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Internet – Getting a domain name registrant to correct their false registration information

             Domain name registrants or owners are supposed to provide accurate and correct registration information, such as address, telephone number and e-mail address.  However, registrants often enter false mailing address and telephone number information because it increases the difficulty of finding the domain name registrant.  Fortunately, domain name registrars will help you correct any inaccurate registrant information.

            Domain name registrars require as part of their registration agreements that registrants provide current and accurate.  For example, GoDaddy's Domain Name Registration Agreement at Section 4 (emphasis added)

You [the registrant] agree to notify Go Daddy within five (5) business days when any of the information you provided as part of the application and/or registration process changes. It is your responsibility to keep this information in a current and accurate status. Failure by you, for whatever reason, to provide Go Daddy with accurate and reliable information on an initial and continual basis, shall be considered to be a material breach of this Agreement and a basis for suspension and/or cancellation of the domain name.

The initial and continuing requirement exists because domain name registrars must maintain a public database -- the WHOIS database -- that "is available to be searched by the members of the public in order to allow rapid resolution of technical problems and to permit enforcement of consumer protection, trademark, and other laws." See Whois Data Reminder Policy (WDRP) FAQs For Domain Name Registrants, at "What is a Whois Record? What is my duty to keep the information in the record current?"  

            Thus, when a domain name registrar is informed that a registrant has entered false information, they will attempt to contact the registrant to obtain corrected inaccurate information.  If the registrar can reach the registrant, then the information will be updated and you will have an accurate contact information for the registrant.  If the registrar cannot reach the registrant, then the registrar will suspend or cancel the domain name until the registrant contacts the registrar and updates its contact information.

 

- Henry Park

Litigation – Serving a Foreign Defendant with a Summons Through the Hague Convention Using a Foreign Country’s Central Authority

This is the second of a series of blog posts concerning methods for serving a foreign defendant. This post examines how to serve the defendant through the Hague Convention using a foreign country’s Central Authority (Article 5, 1^st paragraph).

            This post assumes that the defendant is in a country that is a signatory to the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters.  To confirm this, go to the website for the Hague Conference on Private International Law, follow the link for the Service Section, select the link for the Updated List of Contracting States, and then search for the country.

            Under the Hague Convention, each signatory country must identify an entity to act as its “Central Authority which will undertake to receive requests for service coming from other Contracting States and to proceed in conformity with the provisions of Articles 3 to 6”  (Article 2).  You may consider serving through a country’s Central Authority because, after the defendant has been served, the Central Authority will issue you a certificate that states (a) where and when the defendant was served and (b) how the service was effected.  This Certificate effectively eliminates a defendant’s arguments that there were issues with the service.

            The next step is to identify if the legal documents need to be translated.  Each signatory to the Hague Convention can require that the documents to be served be translated into a different language (Article 5, 3^rd paragraph).  This information is also available on the Hague Convention website on each country specific page.  For example, the following link is to the page for Sweden.  Sweden requires that documents to be served be translated into Swedish, but that documents in Danish or Norwegian also are accepted.  You should confirm with the country’s Central Authority whether they require a certified translation, but most countries do not require a certified translation.

            Finally, you need to prepare the actual request document -- USM94 “Request for Service Abroad of Judicial or Extrajudicial Documents”.  On this form, you will complete pages 1 and 3.  Page 2 will be completed by the Central Authority after they have served the foreign defendant.  You should confirm with the country’s Central Authority, but most countries do not require that the USM94 be translated.

            Some tips for completing the USM94:

1.            Page 1, Identity and address of the applicant.  This asks for information about the attorney sending the USM94.

2.             Page 1, Address of receiving authority.  This asks for the address for the Central Authority.

3.             Page 1, method of service.  For this post, you will mark the check box for “a” as the Central Authority will serve according to its local rules.

4.             Page 1, location and date block.  After “Done at”, write your city and state.  After “, the”, write the date.

5             Page 1, authority for sending the request.  Under the Hague Convention (Article 3), any judicial officer can send a Request under the Hague Convention.  An attorney is a judicial officer and can send a Request.  It is recommended that any attorney write “Service requested pursuant to FRCP 4(c)(2)” on the USM94 form by the signature line.

6.             Page 3, “Name and address of the requesting authority”.  The name and address of the attorney sending the Request.

