creative team’s equivalent of a prenuptial agreement. But in many cases the collaboration agreement can be much much more.
By negotiating the terms of the collaboration agreement at the outset of the work, the parties can uncover differences in their expectations, and avoid problems that might otherwise arise later. In the absence of a collaboration agreement, the parties’ efforts may be lost if there’s no meeting of the minds, and the project may simply wind up being abandoned… or mired in litigation. Obviously, it is important to work with a lawyer to craft a workable contract that’s tailored to your team’s specific circumstances.
Cease and Desist at Pooh Corner
This lawsuit falls into the category of deterrence. Because I live in a part of the world where "creatives" regularly refer to Disney as Maushwitz, I don't tend to think of it as the happiest place on earth.
The question here, however, is business strategy and tactics; public image vs. strict compliance with one's demands.
Does Dumbo's mom act the bully in the marketplace to scare off all the other fleas? Or does she cease and desist when her C&D letters obtain compliance in all but the most minute details?
Question open. Excerpt from IP Infringement: The Unwelcome Guest at Kiddie Parties below.
With its $1 million trademark infringement lawsuit against the Florida couple who happened to use costumes looking like its trademarked Tigger and Eyeore characters for their party business, the company that bills Disneyland as the happiest place on earth is now possibly being perceived in some quarters as the usual big business bully. But does Disney have a point? Is the legal action justified?
According to an article by David Wallace on disneyorama.com, David and Marisol Chaveco of Clermont, Florida, owners of a small party business, bought two costumes resembling Tigger and Eyeore from a Pervian company on eBay and promptly advertised their availability for parties on their Web site. Like other brand owners of children’s characters, Disney regularly searches the Internet for commercial use of their characters. And spotting this particular site, Disney, known for its tough approach on potential infringers of their trademarks, sent the couple three letters demanding seven items, including sending the costumes to Disney to be destroyed.
While the Chavecos complied with six of the requests, instead of sending the costumes to Disney, they instead sent it back to the Peruvian company, pleading the need to recoups their $500 investment. Disney’s response was the $1 million lawsuit.
Settle Your IP Dispute in a Hot Tub
Get ready for a radical new idea. One that:
- suggests the search for accuracy should trump a fully adversarial process;
- would wrest some control of the litigation and trial process from the hands of the attorneys; and into the care of the experts; and,
- just might focus IP litigants on the fact that they have a business problem burdened with justice issues rather than a legal problem that frustrates business operations.
(image from Wikimedia Commons)
Not surprisingly, a litigation process that threatens or promises these results does sound like litigation at all -- you know -- battle, war, fight. Rather, it sounds like a summer spent in Big Sur among the redwoods, sitting on the edge of the Pacific Ocean with the parties, the judge, the jury and the attorneys in a . . . . HOT TUB!?!?!?!
My (fabulous) new iPhone New York Times app this morning delivered the following paradigm busting proposal -- a "preferred a new way of hearing expert testimony that Australian lawyers call hot tubbing." In American Exception -- In U.S., Experts are [gasp!] Partisan, Adam Liptak explains:
In [a] procedure . . . called concurrent evidence, experts are still chosen by the parties, but they testify together at trial — discussing the case, asking each other questions, responding to inquiries from the judge and the lawyers, finding common ground and sharpening the open issues. In the Wilkins case, by contrast, the two experts “did not exchange information,” the Court of Appeals for Iowa noted in its decision last year.
Australian judges have embraced hot tubbing. “You can feel the release of the tension which normally infects the evidence-gathering process,” Justice Peter McClellan of the Land and Environmental Court of New South Wales said in a speech on the practice. “Not confined to answering the question of the advocates,” he added, experts “are able to more effectively respond to the views of the other expert or experts.”
What kind of cases has this process been used for?
In a dispute over the boundary of an Australian wine region, for instance, “there were lots of hot tubs — marketers, historians, viniculturalists,” said Gary Edmond, a law professor at the University of New South Wales in Sydney.
The Drawbacks?
Professor Edmond said hot tubbing in Australia had drawbacks and was “based on a simplistic model of expertise.” Judges think that if we could just have a place in the adversarial trial that was a little less adversarial and a little more scientific, everything would be fine,” Professor Edmond said. “But science can be very acrimonious.”
The Systemic Response Elsewhere?
Though no one expects this process to be imposed upon the American legal process, experts in the Mother Land are calling for "radical measures" to
to address “the culture of confrontation that permeated the use of experts in litigation.”
The measures included placing experts under the complete control of the court, requiring a single expert in many cases and encouraging cooperation among experts when the parties retain more than one. Experts are required to sign a statement saying their duty is to the court and not to the party paying their bills.
Just as you were saying "American lawyers wouldn't allow it," Liptak reports that
[t]here are no signs of similar changes in the United States. “The American tendency is strictly the party-appointed expert,” said James Maxeiner, a professor of comparative law at the University of Baltimore. “There is this proprietary interest lawyers here have over lawsuits.”
But we're fooling no one, particularly not ourselves. It was Melvin Belli, after all, who once said “[i]f I got myself an impartial [expert] witness I’d think I was wasting my money.”
It's no surprise to us that
Judges and lawyers agreed, in separate surveys conducted by the center in 1998 and 1999, that the biggest problem with expert testimony was that “experts abandon objectivity and become advocates for the side that hires them.”
The Academic View from My Own Backyard?
Jennifer L. Mnookin, a law professor at the University of California, Los Angeles, who recently wrote about expert testimony in the Brooklyn Law Review, [said] “neutrals risk being a sort of false cure” because “there are often cases where there are genuine disagreements.”
The future, Professor Mnookin said, may belong to Australia. “Hot tubbing,” she said, “is much more interesting than neutral experts.”
Interesting to a law professor perhaps, but interesting is not what litigators and trial attorneys are looking for.
For further coverage and comment by the usual suspects over at the Wall Street Journal Law Blog read Experts in Hot Tubs? Not Here in the U.S. of A.
Blawg Review #171
If intellectual property had a theme song it would have to be "Like a Virgin."
Why?
Because IP is all about "the very first time," the "aha" moment, the creative spark that gives rise to previously undreamed imaginings.The restrictions of "how we've always done things" fall away and the numbing repetition of days become vibrant. The rest, of course, is work. Trial and error. Success. Failure. Rearranging the disaligned. Completion.
Then the suits arrive. That's us, the lawyers.
In honor of the moment of creation at the root of every intellectual property dispute, this week's Blawg Review No. 171 gives you the great virgins of history.
To kick off the "virgin" IP ADR Blawg Review, we're linking you to Kate Monro's brilliant and (in)famous blog The Virginity Project and giving you a tantilizing excerpt:
Touched for the very first time...
It’s all about virginity loss. Or is it?
. . . . I love listening to the episodes in people’s lives that are imprinted into our psyches like hot wax into a seal. The moment itself could be as dull as dishwater but it doesn’t matter because the beauty is in the detail and the connective tissue of emotions that frame this unique story.‘You never fall in love like you do when you’re eighteen. Shot though the heart. I’ll have that again, any day of the week.’ Russell, lost virginity aged 17
Virginity loss is the backdrop to a thousand visceral teenage moments…
‘For me, the first hands-down-the-pants experience was far more significant. That was earth shattering. I mean, there is a hole there. How bizarre is that?’ Tim, lost virginity aged 16
Virginity loss is the swing door between child and adulthood. A door that we all want to push…even if we’re unsure of what we may find on the other side….
‘It was a pivotal moment, not only because I lost my virginity but also because it was a first taste of freedom, of what life could be like out in the big wide world and it was totally thrilling’. Heidi, lost virginity aged 15
When I asked Kate if she could address the Blawg Review's readers, she graciously and immediately accepted my invitation as follows:
Bad hair, the contents of a vicar’s cassock and toxic contamination coverage litigation. These are just a few of the subjects turned back and forth between Ms Pynchon and myself this last week. A very good email correspondent she is too. Not only that, but she’s a blogger with heart. I know, tell you something you don’t know…..
O.K. I will. I’ve spent the past two years travelling Britain and collecting virginity loss stories from an amazing cross section of people. The oldest was 101, the youngest was 17. Yes, it’s been quite the journey. Next up, I plan to come to America and do just the same. If you are game, I would love to hear from you. Anonymity guaranteed, I promise.
Either way, I hope you enjoy stepping onto virgin territory with the lady of the law…
(and while we're speaking with a British accent, take a look at Kate's other law blog friend's new blog category, Irritation to which I can only say this == the exchange rate).
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Finally!! Blawg Review 171 as "told" by Famous Virigins from Wilkiality, the Truthiness Encyclopedia.
Wikiality claims that the The Virgin Mary was "a Republican . . . against abortion, stem cell research, gay marriage and women in the workplace." We believe she's ecummenical and inter-religious. Whatever her American political party, in her honor, we give you the best law and religion posts of the week, including the Florida Employment and Immigration Law Blog's announcement that the EEOC has issued new guidelines on religious discrimination and the suggestion by Thoughts in a Haystack that Religious Intolerance is Good for You. The Legal Theory Blog takes religion head on in its post on negotiating meaning with Islam while MacLeans.CA Blog (So Much Bigger than Ezra) frets about the globalization of anti-blasphemy laws (whose first target could easily be this Blawg Review). We don't know what the Virgin Mother would think about Shari-ah and Mediation but you can catch Geoff Sharp riding the far edges of possibility on that topic at Mediator blah blah . . . . We do believe the Virgin Mary does not like divorce. But if you really Agree on Everything, you not only don't need a mediator, we wonder why you're asking for a divorce. Finally, though Marc Randazza has a pledge of allegiance he could get behind, we're placing no bets on Mary agreeing with him.
Ken ("I am Not Gay") Mehlman is the former Chairman of the Republican National Committee. Wikiality annointed him the "world's oldest virgin" "[a]s the result of his religious piousness and his not being married." Pretty flimsy evidence but it gives us an excuse to cover sex and sexuality in an IP ADR Blog. It doesn't look like the Indiana Law Blog is having any sex whatsoever, pulling out that old "I have a headache" chestnut and blaming it on Conflicting Gay Marriage Laws. A Florida Court has required one of its state's high schools to permit a Gay-straight alliance on campus ( School Law Blog); the Sexual Orientation and the Law Blog sees the light at the end of the Don't Ask, Don't Tell tunnel; and, the Australian Gay and Lesbian Law Blog reports on legislation that would permit children of gay and lesbian parents to be treated as -- what else? -- their children for purposes of the Family Law Act. Speaking of bi-sexuality, check out Bob Ambrogi's post at Legal Blog Watch about a bi-"sexual attorney predator" who stalked men and women as well as once trying to convince an employee to "go to the hotel room of a highly paid expert witness who was faring poorly in a deposition [with] instructions . . . to "take care" of him in order to improve his mood." Finally, we all just say "no" to accusing a Judge of pedophilia while attempting to prove your legal point, noting the the four month contempt sentence covered over at QuizLaw.
