Laches

OAKLAND COUNTY BAR ASSOCIATION

1760 S. Telegraph Road, Suite 100

Bloomﬁeld Hills, Michigan 48302-0181 (248) 334-3400 • FAX (248) 334-7757 www.ocba.org

2024-2025 BOARD OF DIRECTORS

PRESIDENT

Dean M. Googasian PRESIDENT-ELECT

Sarah E. Kuchon

VICE PRESIDENT

Aaron V. Burrell

TREASURER

Kari L. Melkonian

SECRETARY

Victoria B. King

EXECUTIVE DIRECTOR

Jennifer Quick

LACHES EDITORIAL BOARD

Victoria B. King

Syeda F. Davidson

Coryelle E. Christie

DIRECTORS

Syeda F. Davidson

Julie L. Kosovec

Emily E. Long

Jennifer L. Lord

Moheeb H. Murray

Kimberley Ann Ward

Kenneth F. Neuman

Layne A. Sakwa

Jonathan B. Frank

Silvia A. Mansoor

ABA DELEGATE

James W. Low

Lanita Carter

Thamara E. Sordo-Vieira

THE MISSION OF THE OAKLAND COUNTY BAR ASSOCIATION IS TO SERVE THE PROFESSIONAL NEEDS OF OUR MEMBERS, IMPROVE THE JUSTICE SYSTEM AND ENSURE THE DELIVERY OF QUALITY LEGAL SERVICES TO THE PUBLIC.

Articles and letters that appear in LACHES do not necessarily reﬂect the ofﬁcial position of the Oakland County Bar Association, and their publication does not constitute an endorsement of views that may be expressed. Readers are invited to address their own comments and opinions to:

LACHES | Oakland County Bar Association 1760 S. Telegraph Rd., Ste. 100 Bloomﬁeld Hills, MI 48302-0181

Publicationandeditingareatthediscretionoftheeditor.

LACHES (ISSN 010765) is the monthly (except July and December) publication of the Oakland County Bar Association, a Michigan nonprofit corporation, 1760 S. Telegraph, Ste. 100, Bloomfield Hills, MI 48302-0181. Copyright © 2025 Oakland County Bar Association. The price of an annual subscription ($20) is included in member dues. Periodical postage paid at Bloomfield Hills, MI 48304 and additional entry offices. Postmaster: Send address changes in writing to Oakland County Bar Association, 1760 S. Telegraph, Ste. 100, Bloomfield Hills, MI 48302-0181.

JANUARY 2025

FEATURES

‘The Walls Have AIs’ The proliferation of AI tools in videoconferencing has necessitated new precautions to maintain conﬁdentiality. By

Damages in a Copyright Infringement Case

This guide details the steps in determining potential remedies for copyright infringement.

ByDanielBliss 14

Understanding and Efﬁciently Resolving Software Development Disputes

The subject matter of software development litigation may be complicated, but the structure of the dispute is not. ByJonathanB.Frank 18

Patent Filing: As Comprehensive as Possible as Soon as Possible Timing is everything when it comes to patentability.

Around the OCBA and Around the World

By Dean M. Googasian

Retired Oakland County Circuit Judge

Denise Langford Morris is one of the most incredible and bar-involved lawyers I’ve ever met.

Judge Langford Morris has never stopped working, and if it is up to her, she never will. She started working as a teenager and worked her way through school, working full time while obtaining her B.A. from Wayne State University in 1975; her master’s degree, cum laude, from WSU in 1978; and her law degree from the University of Detroit in 1982. She completed her law degree in three years while working full time as a social worker and investigator. After becoming a lawyer, she got involved in the Oakland County Bar Association and has been involved ever since.

After serving as an assistant prosecutor with the Oakland County Prosecutor’s Oﬃce and brieﬂy working as a civil trial lawyer, then an Assistant United States Attorney (in the Civil Division) for the Eastern District of Michigan, she served for 30 years as an Oakland circuit judge.

Judge Langford Morris is the recipient of the OCBA’s ﬁrst Professionalism Award (1997) and the OCBA Distinguished Service Award (2004) and was inducted into the Michigan Women’s Hall of Fame in 2023 along with Gov. Gretchen Whitmer and other distinguished inductees. She has a list of accomplishments, awards, and accolades that would ﬁll more space than I have for this entire article.

e scope of her bar activities is truly astounding. She isn’t just a member; she participates. In the past year, Judge Langford Morris has presented at and attended conferences, meetings, and events with various national and international bar associations around the globe, including this year in Ghana; Nice, Marseille, Cannes, and St. Tropez, France; Milan, Florence, and Venice, Italy; and Barcelona and Ibiza, Spain, in addition to U.S. conferences in Las Vegas (twice), Chicago, Aspen, and Louisville. Last year, she conferenced in Singapore, ailand, Dubai, and many other adventurous locations.

Did I mention that, in addition to all this incredible work, she is a full-time mediator and arbitrator with JAMS?

Because she is one of the attorneys most active in bar association work that I know, I thought she’d be a perfect person to talk to for this issue of LACHES. I recently caught up with Judge Langford Morris, who was kind enough to speak with me by phone from sunny Las Vegas, where she was attending the 20th conference of Corporate Counsel Women of Color, the nation’s largest organization for corporate in-house women of color attorneys.

What bar activities are you involved in? I have always been involved in bar activities since becoming a lawyer, and I always will be. When I started with the Oakland County Prosecutor’s Oﬃce back in 1983, I immediately joined the OCBA. I have been involved with the OCBA ever since. I have served, and continue to serve, on many OCBA committees. I enjoy the camaraderie very much.

In addition to the OCBA, I am currently

very active in the American Bar Association (ABA) and the National Bar Association. I have leadership roles in both. I was elected in August to chair the ABA Judicial Division’s National Conference of State Trial Judges. I recently hosted a planning meeting and brought 18 judges from around the country to Detroit, many of whom had never been here before, to show them this great city. Judge Margaret Masunaga of Hawaii got the prize for traveling the farthest. I am currently the vice chair of the ABA’s Criminal Justice Section.

Internationally, I am heavily involved in the ABA’s Rule of Law Initiative, which is chaired by retired United States Supreme Court Justice Stephen Breyer. is initiative works to promote justice, economic opportunity, and human dignity through the rule of law across the world. I just completed a three-year term as chair of the initiative’s Africa Council and have now moved to Middle East and Northern Africa Council, which includes places like Dubai, Morocco, and others. I have always been enthralled with international law, and I ﬁnd it fulﬁlling to help

“Connecting with the OCBA is a way to get to know lawyers — some of the most powerful lawyers in the community, the state, and the world. Engaging and getting active will help with your career because more people will know who you are, and your practice is guaranteed to bene t. ”

—Judge Denise Langford Morris (ret.)

people in other countries through establishing the rule of law and sharing our U.S. principles and values.

I am a past chair of the National Bar Association’s Judicial Council and for the past four years have served as president of the American Judicial Council Foundation, which is the foundation that supports National Bar Association judges. We provide scholarships to law students to help with the cost of law school studies and taking the bar exam and provide clerkships with judges around the country. Over the past two years, we have been able to provide $30,000 to Black students around the country and place them in important internships with jurists like Judge J. Michelle Childs on the D.C. Circuit Court.

Why did you choose to get involved in bar activities?

My mother, Plennie Langford, was an incredible example for me and is the one responsible for getting me involved in bar association activities. She attended Tuskegee University, as did my great-grandmother. My mother worked for the Planning Commission for the city of Detroit but treasured being a stay-athome mom. She was very active in civic duties and impressed upon me from a very young age the importance of being involved in your community and in your profession. As a young woman, she took me to march with Dr. Martin Luther King Jr. and to attend meetings of the National Organization for Women, Erma Henderson’s Women’s Conference of Concerns, and a host of other activities.

She was the reason I joined the OCBA back in 1983. I remember going to OCBA events and there were very, very few African Americans in attendance. I remained an active member of the OCBA when I left the Oakland County Prosecutor’s Oﬃce and joined the U.S. Attorney’s Oﬃce in Detroit as an Assistant U.S. Attorney.

Have you found OCBA involvement helpful in your career?

Absolutely. Without question. I have found OCBA involvement helpful both personally and professionally.

On a personal level, being involved in bar association activities, particularly within the OCBA, helped keep me grounded and centered as a judge. Many matters that are

heard in court, whether civil or criminal, arise from diﬃcult and often painful events for the parties. Being a judge is serious business, and it can be isolating, especially when the matters before the court are weighty and traumatic. Being involved in the OCBA let me leave those emotions in court and associate with wonderful lawyers who were involved in their community. Being involved in the OCBA has been instrumental to me on a professional level as well. I am convinced that my OCBA involvement and the dynamic attorneys I met helped when I was applying for my judgeship, and we remain friends. e members of the bar knew me. I have enjoyed my OCBA involvement immensely, and I am honored to have been a member for so long.

Any advice for newer lawyers? Join the bar associations that interest you. Connecting with the OCBA is a way to get to know lawyers — some of the most powerful lawyers in the community, the state, and the world. Engaging and getting active will help with your career because more people will know who you are, and your practice is guaranteed to beneﬁt.

Last question: Do you plan to ever slow down?

No. I have no desire to ever retire. I have been honored to serve on an extremely distinguished bench, and now I currently love working for JAMS. I work with brilliant legal minds at JAMS, including my former colleagues Judge Wendy Potts (ret.) and Judge James Alexander (ret.). I get to travel the country handling arbitrations and mediations as a private judge. My father, Victor Langford, taught me the importance of work and an unheard-of work ethic. He always worked hard, putting in long hours to support us, and took great pride in his work as one of the ﬁrst Black tool and die makers at Ford Motor Co. I worked hard as a teen mom, and I love working. I do not intend to stop, and if you hear that I’m not working, please come and check on me because something is wrong. I love working and participating in bar association activities.

Lastly, congratulations, President Googasian, and thank you again for selecting me to swear you in as president.

Dean M. Googasian is the president of the Oakland County Bar Association.

JOINING THE OCBA BOARD: A Pathway to Leadership and Connection

By Jennifer Quick

Membership in the Oakland County Bar Association oﬀers a unique range of leadership opportunities. As a member, you can chair a committee, organize an event, or showcase your expertise by contributing to LACHES, our premier publication. Many of the OCBA’s current and past directors have stated that serving on the OCBA’s board of directors is one of the most rewarding experiences of their career. It has allowed them to form strong connections with peers across various practice areas, with whom they now have trusted referral relationships. Additionally, the board provides the opportunity to implement ideas that enhance the association’s value for all members — all while having fun! e OCBA board is a dynamic group of passionate and compassionate individuals who are committed to making impactful decisions. e camaraderie and meaningful work make the experience truly memorable.

For those considering board service, here are some beneﬁts board members have found valuable:

1. Expanding Your Network

No matter where you are in your career, growing your network is essential. Joining a board of enthusiastic, well-connected leaders enables you to broaden your community of colleagues and mentors. is expanded network becomes an enduring asset, oﬀering support and inspiration for future career moves, board roles, and professional growth.

2. Enhancing Your Personal Brand

While the primary goal is to make an impact,

joining a board does bolster your professional presence. It demonstrates leadership and commitment to advancing the ﬁeld, qualities that enhance your credibility on résumés, LinkedIn proﬁles, and more. is visibility helps prospective clients and employers appreciate your unique strengths and expertise.

3. Championing Meaningful Initiatives

Serving on the OCBA board allows you to support causes that resonate with you. With opportunities to bring fresh ideas and insights, you can help shape the OCBA’s focus on initiatives that matter to our members. Contributing to these eﬀorts lets you make a real diﬀerence and connect your passions with the OCBA’s mission.