7.             Page 3, “Nature and purpose of the document” section, the following language can be used if you are sending a Summons and Complaint. 

The summons notifies the defendant of its obligation to answer or otherwise respond to the complaint within 21 days of service. The complaint notifies the defendant of the nature of the plaintiff’s claim and the plaintiff’s demand for relief.

8.             Page 3, “Time limits stated in document” section, the following language can be used

An answer or motion must be served within 21 days of the date of service of process and must be filed with the court within a reasonable time thereafter.

            Once you have assembled all of the necessary documents, your package to a foreign country’s Central Authority should contain, at least, the following documents:

1.             two copies of the USM-94 (may not been to be translated)

2.             two copies of the Summons

3.             two copies of the Complaint with exhibits

4.             two copies of the translated Summons

5.             two copies of the translated Complaint with exhibits

- Henry Park

Litigation - Waiver of Service of Summons on a Foreign Defendant

            After filing a lawsuit, the plaintiff has a few options on how to effect service of the lawsuit on a foreign defendant.

            The plaintiff could (1) request the foreign defendant waive service of Summons – Federal Rules of Civil Procedure (FRCP), Rule 4(d); (2) serve the foreign defendant through the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents – FRCP 4(f)(1); (3) serve the foreign defendant through the post – FRCP 4(f)(2); or (4) serve the foreign defendant through a mean that is "reasonably calculated, under all the circumstances, to apprise the interested parties of the pendency of the action and afford them an opportunity to present their objections" – FRCP 4(f)(3).

            This post examines the process for requesting a foreign defendant to waive service of the Summons.  Subsequent, blog posts will examine the other options.

            The plaintiff should complete forms AO398 "Notice of Lawsuit and Request to Waive Service of a Summons" and AO399 "Waiver of the Service of Summons," because these forms comply with the requirements of FRCP 4(d).  These forms can be found on most US District Court websites in their Forms section.

            The plaintiff should send the defendant the following documents by first-class mail or other reliable means, preferably a means with tracking:

1.             one copy of the filed complaint,

2.             one copy of the Notice of Lawsuit and Request to Waive Service of a Summons,

3.             two copies of the Waiver of the Service of Summons, and

4.             a prepaid means for returning the form, preferably with tracking.

            Assuming that the defendant or its attorney signs the Waiver of the Service of Summons and returns it within the allowed time, then the plaintiff needs to file the executed Waiver within 120 days after the action was commenced.

            Notably with a foreign defendant, one of the incentives for a defendant to execute a Waiver of the Service of Summons is absent.  Should a domestic defendant refuse to execute a Waiver of Service upon request without good cause, the Court must impose on defendant the expenses later incurred in making service and the reasonable expenses, including attorney's fees, of any motion required to collect those service expenses.  FRCP 4(d)(2).  However, with a foreign defendant, the Court cannot impose those expenses.

- HP

[revised on October 15, 2014]

NDA: Term and Trade Secrets

            When reviewing a non-disclosure agreement ("NDA"), one area that you should pay attention to is the interplay between the term or duration of the agreement and your trade secrets.

            A NDA's confidentiality provision imposes burdens on the party receiving confidential information.  Thus, a party receiving confidential information will try to limit the term of the agreement.  A typical NDA term provision looks like the following:

The terms and conditions of this Agreement shall continue for a period of two (2) years from the date a party last discloses any Confidential Information to the other pursuant to this Agreement.

As the confidentiality provision is linked to the term of the agreement, the confidentiality obligations expire after a limited term.

            One potential issue with having a limited term confidentiality provision in an NDA occurs when a disclosing party shares a trade secret.  A trade secret, generally, is some confidential business information that provides a business with a competitive advantage.  Trade secrets can remain valuable as long as they remain a secret (e.g., formula for Coca-Cola).  Thus, a party with a trade secret must take reasonable precautions to restrict access to their trade secret.  However, by agreeing to a limited term confidentiality provision, a party puts the long-term value of their trade secret at risk because they will not have taken reasonable precautions to ensure their trade secrets remain secret.

            If you are reviewing a NDA and expect to disclose trade secrets, then you should demand that the confidentiality provision as applied to disclosed trade secrets not expire until the trade secrets are no longer a trade secret.  If your demand is not met, then you should evaluate what information you are willing to share with the knowledge that the confidentiality obligation expires after a limited term.