Jesus, far and away the world's most famous virgin, has been imagined as lusting in his heart (cf. the Jimmy Carter Playboy interview), having a wife and family (D.H. Lawrence, The Man Who Died) and, you got it, being gay. For this last sacrilege, check out the Pink Triangle's post Gutless Grovelers Have Bowed to Religion Again. WWJD? Because he hung with an odd assortment of tax collectors, prostitutes, lepers, and the undead (cf. Lazarus) we assume he'd agree with Eugene Volokh that the usual "best interests" analysis would fall short in custody decisions for parents with unusual or nontraditional friends and associates. Volokh's thoughts on the issue as well as those of his readers here. Finally, Sarah Lawsky considers the outcome of "Mamma Mia!" -- a "division" of a daughter by three putative fathers -- in light of the seminal Summers v. Tice decision concerning injury and probability. Hint: it's not any of the members of the troika formerly known as the Blessed Trinity.
Ralph Nader, consumer advocate and democratic presidential spoiler has not, according to Wikiality, ever even dated, let alone gone 'all the way.' Because Nader is famous with law students for having said that legal scholarship is "mental gymnastics in an iron cage," we dedicate his virginity to legal practice. We think Ralph would like Dan Hull's post at What About Clients? commenting on Gerry Spence's post that "Law Education is a Fraud" (followed by a spirited debate between Dan and yours truly on the subject -- are we really all crashing bores?). See also f/k/a's Law Blogging and the Cult of Gerry Spence. For tips on social networking, check out Kevin O'Keefe's LexBlog post and for a more theoretical legal practice post, see Ken Adams' thoughts on whether Law Firm Contract Drafting Services are a Commodity? If it really is all about the client, ask your local GC what s/he really wants. We regularly check in on the Wired GC who last week posted on Virtual Law Partners. Big firm practice is always in the news because we're naturally competitive and want to catch a peek of the Masters of the Universe in their underwear. In Laid Off By Cadwalader? My Shingle asks Why Not Go Solo by Choice? The Cadwalader lay-offs give Jordan Furlong at Law 21 the opportunity to give us the year's best post on retaining and training associates, caring for clients and benefiting the law firm while you're at it in Associates and the bad table. For the small fry among us, Susan Carter Liebel's Build a Solo Practice recommends ways to avoid our personal Brain Drain while The Greatest American Lawyer challenges lawyers to offer Money Back Guarantees! Holden Oliver advises us to take care of our clients by keeping them informed. Finally, Madeleine Begun Kane offers an Ode To Judge Ronald Leighton, quoted in full below.
Attorneys are often verbose,
Penning legal complaints grandiose,
Writing hundreds pages
And setting off rages
From those who find wordiness gross.
But Judge Leighton showed major restraint
When he ruled on an endless complaint.
In a limerick poem
He said, redo this tome
Cuz in 8(a) compliance it ain’t!
Joan of Arc. Virgin. Martyr. Warrior. We dedicate the week's consumer rights post to a woman who dressed like a man to protect her virginity and died at the stake for saving her country. Before rushing to legal or Ecclesiastical authorities -- both of which are historically and notoriously unreliable (right Joan?) -- take simple steps to protect your own welfare by subscribing to Michael Webster's Bizop News, which this week warns us about our inclination to follow our first instincts. Drug and Device Law links us to Pharma-Free Doctors for Journalists where you can presumably find that rare physician who is untainted by free drug samples. From the other side of the consumer/provider aisle we hear from Overlawyered (Drunk Driving for Profit) that an insurance company was sandbagged to the tune of $5.8 million in compensatory and and $10.5 million in punitive damages. We think that's karmic or at least levelling the playing field. Meanwhile, the Public Citizen Law and Policy Consumer Blog alerts us to the FDA's decision to finally begin regulating tobacco, which does not remind us of virginity, but of cigarettes, particularly the best ones memorialized by former U.S. Poet Laureate Billy Collins in The Best Cigarette. (and if you don't like Billy Collins, the IP ADR Bloggers will sentence you to a term of emotional labor at Gerry Spence's Trial Lawyer Camp).
We devote disability law to The Elephant Man -- who suffered from neurofibromatosis -- and who presumably died a virgin. No, Pain, Depression and Anxiety is not the name of a law firm, but a post on obtaining social security benefits from the Maryland Injury and Disability Law Blog. Disability Law 2.0 - Tan * Rested and Ready covers the new California appellate decision on aisle space while the New York Disability Law Blog cheers the SSA Commissioner's exhortation that "eliminating the backlog of Social Security Disability claims is a moral imperative." Randy Chapman's Ability Law Blog gives advice to parents about how to find "related services" for their school-age children. Though not a disability, age itself tends to create the type of obstacles the disabled face. To prove the truism that its best not to let your children become writers, I offer a conversation with my mother when she was in her early 80's.
After exchanging the usual telephone pleasantries, mom began to stutter and giggle in a way I'd never heard before. Finally, she got her question out past the hilarity -- "honey, do you think I need to worry about safe sex?" Go mom! But let's talk about what kind of sex is really unsafe for the Greatest Generation -- intimacies that end in the looting of trust assets as described by Estate of Denial in "Dear Candidate." (cf. That's not the sound of one hand clapping . . . . ) Think you'll find sexual safety among the widows in nursing homes? Think again and read Sex Offenders Living in U.S. Nursing Homes from the Nursing Home Abuse and Neglect blog.
Emily Dickinson is famous for being a true American virgin. But as this week's New Yorker 
reminds us, the "theory that Dickinson was a lesbian shares a Dewey-decimal classification with a raft of other case studies -- Emily the sufferer, performer, healer, seducer, victim, hysteric, dog lover, mystic, feminist paradigm, vestal daughter, consumptive, agoraphobic." (cf. Vagabond). Emily's presence here gives us the opportunity to report on law and the arts. The Art Law Blog discovers yet another Pollack find in It's Not About the Money (cf. Who the $#%$ is Jackson Pollack). Over at Empowering Thoughts for Dancers there's a short song of praise for Volunteer Lawyers for the Arts and at Stephanie West Allen's Brains on Purpose, there's a post on legal practice and the art of Improvisation. Why did Emily avoid the great mass of humanity? Maybe she didn't know what The Divorce Coach knows -- people who blame others for everything can be managed. See "It's All Your Fault! (12 Tips for Managing People Who Blame Others for Everything)." . Speaking of American women poets ( a rose is a rose is a rose is a rose) at least one California lawyer muses on whether a contract is a contract is a contract. Finally, Counterfeit Chic asks an IP-Art cross-over question -- is it more subversive to create countercultural clothing or to undercut its now-iconic status by flooding the market with fakes? In legal terms, a trademark is a trademark -- but the ingenuous invocation of law to protect Seditionaries is a ironic twist.
Diogenes of Sinope spent so much time wandering around in search of an honest man that he apparently never got laid. Michele at the University of Oregon Student Law Blog believes she's found the honest, or at least the greenest law school in the nation while Will Li (2L) at the Situationist has a few caustic words for BigLaw's Summer Camp Sleep Over Programs. Three years of answering Socratic questions followed by a three day bar exam. Yup, it's over. To renew the feeling of relief that once was, read Peanut Butter Burrito's -- Done. I read a lot of law student blogs for this Blawg Review and can only report that most of them don't seem much interested in the law. Not true, however, of Nuts and Boalts. I really enjoyed reading Don't You Ever Get Tired of Being Wrong? (re Committee on the Judiciary v. Miers). Law students don't always breathe a sigh of relief when the bar exam is over but we think Ouch at Think Like a Woman, Act Like a Man can relax -- it's the people who don't know they missed the hearsay question who are in danger of failing. Its not only law students who are looking for a few good lawyers -- David Lat is kicking out the jams by letting Ann Althouse, Tom Goldstein, and Dahlia Lithwick choose his new co-blogger by juding six candidates in an "American Idol"-style competition See update here. Finally, next year's bar examinees should check out May it Please the Court's post on Handwriting.
Virgin Immanuel Kant -- the orignal moral reasoning guy -- prompts us to bring you Moral Grammar and Intuitive Jurisprudence from the Neuroethics & Law Blog; and, to remind everyone that mustangs do not need birth control from this week's Animal Ethics. Finally, we think Kant might have been intrigued by Why We are Too Rational to Stop Polluting from Amateur Economists.
Isaac Newton. The Straight Dope thinks the virginity of this octogenerian scientist and mathematician is less surprising that the fact that the math gene somehow keeps perpetuating itself. We consecrate Newton's virginity to this week's best IP and IT posts. William ("I am virginal") Patry is asking questions about the government's engagement in copyright infringement but it is Patry's final blog post that we celebrate as a true virginal moment. Pause here.
My late mother, aleha ha-shalom, told me repeatedly that I had a religious obligation to learn every day, and I have honored her memory by doing exactly that. Learning also involves changing how you think about things; it doesn't only mean reinforcing the existing views you already have. In this respect, Second Circuit Judge Pierre Leval once said that the best way to know you have a mind is to change it, and I have tried to live by that wisdom too. There are positions I have taken in the past I no longer hold, and some that I continue to hold. I have tried to be honest with myself: if you are not genuinely honest with yourself, you can't learn, and if you worry about what others think of you, you will be living their version of your life and not yours.
Other IP bloggers have, of course, reflected on Patry's Final Blog Words here and here.
Back in the worldly word, Patently O -- which promiscuously shares itself with millions of readers every year -- turns its pen over to David McGowan who discusses why we should not interpret the recent Quanta decision too broadly. Lou Michels suggests we be the masters of our own domains, using the the recent San Francisco IT fiasco as a cautionary tale -- don't let a single person have control of all the keys to your kingdom.
If you're reading this on your iPhone, you've moved from cigarettes to PDA's. Congratulations. Brett Trout at BlawgIT suggests that you might soon be watching television from that device in your post-coital bliss. Protection, protection, protection. In a software license, boilerplate integration and non-reliance terms might not insulate a firm from claims based upon its salesfolks' "over"promises. What's this? Blog content licensing might be dying for lack of buyers? People buy blog content? I can hear my mother asking "why buy the cow . . . . "
The IP Dispute of the Week, of course, is Hasbro's suit against Rajat and Jayant Agarwalla for their Facebook hit Scrabulous. Scrabble itself was invented during the Depression by Alfred Mosher Butts, an out-of-work architect. How did he do it? As the New York Times explained in its review of Steve Fastis book, Word Freak (Zo. Qi. Doh. Hoo. Qursh) Scrabble's inventor assumed that the game would work best if the game letters "appear[ed] in the same frequency as in the language itself." So he
counted letters in The New York Times, The New York Herald Tribune and The Saturday Evening Post to calculate letter frequencies for various word lengths. Playing the game with his wife, Nina, and experimenting as he went along, Butts carefully worked out the size of the playing grid (225 squares, or 15 by 15), the number of tiles (100), point values for the letters, the placement of double- and triple-score squares, the distribution of vowels and consonants, and so on.