4. Embracing New Intellectual Challenges

Board service can also be an enriching intellectual endeavor. Board responsibilities require a strategic mindset and a holistic perspective, distinct from day-to-day legal practice. is broader outlook will not only inform your current role but also beneﬁt you throughout your career.

If these advantages sound appealing, I invite you to consider running for a position on the OCBA board of directors.

THE ROLE OF THE OCBA BOARD

e OCBA board sets the strategic direction for the association, working to create programs and policies that enhance member beneﬁts. Board responsibilities include approving policy,

overseeing ﬁnances, evaluating committee work, and organizing events that foster professional growth and community service. Uniquely, the OCBA also takes positions on public policy aﬀecting the legal profession, actively engaging in the legislative and rulemaking process. As a director, you carry both individual and collective responsibilities in helping the OCBA achieve its mission:

“To serve the professional needs of our members, improve the justice system, and ensure the delivery of quality legal services to the public.”

is year, the Nominating Committee will submit one to two names for each open position. With four three-year terms and one two-year term available, up to 10 candidates may be placed on the ballot.

HOW TO APPLY

Potential candidates are asked to submit a letter of intent and a Personal Data Form outlining their contributions to the legal profession, their involvement in OCBA committees, and their area of law practice. OCBA bylaws require that in order to be a director, you must have been a regular OCBA member for the past four years. When considering applications for board nominations, the Nominating Committee places great emphasis on past bar service.

e Personal Data Forms are available from the OCBA or on our website at ocba.org/ elections. Watch for our e-blast announcements with links to the forms for additional information. Completed applications are due no later than 5 p.m. on Monday, February 3, 2025

e Nominating Committee will select the slate of candidates and notify the applicants no later than Friday, February 14. A link to the ballot will be emailed to all regular OCBA members on ursday, May 1. e ballot will close by 5 p.m. on Friday, May 9, and the election results will be announced by Monday, May 12.

Jennifer Quick is executive director of the Oakland County Bar Association.

CALENDAR OF EVENTS

Please Note: Dates listed below were sent to the publisher on November 1, 2024. It is possible that some of the events listed below have since been altered. Please check ocba.org/events for the most up-to-date schedule of events.

JANUARY

OFFICE CLOSED IN OBSERVANCE OF NEW YEAR’S DAY

BAR NIGHT OUT MEMBERSHIP MIXER

Join us from 5:30 to 7:30 p.m. at Birmingham Pub for our first membership mixer of 2025! Mix and mingle with fellow bar members while enjoying appetizers and a cash bar. Space is limited, so register today at ocba.org/events

OFFICE CLOSED IN OBSERVANCE OF MARTIN LUTHER KING JR. DAY

OAKLAND COUNTY BAR FOUNDATION FELLOWS RECEPTION

This exclusive, invitation-only event for Oakland County Bar Foundation Fellows provides a festive setting in which to come together in support of the OCBF and celebrate these dedicated individuals. Enjoy delicious food and drinks and the camaraderie of friends and colleagues. OCBF Fellows can register now at ocba. org/events. To learn more about the Fellows Program or to become a Fellow, visit ocba.org/fellows 15

FEBRUARY

NEW LAWYERS NETWORKING NIGHT AT LCA

A Joint OCBA New Lawyers Committee/DBA Barristers Event

Join us at Little Caesars Arena for a special cross-networking event with members of the Detroit Bar Association. Watch the Pistons face off against the Cleveland Cavaliers while building camaraderie and your book of business. Feel free to bring family and friends. Enjoy exclusive ticket savings and all-you-can-eat hot dogs, nachos, popcorn, soda, and more at the North End Club. Register by February 2 at pistons.com/lawyers

MEMBERSHIP MAXIMIZER

Want to get more out of your OCBA membership? Hoping to expand your professional network? Then join us at 8:30 a.m. at the OCBA, and our staff will show you how to get the most value for your money and how your membership can help you grow professionally. Plus, we leave plenty of time to meet and network with your fellow members. RSVP at ocba.org/events

The New Lawyers Committee annually invites the OCBA board of directors to a competitive challenge. This year, we return to Topgolf. Can the New Lawyers Committee retain its title after winning last year’s cornhole challenge, or will the board take back the coveted trophy? You don’t have to be a new lawyer or a board member to participate — you just have to pick a side! Register at ocba.org/events 5

OFFICE CLOSED IN OBSERVANCE OF PRESIDENTS DAY

NEW LAWYERS VS. THE BOARD CHALLENGE

Sam Morgan & Greg Jones have a team of Employment Lawyers with decades of experience providing advice, counsel and representation to Employees and Employers in a wide variety of occupations, for:

• Wrongful discharge cases, including breach of employment contract, discrimination, harassment and retaliation

• Non-payment of compensation disputes, including commission, bonus and incentive compensation arrangements, and FLSA violations

• Enforcement of equity award agreements and minority shareholder rights

• Defending against mobility-killing non-compete and non-solicitation contracts

•Separation agreement reviews and severance negotiations Drafting employment contracts HR counseling, defending against government investigations

team includes Senior Associate, Barbara Urlaub*, and Of counsel attorneys, David Kotzian*, Donald Gasiorek*, Raymond Carey *, and Paul Hines

JANUARY

21 Co-Defendants and Objections During Trials (5:30 – 7:30 p.m.)

A seminar for criminal and juvenile defense appointed counsel

Presenters: Paulette M. Loftin, Esq., Chief Public Defender, and Lindsay Abramson, Esq., Deputy Chief Public Defender, Oakland County Public Defender’s Ofﬁce

This Zoom seminar will highlight policies and trial objections during co-defendant trials. There will be an overview of successful cases and a review of issues that may arise. Join us for this exciting and interactive seminar.

Worth 2 hours of criminal and juvenile training credit for appointed counsel

FEBRUARY

13 Trial Strategy for Millennial Jurors (Noon – 1 p.m.)

A professional development seminar

Presenter: Magna Legal Services

This Zoom seminar will provide an overview of the millennial generation and their attitudes, beliefs, and communication styles as characteristics and expectations of this generation of jurors. Finally, an overview of voir dire considerations, trial presentation, and myths and perceptions as to damages will be covered.

18 Preliminary Exams (5:30 – 7:30 p.m.)

A seminar for criminal defense appointed counsel

Presenters: Cecilia Quirindongo-Baunsoe, Esq., and Melissa Krauskopf, Esq., K and Q Law PLLC

This Zoom seminar will review preliminary exams. Learn tips and tricks from two experts. A Q&A session will follow the presentation.

Worth 2 hours of criminal training credit for appointed counsel

MARCH

7 Circuit-Probate Court Bench/Bar Conference (8 a.m. – 1 p.m.) Beyond Boundaries: Effective Lawyering for the Hybrid Attorney

Our highly anticipated biennial Bench/Bar Conference is back, fostering stronger connections and collaboration between the bench and the bar. This year’s theme centers on mastering the balance between remote and in-ofﬁce work, as well as in-person and virtual proceedings. Join us for valuable breakout sessions featuring practical insights and engaging roundtable discussions on the challenges and opportunities of hybrid practice and more. Registration opens soon! Learn more and secure your spot at ocba.org/bench-bar.

TBA Marijuana Defenses Post-MRTMA (Noon – 1 p.m.)

A seminar for criminal defense appointed counsel

Presenters: Michael Komorn, Esq., Komorn Law, and David Rudoi, Esq., Rudoi Law

This Zoom seminar will provide an overview of the Michigan Regulation and Taxation of Marihuana Act of 2018. A presentation will highlight defenses, issues, and compliance. Join us to discuss this hot topic of progressive changes in the law!

Worth 1 hour of criminal and juvenile training credit for appointed counsel

Mathew Kobliska

‘The Walls Have AIs’

By Ahmad El-Bkaily

Since the embrace of cloud-based videoconferencing in the post-COVID legal world, virtual meetings have become part of the new normal. In light of the proliferation of artificial intelligence (AI) tools in our now-ubiquitous videoconferencing platforms, scrutiny of what data they capture is warranted. The wider business world has continued that trend; according to McKinsey, self-reported AI adoption increased from 55% in 2023 to 72% in 2024.1 Confidentiality is a cornerstone of the legal profession, and it is essential to take the necessary precautions to ensure that sensitive information remains protected while using AI tools. This article will discuss the capabilities of the new AI features being rolled out, how their companies claim ownership of the data they capture through their terms of service, and some sensible precautions to keep the peeping AIs out of your legal matters.

TYPES OF AI TOOLS AND THEIR FEATURES

The integration of AI features in videoconferencing platforms includes a wide array of functionalities, but the most relevant for this discussion are automatic transcription and translation. These features allow an AI guest to track and monitor discussions during a meeting. The AI guest comes in two categories: (1) a feature integrated into the videoconferencing platform, which is managed by the host, and (2) stand-alone AI tracking applications, which are controlled by an individual participant.

Popular videoconferencing platforms such as Zoom and Microsoft Teams can accurately transcribe speech to text in real time, thereby capturing conversations occurring on their platforms. Once these transcriptions are captured, they remain stored by the platforms. These transcriptions remain accessible to the user as well as the platform itself. Confidential information discussed during a videoconferencing meeting is stored by a third party that, unlike attorneys, is not legally bound against disclosure. As of 2020, over 60% of the 1,000 largest companies in the U.S. have fallen victim to a public data breach.2 Moreover, the adoption of malicious AI tools has only worsened this trend.

Stand-alone AI guests or “bots,” such as Read AI, Otter.ai, and Fireflies.ai, are third-party AI applications that can join a videoconferencing session without the host’s approval (or awareness). These stand-alone AI bots track and store meeting information that is not accessible to the host and are stored on servers separate from the videoconferencing platforms hosting the meetings they attend. Any meeting guest may invite their stand-alone AI bot to the meeting and receive a transcription of the meeting without the host’s consent. In some instances, the stand-alone AI bot is listed as a meeting participant by name (e.g., Read AI Bot), but the user can change that name as desired. Many of these stand-alone AI bot companies are small startups with morelimited resources for data protection compared to major videoconference platform owners, thereby increasing the risk of a data breach.

OWNERSHIP OF THE DATA GENERATED FROM YOUR MEETINGS

The race to secure data is the gold rush of the AI era. Data is the lifeblood needed to train and refine modern AI tools.3 The data accumulated by AI tools is invaluable as training data for the underlying AI algorithm and can, in turn, train the AI algorithms to produce improved results. The leader in the AI space, OpenAI, offers between $1 million and $5 million per year to license copyrighted news articles to train its AI models4 as the competition to obtain data heats up. As the

value of data increases, so do the questions around who owns the data. Technology companies’ terms of service often claim the service itself is the owner.

In March of 2023, Zoom caused an outcry when it updated its terms of service because concerned users argued that the changes granted the company unrestricted rights to use user data to train its AI algorithms.5 In response, Zoom published a blog post to address these concerns, clarifying that users own their own video, audio, and chat content. The relevant section of Zoom’s terms of service explicitly states:

“Zoom does not use any of your audio, video, chat, screen sharing, attachments or other communications-like Customer Content (such as poll results, whiteboard and reactions) to train Zoom or third-party artificial intelligence models.”6

However, a closer look at Zoom’s terms of service suggests that the above statement is misleading. While raw data, such as audio, video, and chat content, is protected and owned by the host, there is a carve-out for “Service Generated Data,” which includes the AI-generated transcriptions discussed above. In the relevant part, the Zoom terms of service state:

“10.5 Service Generated Data. Telemetry data, product usage data, diagnostic data, and similar data that Zoom collects or generates in connection with your or your End Users’ use of the Services or Software are referred to as Service Generated Data. Zoom owns all rights, title, and interest in and to Service Generated Data.” (emphasis added)

While the user owns the audio, video, and chat content, Zoom wholly owns the AI-generated transcripts. This workaround allows Zoom to use meeting content to train its own AI algorithms and to sell it to third parties such as OpenAI, without payment or notification to the original user.

