Fast forward thirty (or more) years. I read a story in the Wall Street Journal that reported a lawyer feud in a trademark case in which one side was complaining that the other side was using inappropriate line spacing so as to allow them to add more sentences to their brief. Apparently, the judge only allowed double spacing and, allegedly, one of the lawyers was using 1.75 spacing. Tricky, yes.  Childish, yes.  Professional?

Of course, courts routinely place limits on how long briefs and motions can be and for good reason. As one of my partners says jokingly, “I would have written a shorter brief, but I didn’t have time.” Legal writing—like any writing—is a craft. And the audience, in this case the other side and the court, is better served by well stated and supported arguments. More is not necessarily better.

The problem arises when the producers (or trademark holders) have a dispute concerning whether Company A or Company B is entitled to use a particular mark or brand to idenitfy its goods and services.  It is in that situation that reasonable minds can differ as to whether the marks are confusingly similar.  Eventually, if the businesses cannot work it out between themselves, the lawyers get invited to the party. 

For example, you started a pest control company a decade ago and use in your advertising the slogan “We will eat them up.”  A neighboring Mexican restaurant starts up a few years later and uses the tagline “You will eat us up.”  Problem?  I don’t think so (although there is hopefully no cross-distribution agreement between the pest company’s kills and the restaurant’s food products).  And why is that?  Because the companies are not in the same industry and there would be no customer confusion.

Still, in years past, he with the biggest stick (and the biggest checkbook) could force a competitor (or even a non-competitor) to stop using a name or mark or brand by threateneing what is typically very expensive, time-consuming or resource intensive litigation.  And part of why they do this is so they can avoid being genericized such that the mark is no longer deemed valid (think:  aspirin, thermos, yo-yo, escalator–all trademarks that later became unprotected because the public asociated with the marks as if they were mere generic products, such as soda).  The good news is that there is a growing (even if slight) ability of the proverbial little guy to fight back where the claim is meritorious (which is by no means the norm).  Over the past five years, I have seen trademark owners become more careful in who they seek to shut down.  While owners have to be zealous in protecting their marks, diligence has its boundaries. 

I have some techniques that I use in protecting trademark owners, both big and small, but I found it encouraging (and the reason for this posting) the recognition in this recent Wall Street Journal article as to efforts to combat predatory trademark practices by going “rogue” so to speak and taking the dispute to the online street.  Another good resource cataloguing  trademark cease and desist notices is sponsored by the Electronic Frontier Foundation and a number of univeristies.  

Clearly, our economy is based to a great deal on intellectual property but it is a fine line when one company says another company should not be using a certain brand name.  What we don’t want to happen is a stifling of innovation and the marketplace such that consumers are not able to choose between competing products.

The bottom line is that he apparently did not get a date with the defendant; but he did get a date with the judge to discuss Jock’s alleged contempt of court.

UPDATE:

The court did not take too kindly to the posts and placed Jock in jail.

Here’s my fundamental problem with the proposed legislation: is it even needed given the numerous laws and enforcement tools already on the books?  While there are doubtless tweaks that can be made, adding layer upon layer of new laws and regulations adds nothing more than complexity, uncertainty and steep legal fees.  Not to mention, it sends a signal to the world that it is okay to control further the Internet.  Take that, China!

 While the Senate version of the legislation is currently on hold, don’t be surprised when it gets raised again.  I recently had an opportunity to provide an ever so brief video and print commentary on the legislation for the Richmond Times-Dispatch and welcome your comments and thoughts as well.

My colleague, Mikhael Charnoff, obtained a sanctions award in state court against an attorney and his client for failing to bring meritorious claims.  On January 13, 2012, the Supreme Court of Virginia approved the $272,096 sanction against the client and his lawyer in a case ostensibly arising out of a real estate listing agreement.  The ruling is important in many respects.

First, the sanction is financially significant no matter who you are.  A lawyer’s insurance company will not likely pay the sanction whcih means it all comes out of pocket on top of the costs of the legal fees and costs already paid.

Second, the prosecution of this case may signal that lawyers (like many) are suffering in the economic downturn such that they are so hungry they are willing to pursue claims hoping for any financial benefit even if the merits are dubious.  Anecdotally, I have seen such behaviors more so recently in firms both big and small.