In response to the Hasbro lawsuit Ron Coleman at Likelihood of Confusion asks "How Many Points is Infringement?" -- one of those rare legal questions that actually has an answer rather than 20 more questions.
If Player 1 opens with "fringe" (double word) for 24 points; Player 2 follows by slapping an "i" on the triple word score followed by an "n" for "infringe" and 33 points; and, Player 1 responds with "ment" for 19 points, the combined score for "infringement" is 75 points. Our readers can do the math and moves on "trademark" and copyright." On the matter of greater moment -- Will the ax fall on Scrabulous -- Jonathan Zittrain at The Future of the Internet answers his own question in the affirmative based on the name alone, opining that by calling it "rainbows and buttercups” instead of “Scrabulous” there’d be little claim of brand confusion but noting the "residual claim that the Scrabulous game board infringes the copyright held in the Scrabble game board." More on Scrabulous and its replacement with Word Scraper at the Video Game Law Blog here. (Mr. Thrifty's and my first game of Word Scraper here!)
Has anyone recently said God bless the best IP aggregator in the universe -- the IP Think Tank's Global Week in Review? This week IPTT points to the following posts on the Hasbro Scrabble debacle -- (Spicy IP), (Techdirt), (The Trademark Blog), (Out-Law), (Law360). While we're talking IP aggregation, check out Patent Baristas' regular Friday IP Round-up. All around aggregators include Anne Reed's (Deliberations) reading list and Kevin O'Keefe's LexMonitor.
Both Geoff Sharp and I picked up 8 impediments to settling patent cases on appeal (a desire for "justice" is not an impediment but a means to settlement). While we're taking an ADR angle, Virtually Blind's post Second Life Lawsuit Avoided; Law is Cool's Love, Actionable; and, Slashdot's recommend reading of the week (The Pragmatic CSO) are all well worth a look.
Slashdot also reminds us that IP prevention is worth a pound of IP litigation with the post WB Took Pains to "Delay" Pirating of the Dark Knight as follows:
"a new studio tactic [is] not to prevent piracy, but to delay it . . . Warner Bros. executives said [they] prevent[ed] camcorded copies of the reported $180-million [Dark Knight] film from reaching Internet file-sharing sites for about 38 hours. Although that doesn't sound like much progress, it was enough time to keep bootleg DVDs off the streets as the film racked up a record-breaking $158.4 million on opening weekend. . . The success of an anti-piracy campaign is measured in the number of hours it buys before the digital dam breaks.'"
The Law and Magic Law Blog announces the dismissal of the defamation lawsuit against Magic Mag on the ground that its a protected opinion while Ernie the Attorney has a way to make your iPhone magic here.
Meanwhile, the Legal Talk Network gathers together bloggers and co-hosts, J. Craig Williams and Bob Ambrogi to welcome Attorney Kevin A. Thompson from the firm Davis McGrath LLC, and Lauren Gelman, Executive Director of Stanford Law School's Center for Internet and Society to discuss Viacom's suit against Google's YouTube for the violation of its copyrights in a $1 billion lawsuit. 
Because I used to type patent applications for Uniroyal (IBM Selectric - 5 carbon copies) I get a sweet whiff of nostalgia from Wiki Patents -- like this one -- Flexible Row Redundancy System 7404113 -- a row redundancy system is provided for replacing faulty wordlines of a memory array having a plurality of banks. The row redundancy system includes a remote fuse bay storing at least one faulty address corresponding to a faulty wordline of the memory array . . . . Another available data base for the engineering-attorney crowd is the subject of Securing Innovations post IBM Technical Disclosures' Prior Art Data Base. Concurring Opinions covers IP in the News this week, Peter Zura's 271 Patent Blog considers a patent that was a "Colossal Waste of Time" and IP Kat curls up with Small and Sole.
J. Edgar (I am not a perv) Hoover is yet another iconic American virgin (cf. Don DeLillo's masterpiece Underworld and the front page that inspired it). In honor of crime fighting, we bring you Religion Clause's post on the RICO action just filed agains the Church of Scientology and Tom (I'll sue if you say I'm gay) Cruise. Serving the needy prison population might get more economical according to a post over at Amateur Economists -- How Telemedicine Can Actually Work. What better way to celebrate a Virgin Blawg Review than posting a link to Courtroom Casanova where Mr. Big(Crime) "hits on" the prosecutor. Closer to home the L.A. Police Deparment has captured 43,000 counterfeit sunglasses -- you weren't expecting snow shoes -- with a street value of $8.5 million (Blogging Shades, My Authentics.com Counterfeiting News). After a Portland, Oregon policeman was convicted in traffic court following a citizen's complaint that he used a no parking zone to grab take-out, Scott Greenfield proclaimed a "Cop Love Sunday"; Seth Freilich was somewhat less charitable. Should misinformation about people's conviction records be placed online? Check out Concurring Opinion's post The Problems of More Accessible Criminal Conviction Information. For more IP Crime news, see Copyright Law and Information Blog's post E-Bay Sofware Pirate Sentenced to 48 Months in Prison.
Lewis Carroll "Some writers . . . who have fallen short of accepting Dodgson as a paedophile, have tended to concur that he had a passion for small female children and next to no interest in the adult world." Wikipedia. 'But I don't want to go among mad people,' said Alice. 'Oh, you can't help that,' said the cat. 'We're all mad here." Alice's Adventures in Wonderland These two quotes are as good a lead-in as any to the law of Hollywood. While you're in a fanciful state of mind, check out the Digital Media Law blog's analysis of the current state of the SAG negotiations. And remember, Sharon Stone left Los Angeles for San Francisco because the daily Hollywood beauty contest at Bristol Farms was "too much competition." (cf. Last Action Hero) So it's no surprise that here in botoxed fantasy-land, its not just your enthnicity, but the tone of your skin that can get you booted off camera -- The Entertainment and Media Law Blog.
Mother Teresa Hooray!! There is a Pro Bono Legal Blog. This week, PB blogger Aaron Hurst is thinking about using google alerts to identify people or communities in need. See Pro Bono Junkie's Blog post Customer Service is One Blog Away. Some of the most important pro bono work being done today is off-shore at Guantánamo. Check out the Show and Tell Trial over at the American Constitution Society Blog. Elsewhere, the Attig Law Firm, PLLC rightly touts its own horn for its success in its pro bono efforts to assist a U.S. Veteran in securing disability benefits.
The Virgin Queen Elizabeth I Elizabeth is acknowledged by historians as a charismatic performer and a dogged survivor, in an age when government was ramshackle and limited and when monarchs in neighbouring countries faced internal problems that jeopardised their thrones. What did Elizabeth do right? Neutralize, negotiate and resolve conflict by "uniting the body natural with the body politic" as she proclaimed at 25 years of age when she ascended to the throne:And as I am but one body naturally considered, though by His permission a body politic to govern, so shall I desire you all...to be assistant to me, that I with my ruling and you with your service may make a good account to Almighty God and leave some comfort to our posterity on earth. I mean to direct all my actions by good advice and counsel.
In honor of Elizabeth, I give you posts from my own ADR blog posse this week. First, we honor the newest member, Nancy Hudgins of Civil Negotiation and Mediation who has proven her bargaining cajones by negotiating the price of a bottle of "Old Raj, a distinctive gin . . . distilled with saffron [that has] a slightly orange-ish color and a different subtle but piquant taste." WWED -- What Would Elizabeth do? I think she'd negotiate with terrorists but not without first consulting Andrea Schneider at the ADR Prof Blog. If you read any Blawg Review post this week, let it be Diane Levin's Mediation Channel post All Gardeners are Optimists: What Squirrels Reminded Me about Conflict Resolution. Poetry. (cf. the summer issue of the r.kv.r.y. quarterly literary journal). Gini Nelson offers us wisdom on the Myers Briggs Indicator that will tell you everything you need to know about your "type" other than your sexual preferences. (cf. her ABA article on the same topic here). Are you a Virtual Virgin? Then run right over to Mediation Mensch's post on "Getting Virtual." Though Stephanie West Allen hails from the Renaissance rather then the Elizebethean era, anyone worried about the well-being of their parents should check out her Idealawg post Mediation Can Work in Many Elder Care Situations. We hope Justin Patten won't mind our making him an honorary ADR British Queen by linking to Human Law's post from last week: As we head into recession and a wave of redundancies does the Human Resources profession have some flair and imagination? We do have an American ADR "Queen" -- Chris Annunziata -- who will hopefully forgive me for giving him honorary ADR Queen status. Our academic readers could benefit themselves and our "on the ground" professionals by reading this week's CKA post Why Nobody Really Reads Law Review Notes here. My high school French is bad, but it looks like French mediator Dominique Lopez-Eyechenie is reporting that mediators have been deployed to the Metro to referee disputes there -- is that right Dominique? Finally, the Health Care Neutral (our last honorary male ADR Queen) talks about immunity and couldn't we all use just a little of that?
Below: Madonna and Friends -- Like a Virgin for your listening pleasure while reading this week's Blawg Review.
Next week, the Blawg Review will be hosted by the Ohio Employer's Law Blog which we expect will be far more respectful of BR's readers' political, religious and sexual sensitivities than this one was. Thanks for letting us play. And a very, very, very good night!
Thanks to the following law blogs sending link love our way:
Pharmaceutical News and Resources
Thanks to CKA Mediation and Arbitration Blog for the honorary NoDoz Award (here's the ADR Executive Summary of #171, Chris)
a fool in the forest (with special thanks for brightwhiteandsparklinglyvirginal)
And Google News no less . . .
(Blush) many thanks to Infamy or Praise for suggesting #171 "is a strong contender for Blawg Review of the Year."
The New York Personal Injury Law Blog (Linkworthy) which apparently thinks the title is more interesting than the post itself.
Wise Up at Simple Justice's Blog Review No. 170
Because the introduction of the movie Magnolia narrates the best criminal law bar exam question in the history of film, period, I posted it for you over at the Settle It Now Negotiation Law Blog here. Below, the haunting last scene of that dark comedy -- Aimee Mann's Wise Up -- below.
If you want to access the mind of criminal attorneys (who have all the fun!) then run, don't walk, over to Simple Justice for a satisfyingly meaty Blawg Review. What? No IP crimes? Mediating sunglass and handbag counterfeiting disputes is as close as I ever get to criminal law and then the question is always an ethical one -- can you imply that charges will be dropped if a civil settlement is entered into. I believe the answer is "no" but I see it done all the time.
Stay tuned here for next week's Blawg Review which will be penned by the members of the IP ADR Blog.