The stand-alone AI bots are often owned by much smaller companies and receive significantly less scrutiny and, consequently, offer less protection. For example, Read AI does not distinguish between user content and AI-generated content. The Read AI terms of service state:

“(b) Use of User Content. In order to provide the Services to you, we need certain rights to access, analyze, and use your User Content. For this purpose, you grant Read AI a nonexclusive, royalty-free, worldwide, fully paid, and sublicensable (through multiple tiers) license to use, reproduce, and analyze your User Content only for purposes of creating, providing, and improving our Services, without compensation to you or any third

party. When you post or otherwise share User Content on or through our Services, you understand and agree that your User Content and any associated information (such as your username or profile photo) may be visible to others. You hereby irrevocably waive any “moral rights” or other rights with respect to attribution of authorship or integrity of materials regarding User Content that you may have under any applicable law or under any legal theory.”7 (emphasis added)

The above language suggests that Read AI owns all user content captured by its stand-alone AI bot and waives all rights the user has over the data created based on their use.

With respect to data security, Read AI provides no warranties as to the safety of the data generated by the user’s use of its product. The terms of service state:

“Without limiting the foregoing, Read AI takes no responsibility and assumes no liability for any User Content posted, stored, uploaded, accessed, or downloaded by you or any third party, or for any loss or damage thereto, incomplete or inaccurate User Content, or for any user conduct, nor is Read AI liable for any mistakes, defamation, slander, libel, omissions, falsehoods, obscenity, pornography, or profanity you may encounter.

As a provider of interactive services, Read AI is not liable for any statements, representations, or User Content provided by its users in any public forum or other area.” (emphasis added)

Should a user-data breach occur, Read AI exempts itself from any responsibility. Thus, Read AI is also free to use and sell the data without notifying or compensating the original content creators. This is troubling since the host of the meeting may not even be aware that the standalone bot attended the meeting and captured confidential information.

SENSIBLE PRECAUTIONS TO TAKE WHEN USING VIDEOCONFERENCING PLATFORMS

Despite the challenges outlined above, there are risk-mitigating steps a prudent lawyer should take when utilizing videoconferencing, including: (1) utilizing security settings integrated into the videoconferencing platforms, and (2) enforcing guidelines for meeting participants. Initially, to enforce these precautions, the attorney hosting the meeting should select a videoconferencing platform that offers robust security features.

The most important precautions should be taken when setting up the meeting using the built-in settings of your videoconferencing tool of

choice, before the meeting begins.8

• Deactivate AI Features

o Often activated by default, AI tracking features are referred to with different marketing terms such as “bots,” “companions,” “assistants,” and “helpers,” as well as proper nouns such as Siri, Synthia, Pixella, and the like. Ensure that, prior to the meeting, all such features are deactivated. When these features are deactivated, there is no transcript generation based on your meeting.

• Update Version

o Ensure you are running the most up-to-date version of your videoconferencing platform. Outdated or unpatched videoconferencing platforms may have security flaws that hackers can exploit, leading to privacy breaches and potential data loss.

• Control Access

o Allowing unintended participants (such as stand-alone AI bots) access to your meeting may expose sensitive information to unintended parties. Enable features that restrict access by ensuring only the intended parties are invited to the meeting, requiring a password, enabling waiting room features, and locking the meeting once all intended parties have joined.

• Connect Securely

o Ensure your internet connection is secure from malicious actors. Avoid connecting from public Wi-Fi sources, and ensure your home WiFi uses encryption and a complex password.

• Limit File and Screen Sharing

o Uncontrolled file sharing may lead unsuspecting users to receive malicious files and links, which may compromise their system. Set the meeting to limit the types of files that can be shared (e.g., PDFs and Microsoft Office files only) and control who can share their screen during the meeting. When possible, reserve file and screen sharing for yourself alone.

Even with all the security tools available, human interaction remains the most significant factor in risk management. Setting up guidelines for meeting participants beforehand can mitigate these risks.9 So be sure to:

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FEATURE | Data Security

• Update Local Videoconferencing Client

o Ensuring that every participant updates to the latest version reduces the risk of exposing the meeting content to unscrupulous actors.

• Ensure Participants Connect Securely

o It only takes one participant being monitored on an unsecured internet connection for all the conﬁdential information being shared in the meeting to be exposed.

• Avoid Invite Sharing

o Sharing meeting invites can allow uninvited parties (such as stand-alone AI chatbots) to access the meeting.

• Conduct Meetings in Private

o Participants joining your meetings may have their conversations be overheard. Since there is no expectation of privacy in public places, participants should ﬁnd a private place to join the meeting.

In summary, lawyers must be vigilant about the substantial risks linked to videoconferencing platforms, particularly the threats to conﬁdentiality. It is crucial for legal professionals to utilize secure and encrypted platforms, carefully assess their surroundings to avoid unauthorized access, and exercise caution when sharing sensitive information during videoconferences. ese measures are essential for mitigating the potential risks and ensuring the preservation of conﬁdentiality, which is fundamental to the legal profession.

Footnotes:

Ahmad El-Bkaily has over a decade of intellectual property experience, speci cally in the software and AI space. His experience ranges from serving as a USPTO patent examiner to big-law IP associate to in-house counsel. He now runs his own rm, Cambridge & Co., where he handles the intellectual property matters of small to midsize technology companies.

1. Singla, Alex, et al. “The State of AI in Early 2024: Gen AI Adoption Spikes and Starts to Generate Value.” McKinsey & Company, 30 May 2024, mckinsey.com/ capabilities/quantumblack/our-insights/the-state-of-ai.

2. “Cyentia Institute Publishes Groundbreaking Research on the Frequency and Cost of Breaches.” Cyentia Institute, 18 March 2020, cyentia.com/2020information-risk-insights-study.

3. Agrawal, Ajay, et al. “Is Your Company’s Data Actually Valuable in the AI Era?” Harvard Business Review, 17 Jan. 2018, hbr.org/2018/01/is-your-companys-dataactually-valuable-in-the-ai-era.

MICHAEL P. ASHCRAFT, JR.

Phone: (248) 594-8217 mashcraft@plunkettcooney.com

JEFFREY S. HENGEVELD

Phone: (248) 594-8202

jhengeveld@plunkettcooney.com

Michigan | Illinois | Indiana | Ohio www.plunkettcooney.com

4. David, Emilia. “OpenAI’s News Publisher Deals Reportedly Top Out at $5 Million a Year.” The Verge, 4 Jan. 2024, theverge.com/2024/1/4/24025409/openaitraining-data-lowball-nyt-ai-copyright.

5. Fried, Ina. “Zoom CEO Admits Mistake as Terms-of-Service Changes Raise AI Fears.” Axios, 9 Aug. 2023, axios.com/2023/08/09/zooms-terms-service-changesai-fears. Accessed 15 Oct. 2024.

6. “Zoom Terms of Service.” Zoom, 2023, zoom.com/en/trust/terms/?cms_ guid=false&lang=en-US. Accessed 15 Oct. 2024.

7. “Terms of Service.” Read AI, 2024, read.ai/termsofservice. Accessed 15 Oct. 2024.

8. “Guidance for Securing Video Conferencing.” cisa.gov/sites/default/ﬁles/ publications/CISA_Guidance_for_Securing_Video_Conferencing_S508C.pdf. Accessed 15 Oct. 2024.

9. Hii, Paul. “How to Mitigate Video Conferencing Security Risks.” AARNet, 23 May 2018, aarnet.edu.au/how-to-mitigate-video-conferencing-security-risks. Accessed 1AD.

Strobl PLLC is pleased to announce the expansion of its business litigation capacity with the addition of Russell G. Carniak. A seasoned commercial litigator, Carniak brings his extensive background in business litigation and his proven record of guidance and advocacy for his clients.

With specialized courtroom experience as well as the skill and knowledge to avoid litigation, Carniak centers his practice on representing businesses, organizations, and individuals in a variety of litigation matters and disputes. He presents customized solutions to his clients’ needs based on their unique circumstances and objectives. In addition to litigation, Carniak also advises clients on business formation, organization, and structuring.

Prior to joining Strobl, Carniak was the managing partner at his own firm for more than two decades, where he specialized in business and commercial litigation in the state and federal courts in Michigan. In addition, his practice concentrated in condemnation, family law, and liquor license transfers and acquisitions. Carniak also serves as an arbitrator, mediator, and facilitator, as well as an expert witness in legal malpractice cases.

Carniak graduated with his Juris Doctor from the Detroit College of Law and earned his undergraduate degree at the University of Michigan.

Plunkett Cooney is pleased to announce the addition of three new attorneys to the firm’s Bloomfield Hills office, Kelsey M. Hall, Andrew J. Lorelli, and Elena Djordjeski

Kelsey M. Hall joins Plunkett Cooney’s Torts & Litigation and Transportation Law practice groups and maintains a diverse litigation defense practice that includes premises liability, transportation liability, and general negligence claims. Hall represents insurance carriers and their policyholders in slip, trip, and fall claims; first- and third-party auto negligence litigation; uninsured and underinsured motorist claims; special investigations fraud; subrogation; and disputes involving breach of contract, general negligence, premises liability, and exposure to asbestos.

A member of the State Bar of Michigan and Oakland County Bar Association, Hall graduated from the University of Iowa College of Law in 2023. She earned her undergraduate degree from Eastern Michigan University in 2020. While there, Hall was a national champion of the 2020 American Moot Court national tournament, and she currently coaches the University of Michigan moot court for undergraduates.

Andrew J. Lorelli joins the firm as an associate attorney in the firm’s Trusts & Estates practice group and has a decade of experience working in the areas of trust and estate planning and trust and probate administration, including decedent estates, guardianships, conservatorships, and special needs trusts.

A member of the Oakland County Bar Association’s and State Bar of Michigan’s probate and estate planning sections, Lorelli served four years on active duty as a judge advocate in the U.S. Marine Corps, having been stationed in Okinawa, Japan, and several years as a lawyer

in private practice. Lorelli drafts estate plans for a wide variety of clients; prepares fiduciary accounts in trusts, decedent estates, and conservatorships; and handles contested and uncontested probate matters in dozens of counties all over the state of Michigan.

Lorelli received his undergraduate degree in 2009 from the University of Michigan and his law degree in 2013 from the University of Iowa College of Law.

A member of the firm’s Torts & Litigation and Transportation Law practice groups, Elena Djordjeski maintains a diverse litigation defense practice that includes claims involving motor-vehicle liability, premises liability, general negligence, breach of contract, and municipal liability.

With nearly a decade of experience as a trial attorney, Djordjeski represents individuals, businesses, insurance carriers, and municipalities in cases involving slip, trip, and fall claims; first- and third-party no-fault benefits; uninsured and underinsured motorist claims; commercial trucking and third-party transportation liability; special investigations fraud; dramshop/liquor liability issues; and disputes involving contracts, construction defects, negligence, and other civil claims.

Selected as a “Rising Star” by Super Lawyers since 2022, Djordjeski is a member of the Detroit and Oakland County bar associations, as well as the State Bar of Michigan. She is also a member of the Women Lawyers Association of Michigan.

Admitted to practice in state and federal courts in Michigan, Djordjeski received her law degree, magna cum laude, from Western Michigan University Cooley Law School in 2015. While in law school, she received numerous academic awards and competed as a member of the school’s national moot court team and national mock trial team. Djordjeski earned her undergraduate degree from Michigan State University in 2012.

