Comity is Not Funny: Changing Technology, International Abstention, and Courts Filling the Gap in Contracts

    Parties to contracts, Judge Posner said, are embarking on a "collective adventure."  When technology changes faster than the minds of contract negotiators and drafters, problems arise that courts have to solve.  Throw in the international context and you can have a big mess that judges and juries have to solve.  The term "international abstention" was coined by the Eleventh Circuit in the 1990s in an opinion drafted by Judge R. Lanier Anderson, III, and I happened to have the great honor of clerking for this thoughtful jurist at the time the case came through the court.  I also had the great opportunity to study International Business Transactions at Yale Law School for Professor Harold Koh, who lightened up that excruciating topic by borrowing from comedian Steve Martin.   He instructed us that "comity is not funny" at the beginning of his lecture on the great case of Hilton v. Guyot, the forebear of the international abstention doctrine.  This doctrine was distilled and formalized in international abstention test in the Turner v. Degeto Film case decided by the Eleventh Circuit in 1994. 

     The problem in the Turner case was based on the fact that two broadcasters had the right to broadcast the same library of television content from satellites to owners of satellite dishes at the same time.  Degeto Film represented German state broadcasters that, under German law, had a legal duty to broadcast a library of old MGM content to the entire German speaking public, which does not conform to sovereign boundaries. These broadcasts had to be in the German language.  Meanwhile, Turner Broadcasting had later acquired the same library to broadcast anywhere in the world the same content.  The same party was on the other side of both contracts, United Artists.  Thus, UA had sold the same rights twice to two different companies and had carved out the nature of the territories assigned to those rights.  What the deals had not contemplated was the incredible rise of satellite television, because they had been drafted with an older method of broadcast in mind.  The German contract, therefore, contained a term allowing for reasonable "overspill"  of the broadcast into territory over the edges of the agreement.  In the satellite era, however, in order to reach the entire German public, the overspill apparently reached half of Europe, including countries and areas that included much of the territory that Turner thought it had bought.  Add in the multi-lingual culture of Europe and one had the real challenge of two different libraries of content repeated in different languages to the same population on different channels.  Oops!

    This led to a dispute with international overtones.  Turner, sn American company, the pride of Georgia, owner of the beloved baseball team the Braves, had to fight for customers with the German government over a massive content portfolio.  The Germans ran to a local German court and sued for the right to show their programs to German speaking people all over Europe. One week later Turner filed suit in the federal court of the Northern District of Georgia, seeking an injunction stopping the German broadcaster from broadcasting in Turner territory outside German, which, by the way, was the whole planet Earth.  Both sides hired their Luftwaffe of lawyers to go into the trenches and win for money and country.  Meanwhile UA likely counted its money and its executives played golf in Los Angeles, drank fancy wine and ate delicious cheese. 

    Back in Atlanta, Judge Shoob issued an injunction against the German government's broadcaster from broadcasting into the Turner territory.  I am not exactly sure how said injunction was to be enforced and the thought of rich ambassadors wearing boxing gloves comes to mind.  An emergency appeal was made to the Eleventh Circuit, briefs were filed, and the matter was expedited for oral argument.  Meanwhile, I clerked in Macon, Georgia wondering what in the heck I had gotten myself into with this whole legal business, and dreamed of marrying the scion of a very rich family to help me pay off my loans and escape from some very questionable borrowing decisions.  However, once this tasty case came along I realized we had something important to do that actually mattered, an international legal incident that had a lot of money and sovereign pride at stake.  Of course, the doings in the chambers of a federal judge are confidential and I will not say how much, if any, I was involved in the case.  However, I think it is fair to say that when the case came through I immediately remembered that indeed, "comity is not pretty." 

    At the time the most clear and renowned notion of comity was laid out in the old case of Hilton v. Guyot, a turn of the century case in which the US Supreme Court deferred to the decision of a foreign court's ruling in a case involving domestic and international citizens.  These cases were fairly unusual back then, given the limitations on travel and interaction, so it is worth noting how trailblazing the Court was to reach this decision.  What the case did not go into is the various types of abstention such as Burford, Colorado River, etc. where courts decline jurisdiction due to other pending proceedings.  In the case law prior to Turner, there were two lines of cases in the Seventh and Second Circuits that were not mutually exclusive and perhaps pointed to the same ultimate conclusion.  However, the key in Turner in my opinion is the clear reference to "international abstention" and the reference to a three-pronged test to guide the Eleventh Circuit in future cases.  This was essentially a case of first impression in that Circuit and it was important to provide a clear and bright test for courts to come on the issue.  The test weighs three factors: 1.  international comity; 2.  fairness to litigants, and 3.  judicial economy. 