Third, the Supreme Court gave the green light to the lower courts to award sanctions.  We may not have loser-pays system but decisions such as this will make lawyers think twice before recommending to their clients to sue someone on mere hope.   As Mike stated to Virginia Lawyers Weekly: “At the end of the day, we’re officers of the court, and we have a duty to guard the gates of the courthouse.”

Hopefully, decisions such as this will end the practice of filing a law suit first and figuring out the merits (if any) later. 

Congrats, Mike!

Viel Spaß!

The proposed legislation would allow the attorney general and private parties to shut down websites that infringe on intellectual property rights.  The legislation would allow purportedly aggrieved parties to go to court and obtain an order that would permit them to compel search engines, advertisers and financial institutions to cease support for (and block access to) a site that is deemed to be “dedicated to infringing activities.”  A lively discussion was had with panelists Douglas Smith, Esquire and Professor Trotter Hardy. 

On the “pro” side, supporters (including everyone from Ford Motor Company to the Romance Writers Association) argued in a letter to Congress dated September 22, 2011, that:

We urge Congress to enact legislation which targets those who abuse the Internet ecosystem and reap illegal profits by stealing the intellectual property (IP) of America’s innovative and creative industries. These rogue sites—those websites dedicated to counterfeiting and piracy—put American jobs, consumers, and innovation at risk.

Using the veil of sophisticated and well-designed websites, many of these online IP thieves pose as legitimate businesses, luring consumers to purchase fraudulent products. Some of these rogue sites even sell dangerously defective goods that needlessly jeopardize the health and safety of American consumers who are deceived into purchasing consumer goods that are poorly constructed or even contaminated with dangerous toxins. Consumers also unwittingly put themselves at risk of identity theft and malicious computer viruses by visiting these sites.

IP-intensive industries are a cornerstone of the U.S. economy, employing more than 19 million people and accounting for 60 percent of exports. Rampant online counterfeiting and piracy presents a clear and present threat to American jobs and innovation. A study examined approximately 100 rogue sites and found that these sites attracted more than 53 billion visits per year, which average out to approximately nine visits for every man, woman, and child on Earth. Global sales of counterfeit goods via the Internet from illegitimate retailers reached $135 billion in 2010. The theft of American IP is the theft of American jobs.

On the “con” side, opponents contend (by way of example, in a letter from 108 law professors) that the act is wrong because by shutting down websites:

·         Freedom of speech would be suppressed without a hearing

·         The Internet’s infrastructure would be disrupted

·         American leadership in promoting/defending free speech and the free exchange of information on the Internet is undermined

My question is: do we open Pandora’ box so as to enable every other nation to do the same thing?  As always, the “devil is in the details” but it is fair to say that a vast majority of the audience was skeptical of the act in terms of both the need for it and the concern over an ever increasing expansion of power by the government.  Still, as Professor Hardy noted, given other present concerns (read: economy), this may not be at the top of Congress’ bucket list, which may make passage unlikely this session notwithstanding the bipartisan support of 39 senators.  And, of course, Google may have a few things to say about it as well….

First, enter Dana Thornton. Apparently, she was not fond of her ex-boyfriend and decided to create a FaceBook page for him. She is accused of creating a fake profile of her ex-boyfriend, a Parsippany, New Jersey narcotics detective, where she allegedly posted comments that, “I’m a sick piece of scum with a gun” and “I’m an undercover narcotics detective that gets high every day.” This is where it gets disturbing—she purportedly faces up to 18 months in prison for identity theft. Clearly, she stepped over the line; but at a certain point, common sense should kick in. If she blew his cover and put him in danger, I could understand. But, here, we have a civil—not a criminal–issue. Sue her for defamation or, better yet, move on.

Second, enter a Connecticut couple in the throes of a divorce. The judge in the case ordered that: “Counsel for each party shall exchange the password(s) of their client’s Facebook and dating website passwords.” Moreover, (to avoid a Thornton incident): “Neither party shall visit the website of the other’s social network and post messages purporting to be the other.” While some appear concerned about the privacy concerns related to the swapping of passwords, the reality is that you should not post that which you do not want the public to read. If you post it, consider it in your permanent record.

The bottom line:  this is much better than Farmville.