Damages in a Copyright Infringement Case

By Daniel Bliss

In any copyright infringement case, damages are an important consideration. But what are the potential damages in a copyright infringement case? Before we explore the issue of damages, we must first establish liability for copyright infringement. However, before liability is established, one must have a registered copyright on a copyrighted work. In this article, we will explore copyrighted works, registration of copyrighted works, initiating a copyright infringement action, damages in a copyright infringement case, other remedies for copyright infringement, and forum alternatives.

The copyright law is codified in 17 USC 100 et seq. In the United States, “[c]opyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” See 17 USC 102(a). Original works include literary works; musical works that may include words; dramatic works that may include music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works. See 17 USC 102(a). According to the interpretation of the U.S. Constitution and Supreme Court cases, the “authorship” in the work must be a human and not a nonhuman.1 A work is “fixed” in a tangible medium when its embodiment is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. See 17 USC 101. Thus, a copyrighted work exists upon the moment of creation by a human being of any of these works fixed in a tangible medium.

Once an original work exists, a copyright owner must register the work before initiating a copyright infringement action. In particular, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made.” See 17 USC 411. To obtain a copyright registration, the work is filed as a copyright application with the U.S. Copyright Office, and a certificate of registration is obtained. Although registration of a work in the U.S. typically takes nine months, a copyright owner can expedite the registration by requesting “special handling” when applying for copyright registration. Under the U.S. Copyright Office rules, special handling is granted based on prospective litigation and payment of the fee. Once the U.S. Copyright Office receives a request for special handling and it is approved, the copyright application is processed typically within five working days. However, the U.S. Copyright Office makes no guarantee that the copyright application can be processed within this time frame.

After the certificate of registration is obtained from the U.S. Copyright Office, copyright infringement must be determined. The owner of a copyrighted work has the exclusive rights to reproduce the copyrighted work in copies; prepare derivative works based upon the copyrighted work; distribute copies of the copyrighted work to the public; in the case of literary,

musical, dramatic, choreographic, pantomimed, pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, display the copyrighted work publicly; and in the case of sound recordings, perform the copyrighted work publicly by means of a digital audio transmission.2 Under 17 USC 501(a), “[a]nyone who violates any of the exclusive rights of the copyright owner … or of the author … is an infringer of the copyright or right of the author.”3 Thus, copyright infringement exists upon the violation by anyone of any exclusive right in the copyrighted work.

Once copyright infringement is determined, the copyright owner may institute a copyright infringement action. Under 17 USC 501(b), the copyright owner, subject to the requirements of Section 411, is entitled to institute an action for infringement of any exclusive right that has been violated during their ownership of the copyright. The court may require the copyright owner to serve written notice of the action with a copy of the complaint upon any person who has or claims an interest in the copyright according to the U.S. Copyright Office records, and it requires that such notice be served upon any person whose interest is likely to be affected by a decision in the case. In addition, the court may require joinder or permit intervention of any person having or claiming an interest in the copyright. See 17 USC 501(b).

However, there are statutory limits for instituting a copyright infringement action. A copyright owner must bring a civil action for copyright infringement within a predetermined time period. Under 17 USC 507(b), “[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.”4

In a copyright infringement action, damages for copyright infringement may be obtained. A copyright owner may recover actual damages and any additional profits of the alleged in-

fringer or statutory damages for copyright infringement. See 17 USC 504. “In establishing the [alleged] infringer’s profits, the copyright owner is required to present proof only of the [alleged] infringer’s gross revenue, and the [alleged] infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.” See 17 USC 504. Thus, the copyright owner is entitled to recover the actual damages suffered as a result of the infringement, and any profits of the alleged infringer that are attributable to the infringement. See 17 USC 504. However, actual damages may be hard to prove.

While the copyright owner may recover actual damages and profits for the alleged infringement, an award of the alleged infringer’s profits examines the facts only from the alleged infringer’s point of view. On Davis v. Gap, Inc., 246 F3d 152, 159 (CA 2, 2001). If the alleged infringer has earned a profit, this award makes them disgorge the profit to ensure that they do not benefit from their wrongdoing. The award of the owner’s actual damages looks at the facts from the point of view of the copyright owner; it undertakes to compensate the owner for any harm they suffered by reason of the infringer’s illegal act. See generally Fitzgerald Publ’g Co v. Baylor Publ’g Co., 807 F2d 1110, 1118 (CA 2, 1986); Walker v. Forbes, Inc., 28 F3d 409, 412 (CA 4, 1994); On Davis v. Gap, Inc., 246 F3d 152, 159 (CA 2, 2001).

Actual damages may include lost sales, lost profits, lost licensing revenue, or any other monetary loss resulting from the copyright infringement. For example, reasonable royalties are used when actual damages or profits are not provable. See Deltak, Inc. v. Advanced Sys., Inc., 767 F2d 357, 360-362 (CA 7, 1985).

The copyright owner may not claim unreasonable amounts because of the alleged infringement. The amount of damages may not be based on “undue speculation.” In other words,

the question is not what the copyright owner would have charged, but rather what is the fair market value. In order to make out a claim that the copyright owner has suffered actual damage because of the alleged infringer’s failure to pay a license fee, the copyright owner must show that the portions taken had a fair market value. Thus, the courts have considered the market value of the uncollected license fee as an element of “actual damages” under Section 504(b). See On Davis v. Gap, Inc., 246 F3d 152, 166 (CA 2, 2001). In On Davis v. Gap, Inc., the court concluded that Section 504(b) permits a copyright owner to recover actual damages, in appropriate circumstances, for the fair market value of a license covering the infringing use.

As an alternative to actual damages, a copyright owner may elect to recover statutory damages. Statutory damages provide, with respect to any one work, an amount of not less than $750 or more than $30,000 as the court considers just. See 17 USC 504. The copyright owner may elect statutory damages at any time before final judgment is rendered, instead of actual damages and profits for the infringement. See 17 USC 504.

Statutory damages may be increased if the copyright infringement is willful. In a case where the copyright owner proves infringement and the court finds willful infringement, the court may increase the award of statutory damages to an amount of not more than $150,000. However, if the court finds that the alleged infringer was not aware and had no reason to believe that their acts infringed the copyright, the court may reduce the award of statutory damages to an amount of not less than $200.

See 17 USC 504.5

Another important consideration in a copyright infringement case is an award of costs and attorney fees. Except when the party is the United States, the court may allow the recovery of full costs by or against any party and can award reasonable attorney fees to the prevailing party as part of the costs. See 17 USC 505.

However, there are limitations on statutory damages and attorney fees. No award of statutory damages or of attorney fees shall be made for “(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication

of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” See 17 USC 412. Most courts do not allow a copyright owner to obtain statutory damages for infringement that occurred prior to registration. This is because the courts interpret “any infringement of copyright commenced after first publication of the work and before the effective date of its registration” in 17 USC 412(2) to mean that the infringement prior to registration that continues after registration is one continuous infringement and not new individual infringements after registration. Therefore, one may not obtain statutory damages or attorney fees for copyright infringement prior to registration of the copyrighted work.

There may be additional damages in certain copyright infringement cases involving a proprietor of an establishment. If the court finds that a proprietor of an establishment claims that its activities were exempt under 17 USC 110(5) and did not have reasonable grounds to believe that its use of a copyrighted work was exempt under such section, the copyright owner shall be entitled to, in addition to any monetary damages, an additional award of two times the amount of the license fee that the proprietor should have paid the copyright owner for such use during the preceding period of up to three years. See 17 USC 504.

As to other remedies, a copyright owner may pursue injunctive relief. The copyright laws allow an owner of a copyright that is infringed to sue for an injunction to stop any further infringement. See 17 USC 502. The court may grant “temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” See 17 USC 502. Thus, injunctive relief may be obtained in addition or as an alternative to monetary damages.

Depending on the amount of damages, before filing suit, one may want to consider an alternative forum to federal court to institute a copyright infringement action. The U.S. Congress has established the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act) to provide an alternative forum to federal court before the Copyright Office called the Copyright Claims Board (CCB) for resolving certain copyright disputes that involve up to $30,000 (called “small claims”). The use of the CCB is voluntary, and both parties must agree to participate. The CCB provides advantages over federal court because certain copyright disputes may be resolved before a panel of copyright experts as opposed to a jury or a federal judge. The CCB proceeding is a streamlined and less-expensive alternative compared to federal court.

Before the CCB, monetary damages may be obtained if the amount is $30,000 or less. As in federal court, the copyright owner who brings a successful copyright infringement claim can choose to recover either statutory damages (without proving actual damages) or actual damages and proﬁts based on lost sales, lost opportunities to license, diminution in the value of the copyright, and/or the profits made from the infringement. While the CCB cannot issue an “injunction” like the federal court, the CCB can require an infringer to stop engaging in further infringement. e CCB can include in its determination a requirement that the accused infringer modify certain activities if that party has agreed to do so.

If the total damages do not exceed $5,000, the copyright owner can still proceed before the CCB. e copyright owner may request consideration under the CCB’s “smaller claims” procedures. Under “smaller claims,” the damages, exclusive of attorney fees and costs, must be under $5,000, and these smaller claims will be decided by a single copyright claims officer. While there are not three officers, the decision will have the same effect as one issued by the full CCB. Under smaller claims, the proceedings are even more streamlined than in the typical cases before the CCB.

In summary, if a copyright owner is able to prove infringement of their registered copyrighted work, the copyright owner may be entitled to monetary damages as either actual damages or statutory damages if the copyrighted work is registered before the infringement occurs. Otherwise, the copyright owner will only be entitled to recover actual damages for copyright infringement of the registered copyrighted work. One measure of actual damages may be that the infringement caused lost sales, lost opportunities to license, or diminution in the value of the copyright. In addition, the copyright owner may be able to establish the fair market value of a license covering the alleged infringing use. e fair market value cannot be speculative and should be based on prior licensing or licensing by others of similar works. Further, if the copyright owner is able to elect statutory damages, these statutory damages may be increased if the infringement is willful. As to other remedies, the copyright owner may pursue an injunction, costs, and attorney fees. If the damages are not large, the copyright owner may ﬁle an action in an alternative forum with the Copyright Claims Board, which can award monetary damages. erefore, damages are an important consideration in any copyright infringement action.

Daniel Bliss is a shareholder attorney with Howard & Howard Attorneys PLLC in Royal Oak, Michigan. Bliss manages all phases of intellectual property, including patent, trademark, copyright, licensing, and litigation. He works with multinational corporations, consortiums, small businesses, and individuals. His technology experience includes mechanical, electrical, chemical, materials, computer software, and business methods. Bliss has extensive experience in intellectual property litigation, including case preparation, analysis, and execution, before federal courts and the U.S. Patent and Trademark O ce.

Footnotes:

1. See 2021 Compendium of U.S. Copyright Ofﬁce Practices.

2. See 17 USC 106 for a more detailed explanation of exclusive rights.

3. See 17 USC 501 for qualiﬁcations on this section.

4. In a recent case before the Supreme Court, the court held that copyright infringement damages may be recovered beyond three years. See Warner Chappell Music, Inc. v. Nealy, 144 S Ct 1135, Case No. 22-1078 (2004).

5. See 17 USC 504 to ﬁnd criteria for reducing the amount of damages.

Understanding and Efficiently Resolving Software Development Disputes

By Jonathan B. Frank

Since this article addresses a litigator’s approach to resolving software development disputes, it makes sense to start with some background. With apologies to those who may find Wikipedia a superficial (or worse) source of information, custom software is “software that is developed specifically for some specific organization or other user. As such, it can be contrasted with the use of out-of-the-box software packages developed for the mass market, such as commercial off-the-shelf software, or existing free software.” The primary advantage is that “it can accommodate that customer’s particular preferences and expectations, which may not be the case for commercial off-the-shelf software.” Industries that use custom software include construction, health care, education, and retail.