      One of the great annoyances I have had is the sloppiness and confusion of commentators referring to this type of abstention as equal to or based on Colorado River abstention. This overlooks the clear  elevation of the Hilton case to the front and center of the three-pronged test laid out in Turner.  Colorado River abstention is where one state judgment is deferred to in another state in the US.  That is why the term "international abstention" was employed to clarify when the test applies and what is at stake in international business and the global economy.  Comity, the highlight of the doctrine, is not a state to state matter.  It is an international matter.  Turner represents a subtle but meaningful and important nod to the international nature of the cases.  It was based and is focused on the critical principles of international justice, and comity resides at the front of the test.  When courts in other countries do their job in good faith, regardless of the outcome for the home team, courts in America should have the common sense to keep their noses out of disputes that would waste their time, cost money, and add nothing but controversy to the good business of international commerce. 

     Of particular interest in the Turner case was the confusion and lack of solutions in the underlying contract for the overspill problem.  This left the parties and the courts in a bind.  What is there to do where the contract offers no help?  In a real sense, this left the court to create out of cloth a remedy.  What this also did is create the real possibility of sore losers. 

    The German court used a sovereign doctrine called "supplemental interpretation" such that the court had to decide what parties would do that was reasonable.  In its decision, it allowed the Germans to broadcast for a higher royalty and set further hearings on the reasonable value of the royalty.  This made Turner mad but also was perfectly sensible.  The lower court in Georgia tried to step in but had no real police power to enforce its ruling in Germany.  The broadcasts were in Europe so enjoining them was really impossible.  The result was messy. 

     In weighing this idea of the supplemental jurisdiction the Eleventh Circuit wisely looked for scholarly advice on the notion of courts making such an involved decision about what to do with the parties and looked comparatively at the notion of "supplemental interpretation," a concept not part of the lexicon on its face in Georgia law.  However, what the Court laid out was that the courts had a familiar and very similar "gap-filling" function to fill up the holes of poorly written contracts, or those that led to unintentional consequences.  One of intellectual supports for this decision rests on a footnote quoting the well known Judge Posner out of the Seventh Circuit, as great a writer on business law as one will find.  Gap filling is a "stab at approximating" what the parties would have done had they foreseen what would happen.  This is what good faith and fairness are all about.  Clearly, the German court had done this.  The Eleventh Circuit stayed the case because the royalty hearing had not yet taken place, but suffice it to say the case was resolved.

    In summary, the unforeseen advance of technology had led to hilarious and
unforeseen problems in the case.  The proper analysis and application of civilized courts using fairness and good faith led to a speedy resolution of the conflict.  When one party did not like this result, comity saved the day and put an end to the comedy of human limits. 




 

The Walls Closing In on IP Torts: The State of Trade Secret Preemption In Georgia and Other States

     Lawyers love to put in as many counts as they can think of into a complaint. They throw everything they can think of against the wall and see if it sticks.  In Georgia and many other states, like Hawaii; New Hampshire, and Utah, if they make the case about a trade secret they may be hoisting themselves with their own petard (I love that phrase). That is because the preemptive reach of the Trade Secrets Act in Georgia is growing.  If the judge thinks a case is about trade secrets (even if a trade secret violation is not pled as a count) then the Trade Secrets Act may preempt any tort claims, making the case far more difficult to prove and win.  Lawyers must be careful about how they frame a case from the outset. A skilled trade secrets defender can make you regret you ever brought up that customer list your client is obsessed with.  I attended a great ABA seminar in Chicago last summer on Advanced Trade Secrets tactics that was an excellent practical skills course in how to thoroughly abuse plaintiff's trade secrets cases and make life miserable for amateur trade secrets practitioners.   And if you think you can do it yourself and make a trade secrets case, good luck with that.  Just saying.   

          The Uniform Trade Secrets Act with 1985 Amendments was the inspiration for the Georgia Trade Secrets Act of 1990 (GTSA), OCGA § 10-1-760 et seq. The GTSA stands out among most Georgia statutes for its preemption clause, OCGA § 10-1-767. The preemption clause states, “Except as provided in subsection (b) of this Code section, this article shall supersede conflicting tort, restitutionary, and other laws of this state providing civil remedies for misappropriation of a trade secret.” (emphasis added).  Many states have adopted the suggestions in the Uniform Act. Trade secrets on the civil side is currently a matter of state law, you cannot register a trade secret with anyone, you can only protect it from theft and file a state law claim to get one back from a thief and the damage done. 