Settling "Bet the Company Cases" -- Qualcomm's Stock Price Soars
(photo: from Mediation from Darkness to Light)
In the Qualcomm-Nokia battle of the giants, settlement took a dedicated negotiation team, trial counsel who believed the case would not settle, and a string of pre-trial motion victories. Trial counsel is so immersed in pursuing victory -- as well he should be -- that he calls the settlement a "multi-billion dollar award."
Before giving you an excerpt from the AmLaw story on the settlement -- Nokia-Qualcomm Agree to Play Nice -- I must make at least a few glancing references to the settlement issues.
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First, how about that 18% rise in Qualcomm's share value in the immediate wake of the settlement -- how much of the "multi-billion dollar award" will be off-set by external market benefits.
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Second, it's no surprise for Qualcomm to have a string of pre-trial motion victories on the eve of trial -- it was being represented by Cravath for goodness sakes! The KING of the pure legal issue. Quinn, as recent trial victories demonstrate, dominates the courtroom when the jury is seated. Still, if my spotty Civil War history doesn't mislead me, it was the number of victories in a row, not the number of total victories for each side, that resulted in a "win" for the Union.
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Third, if the "negotiation team" is keeping the trial team in the dark -- as I'm now told by Fortune 500 GC -- "to keep the trial team focused" -- for goodness sakes, don't send the trial team to the mandatory settlement conference or high level (think Tony Piazza) mediation. Send the negotiation team. It won't be a surprise to either player that the trial attorneys are the equivalent of foot soldiers, deployed to serve purposes of which they are often blissfully unaware.
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And finally, was the end result worth the direct and ancillary costs of the litigation -- not simply those appearing on the legal bill -- but the market cost. I'm assuming both sides have high-level financial teams analyzing the cost and benefit of this series of litigations, regulatory battles and at least one arbitration proceeding, to determine when settlement could have resulted in the maximum benefit to both sides.
That's why god created consultants, right?
Settlement talks began in earnest on Monday between Steven Altman, Qualcomm's president, and Tero Ojanper, executive vice president of Nokia, after a pretrial hearing July 18 in which Qualcomm won all its motions, according to Cooley's Steven Strauss. "That seemed to change the settlement dynamic," he says.
Strauss says he was in the Delaware courtroom Wednesday morning, ready to start the trial, when the negotiators called to ask for a short delay. On learning that the case had been settled, Strauss said he was disappointed--because he had prepared to try the case for so long--but ultimately satisfied that his client's best interests had been served. He declined to discuss the financial details of the settlement, except to say that it is a "multibillion-dollar award that includes a large cash payment and an ongoing royalty."
Under the terms of the settlement, Qualcomm will give Nokia access to its chip technology as Nokia develops the next generation of its cell phones. Nokia in return has agreed not to use any of its patents directly against Qualcomm.
Nokia also will make an up-front payment to Qualcomm and will continue to pay royalties as part of the deal. Financial terms of the settlement were not disclosed.
Qualcomm's stock soared 18 percent as investors expressed relief that Qualcomm's licensing money won't run out anytime soon. The company still faces similar litigation brought by Broadcom Corp.
No, it doesn't mention any of the great mediators or arbitrators here at the IP ADR Blog. But we'll be recognized soon. Count on it!
One Man's Piracy is Another's Business Opportunity
We LOVE the law here at the IP ADR Blog. And we're huge supporters of the Rule of Law as society's Great Leveller. We're not, however, all that enamoured of lawsuits as a means to create business opportunity or to stem business losses.
Take a look, for instance, at Bill Gates recent comment about the use of Microsoft Windows in China -- the system is used on 90% of Chinese PC's but most of those OS's are pirated.
Officially, the software giant has taken a firm line against piracy. But unofficially, it admits that tolerating piracy of its products has given it huge market share and will boost revenues in the long term, because users stick with Microsoft’s products when they go legit. Clamping down too hard on pirates may also encourage people to switch to free, open-source alternatives. “It’s easier for our software to compete with Linux when there’s piracy than when there’s not,” Microsoft’s chairman, Bill Gates, told Fortune magazine last year.
For the full article from the Economist -- Piracy -- Look for the silver lining Piracy is a bad thing. But sometimes companies can turn it to their advantage, click here.
And to show you how deeply our commitment to the Rule of Law runs and why watching television when I was a kid wasn't a completely losing proposition . . . here's Andy Griffith (and Opie aka Director Ron Howard) on eavesdropping . . . . "the law can't use this kind of help"
IP Risk Management: Protection, Protection, Protection
When I was practicing, I'd tell my clients that litigators and trial lawyers were the profession's surgeons. We were the people they wanted to avoid because surgery is costly and potentially life-threatening.
Transactional lawyers, I stressed, were the Internists of the profession and they should be consulted early and often.
Because we can't prevent litigation any more than we can prevent strokes and heart attacks, we have INSURANCE. If your business has protectable trade secrets, a patent portfolio, valuable copyrights, coveted trademarks/names or any other type of intellectual property (and all businesses do) mosey on over to the Gauntlett on Insurance Blog's recent post Restoring Balance to the IP/Insurance Interface.
Most major corporations have procedures, either through existing personnel or through the aid of consultants, that:
• Identify and evaluate the full range of IP;
• Determine the level of patent, copyright or trademark infringement by the company or others;
• Reduce exposure to legal action by managing risk;
• Protect residual risk through insurance.
The challenge comes in the last component through identifying products in the marketplace that can create similar opportunities for reimbursement and designing protocols to assure that the maximum policy benefits available to the company are properly secured.
How challenging is it to "assure that the maximum policy benefits available to the company are properly secured"? Allow me to share my experience.
Though I have pursued coverage claims and bad faith actions against insurance carriers, by far the vast percentage of my coverage litigation practice was on behalf of insurance carriers providing excess CGL or D&O insurance to Fortune 50 companies. Occasionally (not often) I'd also take a look at smaller claims to determine in the first instance whether coverage was available. Some of those claims were from companies seeking coverage for patent or copyright infringement litigation.
Here's my advice. If you believe yourself vulnerable to suit, don't rely solely on your risk management department. Get an annual insurance check-up by a specialist in IP insurance coverage issues. Then get a second opinion from an insurance litigator. I know that sounds expensive. But it's a drop in the bucket compared to the first six months of IP litigation. Think:
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electronic discovery
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complex procedural manuevering
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depositions of your key personnel
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media coverage
Get the picture? Not only do you not want to hire insurance coverage litigators, you never ever want to see a mediator or settlement officer with insurance company experience. Why not? Because by the time you're willing to sit down with the opposition to settle a case with the aid of a third-party neutral, you've already lost no matter how great a deal you cut to terminate the litigation.
So if you can't save yourself from having a coronary, at least buy yourself a policy of insurance that will cover the likely (and unlikely) claims that put your company's life at risk.
(and, yes, insurance companies do look for ways to deny you coverage; make it improbable or very very risky for a carrier to do so)
Domain Name Disputes: You Tube, CTV and American Girl Decided by Arbitrators from the National Arbitration Forum
What follows is a Press Release from the National Arbitration Forum
MINNEAPOLIS, June 24, 2008—The National Arbitration Forum issued decisions on the rights to YouTube.net, CTV.com, and AmericanGirl.net. Conflicts over domain names are on the rise. The dispute resolution provider handled 1,658 domain disputes in 2006, a 21 percent increase from the prior year, and 1,805 disputes in 2007.
The following decisions were made in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) by independent and neutral arbitrators on the National Arbitration Forum Panel.
YouTube.net
Complainant Google Inc., owner of the popular video sharing site YouTube.com, filed a complaint on March 11, 2008 against YiWuShi Shuangfeng Jixie Youxian Gongsi of China, the registered owner of YouTube.net.
The National Arbitration Forum Panelist followed traditional UDRP principles in disregarding the functional “.net” generic top-level domain (gTLD) when determining the “YouTube” domain name was identical to Complainant’s YOUTUBE trademark. The arbitrator also found that the website at the domain name advertises and displays adult-oriented content. The owner of YouTube.net registered and used the domain name in bad faith based on the fact that it was using Complainant’s well-known mark to provide such content. For these reasons, the National Arbitration Forum granted transfer of YouTube.net to Google Inc. on May 5, 2008.
CTV.com
Complainant CTV Inc., a Canadian English language television network, brought a complaint against CTV.com owner Murat Yikilmaz of Turkey, on April 11, 2008.
Complainant has used the CTV mark since 1961 to identify its goods and services, and registered the CTV mark in 1974 with the Canadian Intellectual Property Office. A three member Panel found that the domain name was identical to the CTV trademark. The Panel determined that the three letters which constitute the essence of the disputed domain name are generic initials used by many parties to identify many goods and services. The Panel found Respondent to be in the domain name warehousing business, specializing in three character domains. Respondent’s use of CTV.com to attract Internet traffic is a legitimate business interest, especially in this case where none of the advertisements are related to Complainant’s television operations. Additionally the Panel found CTV Inc. had not proven the domain name was registered or used in bad faith. The majority of the Panel denied Complainant’s requested relief on June 10, 2008. Panelist Kerans dissented in the decision, inferring that Respondent likely was aware of CTV Inc.’s business and mark in Canada and the U.S.
AmericanGirl.net
American Girl, LLC, a subsidiary of Mattel that manufactures dolls and books for young girls, submitted a complaint against The Tidewinds Group, Inc on February 25, 2008 seeking transfer of AmericanGirl.net.
The National Arbitration Forum arbitrator found that the domain name was identical to the AMERICAN GIRL trademark, which Complainant had submitted into the record. Further, Respondent used the site to display links to commercial websites, proving no legitimate interest in the disputed domain name. Finally, the Panelist looked at the registration and use of the disputed domain name. It was found that Respondent registered the domain name in 2002, three years before the application filing date for the AMERICAN GIRL mark that Complainant provided. While noting that Complainant provided no evidence that it possessed common law rights or any other trademarks previous to 2005, the National Arbitration Forum Panelist found no bad faith registration or use and denied transfer of AmericanGirl.net to American Girl, LLC on April 16, 2008.
To file a claim see www.domains.adrforum.com. Contact domaindispute[at]adrforum.com with questions. Media please contact Christina Doucet at 952-516-6486 or cdoucet@forthrightsolutions.com.
About the National Arbitration Forum
Based in Minneapolis, Minnesota, United States, the National Arbitration Forum is an international leader in arbitration and mediation services. An innovator in the industry, the National Arbitration Forum was appointed an approved provider of the Uniform Dispute Resolution Policy (UDRP) by the Internet Corporation of Assigned Names and Numbers (ICANN) in 1999. Since then, over 10,000 domain name disputes worldwide have been filed through the National Arbitration Forum’s state-of-the-art case management system, now optimized by Forthright. For more information, visit www.domains.adrforum.com.