It would be remiss if I did not comment on the recent decision by the Virginia State Bar concerning lawyer blogging.  The bar complained that a lawyer’s blogging constituted an advertisement and, as such, should be subject to the rules governing such materials.  Specifically, the bar concluded that the lawyer failed to comply with the ethical rules because he (a) did not have permission from certain clients to publicize the facts and results of their litigation, and (b) failed to include a disclaimer that the results of one case cannot be indicative of other cases.

I have mixed emotions about the results of the case (which I understand will be under appeal).  I am not defending the lawyer’s blogging or condemning it.  My concern arises from comments in the blogosphere that this decision in some manner may have larger implications for lawyer’s interaction with social media.

Clearly, a lawyer should not disclose confidential information about a client even if it is “public.”  In other words, would you want your attorney talking about the fact that you had been arrested for a drug offense and gotten off?  No.  Even if the testimony was in open court, in the Information Age, what was once gossip is now part of your permanent record on the Internet.  Furthermore, it is probably fair to let the public know that just because you won fifty cases, it does not mean you will win their case (unless you hire me—just kidding state bar).  Imagine if a doctor only treated healthy patients; she could have a perfect record.  By way of comparison, a lawyer only taking on guilty clients will likely lose a few cases along the way.  In other words, the accounting of wins and losses can be perverted depending upon a host of circumstances.

Still, what the lawyer claimed was that he was merely providing news and commentary, even if he had been a participant in the making of the news and that his clients agreed ot his activities.  As I have reported previously, lawyers enjoy First Amendment protection and the Supreme Court has confirmed that it is not verboten for professionals to advertise. I would suggest only that care be taken in painting with too broad a brush what is considered advertising. If I post a message on Twitter about a court decision, I should be able to do so and not have to expend 135 characters to post a disclaimer.  If I post a message about a client’s case that has a significant impact on the state of the law, does that cross the line?  Is it any different if the attorney in the building next door, blogs about my case?

Stay tuned.

As for substance, the law seems aimed toward curtailing copyright infringement from rogue websites and enhancing penalties. Critics, such as Google, claim that it is too broad and will infringe upon free speech rights.

I welcome your comments and more to follow!

Still, the ascendancy of the federal government and the gradual erosion of the significance of states have served to ameliorate some of the distinctions between a Virginia attorney and a North Carolina attorney. Here’s what makes sense: in an information economy in which very competent law firms and lawyers practice in multiple jurisdictions and often engage in very discrete specialties, the foundation for controlling the legal profession, e.g., insuring that the public is well served, may be less relevant. Can you really say that a North Carolina attorney could not bone up on the necessary Virginia law issues and provide advice to a client or litigate a matter in Virginia courts?

Still, what also make sense is that the state retains control over who is practicing Virginia law. Yes, the North Carolina attorney can likely acquit herself quite well. But the protection of the public requires a balance between allowing a trans-border practice and insuring control over a core function of our three-branched government.

To that end, the Virginia State Bar issued recently Legal Ethics Opinion 1856, which serves to clarify the role of so-called “foreign attorneys” practicing in Virginia. In summary, the Committee interpreted Rule 5.5 and concluded that: “foreign lawyers who are licensed to practice in other U.S. jurisdictions and based in the multi-jurisdictional law firm in Virginia would not be engaging in unauthorized practice of law in violation of Rule 5.5 so long as they limited their practice to the law of the jurisdictions where they are licensed, to federal law not involving Virginia law, or to temporary and occasional practice as authorized” under Rule 5.5.

I strongly predict that the practice of law will become more national in scope in the coming decades to reflect our global perspectives on commerce and society. While I expect litigation will remain the province of state-licensed lawyers, sophisticated transactional work will become more and more commoditized and capable of being handled in other states or even abroad.

I welcome your thoughts.

In any event, Justice Thomas spoke to University of Nebraska-Lincoln Law students on September 15, 2011. All reports indicate that, among other things, (1) he criticized the cynicism that prevails in D.C. and certain law schools, and (2) believes that other branches of government are foisting on the court issues that are properly decided by the legislative or executive branches.

In my judgment, fair criticism regardless of you political stripes. Optimism is a far better mantra and we hire our elected politicians to represent us to make the hard decisions regardless of future electability.

It would have been quite interesting to have been a fly on the wall during testimony and oral argument in the case. As at least one commentator to the story noted, did the wife not have a duty to mitigate her damages?