One year ago, the Georgia Supreme Court reaffirmed in Robbins v. Supermarket Equip. Sales, LLC that when plaintiff's tort claims “rely on the same allegations as those underlying the plaintiff's claim for misappropriation of a trade secret,” it will be preempted by the GTSA, even if the theft is not of an "According to Hoyle" trade secret. (Robbins v. Supermarket Equip. Sales, LLC, 290 Ga. 462, 466, 722 S.E.2d 55, 58 (2012); ProNvest, Inc. v. Levy, 307 Ga. App. 450, 451, 705 S.E.2d 204, 206 (2010)). In so ruling, the GTSA exemption clause has been broadened to bar any relief to a trade-secrets-plaintiff even when the court finds that the alleged misappropriation was not of a true trade secret as defined in the GTSA. Unless the plaintiff’s claim falls under an exception to preemption, such as a contract claim, the GTSA’s remedies are the only ones available to a trade-secrets-plaintiff, and only to one who is able to successfully argue that what was taken was a trade secret.

This may seem counter intuitive. How can the relief offered by the GTSA apply only to misappropriations of trade secrets, while the preemption clause applies to trade secrets and non-trade secrets alike? The Court reasoned that if a plaintiff could, with the same allegations, get the same relief it would have received had what was taken qualified as trade secrets, it would undermine the exclusivity of the GTSA. The preemption clause gives plaintiffs only one bite at the apple, and they cannot rely on some other theory when that fails. Interestingly, a federal district court in Illinois came to the opposite conclusion only two months later, arguing that the literal language of the statute would not preempt common law theories such as unjust enrichment or fraudulent inducement when a applied to non-trade-secrets. Miller UK Ltd. v. Caterpillar Inc., 859 F. Supp. 2d 941, 947 (N.D. Ill. 2012).  Illinois and Wisconsin are staking out a different path unfriendly to a broad preemptive scope for the Trade Secrets Act.  They argue the plain language of the Act does attempt to broadly preempt claims like unjust enrichment that are often included in trade secret complaints.  In my opinion, if the unjust enrichment is related to allegedly taking money from former customers then it is about trade secrets and should be preempted.  Moreover, no breach of contract claims are preempted and you can get your damages that way. 

The fact of the matter is that few cases about an employee leaving or a business deal falling apart are only about a customer list, the secret formula or such things.  They are usually about some other forms of alleged lying, cheating, stealing or hurt feelings.  Having a trade secret, adequately protecting it, and proving the value of it are hard things to do and frankly there are not many of us lawyers that are highly specialized in trade secrets.  Those of us that are can shred most trade secret allegations, get the tort claims dismissed and kick your tail if you wander off the reservation.  Just saying.  Maybe I am sounding arrogant and grandiose here.  In fact, I know I am.  But it is based on experience and results, which makes it at least half true, in my opinion.  As always, if you think I missed something, drop me a line and I am always happy to revise a post. 

    

 

Fifty Shades of Shady: Copyright Piracy, Copyright Trolls, and Adult Video Entertainment

Fifty Shades of Shady: Copyright Piracy, Copyright Trolls, and the Bellwether Porn Trial

If you've ve been living under a rock, Fifty Shades of Grey was the latest world craze in the Female friendly pulp romance novel after the Twilight phenomenon.  Twilight's hook was a romantic vampire, leading to a world Vampire craze.  German to this blog is that in this craze the romantic protagonist is not a vampire, but a sex-obsessed but romantic and loveable S & M addict (Sadomasochism).  Apparently the book was so irresistable that new Fifty Shaeds book have flown off shelves and suddenly vidoes with explicit sexual content, notable S&M video with pulp plot and intimate explicit sex scenes aimed at women, has become somewhat legitimate.  Rumors of a baby boom and other signs of world peace have flared up, including a new market for what is commonly called porn.  Many men have never touched the book but thanked a higher power for seemingly universal consumption of this, uh, novel.  In fact it is likely this phenomenon that spurred said blogger's interest and the approval to write it. 