Counterfeit Handbags, Mediation and the Rule of Law
Mediating a fairly run-of-the-mill commercial case – a fight over the sale of an import business -- a federal settlement officer slowly begins to conclude that the parties are bargaining over the value of a business that trades in counterfeit Louis Vuitton and Gucci handbags.
Is this the moment when the mediator asks herself, if I’m carrying a pricey Prada, should I push the parties out of my pad?
But that’s the Carrie Bradshaw question.
The mediator’s questions go more like this: as a neutral mediator, do I have a duty to: (a) chastise the parties for engaging in illegal conduct; (b) recuse myself to avoid participating in the creation of an illegal agreement; or (c) inform the parties that any settlement reached might not be enforced?
Before answering these difficult questions, consider the recent case of Hye Young Yoo v. Sue Jho (Calif. Court of Appeal, 2nd Dist).
Yoo, the purchaser of a counterfeit handbag business, sued the seller after investigators confiscated the counterfeit goods, which naturally caused the business to fail. Yoo wanted some or all of her money back and the trial Court (wearing black polyester) agreed -- to the tune of $103,250.
Not surprisingly, the appellate court, slightly more Manolo Blahnik but nevertheless also sporting black polyester robes, held that when it comes to illegal contracts “the law will leave the parties as it finds them.” Id. In Yoo, leaving the parties the way the Court found them meant some pretty good times for the defendant. She stole Gucci and LV designs, sold them to (unsuspecting?) customers and made a cool $400K at a time when she was likely looking over her shoulder for the law to close in.
So, what’s a neutral mediator to do?
For the tentative resolution, click here.
IPKat Announces the Official Launch of ACID's Mediate to Resolve
A little slow on the uptake here in alerting U.S. readers to the official launch of the Anti Copying in Design organization's U.K. Mediate to Resolve service. Illustration and excerpt direct from IPKat. Mediate to Resolve's list of Mediators here. For full IPKat post, click here.
Not a side issue but an event in its own right, the official launch for ACID's Mediate to Resolve scheme was one of the reasons for the cork-popping at that organisation's 10th birthday party in London last week.
Right: handled properly, a good mediation can produce amicable, workable arrangementseven between even potential foes
For the uninitiated:"ACID’s (Anti Copying in Design) national Mediate to Resolve service for dispute resolution is based on the organisation’s extensive experience handling mediations. Just under 2,000 ACID mediations have taken place, of which less than 30% have required further legal intervention. ACID’S national network of Accredited Mediators offers a wealth of intellectual property dispute resolution experience. Their mix of negotiation style and skill provides a comprehensive service to those seeking mediation as a real alternative to litigation.
Many organisations are not familiar with the stages of the mediation process – and there is no reason why they should be – until they need it! We hope this booklet will clarify the use and process of mediation and help to explain the route to dispute resolution. At ACID, we are frequently asked “What mediation is and how does it work?” Mediation is a confidential meeting between two parties who are in dispute which enables them to retain control over the outcome. They are guided through the process by a skilled mediator who will use his or her expertise to restore or rebuild a harmonious relationship, but has no authority to impose an outcome.
These days the demands on businesses to succeed and grow are severely hampered by the increase in intellectual property infringement. Taking action against those who seek the fast track to market through IP theft places huge fiscal and time restrictions on the day-to-day running of organisations. ACID has spent the last decade encouraging parties in disputes to seek mediation sooner rather than later and Government is now sending a strong message to judges to look more favourably on disputing companies who seek mediation prior to any court applications". . . .
The Chicago IP Litigation Blog Includes Settle It Now in the Carnival of Trust
R. David Donoghue over at the Chicago IP Litigation Blog is hosting a "Carnival" of Blogs that is new to me -- The Carnival of Trust.
As David explains:
The Carnival of Trust is a monthly, traveling review of ten of the last month's best posts related to various aspects of trust in the business world. It is much like the weekly Blawg Reviews that I post links to and have hosted, but those generally contain far more than ten links. My job this month was to pick those ten posts for you and provide an introduction to each post that makes you want to click through and read more.
We're pleased that our sister blog -- Settle It Now -- is included in the category Trust in Leadership and Management along with Charles H. Green's Trust Matters; George Ambler's Practice of Leadership; and Stephen Albainy-Jenei's Patent Baristas (if they gave awards for blog template design, PB would win in my book every day of the week). In this crowd I feel like Zelig!
Here's David's generous mention of the Settle It Now Negotiation Blog and my recent post on convincing your clients to give up more than you (their attorney) predicted while still maintaining your credibility.
On the subject of trust-based leadership, Victoria Pynchon at the Settle It Now, Negotiation Blog has an excellent guide for maintaining your client's trust during a difficult negotiation: How Can I Convince My Client to Lose More than Predicted and Still Maintain My Own Credibility? The answer is complex and multi-faceted, but it boils down to the fact that you have to get the stakeholders and decision makers face-to-face, get their buy in on resolution as a goal (in addition to winning), explore all avenues of resolution, and you have to let them explore all aspects of the dispute, even those that do not matter. The last point is a difficult one for lawyers. As a lawyer you generally want to remain focused on the settlement inputs -- money, confidentiality provisions, sale of existing product if something about the product is being changed, etc. -- but from a trust perspective it is important that the stakeholders resolve not just those issues that go into a final agreement, but any problems or concerns they have related to the dispute or the parties to the dispute.
And let me just add here -- though I'll sound like a broken record to my regular readers -- that business people seek out lawyers because they believe themselves to be victims of injustice. (see my short-short video on this topic here)
Though I, as a mediator, am always seeking business solutions to legal problems, the client's injustice problem must be addressed to maintain your credibility (and retain your client's trust.). Every great mediator I know will address this issue with your client unbidden. If you're using less than great mediators -- raise the issue yourself -- all competent mediators should be prepared to address the issues foremost on your client's mind right including -- Will I lose? How much more is this going to cost me? and Am I Being Extorted or Low-Balled?
Thanks for the mention, David! We're happy to see Settle It Now mentioned by an IP Blog as influential as yours. Every IP dispute involves the same issues as every other commercial dispute, requiring the parties to go beyond their legal positions; explore all of both parties' commercial interests; create value from potential business synergies; claim as much of that value as possible; craft business solutions to legal problems; and, frankly address the injustice issues that led your client to seek you out in the first place.
They'll be yours for life.
((red)) and the ownership of intellectual property
The significant problems we face cannot be solvedby the same level of thinking that created them.--Albert Einstein
Lawyers, philosophers and scientists are all trained to question first principles. The right of one individual to the absolute and exclusive right of dominion over property by virtue of creation or payment (by money or barter) is one of the first principles of capitalism and is rarely questioned. /**
The ownership of ideas, however, and one's entitlement to preclude others from interfering with another's dominion over them, is more slippery today than ever. In this month's Harvard Business School Working Knowledge journal, for instance, Professor James Heskett kicks off a reader's forum -- Who Owns Intellectual Property -- (open until April 24) with the following:
I [recently] visited the website of the branding consultancy Wolff Olins, responsible for creating the branding for (RED), which raises money for The Global Fund being promoted by Bono and Bobby Shriver. (RED) is a brand, a piece of intellectual property that was designed purposely to be co-opted by others wishing to incorporate it into their advertising. Organizations such as Apple, Gap, and American Express have promoted their products and services using (RED) while raising money for The Global Fund.
Wolff Olins' homepage presents a provocative redefinition of brands as practical platforms that enable people to do things. In its words, "As brands become less the property of an organisation and more the banner of a movement, ownership will become even looser. Logos will be things other organisations, and individuals, can borrow and adapt." That belief, they maintain, will require that some companies, in their own best interests, relinquish control over brands and "be more generous" with consumers. In other words, they take the risk of transferring ownership and quality control of what used to be called their brand to others. In this case, who owns the intellectual property?
More generally, are views of ownership of intellectual property changing? If so, how will it affect the way intellectual property is valued for financial purposes? Are laws worldwide regarding intellectual property out of date? What do you think?
To add your own thoughts, click here.
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/** Though possibly apocryphal, in responding to the question "what proof need I present to demonstrate my ownership of this slave," a trial judge sitting in a non-slave state in 1840's America is said to have answered, “a bill of sale from God Almighty.”
WOW!! IP Think Tank Global Week in Review
Unbelievably extensive link roll to global IP resources in a single week! Check it out. I just subscribed but am thinking I'd need to take a vacation to keep up!
By the way, the patent infringement case I was talking about involved one co-defendant selling its business to another co-defendant where the two businesses had different geographic markets; different distribution channels; different strengths; different weaknesses; and, the seller was cash poor due to the litigation.
Thanks for picking up our post.
And welcome to the neighborhood. When I get a moment, I'll add IP Think Tank to our Blog Roll.
Ninth Circuit Decides Comedy Club Arbitration Battle
Mr. Thrifty and I have been known to walk to the IMPROV (Jerry Seinfeld, Sarah Silverman, and before Mr. T., even Rosanne Barr before she was Rosanne). The club is right around the corner from our little neighborhood -- the one that's recently been renamed "Beverly Grove" in honor of the two shopping centers that anchor it firmly in L.A.'s march of progress to complete gentrification.
The presence of the IMPROV in my own personal geography is strong -- I took my comedy-driving- school-class there from the now pretty famous Kathy Griffin back in the day when I used to power my cherry red RX-7 up and down PCH at speeds local law enforcement couldn't ignore.
But I digress before I lede, a perilous practice when reporting not quite so exciting arbitration clause interpretation cases.
So here it is: Comedy Club, Inc. v. IMPROV West Associates, etc., the Ninth Circuit construing trademark licensing arbitration and non-compete clauses between an IMPROV licensee, the Comedy Club, and the IMPROV as follows:
- the arbitrator properly arbitrated the equitable claims where the "scope of arbitration" clause could reasonably be interpreted to embrace such claims;
- the arbitrator’s award enforcing an exclusivity clause containing a restrictive covenant by terminating the Comedy Club's right to open other clubs could not be set aside as "completely irrational" since that's what the contract provided for;
- the arbitrator exceeded the scope of his authority by enjoining non-party "affiliate" family members; and,
- because enforcement of the agreement's covenant not to compete barred the Comedy Club from operating in a substantial portion of its market, that portion of the award violated California Business and Professions Code § 16600, was therefore entered in manifest disregard of the law and had to be vacated.
The Ninth Circuit therefore,
vacat[ed] the district court’s order confirming the arbitration award and remand[ed the case back] to the district court with instructions to vacate the Partial Final Arbitration Award in so far as it enjoin[ed the Comedy Store's] Affiliates, unless they [were] agents or otherwise acting for [it] and to the extent it prevent[ed the Comedy Store] from opening or operating non-Improv clubs in counties in which [the Comedy Store] does not now operate or own an Improv club.
So who said arbitration awards can't be appealed?