With this background, it should not surprise us to learn that Wikipedia contains this heading: “Major project overruns and failures.” The answer to the question “What could possibly go wrong?” is “A lot.” To help put this in a more familiar context, let’s start with a more common subject matter for litigation: construction. Anyone who has litigated a construction case knows how painfully detailed and trade-specific the factual disputes can be.

Software development litigation is like construction litigation on steroids. The central five issues are the equivalent of:

• “Who told you to move that retaining wall over there?”

• “I didn’t think that roof was going to be so expensive.”

• “You told me that air-conditioning unit would keep my whole building cool.”

• “The foundation is sinking, and my walls are cracking.”

• “Why aren’t you done already?”

In other words:

• Conflicting directions;

• Confusion about cost and specifications

(perhaps the result of changes without change orders);

• Misplaced reliance on the expertise of the performing party;

• Project-threatening quality failures; and

• Unclear milestones and measurement of performance.

As in a construction case, the significant facts will be bitterly contested (luckily, the law will not be). No doubt each side’s project management team has met multiple times, pointing fingers but not solving problems. Given the magnitude of the problems, senior management has likely been involved. Not-so-friendly threats have been exchanged. So, the lawyers get called.

What can we do? Even understanding the analogy to construction cases, the first challenge is obvious: There is no wall, roof, air-conditioning unit, or drywall to look at. And while it may be easy to describe and inspect an unfinished building, it may be nearly impossible to “see” whether a software development project has failed or is incomplete. Luckily, clients who have already spent time fighting about the facts should be able to explain them, even to an attorney!

This process, though, highlights the major difficulty we will have in representing our clients. Imagine presenting a software development dispute to a judge, jury, or arbitrator. Think about how much foundational knowledge you would need to gather, then provide to the fact finder, before even addressing the disputed facts (unfortunately, you won’t find a handy Wikipedia article). And that only sets the stage for the dueling narratives and expert testimony, likely focused on scrutinizing and analyzing a series of microdecisions, often with cascading impact.

Without being overly pessimistic, there is very little chance that a third-party decision would be reliable and therefore acceptable to the parties. Put simply, the legal system is illequipped to deal with a software development dispute. The American Arbitration Association reports that in recent years, the number of technology cases submitted to the AAA has doubled, demonstrating that parties are increasingly opting for more-qualified decision-makers. But that statistic doesn’t tell the whole story. Even with the assignment of sophisticated arbitrators, between 50% and 70% of the technology cases scheduled for AAA arbitration settled before the award.

With that in mind, counsel’s overriding goal from the outset should be to find an efficient resolution. How? Let’s go back to more familiar ground. It turns out that resolving a software development dispute, like a construction case, has a certain cadence and structure. I have followed this path to settle every one of these cases I have handled:

• Understand the “blueprint” and “specs” to identify objective and subjective deliverables. As with a construction project, this will depend on the time and eﬀort the parties dedicated to drafting the contract documents in the ﬁrst place. Unfortunately, the parties, in the spirit of cooperation, often decide to “deal with that after we get the framing done” or to “build a really nice bathroom.”

• Compare performance to the objective criteria by bringing in subject-matter experts from both sides, along with decision-makers, as soon as possible. is may be the most counterintuitive step to most litigators, since it involves complete transparency and dialogue, as well as the ﬂexibility to sit in a room with IT people, hopefully understand them, and let them try to problem-solve, likely over multiple sessions. is isn’t as hard as it may seem, though. Remember, problem-solving is usually part of their job description.

• Fairly allocate responsibility for problematic decision-making and quality issues. You may ﬁnd that, as in a construction project, implicit understandings never became explicit; salespeople got ahead of the designers and engineers; project managers passed the project along without a smooth transition; individual workers may not have been as skilled as advertised. While there has no doubt been considerable ﬁnger-pointing, rarely is only one side truly to blame.

• Determine if additional work can solve the problem. Certainly, the relationship has been damaged, but there may be value in repairing it, often with some change of personnel. Beware of the urge to “change horses midstream,” since, as in a construction project, bringing in a new IT contractor to “patch a few walls” or “redo the paint” could actually be more disruptive, risky, and expensive than continuing with the old one.

• Develop a structure for financial resolution. e performing party likely has unpaid bills, believing that the contracting party just does not want to pay for the value it has received. e contracting party likely has claims to recover money already paid and money that needs to be spent on repairs/reconstruction, believing that the performing party overpromised and underdelivered. Both sides have serious holes in their budgets and the hope that the litigation system can fill those holes. As with most litigation, however, there should be a way to conduct a thorough, balanced analysis and find “rough justice” that takes into account the time/risk/aggravation/cost of litigation, avoiding the possibility that the budget holes just get deeper and deeper.

• Create a structure to problem-solve through completion of the project. e stakes are generally too high for both sides to run the risk that the solution could be derailed.

Although the subject matter of software development litigation may be complicated, the structure of the dispute and its resolution is not. Following this path will keep software development disputes out of a litigation system that is ill-equipped to resolve them to the satisfaction of either party.

Jonathan B. Frank and his wife, Jan, founded Frank & Frank Law in 2019 to provide practical, e cient solutions for business and real estate disputes. Jonathan is an honors graduate of Stanford University and the University of Michigan Law School. He has authored numerous articles on litigation practice, was recently co-chair of the OCBA’s Business Court and Counsel Committee, and is currently a member of the Oakland County Bar Association board of directors. He is also a trained mediator and a neutral arbitrator with the American Arbitration Association. Find more information at frankandfranklaw.com.

HEA LTH CA RE

LA W FI RM

Wachler & Associates represents healthcare providers, suppliers, and other entities and individuals in Michigan and nationwide in all areas of health law including, but not limited to:

•Healthcare Corporate and Transactional Matters, including Contracts, Corporate For mation, Mergers, Sales/Acquisitions, and Joint Ventures

•Medicare, Medicaid, and Other Third-Party Payor Audits and Claim Denials

•Licensure, Staff Privilege, and Credentialing Matters

•Provider Contracts

•Licensure, Staff Privilege, and Credentialing Matters

•Billing and Reimbursement Issues

•Provider Contracts

•Billing and Reimbursement Issues

•Stark Law, Anti-Kickback Statute (AKS), and Fraud & Abuse Law Compliance

•Physician and Physician Group Issues

•Stark Law, Anti-Kickback Statute (AKS), and Fraud & Abuse Law Compliance

• Regulatory Compliance

•Physician and Physician Group Issues

•Corporate Practice of Medicine Issues

• Regulatory Compliance

•Provider Participation/Ter mination Matters

•Corporate Practice of Medicine Issues

•Provider Participation/Ter mination Matters

• Healthcare Litigation

• Healthcare Investigations

• Healthcare Litigation

•Civil and Criminal Healthcare Fraud

• Healthcare Investigations

•Civil and Criminal Healthcare Fraud

•Medicare and Medicaid Suspensions, Revocations, and Exclusions

•HIPAA, HITECH, 42 CFR Part 2, and Other Privacy Law Compliance

S ER VING H EALTHCA RE PR OV ID ERS FOR OVE R 30 Y EARS

S ER VING H EALTHCA RE PR OV ID ERS

PATENT FILING:

As Comprehensive as Possible as Soon as Possible

By Michael R. Nye and Nathan P. Sportel

TAKEAWAYS

• File a patent application before a potential disclosure of your invention.

• Selling a product encompassing your invention is a disclosure.

• Even just offering to sell a product encompassing your invention is a disclosure.

• If your invention is a process for creating a product, selling the product is a disclosure.

Patent attorneys can be a bit neurotic when it comes to dates and timing, but as with so many other important things, timing is everything when it comes to patentability. The legal field was again reminded of this harsh reality when the Federal Circuit issued its ruling in Celanese Int’l Corp. v. Int’l Trade Comm’n, 1 where a patentee lost valuable patent rights by timing critical events in the wrong order.

For patent attorneys, it often feels like we reference the calendar as much or more than treatises, the Manual of Patent Examining Procedure, or the patent statutes themselves. It may surprise inventors that patent attorneys seem a bit obsessive about when certain activities occurred rather than only considering what was invented. Yet dates matter just as much as a stroke of genius when it comes to protecting innovation. Indeed, something is only novel until a certain point in time; after that novel moment, the technology becomes old news.

When individuals and companies invent new technology, the timing of certain inventive and commercial actions is pivotal. For example, companies may, perhaps foolishly, publicly announce an exciting product before filing a patent application covering that product’s technology. But, if a patent application is not on file within a year of the announcement, a potential patentee may be barred from patent protection covering the technology in the disclosed product.2 As such, certain dates are very important pieces of information to attorneys counseling clients on patent protection.

Timing is so critically important to patent law because time is the reward for invention. More specifically, a time period of exclusivity is the reward granted for teaching the world something new. That “limited monopoly” granted by a patent extends for 20 years from the date of filing (with some caveats depending on how long the patent office took to examine the application and other factors such as related applications).3 So, the government rewards ingenuity and, most importantly, the public disclosure of that ingenuity with an exclusivity period.

The Supreme Court recognized this balance between “motivating innovation and enlightenment” and “avoiding monopolies that unnecessarily stifle competition.”4 Accordingly, the Supreme Court has prevented clever extensions of the exclusivity time period granted by a patent. But that hasn’t stopped companies and individuals from trying to circumvent those restrictions. As a result, Congress and the federal courts set several conditions that limit inventors’ ability to obtain a patent. One such limit is the so-called on-sale bar.5

The on-sale bar in patent law goes back all the way to at least 1829, when the Supreme Court decided that an inventor could not sell products to the public using a patented process

while withholding details of his invention from the public.6 The reasoning of the court was simple: An inventor cannot, effectively, extend his patent protection time period by commercially exploiting the invention for a long time and then subsequently receiving the benefit of the patent protection period.7 As the court said, “it would materially retard the progress of science and the useful arts” to allow an inventor to “sell his invention publicly” and later “take out a patent” and “exclude the public from any further use than what should be derived under it.”8 More recently, Supreme Court decisions have reiterated the importance of preventing any extension of the patent protection time period by reemphasizing the on-sale bar.9

In enacting the on-sale bar, Congress agreed with the court’s original reasoning and codified the limitation on patentability.10 The on-sale bar states that an invention cannot be patented if it has been on sale for more than a year before a patent application is filed.11 The Supreme Court has ruled that an invention is legally “on sale” if the invention is the subject of a commercial offer for sale and the invention is ready for patenting (that is, it has been reduced to practice, or described in sufficient detail to enable someone skilled in the art to practice the invention).12 Along with restrictions relating to public uses of the invention and other disclosures made available to the public, the on-sale bar prevents patenting of an otherwise novel invention due to the activities of the patentee (or some other entity). Potential patentees might end up shooting themselves in the foot by selling or offering for sale a product more than one year before filing a patent application seeking to protect the invention. Thus, the date when a product was first sold is critical to the ability to patent an invention, which is why patent attorneys are so obsessed with dates and timing.

Federal courts have developed a body of common law interpreting the on-sale bar. Included within that body of common law was the long-held rule that products made using a secret process sold before the critical date of a patent application would bar the patentability of both the sold product and the process that made the product 13 So, even if the secret process remains a secret, undisclosed to the public, commercial exploitation of that secret process (such as by selling products made using that secret process) would bar patentability of the secret process itself if an entity sold the products made using the secret process more than one year before filing a patent application seeking to protect the secret process. This result may seem harsh, but it follows the reasoning that innovators cannot artificially extend the patent exclusivity granted by the government by selling a product prior to seeking a patent.