THE COPYRIGHT LAW ON SEXUALLY EXPLICIT MATERIAL

             Copyright law is designed to promote and give incentives to create new copyrightable material and make a market for the holders of copyrights. In Ashcroft v. ACLU, No. 03-0218 (2004) the Supreme Court struck down Congressional laws aimed at regulating access to sexually explicit internet films, holding that the laws did not do enough to protect the right of adults to consensually view explicit sex scenes. In other words, adults have the right to access and view x-rated films online or buy DVD's through the mail. Therefore, producers of sexually explicit material have the right to copyright and distribute this material over the internet. Thus, the widespread practice of free downloading of porn is illegal under the Copyright Act and could subject perpetrators to substantial civil penalties, and possibly criminal prosecution. Simply put, as a matter of federal law, it is wrong. But a staggering number of people are doing it, along with music and mainstream movies, which greatly dampens respect for copyright law and breeds a culture of the ridiculous belief that because "information wants to be free," so should downloading of creative material, including sexually explicit material, also be free. But in my opinion it is stealing. According to reports, illegal downloading is a major economic problem for the adult video industry.

            CNBC recently published an interesting series of articles about the adult internet and film business. It seems speculative (virtually none of the business involves public corporations) but it estimated this loose confederation of studios and websites as a $14 billion industry. A brief look at the dockets shows powerhouse Biglaw firms, with the whitest of white shoe reputations representing the megaproducers in big money cases. However, there is paltry writing in the Biglaw blogosphere about piracy of adult video, which involves smaller high volume instances of stealing by mostly individuals.

 

            The reality is that the volume is so high in the aggregate that piracy overwhelms the business, and Biglaw cannot make money off of it. So they must look elsewhere. Since the adult industry is embattled in the first place, it would behoove it to hire lawyers and inform them to hew carefully to a strategic plan that carefully protects their reputation. Many lawyers either don't know or aren't mature enough to do that on their own.

THE ADULT EMPIRE STRIKES BACK AND GETS A LEGAL AND PR BACKLASH

             Some minority of big money producers of adult content such as "Pink Visual" have taken action to go after illegal downloading through copyright enforcement means by obtaining ISP addresses associated with illegal downloading and filing volumes of "John Doe" lawsuits. These actions seem to be accompanied by a threatening lawyer's "nastygram" warning that it will shame the recipient by putting its name on the lawsuilt lest the ISP address owner pay a large settlement. Not surprisingly, these clumsy tactics have created a backlash as old ladies whose Wi-Fi has been trespassed get scary and abusive threats when they check their mail. One feisty allegedly innocent woman has fought back filing her own class action lawsuit against the alleged "copyright trolls," as they are called by pro-downloading media. Named plaintiff Jennifer Barker of Kentucky sued four California-based companies: Patrick Collins Inc., Malibu Media, K-Beech, and Third Degree Films, and London-based Raw Films in Barker and Hutchinson v. Patrick Collins Inc. et al. KYWD 3:12-cv-00372 (W.D.KY. filed July 7, 2012).

             Barker claims the porn distributors have "a new business model" which uses the court system to "extort" money from users of file-sharing sites who have never downloaded their videos.

            Forbes published an article highlighting the feats of an apparently proud attorney who allegedly self -describes as a "copyright troll" proclaiming that he has made millions writing these letters and gobbling up settlement money. Recently, the same lawyer was sued for "extortion" tactics in Liuxia Wong v. Hard Drive Productions, Inc. 4:12-cv-00469 (N.D. Cal. filed Jan. 30, 2012). The case has already settled.

            More ominously, judges have angrily thrown out such piracy lawsuits, swayed by concern that little effort has been done to ethically do the footwork necessary to weed out innocent victims of Wi-Fi trespass or hacking from the overwhelmingly guilty horde of young males committing piracy. See “A new record: 9,729 P2P porn pushers sued at once” (http://arstechnica.com/tech-policy/2010/11/a-new-record-9729-p2p-porn-pushers-sued-at-once/). Supposedly, in one instance, a particular anti-piracy lawyer filed 200,000 lawsuits against Bittorrent users. These chickens are coming to roost, however, as a judge for the District Court for the Eastern District of Pennsylvania ordered a bellwether trial to fight such cases in 2013. Forty-eight of the cases referred to the judge were named either Malibu Media, Inc. v. John Does or Patrick Collins, Inc. v. John Does. The judge selected five of the defendants for the bellwether trial, which will be going forward soon. This trial will set a huge precedent for the winner: either the adult industry or the free information supporters.

             The anti-piracy attorney mentioned above defends the scattershot tactics by saying that recurring fact patterns emerge from these cases defending the tactics. Of course they do. Innocent victims of trespass get scared to death and angry over threats giving ammunition to the copyright freeloaders, and the real perpetrators often lie or have no money to pay and elude collection. The proof and collection problems make it hard to profit quickly off anti-piracy or to deter it. At the same time while three or so corporate studios fight piracy, the vast majority fret over the backlash and the already precarious credibility of the business.