With all due respect to those of us here at the IP ADR Blog who arbitrate IP disputes, these lengthly and complex proceedings make me want to mediate the darn thing.
When a "Cease and Desist" Letter is the ADR of Choice
Take a look at this excellent article -- Pirates Stealing Content from Rival Website -- by Florida Gunster Yoakley lawyers David Bates and Meenu Sasser.
This one-page article is well-worth reading if you or your clients possess anything of value on the internet that can be "scraped" by pirates.
The good news?
According to Bates, "[a]bout 95% of the cases are resolved by a cease-and-desist letter."
With that kind of track record, Gunster ought to be thinking about value rather than hourly billing. Maybe they already have.
Duane Morris on Lapp Factors: Are We Clear? Crystal!
Duane Morris reports today on the Third Circuit Decision Clarif[ying] Proper Use of Lapp Factors in Trade Dress Infringement Actions.
I leave the strictly legal analysis to my fellow IP legal bloggers. See e.g. the 43(B)log's treatment of the denial of the preliminary injunction by the District Court here.
My comment pertains to the last paragraph's modest conclusion that the new decision "provides brand owners with important guidance" in ordering their affairs.
That guidance?
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store brands can 'get away' with a little more similarity than other defendants' products when they prominently display a well-known store-specific signature on their packages
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but store-brands may not merely affix a tiny differentiating label to a copied national brand
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"health-related" products such as the artificial sweeteners at issue can err on the side of similarity because customers "are assumed to exercise more care in their purchasing decisions than they otherwise might for low-priced products"
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evidence of actual confusion from a "surgical strike" shopper was not representative of the typical shopper in light of of their brand indifference and the fast pace of their shopping.
Is This Guidance Sufficiently Certain to Recommend Litigation?
From a practical standpoint -- is there any other? -- any legal issue that requires fact-finding will likely be settled later (and far more expensively) than those that don't.
Why?
Because litigation makes sense only if:
- you have far more resources than your opponent; or,
- the matter is actually resolved at the preliminary injunction stage because the resulting commercial losses are too great to bear until trial; or,
- the matter can truly be resolved by way of summary judgment motion, i.e., there are genuinely no material facts nor any immaterial facts that pull at equity's heart-strings.
Judges have hearts?
Yes, indeedy. In fact, if you look back over your long or short litigation career, you'll get the gestalt -- the cases you should have won on summary judgment but which you (unjustly) lost invariably contained some set of facts that:
- made the requested judgment feel inequitable even though it would have been legally appropriate
- made the trial court worry about reversal -- usually because the law or the facts were just too darn complicated
- ever so brief aside: at the close of one summary judgment argument in a nine-figure case, I asked the Judge denying my motion to provide the parties with his ruling on our evidentiary objections. His response? The wave of a hand at the wire cart containing several red welds of pleading files coupled with this remark -- "you can't expect me to rule on those objections." Beat. "There are just too many of them." Voila -- justice!
- required more work to understand than the particular Judge before whom it was pending was prepared to do (cf. "too darn complicated")
But They Infringed My Trade Dress!!!!
Let's stick with artificial sweeteners here.
The reason the "store brands" cost so much less than the national brands is, of course, promotion. Advertising. Print. Television. Internet. Billboards. Slogans. Jingles. The whole Adman Magilla (plug here for Madmen from Nancy Franklin's ecstatic New Yorker review -- "it hits a deep place in you, like a straight-up Martini made of memory and desire.")
So really! No one should feel sorry for a store brand trying to hitch a free ride on the back of the national brand's gazillion dollar ad campaign. Shoot! That's the kind of advantage taking that makes everyone's mouth go a little sour, right?
Trouble is, as far as jurors and judges go, there is no innocent and, more importantly, no flesh and blood person who's done any equity-sweating or competitor abusing. Just the cold record; some high-paid expert witnesses; and, the usual line-up of corporate representatives.
There's simply no way to predict what a Court or jury or appellate tribunal is apt to do. It's all so loosey goosey really. This is not only not science -- it's not even social science. It's a game of chance no matter how skilled and sophisticated the players.
Isn't this Just Another Commercial for Your Mediation Services, Ms. Pynchon?
Well, not entirely. My friend and mentor Ken Cloke likes to say that mediation is a profession in search of its own suicide because we're always trying to teach people to just do this resolution thing -- strategic planning and negotiation -- by themselves.
Have I, for instance, said read 3-D Negotiation yet this year? No? Here's the amazon.com link. Buy it today. You don't even have to read the whole thing. You can skim it. Really! It will be the best investment of your legal career since you first subscribed to Lexis or Westlaw.
The recommendation below, for instance is a little harder than it sounds, but it's a whole lot easier and less risky than high-stakes IP litigation. What is that recommendation?
Learn the "art of letting them have your way."
At its best, letting them have your way means finding an agreement that meets your counterpart's real interests, as a way of meeting yours. It means shaping how the other side sees the basic choice -- between yes and no -- so that the "yes" they choose for their reasons yields the deal you want for yours.
3-D Negotiation at 37.
Try it. You'll like it!
Follow the Money: Insurance Coverage for IP Assets
($5700 by Andrew Magill)
I just ran across this terrific resource for IP practitioners -- Insurance Coverage for IP Assets. Were I still in practice today, I wouldn't make a move without this great source of IP settlement wisdom.
Here's the thing about the law of insurance coverage (a sub-specialty of mine for the last ten or so years of my practice) -- you cannot simply read your clients' insurance policies nor simply read the pertinent case law in deciding whether to make -- or more importantly to press -- a claim for coverage.
There are no easy coverage answers and the difficult questions raised by every coverage dispute vary from state to state.
I live with policy-holder counsel and he can't answer my questions unless I look up the answers and give them to him, at which point he'll tell me why I'm wrong (I usually am) unless I've asked six or seven additional questions. (thanks honey!)
So add this valuable book to your research library in 2008.
Publisher's description of contents below; link to publisher's web page featuring the book above.
Insurance Coverage of Intellectual Property Assets is the first resource to comprehensively analyze the insurance protection issues that must be considered when an intellectual property dispute arises. From determining the scope of coverage under a policy, to tendering of a claim, to seeking remedies when coverage has been denied, this essential guidebook details the interactions among policyholders, insurers and the courts.
You'll find comprehensive and timely analysis of federal and state case law and major commercial insurance policy provisions that address:
- The extent of insurance coverage under the "advertising injury" and "personal injury" provisions
- Language in policies that limits or excludes coverage for intellectual property claims
- Public policy exclusions to coverage for claims of an infringement undertaken with intent to harm
- Interpreting ambiguous language in insurance policies
- Defending a claim under a "reservation of rights" and potential conflicts of interest triggered thereby
- Forum selection and choice of law
And more.
In addition, there's detailed discussion and comparison of the actual language used in most commercial insurance policies and the 1976 and 1986 Insurance Services (ISO) policies.
"SANCTIONS, GET YOUR SANCTIONS HERE"
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. . AND THEN SETTLE YOUR COPYRIGHT CASE.
(right, IP ADR attorney, mediator and blogger Michael D. Young of Weston Benshoof and Judicate West; case link courtesy of Thelen Reid)
$27 million will buy you a whole lot of cake. And you can eat it too. That’s one of the lessons from the Tennessee Court’s unprecedented sanctions award against an apparent copyright infringer who just refused to stop copying.
In MGE UPS Systems v. Titan Specialized Services (OPINION HERE), the copyright owner not only obtained a sanctions order worth $27 million against one of its primary competitors (and apparent copyright infringer), but was still entitled to pursue its claim for copyright damages.
How is that for protecting your intellectual property while also setting the stage for a pretty advantageous settlement negotiation?
Using the lingo of ADR/negotiations, MGE UPS Systems showed how a copyright owner could effectively utilize the litigation process to change the parties’ respective leverage, and then set itself up for the perfect negotiated outcome.
Here’s the short set-up: MGE UPS Systems, Inc. sells, and then services, “Uninterruptible Power Supply” equipment, equiqment systems customers (such as hospitals) install to ensure a constant supply of power in the event of an outage.
Because this equipment must be regularly serviced and maintained, not surprisingly, there are a number of competitors who provide such services to UPS users -- and who compete head to head with MGE for that business.
Things were pretty competitive…until MGE built a better mousetrap. It developed new software that was so good it allowed UPS to service its equipment 2-4 times faster than its competitors, and with greater accuracy and efficiency. The software was, of course, proprietary and copyrighted. The competitors were starting to feel the pinch.
Beware the Mobile Employee
One competitor apparently pinched back. If you’ve worked in any technology-based business, you know how prevalent employee mobility is – and how easy it is to download secrets onto a simple pen drive that fits in your pocket. According to complaint's allegations, defendant JTP solicited one of MGE’s former employees who just happened to have a pirated copy of the MGE proprietary software. JTP obtained the software, distributed it to its service personnel, and began competing against MGE with MGE’s own copyrighted product.
Why JTP thought it could get away with this thievery is never explained. Why it believed it could then go out in the market place and start miraculously servicing UPS equipment in 1/6th the time without raising suspicion is also never explained.
What needs no explanation is what happened next. As soon as MGE learned of the theft and infringing use of its software, it filed suit.
The Leverage of Time
With the suit filed, is it time to call in fellow blogger Vickie Pynchon to mediate the dispute? JTP probably would have loved this. Settlement takes time, and every day that passed setting up and conducting the mediation would have been another day JTP could have been in the field utilizing MGE’s own copyrighted software to steal business from MGE. JTP would have been incentivized to drag the process out for as long as it could.
But for MGE, this would have been a mistake. The leverage of time was working against it. With MGE bleeding every day, what it needed was litigation triage. So MGE sought to staunch the blood flow by applying for – and obtaining – an emergency restraining order against JTP prohibiting it from using the MGE software at all for any purpose whatsoever.
Now who was in a hurry to settle? Not MGE, certainly. The leverage had flipped. Back in sole control of its proprietary software, it could now regain control of the Service market as well. It was JTP who should have been in a hurry to settle before it became locked out of the market altogether. Maybe it could cut a licensing deal?
Time to Call the Mediator
This is the time JTP should have called Vickie to seek out a mediated solution. But it didn’t. Instead, it took a seriously wrong turn. According to the opinion, rather than comply with the Court order, JTP ignored the thing altogether and continued utilizing the copyrighted software in competition with MGE.
The Leverage of Sanctions
When MGE learned about JTP's contumacious conduct, it returned to court and sought sanctions. And what sanctions they were. After a two day evidentiary hearing, the court, noting that a third of JTP’s income was based on its service of MGE equipment, awarded MGE “a monetary sanction of thirty (30%) of JTP's gross revenues from July 21, 2004 to date.”
Thirty percent! $27 million!
(The court also ordered an inspection of JTP’s computers – at JTP’s expense of course – and awarded MGE its attorney’s fees.)