- HP

BYOD - Reimbursement required in California

       On August 12, 2014, a California Court of Appeals issued a ruling that will affect employers that have instituted or are planning to institute bring your own device (BYOD) policies.

       In Cochran v. Schwan's Home Service, Inc.[1], the appellate panel found that, under California Labor Code section 2802, a business must reimburse its employees for a "reasonable percentage of their cell phone bills" when the employee must use their personal cell phones for "work-related calls".  The Court stated that the purpose of this law was to "to prevent employers from passing operating costs on to their employees." 

        Although this ruling was directed to an employee using a personal cell phone for calls, this reasoning should apply to an employee using their personal cell phone's data plan to check work e-mail or other data related activity.  Thus, employers who encourage their employees to use their own devices for work related activities and do not provide their employees with an alternative method to complete the work related activities will have to reimburse a portion of their employee device costs.

- HP



[1]  http://www.courts.ca.gov/opinions/documents/B247160.PDF

Copyright – Is that a published work?

             If you create a sculptural work and then publicly display it, is that work published or unpublished?

            If you post a photo on a website, is that work published or unpublished?

            The answer is not as simple as it appears.  For purposes of U.S. Copyright Law (17 U.S.C. § 101), publication means:

“the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not itself constitute publication.”

           

            Thus, the key question, generally, is whether the copyright holder has authorized others to make a copy of the work.

            In the case of the above sculptural work, the work probably is unpublished because a "public . . . display of a work does not itself constitute publication".  However, it depends on where the work is being publicly displayed.  If you display the work in an art gallery, which is offering the work for sale, then it would be published.

            In the case of the photo posted on a website, the work may or may not be published.  It depends on a number of factors concerning the authority to make a copy of the photo, such as the terms and conditions of the website, whether the website has any protection to restrict copying or use of the photo, and whether the photo is watermarked. Based on the facts, one court found that "posting the pictures to the website [without any protection to restrict copying or use of the photo] and making them accessible to others for distribution is considered a publication." William Wade Waller Co. v. Nexstar Broad., Inc., No. 4-10-CV-00764 GTE, 2011 WL 2648584, at *2 (E.D. Ark. July 6, 2011).  But, another court found that posting images on a website was not publication. McLaren v. Chico’s FAS, Inc., No. 10 Civ. 2481(JSR), 2010 WL 4615772, at *1 (S.D.N.Y. Nov. 9, 2010) (unpublished) (citing Einhorn v. Mergatroyd Prods., 426 F.Supp.2d 189, 196-197 (S.D.N.Y. 2006) (noting that "making a work available [on the Internet], even assuming it constituted 'distribution,' did not involve 'sale or other transfer of ownership, or by rental, lease or lending.' ").

            Determining whether a work is published or unpublished is important because it affects the window of time you have to register the work.  If the work is not timely registered, then you could lose the ability to collect attorney's fees and statutory damages for infringement.

- HP

Trademark - Is that trademark license a NY franchise?

        Under a traditional franchise analysis, like the federal franchise regulations [1] or many other state franchise laws, a franchise is any commercial business relationship that satisfies the following three elements:

        1.   Franchisor provides a trademark or other commercial symbol;

        2.   Franchisor directly or indirectly exercise a significant amount of control over or provide significant assistance to the franchisee; and

        3.   Franchisee pays the franchisor a fee of $500 or more during the first six months of operation.

        However, New York franchise law is not traditional.  It is much broader.  Under NY Law [2], the three elements have been reduced to two elements:

        1.  Franchisee pays the franchisor, directly or indirectly, a franchise fee; and

        2.  Franchisor

                a.  provides a trademark or other commercial symbol, or

                b.  provides a marketing plan or system prescribed in substantial part by a franchisor.

        Thus, many agreements that might not be a franchise under the traditional analysis become a franchise under NY law, including a simple trademark license where a royalty is being paid.

        If you are considering licensing a trademark to a business in New York, you have a few options:  (1) having no fee, (2) requesting an exemption from the New York Attorney General, or (3) refusing to grant a license to anyone located in New York.

        Please feel free to contact us if you have any questions.

- HP

 

[1]             16 C.F.R. Part 436

[2]             New York Franchise Sales Act, New York General Business Law Sections 680-695.

2014 Elections: Influencing Politics and People

            As we approach the 2014 elections, I am sure that everyone who watches television or listens to the radio will be inundated with advertisements advocating issues, or supporting or attacking political candidates.  