 

           

HOW THE ADULT INDUSTRY CAN DO THIS THE RIGHT WAY EVEN IF THEY LOSE THE TRIAL

             The backlash against the studios working to protect their copyrights raises the question whether the adult content producers are getting the savviest legal advice from their counsel. The high volume, scattershot approach is what created the backlash. Lawyers ought to ask these clients ahead of time about the implication of a clearly foreseeable backlash. Perhaps there would be less liability to litigants fighting back if the attorneys worked harder to learn who the bad guys really are and avoided threatening the obviously innocent owners of ISP addresses. That is, learn who is actually doing the stealing rather than threatening everyone. This way, adult content copyright holders could make the case that they are not trying to harass innocent and naive owners of ISP addresses whose Wi-Fi has likely been trespassed.

     Moreover, although the case law is sparse, I know in Georgia that the Computer Fraud statute may be applicable for the trespass to wifi, although I have not researched it yet and am at the moment just throwing it out there.  Computer Trespass is part of the law and there is a private right of action.  I am not sure fully its application in this scenario but it could be an idea to find out who the trespasser is and they could well be liable to indemnify the IP address holder.  And voila, no scamming old ladies, no harassment, no black eye.  I have a lot of following up to do on this and will update as I learn more. 

             To be sure, not all ISP owners are innocent. Only those who have had people outside the home get on their Wi-Fi where there is no password would be innocent. The ISP address is property as well, and the owner has some responsibility to protect it. They may argue the kids got on it, but why don't they have a filter on the computer to which the kids do not know the password? Why doesn't the Wi-Fi have a any security? The owner might not know how, but the industry could use these communications in a positive way to explain this and further secure their property, which is the ultimate goal, instead of trying to get all of the unknowing to pay a big fee.

            Now, doing the right thing in all these instances makes the cases less profitable for the company and their lawyers. What the industry could do, in that case, is hire outside counsel under the old way of doing things. Instead of paying a cut of the winnings, pay the lawyer a retainer for a set amount of hours and cases filed that allows the lawyer to do right by their reputation. They can file a specified volume of cases with the ability to prosecute them the right way—a way that will not anger judges, the media, or alleged perpetrators. The lawyers can still make money and do the right thing.

 
            The industry needs to learn that slow, steady, and not “shady” wins the race on the balance sheet and in the court of public opinion. And for their sake, hopefully the next craze isn't back to vampires or on to robots.   


 

It Takes More Than a Village Registration to Be Infringement Says Florida District Court

      Recently the Middle District of Florida ruled that even though a trademark was incontestable it was so weak that it could not support a preliminary injunction to halt alleged infringement of a use of the same word in a very similar mark.  Holding Co. of the Villages v. Power Corporation, 101 U.S.P.Q.2d 1528 (M.D.Fla. 2012).  This is important because it reiterates the principle that even though a mark may have been registered more than five years, and thus  has become incontestable under 15 U.S.C. 1065; it may be so weak in spite of this that an alleged infringer may win the "strength of mark" factor in the likelihood of confusion analysis undertaken by all eleven Circuit Courts of Appeal in the U.S. Thus even though an incontestable mark may be valid it still may be attacked by an opponent in an infringement case.

      In this case the plaintiff stated that it sold residential real estate throughout the United States under the mark "The Villages" since as early as June 1993, and had long held a registration for the Mark. The Defendant sold real estate lots for a development called Lakeside Landings at The Villages and later The Villages at Lakeside Landings.   The Eleventh Circuit requires a seven factor test to determine whether the alleged infringing mark is likely to be confusing to consumers with the plaintiff's mark.  The first factor is the type of mark and its "strength."  Because of the registration more than five years the plaintiff's Mark "The Villages" was incontestable.  However, the Court noted that the word "incontestable is really a misnomer because an incontestable mark that is weak can still be attacked by a defendant in an infringement lawsuit.   The Defendant claimed it was weak, and thus less likely to cause confusion, by demonstrating that there were 79 active registrations for marks using the term "Villages;" 34 registrations disclaiming the word "Village" as a descriptive term; 19 registrations of "Village" claiming use prior to that of the plaintiff; 17 trademarks with the term "Village" or "The Village" followed by a place name; and 1,165 companies registered in Florida using the word "Village."  Therefore the defendant did a great job showing how nearly generic the term "Village" was in the trademark and business world.  Therefore, the Court found that the Mark of the plaintiff was weak and can be afforded only a narrow range of protection.  Interestingly the Court never labeled the Mark as descriptive or any of the other standard terms used in the trademark cases to place the strength of the mark in a certain spot on the scale.  It simply found that it was weak based on the quality of the defendant's evidence. 