Putting aside the 9th grade humor with such a story, I am troubled that a court can award money due to a spouse’s failure to engage in marital relations. Yet, on the flip side, I can hear my domestic relations attorney friends reminding me that commission of adultery opens the offending spouse to a potentially smaller share of the couple’s assets. The bottom line is that it is sad all around.

My bottom line is “get over it.”  How is this different from going barefoot and topless to a restaurant, where it is announced “no shoes, no shirt, no service”?  No one forces you to fly Southwest, U.S. Airways, etc.  So, tell me, am I wrong?  Please understand me when I say I am not speaking to questions of race, creed, gender, sexuality, age or disability.  I suggest that there should be no basis to sue a private company on the grounds that they have denied you service based on the fact that you have not complied with common decency.  In fact, I call it good business.

In the law suit, the associate claims that: “[The firm] had told [him] it eschews artificial hierarchical structure, then refused [him] an assignment because it would be ‘unfair to the other associates.’ It told [him] it valued intelligence and creativity, then reprimanded and ultimately fired him for exhibiting those traits. It claimed that the amount of responsibility an associate shoulders is dependent only on his willingness and ability, then reprimanded and ultimately fired him for demonstrating that willingness and ability to shoulder more responsibility.”

The complaint then goes on to detail an e-mail sent by the associate to various firm members stating:

“I am writing to see if you have any small cases I could manage for you. It has become clear that the only limiting factor on how much value I am to a case is how much responsibility I am given: the more responsibility I am given, the better the outcome. I am in kind of an uncomfortable position at the firm because although I am a ‘first year,’ I have 15 years business and real world experience, as much as many senior associates. When I first got here I did not know what to expect, but after working here for several months now it has become clear that I have as much experience and ability as an associate many years my senior, as much skill writing, and a superior legal mind to most I have met. There is a natural skepticism that someone without a lot of formal legal apprenticeship can do the job of a senior associate, but the truth is much of the learning and experience an associate acquires is parallel to any business experience—negotiating contracts, negotiating settlements, writing, analysis. If you will allow me to manage some cases for you I can guarantee without reservation that you will get a better result than you get now with many of the official resources you have available to you.”

First, I know little about the case having only read the fifty page complaint, which is obviously to be read in a light favorable to the drafter, i.e. the associate and his attorneys.  That said, there is clearly another side to the story and I think the e-mail helps to display it.  Ambition is great but I can see why an e-mail from a green attorney, who has worked for a grand total of “several months,” may have ruffled some feathers for right or wrong.

Second, I get the associate’s claim that it would be difficult to get a law job in this economic climate, especially after being let go in the first year.  But suing your former law firm may raise just a tiny red flag to a perspective law firm employer.  And suing for $77 million?  Really?

Finally, and irrespective of this case, it behooves no one, let alone lawyers to sue idly.  One of my favorite passages on “lawyerdom” is from Abraham Lincoln’s notes for an 1850 law lecture, stating:

Discourage litigation.  Persuade your neighbors to compromise whenever you can.  Point out to them how the nominal winner is often a real loser—in fees, expenses and waste of time.  As a peacemaker, the lawyer has a superior opportunity of being a good man.

The United States economy is driven greatly by our creative talents and energies: think Hollywood, Silicon Valley, Big Pharma and a university system unparalleled in the world. Because of that, protecting intellectual property is extremely important and may even be considered a national security interest, especially when our economic lifeblood is being pirated in countries with little respect for our rights.

My concern, as highlighted by Disney’s recent mousecapade, is that in the rush to protect intellectual property rights, there is a land grab mentality. It is a mindset that incentivizes businesses and individuals (a) to amass domain names in the hopes that random hits will lead to ad revenues, (b) to become “patent trolls” in which a company seeks to enforce patents despite having no intention to manufacture or market the arguable invention, (c) to blindly enforce purported trademark rights without any real sense of confusion among consumers, or (d) to go after innocent online downloaders of movies as opposed to the actual purveyors of the digital content. I have been on both sides of the “v.” in these scenarios and recognize well that the law supports many such efforts. But is it right? 

The U.S. Constitution which provides that Congress shall have the power ”To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”  So, the focus should be on promotion and innovation, not regression and litigation.