            This post summarizes some of the differences between the groups that sponsor those advertisements.

Designation	501(c)(4)	PAC	SuperPAC
Application filed with	IRS	FEC	FEC
Description of the group	An organization “operated only to promote social welfare to benefit the community.”	Political Action Committee (PAC) created primarily to influence the selection, nomination, election, appointment or defeat of candidates to federal, state or local public office.	A PAC that agrees not to make contributions to federal candidates, political party committees, or to PACs that contribute to candidates and political party committees, and instead to make only independent expenditures.
Ability to engage in politics	May engage in political activities, as long as these activities do not become their primary purpose. Must spend less than 50% of their money on politics. Can have "issue ads" that cannot use a candidate's name or likeness and are supposed to be used to educate the public on broad issues or positions.	Engages in political activities.	Engages in political activities. Cannnot coordinate with a candidate’s campaign or a political party. Can make independent expenditures that support or oppose a candidate for public office.
Contributions	Accept unlimited, non-tax deductible donations	Accept limited (based on FEC regulations), non-tax deductible donations	Able to accept unlimited non-tax deductible donations from most entities — individuals, unions, and corporations
Donor reporting	Donors kept anonymous * Some states, such as NY, have imposed donor reporting regulations	Donors are publicly reported	Donors are publicly reported
Examples	• Crossroads GPS • Americans for Prosperity • Priorities USA		• American Crossroads • Club for Growth • Patriot Majority USA • Priorities USA Action

-HP

Patent - Computer Software Patents: Down But Not Out

     The U.S. Supreme Court just issued its decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 572 U.S. __ (2014) (slip opinion, June 19, 2014).  This decision was eagerly anticipated as a referendum on the viability of computer software patents. The Supreme Court unanimously found that these particular patent claims, directed to a method, a system and media, were drawn to patent ineligible matter under 35 U.S.C. § 101 (courts interpret this Section to exclude laws of nature, natural phenomena, and abstract ideas).  The Supreme Court, however, did not categorically invalidate all computer software patents.

     The Supreme Court applied the two-step framework it set forth in Mayo Collaborative Services v. Prometheus Labs., Inc. 566 U.S. ___ (2012):  that to be patent eligible, a claim must include an inventive concept beyond an underlying fundamental principle such as a law of nature, natural phenomenon, or abstract idea.

     The Court first determined that the patent claims were directed to an abstract idea, the concept of an intermediated settlement.  The Court then examined whether the claim elements contained an "inventive concept" sufficient to transform the claim into a patent-eligible application.  In this case, the Court determined that the method claim elements did nothing more then instruct a user to implement the abstract idea on a computer. The Court also determined that the computer system claims were similarly flawed because none of the hardware limitations offered a meaningful limitation.  Thus, these patent claims were found to be patent ineligible.

     Given the Court's decision, I suspect that a small fraction of computer software patents will be found invalid under the Mayo framework because those patent claims use a computer to implement an abstract idea.  I believe that the majority of computer software patents will remain valid.

- HP

Patent Infringement: The single actor for direct infringement rule is going away

     Last week, the U.S. Supreme Court reversed the Court of Appeals for the Federal Circuit in Limelight Networks, Inc. v. Akamai Technologies, Inc. et al., 572 U.S. ___ (2014) (slip opinion, June 2, 2014).  In that case, the Supreme Court rebuked the Court of Appeals for allegedly expanding liability for inducing infringement of a patent claim when no one has directly infringed the patent claim.  The Supreme Court reiterated its position that there can be liability for inducing infringement unless someone directly infringed a patent claim.

     This case will likely herald the change of another Federal Circuit precedent.  In its conclusion, the Supreme Court suggested that, on remand, the Federal Circuit will have the opportunity to revisit the §271(a) question – whether there was direct infringement.  By making this suggestion, the Supreme Court hinted the Federal Circuit should examine the contours of direct infringement, in particular, the Federal Circuit's precedent that direct infringement occurs only when there is a single actor who directly or vicariously committed all the acts necessary to infringe a patent claim.  BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1381 (Fed. Cir. 2007). It was this same precedent that Judge Newman's had criticized in her dissent.

     Given the Supreme Court's suggestion, I believe the Court of Appeals will overturn the BMC single actor rule on remand, and in doing so, strengthen the rights of patent owners.

- HP