     The Court went on to weigh the remaining factors and found that the services and customers were similar, and the advertising media were similar, which weighed in favor of the plaintiff. However, the other factors weighed in favor of the defendant, including the strength of the mark,  the dissimilarity of the marks, the intent of the defendant, and evidence of actual confusion.  In the end the balance went for the defendant and the court found no likelihood of success.  Therefore, the motion for an injunction was denied. 

Wisconsin Court of Appeals Determines That The Glove Fits: Trade Dress Suit Was a Covered Advertising Injury Claim Triggering Duty to Defend

The Wisconsin Court of Appeals reversed a lower court ruling in favor of the insured recently, finding that the insurer of Ross Glove Company did indeed have to duty to defend a lawsuit against Ross alleging, among other things, trade dress infringement.  Acuity v. Ross Glove Company, 2012 WL 1109035 (Wis. Ct. App. 2012).  The case is not really a difficult one, and it is hard to see how the lower court got it wrong.  The underlying suit was brought by Seirus against Ross based on certain cold weather face and neck protection gear sold by Ross through a deal with Cabela's sporting goods stores.  The complaint alleged patent infringement and trade dress infringement.  Trade dress involves the look and feel of the product, and/or its packaging, such that infringement would be an attempt to imitate or "knock-off" the original product. 

Under its Commercial General Liability ("CGL") Policy, Ross was covered against claims for "advertising injury."  The trade dress allegations, as they often do in cases involving retail consumer products, including claims that the packaging for the allegedly infringing products was substantially similar and likely to confuse customers as to whether the products sold by Ross were associated with the Seirus products.  It is well settled that packaging is advertising and that putting a packaged product on retail shelves is "publishing" the advertising to the public.  Therefore, the allegations regarding the alleged confusion over the shelf products constituted claims of injury related to the advertising of Ross.  It is worth noting that Wisconsin follows the general rule regarding the duty of an insurance company to defend a lawsuit with potentially covered claims in it. If any of the claims in the complaint could be covered, then the insurer must pay to defend all of the claims, even, in this case, the patent claims which were apparently not covered by the policy.  Therefore, as a result of the ruling, Acuity has to pay to defend the entire lawsuit as long as the trade dress claims remain part of the case. 

The lawsuit sought enhanced Lanham Act damages against Ross claiming intentional trade dress infringement.  Acuity sought to get out of the defense of the suit based on an exclusion in the policy for "knowing" or "intentional" infringement.  However, as the court pointed out, the lawsuit also alleged damages based on unintentional infringement, and while intent is a factor in a trade dress case, it is not a prerequisite that intent be demonstrated in order to succeed on a trade dress claim.  Moreover, while the complaint contained a bare allegation of intent and damages as a result of it, it did not recite any specific facts in support of the claim that Ross intentionally imitated the Seirus trade dress.  Under these circumstances, the court held that the exclusion for intentional activity would not excuse Acuity from defending the case.

This is just another reason why it is important to have CGL insurance for a business, because trade dress claims continue to increase.  Also, as I have pointed out before, a 2007 survey of litigants found that the average cost per party of trade dress litigation was $700,000.  Many companies do not even realize they have coverage for advertising injury related to trade dress or other intellectual property claims, and they may fail to notify their insurance company of a lawsuit for infringement.  It is critical to notify the CGL carrier of such lawsuits.  It is also important to have counsel that understands the area of IP insurance coverage if the insurer balks at defending the case.  I have had insurers deny coverage for a client initially, but have gotten them to reverse themselves and pay for the defense after a challenge from  me arguing that the policy does trigger the duty to defend.  For a small business that cannot afford to pay six figures to get out of a lawsuit, the question of the duty to defend can become a "bet the company" situation.  That is why it is critical to have experienced advisers dealing with this kind of situation. 