And this doesn’t include MGE’s infringement damages!
An entire blog could be dedicated to litigation sanctions. (I looked, but couldn’t find one -- readers should feel free to start one.)
Unless JTP had a rabbit up its sleeve, this would have been a good time to call Vickie to get this one settled or at least to read the chapter on negotiating from a position of weakness in Malhotra's and Bazerman's Negotiation Genuis.
$27 million and damages?
That’s what I call having one’s cake and eating it too.
(Though I’m a pie guy myself.)
The New Perfect Ten on Infringing Uses of Online Photo Links and "Framing"
L.A. Times reporter Dawn Chmielewski wins the tech-legal lede of the day contest by reporting that
the U.S. 9th Circuit Court of Appeals on Monday reaffirmed its earlier support for the socially redeeming value of searching the Internet for nudie pictures.
The San Francisco court, in reviewing a case it initially considered in May, reiterated its finding that Google could display tiny versions of photographs by Perfect 10 Inc., a Beverly Hills-based adult publisher, in search results, even when those images were copyrighted.
That opinion affirming in part, reversing in part, and remanding to the District court is here.
And that report, by the Los Angeles Times, is almost right.
The Ninth Circuit instructed the District Court to make further factual inquiries to determine whether Google and Amazon are contributorily liable for infringing uses by other websites. As the Court held:
Google could be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10's copyrighted works,and failed to take such steps.
The best analysis of the opinion on the web right now is Eric Goldman's Technology and Marketing Law Blog post Perfect 10 v. Amazon Opinion Amendment--Ninth Circuit Does 180 on Fair Use Burden for Preliminary Injunction here.
Quotes that form the meat of the opinion below:
HOLDING ON DIRECT INFRINGEMENT (GOOGLE)
Continue Reading...In this case, Google has put Perfect 10’s thumbnail images . . . to a use fundamentally different than the use intended by Perfect 10. In doing so, Google has provided a significant benefit to the public. Weighing this significant transformative use against the unproven use of Google’s thumbnails for cell phone downloads, and considering the other fair use factors, all in light of the purpose of copyright, we conclude that Google’s use of Perfect 10’s thumbnails is a fair use. . . . . We conclude that Google is likely to succeed in proving its fair use defense and, accordingly, we vacate the preliminary injunction regarding Google’s use of thumbnail images.
More Thoughts on the Chili Peppers Suit against Showtime
(right: Los Angeles IP and Entertainment attorney Richard Jefferson)
Some comments deserve their own post and this is true of Richard Jefferson's thoughts on our recent post Red Hot Chilis and Showtime Californicate in the Los Angeles Superior Court.
After reading over the Complaint, I now see legally how the Red Hot Chili Peppers (the "RHCP") were able to get this case in Court without being accused of blatantly filing a frivolous complaint.
The RHCP have coupled a claim for unfair competition and dilution regarding the TV show title (which looks like a weaker claim on its face) with the stronger claim against the TV Show's soundtrack release (the Californication soundtrack). Of course, the media headline is going to pick up on the more publicized RHCP Album Name vs. TV Show element, but this is typical of the media game in Hollywood.
There are a number of issues that make this case an interesting case to follow, such as the claim that the RHCP's album title has acquired a "secondary meaning" that will transcend trademark categories and the fact that Showtime actually applied for a federal trademark for "Californication" in the TV series category.Like most entertainment cases, it appears to me that this is just another case of "who has the bigger pockets to pay their lawyers". I suspect that there were extensive pre-litigation correspondence between the parties and Showtime never reached a settlement number that was high enough for the RHCP so they sued.
Also, not only is this good exposure for the band but the way that the media has spun the story so far, Showtime is getting some good pub as well by making it seem like this is a far fetched claim.
Thanks for the thoughtful analysis Richard! Much appreciated.
RIAA Likely Wins the IP ADR 2007 Bully Award
When a body as pro-business as the American Bar Association calls out an industry group for bullying, it's time for that organization to take a close look at its behavior in the marketplace.
Remember, it's not just about the law.
It's about civilization, community, ethics, even etiquette.
It's about making allies rather than enemies. It's even about -- gasp -- doing good. Or at least not doing any harm.
(image from Will Blog for Experience -- RIAA: Screwing You Since 1952)
So why is the Recording Industry of America Association the likely winnner of the IP ADR Dictionary's 2007 Bully Award?
Because it continues to act like a sixth grade kid shaking down the first graders for their lunch money on the primary school playground.
But first the definition of a bully in his full social context.
In their 2005 article Bullying roles in changing contexts: The stability of victim and bully roles from primary to secondary school academics Mechthild Schafera, Stefan Korna, Felix C. Brodbeckb, Dieter Wolkec, and Henrike Schulzdam use as their "bully" definition the systemic one:
[the] repeated and deliberate . . abuse of power [which is] most likely to occur in relatively stable social groups with a clear hierarchy and low supervision, as is found in schools, the army, or in prisons.
In this context, say the authors "[a]n aggressive individual’s search for dominance can be facilitated by a hierarchical structure in that it makes low-status individuals visible and easy to get to."
This definition of systemic bullying fits to a "T" the behavior described in the recent ABA Journal article Plaintiff to RIAA: Download This!
The attorney subject of the article who is litigating a malicious prosecution suit on behalf of a woman wrongfully sued for illegal downloading, says that the RIAA,
targets people [for downloading infringement actions] without the resources to challenge the lawsuits. . .
According to [the malicious prosecution filed on behalf of his client] a support center employee told [Plaintiff] that unless she paid the [RIAA] $4,000-$5,000, she would be ruined financially. Additionally, the action states, the claim center employee told Andersen that he believed she was innocent, but she should pay something anyway.
“He explained ... that defendants would not quit their attempts to force payment from her because to do so would encourage other people to defend themselves,” the complaint states.
At issue is the RIAA's methodology for identifying infringers, a methodology that is not "100 percent" according to law professor Jonathan Zittrain.
According to Zittrain, a professor at Harvard Law School and the University of Oxford, none of the infringement actions has gone to a verdict.
Some suspect that many of the association’s suits have resulted in default judgments because many defendants cannot afford legal representation. Cases might settle for far less than the initial demand.
“I heard of a $300 settlement they just took,” says Jason Schultz, a senior staff attorney with the Electronic Frontier Foundation. According to Schultz, the RIAA outsourced much of the copyright infringement litigation “factory style” to small law firms, and it hired nonlawyers to negotiate settlements.
Though Jonathan Lamy, RIAA’s senior vice president of communications, claims that the group’s investigation methods are sound and that it is not pursuing those who cannot afford legal counsel, everyone knows that few ordinary citizens could afford the legal representation necessary to defend themselves against the type of aggressive and well-orchestrated campaign described by the ABA article.
So why is this bullying?
Bullying, like pornography, is one of those things you know when you see. That the RIAA's illegal downloading campaign perfectly fits the academic description of bullying therefore comes as no surprise.
The RIAA's "deliberate and repeated" use of powerful computer technology to investigate consumers' downloading activity, coupled with its well-orchestrated use of an army of low-paid attorneys and collection agents to deliberately and repeatedly bring suit against consumers who might be potential -- but certainly not proven -- illegal downloaders is marketplace bullying at -- frankly -- its most shocking.
And though the RIAA spokesman insists that it does not "target" those who cannot afford legal representation -- how many of us -- even the professionals among us -- could?
This is systemic bullying at its most definitional
[the] repeated and deliberate . . abuse of power [which is] most likely to occur in relatively stable social groups with a clear hierarchy and low supervision, as is found in schools, the army, [] in prisons . . .
or simply in the marketplace.
Nobody likes a bully. It's time for the RIAA to do a little soul searching about its place in the society that supports its members by buying their products.
When its the ABA -- not the ACLU -- that marks you as a school yard bully, you're not making any friends -- only enemies. And no organization, no matter how powerful, can afford that.
Our New Website IPADR.COM Goes Live!!
The IP ADR Bloggers have just gone "live" with our new web site: ipadr.com.
Come on by and check us out!
Law School IP Essay Question: Are Defensive Football Signals Trade Secrets?
Below is the hypothetical from Eric Sinrod's CNet News Perspective Column, from Watergate to Videogate.
And though we don't think it necessary to answer the question, our U.K. readers may use Football for Dummies in responding.
A [New England] Patriots' assistant was apprehended for operating a video camera on the sidelines of the opposing team, the New York Jets, during the first game of this season. The camera contained footage of the Jets' defensive signals.
NFL rules prohibit video-recording devices in the coaches' possession both on the field or in a locker room during the course of any game. The rules also state that video for coaching reasons must emanate from places enclosed on all sides with an overhead roof.
The NFL's executive vice president for football operations has since sent a memorandum to head coaches and general managers to clarify the rules. The message was unambiguous: videotaping of any kind, including taping of an opposing team's offensive or defensive signals, is not permitted on the sidelines, in a coaches' booth, in a locker room or from any other place available to a team's staff during a game. . .
The National Football League fined Coach Bill Belichick $500,000 while the Patriots were ordered to pay $250,000. The league also ruled that the Patriots must forfeit a first-round draft choice next year if the team reaches the playoffs (which is highly likely) or second- and third-round selections if it fails to make the playoffs.
"Did justice prevail?" asks Eric. "Even more, does the result hold up as a matter of law?"
You have one hour. This is a closed book exam. Do not read Eric's trade secret analysis until you have closed your blue book or shut down your laptop.
You may begin.
The European Microsoft Judgment, Crackpot Ideas and Innovative Compatability Solutions
(why do these guys look so happy?)
(for a thorough analysis of the ruling and comments pro and con, see the New York Times article, Microsoft Ruling May Bode Ill for Other Companies.
The comment of greatest interest to us here at the IP ADR Blog is the note that "antitrust enforcement [is] too slow to grapple with fast-moving high-technology markets," so that market forces, rather than the rule of law, prevail. For full NYT article click here.
If those market forces are controlled by a monopoly, we may have to begin looking for other ways to balance the forces of competition, innovation, and consumer interests).
Yesterday's Post on Tension Between Consumer Protection and a "Free" Market
I think most creatively on the freeway. Well, on the freeway and in the shower. And on an elliptical trainer. These are all places I'm not supposed to be thinking so I park my brain in neutral and it performs wonderful tricks for me.
It's pretty damn creative, actually. It grabs odd trails of thought, puts them together and then taps me on the shoulder and asks How about this?
It's particularly helpful to have Mr. Thrifty in the car for a long drive because I'm a chatterer. A world class stream of consciousness natter-er. This should make you happy not to be married to someone like me.
Anyway, as I was nattering on the 405 between Sunset and the 118 on Sunday, driving to my Dad's house in Northridge, I said this: Why doesn't someone load a laptop with the best programs available, make them COMPATIBLE and then sell the loaded laptop?