The on-sale bar existed before the America

Invents Act (AIA) of 2011, and Congress reenacted the on-sale bar in the AIA. The primary goal of the AIA was to convert America’s “firstto-invent” system to a “first-to-file” system and bring American patent law into accordance with the law of almost every major country on Earth.14 The dramatic change in determining who invented what first resulted in some significant changes to the patentability statutes, Section 102 in particular. However, the “on-sale bar” language was largely unchanged by the AIA. In fact, the only language that changed was in surrounding clauses, plus the word “invention” was changed to “claimed invention” in the statute.15 Thus, the onsale bar survived AIA amendments to the patent code. However, litigants have tried to argue that the pre-AIA on-sale bar and the AIA on-sale bar have different scope. So, did the AIA change the on-sale bar?

The Supreme Court first considered this argument in 2019 in the case Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc 16 In this dispute, Helsinn entered into licensing and marketing agreements with a U.S. company called MGI Pharma Inc.17 As part of these agreements, MGI was allowed to market a drug made by Helsinn in the United States, but Helsinn required MGI to keep dosage amounts for the drug confidential.18 Nearly two years after the agreements were executed, Helsinn filed a patent application.19 Teva successfully invalidated the patents that issued from that patent application, citing the agreement with MGI as evidence that the patented drug was on sale more than a year before Helsinn filed for patent protection.20 The facts were bad for Helsinn, so it instead argued that the AIA changed the on-sale bar, and the on-sale bar did not apply to this set of facts because the dosage amounts of the drug remained secret and the dosage was a critical aspect of the claimed invention.21 In other words, Helsinn argued that the specific details of an invention must be disclosed to the public during the sale to invalidate a patent. Helsinn pointed to the phrase “or otherwise available to the public” that followed the term “on sale” as evidence that a sale, to prevent patentability of an invention, must also disclose the details of the invention to the public.22 The Supreme Court wasn’t buying it. The Supreme Court ruled that “when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of” the phrase “on sale” from Section 102.23 The court also added that the catchall phrase “or otherwise available to the public” is simply not enough of a change to conclude that Congress intended to alter the meaning of the reenacted term “on sale.”24 Helsinn was a cruel reminder to all those seeking patent protection that if you sell a product that might be patentable, you better get moving on a patent application quickly.

But clever attempts to limit the on-sale bar

did not end at Helsinn, even though the broad ruling of the Supreme Court seemed to shut that suggestion down. at brings us to Celanese, 25 which is just another reminder of how important timing remains when it comes to patenting inventions.

Celanese represented a familiar fact set: A company sold a product (an artiﬁcial sweetener) created using a secret process for more than a year before seeking patent protection on the secret process.26 With a set of facts like these, the outcome might seem straightforward. But Celanese spotted one more tiny change in the statute language from pre-AIA to AIA not discussed in Helsinn. Congress changed the word “invention” to “claimed invention” in the statute’s language.27 Celanese argued that this change was signiﬁcant. It argued that substitution of “claimed invention” for “invention” meant that the AIA on-sale bar could be triggered only by sales of the claimed process, not by the sale of products made using the claimed process.28 Indeed, the claimed invention was the process, not the product. Hence, Celanese argued that the process itself must be sold to trigger the on-sale bar of a process, and products sold using the process would not trigger the on-sale bar.

is line of reasoning is certainly clever, and had some merit, but it ignores the rationale behind the on-sale bar. If Celanese were correct about the change in the AIA, then an entity could sell a product using a secret process for as long as the entity can keep the secret process

confidential, and then seek patent protection any time thereafter, such as when competitors are close to reverse engineering the secret process. Such a result would artificially extend commercial exploitation beyond the allowed patent term. As a result, the court rejected Celanese’s arguments, finding that the change from “invention” to “claimed invention” was nothing more than a “clerical refinement of terminology for the same meaning in substance.”29 Also, the reasoning of Helsinn remained valid even for this set of facts involving artificial sweeteners.30 In other words, substituting the phrase “claimed invention” for “invention” did not throw out nearly 200 years of common law jurisprudence founded on logically strong reasoning.

So, after all that clever legal wordsmithing, we are back where we started. No, the AIA did not change or get rid of the on-sale bar, even for secret processes or conﬁdential information. But the Federal Circuit was nice enough to remind us, yet again, how important timing is.

e key takeaway from both Helsinn and Celanese is that attorneys must consistently counsel their clients that they must be diligent in filing patent applications. While the statute offers a grace period of one year, it is still probably better to file a patent application immediately, before any sales or disclosures. Moreover, attorneys should be aware of their client’s actions. As much as we chide and remind, sometimes clients get overexuberant and forget prudence in the face of an exciting new technology. After all, lawyers are

boring and proﬁts are good. So, it would behoove attorneys to check in regularly with their client’s sales activities and press releases. Finally, and perhaps most importantly, attorneys should be intimately involved in a client’s business goals, rather than just solving legal problems upon request. By understanding a client’s business goals, business activities, and industry actions, attorneys might anticipate a legal need before it arrives. In view of Celanese and other cases like it, diligent attorneys who remain involved in a client’s day-to-day may spot an action that could trigger a bar date before the client even brings the new technology to a patent attorney’s attention. Celanese is another reminder that great client service extends beyond just reacting to a client’s current legal requests; it also includes anticipating and preventing legal disaster.

Timing is everything, but perhaps a truly client-focused attorney is even more important.

Michael Nye specializes in intellectual property protection for computer and electrical technologies, handling patent applications, prosecution, competitive landscape reviews, and post-grant proceedings. He has worked with Fortune 500 companies and startups, leveraging his expertise to protect and develop portfolios to drive business value. Nye’s experience includes roles at Harness, Dickey & Pierce; HP/Agilent; and Compaq. He holds a J.D. from Michigan State University and M.S. and B.S. degrees in electrical engineering from the University of Michigan.

Nathan Sportel is a multiskilled patent attorney with expertise in patent prosecution, litigation, and post-grant proceedings, backed by his electrical engineering background and experience as a former patent examiner. He has a strong record in inter partes review (IPR) proceedings, notably in the Sotera v. Masimo case, and excels in preparing IPR petitions and nding compelling combinations of prior art. Sportel is also an experienced intellectual property litigator and technical adviser, achieving favorable outcomes in patent infringement cases. He holds a J.D. from Michigan State University and a B.S. in electrical engineering from Calvin University.

Footnotes:

1. 111 F.4th 1338, 1343 (Fed. Cir. 2024).

2. 35 U.S.C. § 102(a).

3. 35 U.S.C. § 154.

4. Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67 (1998).

5. 35 U.S.C. § 102.

6. Pennock v. Dialogue, 27 U.S. 1, 19–24 (1829).

7. Id. at 19.

8. Id

9. E.g., Pfaff, 525 U.S. at 68.

10. 35 U.S.C. § 102.

11. 35 U.S.C. § 102(a).

12. Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 586 U.S. 123, 130 (2019).

13. E.g., Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353, 1357 (2001); Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (1998).

14. Pub. L. No. 112–29, § 3, 125 Stat. 284, 285–94 (2011); Madstad Eng’g, Inc. v. U.S. Pat. & Trademark Off., 756 F.3d 1366, 1368 (Fed. Cir. 2014).

15. Compare 35 U.S.C. § 102 (2006) (“A person shall be entitled to a patent unless … (b) the invention was … on sale”), with AIA § 102(a) (“A person shall be entitled to a patent unless— (1) the claimed invention was … on sale or otherwise available to the public”).

16. 586 U.S. 123 (2019).

17. Id. at 126.

18. Id

19. Id. at 127.

20. Id. at 128.

21. Id. at 131-132.

22. Id

23. Id. at 131.

24. Id

25. 111 F.4th 1338 (Fed. Cir. 2024).

26. Id. at 1341.

27. Compare 35 U.S.C. § 102 (2006) (“A person shall be entitled to a patent unless … (b) the invention was … on sale”), with AIA § 102(a) (“A person shall be entitled to a patent unless— (1) the claimed invention was … on sale”).

28. Celanese, 111 4th at 1345.

29. Id. at 1346.

30. Id

Timing is so critically important to patent law because time is the reward for invention. More specifically, a time period of exclusivity is the reward granted for teaching the world something new.

Looking Forward to the 2025 Signature Event

By Jeffrey G. Raphelson

Collegiality runs deep in the Oakland County bench and bar. We may be opposing counsel to one another, but almost never are we enemies. We may not understand or agree with a judge’s ruling, but we had the chance to present our position. We realize that zealous advocacy does not require a disagreeable personality, and that professional courtesy serves our clients and the public well by avoiding the wasted time, eﬀort, and emotion that would be spent on pointless hostility.

e Oakland County Bar Association and the Oakland County Bar Foundation have a full calendar of events that promote this collegiality. As you read this, your foundation trustees are hard at work preparing for the 2025 Signature Event, which will take place May 7, 2025, at the Orchard Lake Country Club. e setting is wonderful. To the west of the clubhouse is the club’s celebrated 18-hole Colt & Alison golf course, which has hosted the likes of Arnold Palmer, Sam Snead, Gene Sarazen, and Gary Player. To the east is 600 feet of scenic Orchard Lake shoreline. e venue is well suited for the Oakland County bench and bar’s social highlight of the year.

e Signature Event is the OCBF’s primary fundraising initiative each year. In 2024, the event raised $193,000 to help fund the foundation’s grants. While the foundation will never raise enough money to fund fully all the worthy requests it receives each year, the money from the Signature Event makes a positive impact for organizations such as CARE House of Oakland County, Lakeshore Legal Aid, e Joseph Project, and the OCBA’s Youth Law Conference and Senior Law Days, to name a few.

We ask you to support the OCBF through sponsoring the 2025 Signature Event. If you’ve been a sponsor, you know the good work you’ve made possible: access to justice and legal services for those who cannot aﬀord them; support for victims of abuse and circumstance; education concerning the legal system and how to navigate it. e foundation asks past sponsors to renew

your sponsorship or move up a level this year. If you haven’t been a sponsor, we ask you to consider becoming one.

Sponsorship levels range from Bronze Sponsor ($1,000) to Presenting Sponsor ($15,000).

e OCBF and the OCBA oﬀer incentives for each sponsorship level. All sponsorships include recognition in a future issue of this magazine, in signage at the event and the event’s digital program, in advance publicity for the event, and in the foundation’s annual report, which is distributed to over 10,000 Oakland County attorneys. Sponsors also receive tickets to the event, the number varying with the level of sponsorship.1 Some past sponsors recommitted to support the 2025 Signature Event as early as last October and publicized their sponsorships in their own social media content and advertising.

However, our sponsors’ generosity is for the OCBF’s mission, more than the Signature Event itself. In 2020, when the OCBF had to cancel the event due to the pandemic, it asked the sponsors to convert their pledges to general donations. e vast majority agreed without hesitation, notwithstanding the loss of the recognition they would have received at the event. In 2021, it was uncertain whether the event would return. So, the foundation made the same request to its sponsors, who again agreed they would donate at their sponsorship levels if there was no event. (Fortunately, the OCBF was able to hold the event, albeit later than usual, in September 2021.)

With such big-hearted supporters, it is no wonder that the Signature Event is always a much-anticipated, joyful occasion, well attended by both judges and lawyers. Summer will be nearly upon us. ere will be no docket calls, speeches, or appeals for donations. Just the chance to reconnect with our colleagues and meet new ones, in person, while strolling among varied, tasty food stations. We hope you will help make this event and the OCBF’s charitable goals possible through a sponsorship and that you will join us at the 2025 Signature Event to celebrate

The Oakland County Bar Foundation’s mission is to ensure access to justice and an understanding of the law in our community. It is dedicated to:

Improving and facilitating the administration of justice in Oakland County and throughout the state of Michigan;

Ensuring to the fullest extent possible that legal services are made available to all members of the public;

Promoting legal research and the study of law as well as the diffusion of legal knowledge;

Promoting the continuing legal education of lawyers and judges; and

Educating the public as to their legal rights and obligations, and fostering and maintaining the honor and integrity of the legal profession.