The Law Follows Common Sense 99% of the Time (and So Should Intellectual Property Law)

                         

"The Law follows common sense 99% of the time." This was and still is the mantra of The Hon. R Lanier Anderson, III, former Chief Judge of the Eleventh Circuit U.S. Court of Appeals. I had the incredible good fortune of clerking for Judge Anderson and he repeated this phrase often in his thick, Georgia red clay accent, prefaced by "My Granddaddy told me...." The Judge's father and grandfather practiced for life in Georgia, and with this mantra as his guide Judge Anderson has long been revered by judges and court personnel on the right, left, and center as an intellectual force on the court, and the very embodiment of Georgia's motto, Wisdom, Justice and Moderation.

We were taught as clerks by the judge to use common sense in appraising the legal arguments of lawyers, and this gauge was an incredible way of framing the questions presented, and looking at the Law through that lens serves as a barrier against frothy arguments and the intellectual pretzels in which lawyers get tied. Sometimes I refer to this radar, this sense that the Law is based on the ordinary sense of right and wrong, as the Common-Sense-ometer. One of the manifestations of this in the common law is the reasonable person. The reasonable person is a legal fiction of the common law representing an objective standard against which any individual's conduct can be measured. Generally the reasonable person applies to tort laws and its duties, but the reasonable person is invoked throughout the law. Inherently, the reasonable person has a usual share of the common sense of a reasonable person.

Another lawyer in a patent case expressed this recently about a case we were working on.  Defending a rather frivolous patent infringement suit, the lawyer observed that because our device was obviously not infringing, we were not "the side that has to be cute."  This was another way of saying that common sense was on our side.  Our job was not to let the other side use smoke and mirrors or confusing technical verbiage to obscure the fact that the "smell" test in the case went our way for anyone having ordinary skill in the art involved in that case.  In patent litigation, the reasonable person is a little more technically gifted, because the common sense barometer is based on a "person having ordinary skill in the art."  This is the reasonable technician, not the genius. In most cases a reasonable person can tell which side of the case "smells" bad, or which side has to be "cute" to fit a square peg into a round hole.  These cases make up 99% of litigation, and they should all follow common sense.  The other 1% often involves political or religious issues where there really is not much common sense to be found in the past cases, the language of the law, and the passions of the parties. 

Trademark bullying is a topic I have covered quite a bit recently, and once again common sense should prevail in looking at trademark infringement claims and whether there is a likelihood of confusion.  Most jurisdictions have a test for likelihood of confusion that delves into myriad factors related to the uniqueness of the mark, marketing, customer overlap, similarity of the product, and such.  None of this stuff should obscure the fact that the test is based on common sense, whether a reasonable customer is likely to be confused between the two marks or brands.  Not possibly confused, but probably confused.  Any judge or juror can look at a case in a few seconds and tell whether a person with any common sense ought to be confused by the marks. Generally that first impression is what the law should be, and the judgment should be, infringing or not.  The problem that has manifested itself with trademark bullying is the endless discovery and failure to award summary judgments in easy cases.  Most cases are obvious whether confusion is probable or not.  Courts should make decisions based on common sense and get rid of frivolous trademark bullying cases early.  They should also get rid of obvious infringement cases early and stop the infringing activity. 

Judge Hammers "Not Believable" Trade Secret Defendant With Injunction in Northern District

Judge William Duffey of the Northern District of Georgia issued a scathing opinion against a defendant in a trade secret case after an evidentiary hearing, calling the defendant's testimony "not believable" and "troubling."  Amedisys Holding, LLC,  v. Interim Healthcare of Atlanta, Inc., Et al,  Case No.  1:11-cv-1437-WSD, Decided June 3, 2011, 2011 US DIST LEXIS 59260 (N.D. Ga). 

This case involves three former employees of the Plaintiff, Amedisys, who left to work for Interim Healthcare in April, 2011.  These were two salespeople and an assistant.   The business involved is home healthcare services.  The Plaintiff filed suit against the former employees and Interim, alleging that they had taken trade secret materials with them to Interim.

The trade secret materials involved what was called a "Referral Log."  The Referral Logs are a resource to track patient referrals. They contain detailed information regarding current and prospective patients. Amedisys employees use the Referral Logs to target their sales efforts to particular clinicians and facilities most likely to refer patients to Amedisys.  This allows their employees to concentrate their marketing efforts on the clinicians most likely to generate business for Amedisys.  The Referral Log in question contained the information of over 1200 patients.  It also showed who referred the patients to Amedisys, among other things.