My brain gave me that nugget as I was complaining about the new Vista Operating system. Since I know nothing whatsoever about software or hardware, I have no clue whether it's a good idea or not. I only know this: I purchased a new laptop with a Vista Operating System on it and NOTHING is compatible with anything else and it really $%#^%$'es me off.
So I must report that I'm happy with the Judgment of the European Court of First Instance in Case T-201/04 Microsoft v Commission.
Since I'm a devotee of Sun Microsystems CEO Jonathan Schwartz's rallying cry Innovate Don't Litigate, I wish the software industry would spend its money innovating around Microsoft rather than litigating against it. (and yes, Jonathan, we'll forgive you for partnering up with Microsoft here because we think you might help make its products better -- at least we're counting on you so please don't disappoint us).
Nevertheless, I'm happy to see good work being done for the consumer on all fronts, including the European Court of First Instance which just held as follows:
- Microsoft abused its dominant position by refusing to supply interoperability information to competitors for work group server operating systems.
- Microsoft abused its dominant position by bundling the Windows media player with its Windows PC operating system.
- The Commission did not err in assessing the gravity and duration of the infringement and did not err in setting the amount of the fine. The €497 million fine imposed on Microsoft stands.
Still, I'd really like to see someone launch that compatible laptop. I'm first in line and will pay a very good price for it.
John Leo Wagner, Federal Magistrate (Ret.) Joins the IP ADR Blog
The IP ADR Blog is pleased to announce that we are being joined in our IP blogging venture by John Leo Wagner, Federal Magistrate (Ret.).
Judge Wagner is a colleague of Mike Young's and mine at the Southern California ADR firm Judicate West. His impressive credentials will soon be posted in the "About" section of the blog (up at the top there). We provide only the highlights of his judicial and private practice career below.
Welcome John!! We know that our IP ADR Blog readers will greatly enjoy hearing your thoughts on the negotiated resolution of IP disputes.
ABOUT JUDGE WAGNER
Judge Wagner has been engaged in the settlement and trial of intellectual property disputes for over 20 years. He is currently a full-time neutral with Judicate West Alternative Dispute Resolution, where he mediates and arbitrates all manner of patent, copyright, trademark, trade dress and trade secret disputes.
John was formerly Of Counsel with the Los Angeles-based law firm of Irell & Manella LLP, where he was the head of the firm’s ADR practice group and Director of the firm’s Alternative Dispute Resolution Center. He worked for over seven years as one of the ADR Center’s primary neutrals, settling a myriad of difficult intellectual property disputes.
Before joining Irell & Manella, John served for over twelve years as a United States Magistrate Judge in the Northern District of Oklahoma, where he founded and administered the Court’s mediation program, and served as the resident expert in settling IP disputes.
John has mediated and arbitrated thousands of cases and was recognized as a Southern California Super Lawyer in the field of Alternative Dispute Resolution in 2007. He has also been selected for inclusion in he 2007 edition of The Best Lawyers in America in the specialty of Alternative Dispute Resolution.
John is the President-Elect of the International Academy of Mediators, a Fellow of the American College of Civil Trial Mediators, a Member of the CPR International Institute for Conflict Prevention and Resolution’s Panel of Distinguished Neutrals and a Diplomate Member of the California Academy of Distinguished Neutrals. John is also a member of the Board of Directors of the Federal Bar Association's ADR Section.
John has been active in guiding national ADR policies and practice for over two decades. He was appointed by Chief Justice Rehnquist to serve on the Court Administration and Case Management Committee of the U.S. Judicial Conference, where he helped to formulate rules and policies governing ADR programs in the Federal Courts. He also served on the CPR Advisory Committee dealing with Mediation Procedures and the CPR/Georgetown Commission on Ethics and Standards in ADR.
Judge Wagner frequently teaches and lectures on ADR topics.
We're happy and proud to have him join us here.
On the Internet, Nobody Knows You're a Dog: Negotiating the Settlement of Your IP Dispute
HOW IT STARTS
"They cheated me," said the C.E.O. of a Fortune 500 company.
"They stole my invention [or process, design, employees, product, market, or, customers]."
"They copied, knocked off, lied, misled, withheld, and, denied."
This is how the litigation begins. You can recite it in your sleep because you drafted the complaint, the counter-claim, and, the interrogatories. You prepared the examination, the cross-examination, and the jury instructions.
HOW IT ESCALATES
With each passing day, their wrongful, outrageous behavior and the injustice done to your client grows.
Why?
Because they prove their essential bad character and malicious intent with each litigation thrust and parry. Your conduct is righteous, avenging, and, pure, while theirs only confirms their bad faith. They destroy documents, alter evidence, mislead the Judge, and file pleadings at 5 p.m. the day before three-day weekends.
HOW IT COMES INTO THE JUDGE'S SETTLEMENT CHAMBER OR THE MEDIATION CONFERENCE ROOM
Although no one "takes it personally," by the time you bring your clients to a settlement conference or mediation, they cannot bear the sight of one another.
I have not only been instructed that joint caucuses will not be tolerated, I've been asked to assure that the parties will not lay eyes on one another because the other side's very corporeal existence might so inflame the disputants that the negotiation session will melt down before it has had the chance to begin.
If you are a litigator with at least five or six years of experience representing clients in hotly contested intellectual property litigation of any stripe, you know that I am not exaggerating.
I want you to keep this litigation posture and emotional climate in mind for the next few weeks because all of my posts are going to be based it.
WITH A LITTLE HELP FROM OUR FRIENDS -- ENSURING THE BEST POSSIBLE NEGOTIATION
In the coming weeks, we will be discussing some concepts in the social psychology of conflict that will help you de-esclate the conflict, which will, in turn, help everyone brainstorm and negotiate a deal as effectively and efficiently as possible.
Toward that end, we'll talk about cognitive biases, with a little help from our friend Michael Webster, whose Psychology of Compliance and Due Diligence Law Blog was just last week named one of the ten best legal blogs on the internet.
We'll also rely upon Harvard Business School's Working Knowledge, an invaluable, free resource that will improve every commercial litigator's ability to "cut to the chase" of the business interests that lie at the heart of every great settlement.
Today's post, for instance, in fact the entire series of posts, was inspired by the HBS Working Knowledge Newsletter article -- Why We Aren't as Ethical as We Think - A Temporal Explanation by Max Bazerman (author of the great new negotiation text Negotiation Genuis) and his colleagues Ann E. Tenbrunsel, Kristina A. Diekmann, and Kimberly A. Wade-Benzoni.
Other on-line resources we'll be using to explore this topic include:
Beyond Intractability (this link, for instance, is to our friend Ken Cloke's article on Mediators without Borders, which describes several great techniques for de-escalating conflict).
The Freakonomics Blog, covering, among other things, marketing strategy that often overlaps with negotiation strategy, see e.g. Should Apple Burn its Economics Textbooks here and monetizing the value of spending more time with a loved one here.
Brains on Purpose, our friend Stephanie West Allen's Neuroscience and Conflict Resolution Blog, see e.g. this recent article -- Conflict, Is it All In Your Head?, which appears, along with another cool dozen-plus conflict resolution blogs at Mediate.com's "Featured Blogs" page and Geoff Sharp's 40 Sites in 40 Minutes including Gini Nelson's Engaging Conflicts on such topics as The Ethics of Compromise here and Diane Levin's Online Guide to Mediation on such topics as Is Your Negotiating Style Leaving Value on the Table? here.
Roger Dooley's brilliant Neuromarketing Blog, see e.g. our Negotiation Blog post on Small Talk and the Value of Joint Sessions here.
The Legal Theory Blog, see e.g. Negotiation and Time Perspective.
The Trial Lawyer Resource Center, whenever we need reminding that trial may well be the better alternative to a negotiated resolution, and to avail ourselves of the settlement insights posted there such as Listening During Settlement Negotiations.
Malcolm Gladwell's Blog (the Tipping Point and Blink), see, e.g., this post on why journalists failed to detect the Enron debacle.
The texts on which we usually rely will also be cited to assist you, including
Professor Leigh Thompson's introductory-intermediate guide to negotiation, The Mind and Heart of the Negotiator (2d ed) -- the first chapter is online here.
Lax & Sebenius' essential 3D Negotiation -- excerpt online here.
Bazerman and Malhotra's newest compilation of negotiation advice, with which to earn your own post-graduate negotiation degree, Negotiation Genius.
The American Bar Association's massive compendium of negotiation strategic and tactical advice, The Negotiator's Fieldbook (online chapters include Analyzing Risk by Jeffrey Senger)
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IP ADR BLOGGERS' UPCOMING SPEAKING ENGAGEMENTS
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!!
The Vanishing IP Trial, Cross-Examination and Legal Strategy
(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!
IP ADR Dictionary: C is for Capuchin
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.
IP Attorney Martin J. Trupiano Opens New Office
We received the below announcement yesterday from Les Weinstein's and my good friend Martin J. Trupiano, with whom we both worked. I worked briefly with Marty at the (now departed) Los Angeles office of Pepper, Hamilton & Scheetz, and Les worked with him for a much longer time at, successively, Pepper; Graham & James and, finally, Squire, Sanders & Dempsey.
Here's the thing about Marty. He's not simply a sophisticated, creative, careful and dogged advocate for his IP clients, he's truly one of the nicest people I've ever known. (Is that libel per se when applied to a litigator?) Marty's no push-over. But he is one of the last of a breed -- the gentleman lawyer who relies on depth of knowledge, skill and, yes, cunning, rather than threats and obstruction.
If I needed an IP lawyer, Marty would be the first attorney I would call. He's particularly dear to my ADR heart because he knows the difference between a legal position and a business opportunity and is always ready to craft a deal rather than to endlessly pursue litigation.
An example of Marty's generosity: when I asked Marty if he'd co-teach a session of my ADR class at Pepperdine Law School on the resolution of religious issues on the job, he did as much or more work than I do in preparing for the class; met with me for two hours to discuss the issues in detail (an experience that deepened my own understanding immeasurably) and taught the class to rave reviews from my students. Gratis. For the love of the subject.
He's one of the good ones. If anyone's looking for representation, you couldn't do better at any "big firm" than to take advantage of Marty's "big firm" expertise in his new boutique practice.
All of that said, here's Marty's announcement:
MARTIN J. TRUPIANO
is pleased to announce the opening of the
LAW OFFICES OF MARTIN J. TRUPIANO
The firm will represent companies and individuals in business litigation relating to patent, trademark and, copyright infringement, theft of trade secrets, unfair competition, antitrust violations, licensing disputes, breach of contract, and other commercial claims in federal, state and arbitral forums in California and throughout the United States.
Referrals welcome.
16000 Ventura Blvd.
Suite 1000
Encino, CA 91436
Telephone: 818-783-5151
Facsimile: 818-783-8585
Email: mailto:MTRUPIANAOLAW.COM