If you know an organization that could use assistance to pursue these goals within Oakland County, please refer them to ocba. org/ocbfgrants, where they can ﬁnd information about applying for a grant from the foundation.

the generosity and collegiality of the Oakland County bench and bar.

Je rey G. Raphelson is the president of the Oakland County Bar Foundation and a member and general counsel of Bodman PLC. He focuses his practice on commercial litigation, particularly matters related to the automotive and banking industries, as well as general commercial cases involving contract, intellectual property, corporate governance and dissolution, and dealer and franchise termination disputes. He has served on numerous State Bar of Michigan committees and is a current board member and treasurer of the Historical Society for the U.S. District Court for the Eastern District of Michigan.

Footnote:

1. Please visit ocba.org/signature-event for information about the 2025 Signature Event, including a link to the sponsorship packet with details on the beneﬁts of the different sponsorship levels.

Another holiday season is behind us, and the most blustery, frigid stretch of winter still lies ahead. In the past, I would make a jab at our football team right here, but hey, how about those Lions? ere is a lesson to be learned from their success. For so long they tried the same style of play, the same budget, and the same culture and, as one might expect, yielded the same results. en they made changes by getting a new coaching staﬀ with an untested head coach, and they took chances like trading away their franchise quarterback, and wouldn’t you know it, success followed. We have some big changes coming up as well that we expect to be equally successful.

I have told all of you that we are starting electronic filing, or, as the state’s system is called, MiFILE, so many times that I cannot blame you as you roll your eyes, but it’s really going to happen this time. We started implementation and training last summer and planned to go live at the end of October. You may have seen signs and received notices to that effect. e deeper we dove into it, the more we realized that our systems and the state’s systems, while fine individually, were going to need more work to become compatible by our scheduled go-live date. It became obvious — disappointing, but obvious — that the best thing to do was to delay the project … again (insert eye roll here) rather than roll out a suboptimal product

Change Is Good

By Edward A. Hutton III

to our filing community. We take too much pride in the services we provide and honor your time too much to do that. Our MiFILE go-live date is currently scheduled for around May 5, 2025. We appreciate everyone’s patience as we work hard to provide the best filing experience possible to our filing community.

One other big change is that we have a new judge or will have a new judge. at probably seems very oddly written, but I can explain — as you read this in January, you know what I don’t know at the time I am drafting this article. You see, I’m writing this prior to the November election. Either way, we have a newly elected judge, or we are going to have a newly appointed judge, depending on the election results. I look forward to welcoming the ﬁrst new judge

since I became the administrator in 2018. I will refrain from belaboring this topic since I do not know what the future holds.

If any attorneys are looking for a change next year and want to add court-appointed work to their portfolio, please reach out to me or the judicial secretaries for appointments. We are always looking for quality attorneys to take appointments as a guardian ad litem or court-appointed attorney. ese are often cases that begin and end in a relatively short amount of time, although that is not always the case. It is a great opportunity get more time before our judges and to hone your litigation skills. If you are a new attorney, or new to this area of law, please do not feel intimidated to take on these essential roles. In order to be appointed, you will need to take the Probate Court: GAL and Appointed Attorney Training seminar oﬀered through the OCBA, which is accomplished by watching a video that is available on the OCBA website under the “Professional Development” tab. It will teach you the ins and outs of probate court-appointed work. In addition, feel free to reach out to me with any questions you may have. I am happy to do my best to answer your questions. I took a lot of appointments before taking my current position.

With the new year comes a great opportunity to reflect on the past and ponder our triumphs and our defeats and devise a plan to make 2025 the best year yet. Obviously, “best” is subjective, its meaning dependent on the definition each individual gives to it. “Best” year could mean most financially lucrative or most productive. It would also be difficult to argue with anyone who defines their “best” year as the year when they spent the most time relaxing, traveling the world, or with their loved ones. Whatever your definition of “best,” I hope you achieve it in 2025 and I hope we can help. Happy New Year.

Edward A. Hutton III is the Oakland County Probate Court administrator.

The seed for this article sprouted during a meeting with the bench in August 2024. At the time, the bench discussed whether the Sixth Circuit wished or needed to adopt an artificial intelligence2 policy, specifically one that addressed the burgeoning technology of generative artificial intelligence.3 After discussion, the bench determined that existing court rules and ethical rules provided sufficient guidance for court users generally and attorneys specifically, such that a court policy did not seem necessary at this time. e bench encouraged me to provide a brief reminder to the bar through this space.

For those who know me, I suspect the irony that I am writing an article on technology will provide a chuckle or two. For those who have not encountered me, I am the administrator with the flip phone and a pocket protector filled with fountain pens who wrote the first draft of this article by hand on a legal pad. is irony, I submit, forms one of the foundations for this article — competent professionals cannot ethically4 hide behind a claim that one is a Luddite.5

Courts have begun to mandate disclosure of artificial intelligence (hereinafter “AI”) usage. Many reasons may explain the disclosure requirements. One troubling example certainly casts a long shadow in this discussion. While one may not recall the case Mata v. Avianca, 678 F. Supp. 3d 443 (S.D.N.Y., June 22, 2023), nearly everyone recalls the fact that a court sanctioned attorneys who used generative AI, specifically ChatGPT, to help write a brief and inserted fictitious citations into the brief when ChatGPT “hallucinated.”6 Opposing counsel raised the issue, and the trial court pursued it because counsel initially failed to detect the fictitious citations and later doubled down on the authority in an affidavit submitted to the court. e trial court found that counsel violated Rule 11 of the Federal Rules of Civil Procedure when they submitted the hallucinated authority and in the subsequent

Rules, Rules, Everywhere Are Rules!1

By Richard Lynch

aﬃdavit supporting the authority. Id. e court sanctioned counsel in a very strongly worded opinion and order.

Mata oﬀers an extreme example of the potential hazards associated with generative AI. More importantly, Mata reminds attorneys of their ethical and procedural obligation when interacting with a court. Judge Castel’s reliance on Rule 11 reminds the bar “to stop, think and investigate more carefully before serving and ﬁling papers.” Mata, 678 F. Supp. 3d at 460 (citation omitted). Various courts have begun adopting AI-related orders.7 Other courts have sanctioned attorneys who have submitted documents with false citations.8 Some Michigan state court judges have also begun inserting generative AI requirements in pretrial and scheduling orders. But is this work necessary?

As Nicole Black wrote in her article “Judges to Generative AI: You’re Out of Order!,” the sanctionable incidents she discussed reﬂected the failure of attorneys to “meet basic competence obligations. is isn’t an issue of technology competence.”9 If this is true, does our existing structure suﬃciently provide an adequate framework to support the introduction of generative AI? e Sixth Circuit thought so.

Let’s turn to the comment titled “Maintaining Competence” of Michigan Rule of Professional Conduct 1.1. Michigan attorneys “should engage in continuing study and education, including the knowledge and skills regarding existing and developing technology that are reasonably necessary to provide competent representation.” is suggests that we should possess a functional understanding of what generative AI entails and not dismiss it as something for the IT department or vendors. is functional understanding includes the awareness that generative AI can hallucinate and that users must review the product produced by a generative AI tool, like ChatGPT, to ensure that it accurately presents information for the attorney to use as a start-

ing point and not rely upon “technology” to perform the attorney’s work. is competent review becomes critical, because an attorney “shall not knowingly: (1) make a false statement of material fact or law to a tribunal or fail to correct a false statement of material fact or law previously made to the tribunal by the lawyer.”10 In Mata, the failure to correct the false statement proved at least as damning as the initial error of relying upon false citations.

MCR 1.109(E)(5), which outlines the eﬀects of a signature, reinforces the ethical obligation created under MRPC 3.3. As you already know, the signature requirements certify that:

- e one signing a document has read the document;

- “To the best of his or her knowledge, information, and belief formed after reasonable inquiry, the document is well grounded in fact and is warranted by existing law or a good-faith argument for the extension, modiﬁcation, or reversal of existing law; and

- “ e document is not interposed for any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of litigation.”11

I submit that complying with the requirements of the above rule requires that one read and verify the accuracy of every document before submission for filing. is includes confirming the validity of the arguments presented and the authority supporting the arguments. If this is the case, submitting a generative AI-produced document without verification violates the clear requirements of MCR 1.109(E)(5). In addition, if the document contains an error, one may directly or subsequently violate MRPC 3.3 by making a false statement or failing to correct a false statement to a tribunal. While a declaration that one utilized a generative AI source in the

production of a document may alert a reader to a tool used in the preparation of the document, it does not appear to substantively alter or lessen the requirements one has under the existing rule structure.

Professor Dolores Umbridge of Harry Potter fame created an endless set of rules for every perceived slight or offense. Courts seek to avoid the practice of creating rules for the sake of rules, preferring to establish orders that clarify one’s responsibilities. In short, generative AI offers users another tool to use in the practice of law. Like the other tools that attorneys use, generative AI does not replace the professional training, competence, and judgment one uses in the practice of law. If attorneys adhere to their oaths and professional responsibilities, generative AI will prove beneficial in their practice.

Richard Lynch is the court administrator for the Oakland County Circuit Court.

Footnotes:

1. With my apologies to the Five Man Electrical Band and their hit “Signs.”

2. Artificial intelligence is defined as “a machine-based system that can, for a given set of human-defined objectives, make predictions, recommendations or decisions influencing real or virtual environments.” Artificial Intelligence: Guidance for Use of AI and Generative AI in Courts, August 7, 2024, p. 4, citing the National Artificial Intelligence Initiative Act of 2020, ncsc.org/__data/assets/pdf_file/0014/102830/ ncsc-artificial-intelligence-guidelines-for-courts.pdf, last accessed November 5, 2024.

3. Generative artificial intelligence is defined as “artificial intelligence that is capable of generating new content (such as images or text) in response to a submitted prompt (such as a query) by learning from a large reference database of examples.” Id., citing “Generative AI,” Merriam-Webster.com Dictionary, Merriam-Webster, merriam-webster.com/dictionary/ generative%20AI, last accessed April 16, 2024.

4. A comment to the Michigan Rules of Professional Conduct addresses the need to maintain technological competence. The ofﬁcial comment to Michigan Rule of Professional Conduct 1.1, under the heading “Maintaining Competence,” states: “To maintain the requisite knowledge and skill, a lawyer should engage in continuing study and education, including the knowledge and skills regarding existing and developing technology that are reasonably necessary to provide competent representation for the client

in a particular matter. If a system of peer review has been established, the lawyer should consider making use of it in appropriate circumstances.”

5. “A 19th century protest group of British workers, who destroyed machinery that they believed was depriving them of their livelihood.” Oxford Encyclopedia of World History, Oxford University Press, New York, 1998, p. 399. The term “Luddite” now refers to one averse to technology. It is commonly used for late or nonadopters of technology.

6. Hallucination is defined as “a misleading, inaccurate, or fictitious result produced in response to a GenAI [generative AI] prompt.” Artificial Intelligence: Guidance for Use of AI and Generative AI in Courts, August 7, 2024, p. 4, last accessed November 5, 2024.

7. See University of Chicago Library, “Generative AI in Legal Research, Education, and Practice,” guides.lib. uchicago.edu/AI/Practice, last accessed November 4, 2024. See also Judge Christopher A. Boyko’s standing order, ohnd.uscourts.gov/sites/ohnd/ﬁles/ Boyko.StandingOrder.GenerativeAI.pdf, last accessed November 4, 2024.

8. By way of example, see “Judges to Generative AI: You’re Out of Order!,” Above the Law, abovethelaw. com/2024/03/judges-to-generative-ai-youre-out-oforder, last accessed November 4, 2024.