There was a hearing on a TRO motion in early May at which the defense submitted declarations from the three former employees saying that they did not need the material, did not want it and would give it back.  Based on this, Judge Duffey denied the motion for a TRO but set some expedited discovery and a preliminary injunction hearing.  He also ordered the former employees to submit to forensic examinations of their computers.  By the time of the second hearing, several misrepresentations from one of the former employees had been unearthed.  This employee was hired to go to Interim as a manager of business development, and had emailed herself the Referral Log to her home address.  She turned out to have made several false statements in her declaration.  At the injunction hearing she testified, and the court found her "spin" about what she had done, when she had done it, and why to be unbelievable.  Thus, the court found that it was likely that this defendant had copied the logs and was using the information in her new job.  

The defense argued that the Referral Logs were not trade secrets but simply a list or directory of names of patients and healthcare providers that were publicly available. Amedisys argued that the Referral Logs reveal which doctors refer which patients to Amedisys and allow its sales representatives to identify which patients require long-term care and are susceptible to "poaching" by a competing home healthcare provider. The court agreed with the plaintiff.  Besides finding that reasonable measures had been taken to keep them secret (they were marked confidential on each page, among other things) the Court noted that the logs "are more than a list of names of healthcare providers and facilities. They are not simply a directory of healthcare providers. They contain valuable, proprietary information uniquely known to Amedisys, and which is not publicly available. This information, which Amedisys collects, evaluates, analyzes, and arranges, enables Amedisys employees to make informed, fact-based decisions on where to focus their business solicitation efforts. It is this information that transforms an ordinary list of doctors and healthcare providers to a trade secret."  

Going on the Court said "while the names of the doctors and healthcare centers could be developed in the logs by other means, including through a cumbersome and time-intensive deconstruction of medical directories, visitation to hospitals, internet searches, and the like, these "public" sources do not indicate which doctors or healthcare centers refer patients to in-home care, for what ailments the patients suffer from, who provided the referrals, and do not allow one to identify which patients are susceptible to poaching by a competing home healthcare provider."  In summary, although the names were not a secret, the analysis that the plaintiff had done on the names in compiling the "referral log" into a special list made it nonpublic and economically valuable.  From there the Court to determined that this person had stolen the logs for the benefit of herself and the new company.  

What is unclear about the opinion is just what these logs were about.  For example, if the logs dealt with hospitals all over Atlanta that would much more likely to be a trade secret than if the logs were about two or three hospitals.  A salesperson would have to be pretty dim to be unable to figure out whom to call on at a particular hospital for home healthcare referrals.  It would seem that this would be the doctors who deal with people who are going to be bedridden for some time or forever.  Not hard to figure out.  On the other hand, if this log dealt with facilities all over the metro Atlanta and culled specific marketing targets it would be easier to see it as a trade secret.  For example, if it had compiled data and a list of "top ten sales targets" it would more easily be seen as a trade secret. 

Because the Court distrusted the witness, it seems, it ordered a far-reaching injunction, prohibiting the new employer  from allowing this particular new employee "to contact on behalf of Interim, either directly or indirectly, any healthcare facilities, providers, patients, or prospective patients referenced in the Referral Logs she emailed to her personal email account on April 12, 2011, or any other Referral Logs or Referral Log information to which she now has access ("the Reference Log Persons"). Indirect contact shall include, but is not limited to, assisting others at Interim to identify, plan for, or make contact with any Reference Log Person."  This preliminary injunction, unless altered, will last for the rest of the case.  The defense argued that this injunction was essentially a noncompete against the witness and thus overreaching, but the Court noted that it did not prohibit her from working for Interim in other capacities or calling on places not listed in the logs.  Given the fact that the Logs likely included her best customers, this is probably cold comfort for her and Interim.  Chances are that most of the value of the defendant salesperson has been gutted by the injunction.  That is what you get for being unable to back up what you say in Court and trying to spin your way out of it.  You get punished.   

The court found no evidence that Interim had asked the former employee to take these trade secrets or to lie about it.  Unfortunately, they are stuck with the damage done by their new sales manager.  If these logs really are trade secrets, chances are that committing these illegal acts are a violation of Interim's deal with her.  It would not be surprising if Interim fired her and moved on without her.  In my experience, when what I call "Newco," the new employer, finds out about the theft of trade secrets and their potential liability, they are all too willing to fire the employee who caused all of the trouble. 


As a side note, the two other former employees were found to be truthful and not enjoined from doing work for the new company at all in their full capacities.  This was a salesperson who, the Court found, had accidentally failed to return her Workbook, but was able to recite from memory her contacts and referral sources.  Also, an assistant was found not to have any trade secret material.  They are free to work for Interim.  These two folks seem to have been part of the "package" that included the senior manager who is know hobbled by the injunction.