9. Id.

10. Michigan Rules of Professional Conduct 3.3(a)(1).

11. MCR 1.109(E)(5)(a)-(c).

McMillen

2023-284956-FC

People v. Ross

2024-289709-FH

People v. Schmidt

2023-201911-NO

Jason Sams v. Todd Winnie

2023-200322-CD

Katherine Albright v. Waterford School District

2023-285699-FC People v. Sanders

2023-285707-FC

People v. Harris

2023-285721-FH People v. Coker

2024-289082-FH People v. Murphy

2024-288966-FH People v. Johnson

AlexanderVisiting Judge

PottsVisiting Judge

YoungVisiting Judge

2022-194522-NH

Melvin Skorski v. Trinity Health Michigan

2024-287476-FH People v. Chowdhury

2023-198607-NH

Breanna Scott v. Ascension Providence Hospital

Christian Arndt

David Drwencke

Brandon Barlog

Kerry Phillips

Thomas Krall

David Bowen

Tad Roumayah

Michael Weaver

John Pietrofesa, Andrew Duff

Pro Per (Jeffrey Quas, Advisory Counsel)

Darcey Jacobs

Richard Morgan

Jason Desantis

Jerome Sabbota

Nicole Garmo

Christopher Chekan

Andrea Ajlouni

Meagan Stamell

Albert Dib, Leanne Pregizer

Enrico Tucciarone, Stacey McDaniel

Zachary Houchin

Todd Perkins

Matthew Turner, Lenore Saco

Amy Schlotterer, Andrew Zaituna

Armed Robbery, U & P Counterfeit Bills/Notes

Open Murder, Cts. 2, 4, 6, 8 Poss. FA in Com. Fel., Weap. Poss. by Fel., Fel. Aslt., FA Disch. Bldg.

Ct. 1 Homicide 1st Deg. Murder, Cts. 2 & 4 Weap. FF, Ct. 3 Armed Robbery

Cts. 1-3 Reckless Driving Causing Death

by Conversion $1K-$20K Police Officer Aslt./Resist/ Obst., Fingerprint Refusal

Assault w/

Ct. 1 Fail to Stop at Scene - Serious PIA, Ct. 2 Tampering w/ Evidence

1 & 3 AWIM, Cts. 2 & 4 Weap.

Hatty - Visiting Judge

Visiting Judge

YoungVisiting Judge

2023-286260-FH

People v. Majette

2022-195245-NI

Shannon Mertz v. Coker Transportation

2023-200414-CB

Old School Organics v. Lee Industrial Contracting

2024-288012-FC

People v. Santiago

2022-196303-CB

Epicentre v. Robertson Commercial Construction

2023-286067-FC

People v. Carter

2023-198607-NH

Breanna Scott v. Ascension Providence Hospital

2021-185790-NF

Flint Region ASC v. Progressive Marathon Ins.

Andrew Duff

Scott Kozak

Jordan Jones

Adam Zwicker

Jan Rubinstein

Michael Watt

Christopher George

Patrick Nyenhuis

Sean McNally, Randall Chioini

Michael Lebow,

Matthew Brown

David Champine

Cecilia Quirindongo

Baunsoe

Matthew Turner, Lenore Saco

Amy Schlotterer, Andrew Zaituna

Ali Koussan

Frederick Livingston, C. McDonald, K. Macionski

OCBA AT WORK

The mission of the Oakland County Bar Association is to serve the professional needs of our members, enhance the justice system, and ensure the delivery of quality legal services to the public. We fulfill our mission through our 30 committees, regular networking events, and numerous educational programs for both OCBA members and the public. We work hand in hand with the OCBA volunteer board directors and members, and we partner closely with the courts.

Below are recent examples of the OCBA at work in service to the bar and to the community.

Honoring the OCBA’s Sustaining Members

On September 23, 2024, the OCBA held its annual Sustaining Members Reception at Fogo de Chão in Troy to honor those members who, through Sustaining Member dues, allow the OCBA to offer exemplary service with technology and infrastructure improvements. It would be impossible to provide improved services and benefits while keeping OCBA membership affordable without the additional financial commitment of the OCBA’s 350-plus Sustaining Members. For more information on becoming a Sustaining Member, go to ocba.org/sustaining

Building Professional Relationships with the Inns of Court

The OCBA’s award-winning chapter of the American Inns of Court (the Inn) kicked off the 2024-25 season with an orientation/mixer on September 4, 2024, at the Iroquois Club. The Inn is composed of lawyers, judges, law students, and other legal professionals of all levels and backgrounds. Through monthly meetings, members come together to build and strengthen professional relationships and discuss fundamental concerns about professionalism and pressing legal issues of the day while sharing experiences and advice, encouraging dedication for the law, and providing mentoring opportunities. The Inn also advances the highest levels of integrity, ethics, and civility. Those wanting more information can contact Shanay Cuthrell at scuthrell@ocba.org

Assisting the Public with an Expungement Clinic

Providing Access to Legal Services (PALS) Committee Chair: Michelle Johnson Vice Chair: Heather Herbert

The OCBA Providing Access to Legal Services (PALS) Committee hosted an expungement clinic at the Farmington Community Library on September 6, 2024. Attendees had the opportunity to meet with an attorney for free to review their criminal history to evaluate their eligibility for a record expungement. This event was made possible by the Oakland County Bar Foundation, Lakeshore Legal Aid, the Legal Aid and Defender Association, and the Farmington Community Library.

Educating the Public on Judicial Candidates

Throughout September, the OCBA partnered with the League of Women Voters of Oakland Area, the Oakland County Legal News, and the Oakland County Times to host four Judicial Candidate Forums for judicial races in Oakland County where there were contested seats. Each forum consisted of two panelists — one from the Oakland County Bar Association and one from the Oakland County Legal News — who asked questions of each judicial candidate. A representative of the League of Women Voters moderated the forum. Local residents were invited to attend these events and submit questions for responses by the candidates. Each forum was recorded, and links to the recordings were shared through various platforms.

ASSOCIATION STAFF

Executive Director

Jennifer Quick (jquick@ocba.org)

Deputy Director

Katie Tillinger (ktillinger@ocba.org)

Finance Director

Susan Maczko (smaczko@ocba.org)

Professional Development Director

Shanay Cuthrell (scuthrell@ocba.org)

Court Services Manager

Cristin Doble (cdoble@ocba.org)

Marketing Communications Specialist

MB Cairns (mcairns@ocba.org)

Bookkeeper

Mayly McRae (mmcrae@ocba.org)

Administrator – Court and Public Services

Janise Thies (jthies@ocba.org)

Administrator – Events and Member Services

Kari Ross (kross@ocba.org)

Administrator – LRS and Membership

Geni Fritch (gfritch@ocba.org)

Administrator – Laches and Foundation

Lori Dec (ldec@ocba.org)

Unless otherwise indicated, please call (248) 334-3400 for assistance.

Address Changes

Billing

Board of Directors ....................................................

Kari Ross

Mayly McRae

Jennifer Quick

Case Evaluator Applications ..............................................

Committees

District Court Case Evaluation

Event Photos

Finance

Inns of Court

Judicial Candidate Fora

Laches Magazine

Lawyer Referral Service – (248) 338-2100

Member Illness & Death Notification

Membership

New Lawyer Admissions

News Releases

Oakland County Bar Foundation

OCBA Mediation Service

OCBA Policies

Pro Bono Mentor Match Program

Professional Development/CLE

Room Rental Reservations

Speakers Bureau

KENNETH NEUMAN

Kari Ross

Katie Tillinger

Cristin Doble

MB Cairns

Susan Maczko

Shanay Cuthrell

Janise Thies

Jennifer Quick

Geni Fritch

Katie Tillinger

MB Cairns

Katie Tillinger

Cristin Doble

Jennifer Quick

Janise Thies

Shanay Cuthrell

Kari Ross

Janise Thies

Volunteer Opportunities ...............................................

Website

Janise Thies

Jennifer Quick

NEW MEMBERS

September

Sean Broderick

Michael W. Farris

Fabiola Galguera

Lori Howes

October

David D. Burress

Don Chamberlin

Tala E. Dahbour

Parker Feldman

Joseph Hanna

Bria Kemp

Brooke Moore

Melissa Murray Autumn Page

Chanavia L. Smith

Lily Yeamans

Bryant P. Osikowicz

Arla B. Smith

Nicole M. Smithson

Angelena M. Thomas-Scruggs

Matthew R. Weber

On Sunday, October 6, the OCBA celebrated the 45th and ﬁnal year of its beloved family-friendly 5K run/walk through the charming neighborhoods of Bloomﬁeld Village! Over 100 people registered for the event. The beautiful, warm day helped make for the perfect way to close out this event at Birmingham Covington School. Below are pictures of the “Final Lap.”

5K winning team, from Collins Einhorn Farrell PC (left to right): Bettina Small, Mica Boyd-Cleaver, Dana Hunt, Michael Sullivan, and Jeffrey Hicks.

5K male winner: Jeffrey Hicks (winning time: 18:11.4).

From left to right: Lydia Willis, Tami Mortz, Toya Smith, and Joanne Pierce.

From left to right: Paul Doerr, Will Doerr, Derek Howard, Christy Howard, Joseph Doerr, Leo Doerr, and Sadie Doerr.

From left to right: Margo Hahn, Kendra Heger, Marcy Hahn, Mary Margaret O’Donnell, and Stacey King.

T-shirts from past Race Judicata events — spanning from the ﬁrst in 1980 through 2019 — were displayed throughout the gym.

5K female winner: Erica Sarver (winning time: 20:06.1).

From left to right: David Wakeﬁeld, Parker Feldman, Gabriela Kahn, Jacob Kahn, and Ahmad El-Bkaily.

A group of 5K runners take off from the starting line.

From left to right: Cassandra Suder, Jennifer Zeleznik, Vivian Howell, Zenell Brown, Shelley Kester, and Morgan Weiner.

Where Will You Create Your Next Great Work?

You Belong in Our Collection.

You’ve spent the first stage of your legal career crafting your skills and becoming a top performer and trusted advisor. You’ve developed a robust book of business and continue to originate more work. Alone or with your team, you’ve delivered impressive results to clients who entrust their matters to you.

You enjoy what you do but not where you do it. You’re happy with the cases you handle but want to venture into new areas. The business clients you represent have needs beyond your firm’s capabilities. You have a vision for the practice you’d like to build, but you know you can’t build it where you are now.

We Might Be Your Next – and Final – Law Firm.

Our law firm boasts a 100-year history, and while we have many stories from our past, we’re focused on the next century and our continuing evolution as the lawyers of choice for our clients.

Unlike larger Michigan firms that have grown for growth’s sake, we remain uncompromisingly independent and committed to the size and culture that make us unique. We’re looking to add first-rate legal talent to our ranks — people who share our values and want to help shape our (and their) future. There’s a particular type of person we’d like to join our firm, individually or as a group. You could play an essential role in our strategic plan if:

• You’re an intrapreneur with a clear vision for the team you want to build and lead within an existing organization.

• You relish the challenge of taking on new matters and expanding your skill set with firm leadership and colleagues equally committed to your growth and success.

• You’re not necessarily unhappy where you are, but moving to a not-too-big, not-too-small, just-right firm intrigues you.

• A Class A office building with a great location and convenient amenities, current technology and productivity tools, dedicated business development and marketing support, and streamlined operations and administration are necessities, not luxuries.

Is Something Missing in Your Legal Career? Let’s Talk.

Deciding to move your practice to a new firm takes multiple discussions and thoughtful consideration by all parties involved. Why not have an initial conversation and get to know us?

If you’re seriously interested in a new opportunity, contact Joseph Walker at 248.505.4082 or joe@maplebayconsulting.com. All inquiries will be strictly confidential.