Dallas Bar Association
HEADNOTES November 2010 Volume 34 Number 11
Haynes and Boone: Pro Bono Firm of the Year by Rob Ramage
The Dallas Volunteer Attorney Program (DVAP) presented the Dallas Office of Haynes and Boone LLP with the Pro Bono Law Firm of the Year Award at the annual awards reception October 28. Each year, DVAP, a joint project of the Dallas Bar Association and Legal Aid of Northwest Texas, honors the lawyers, judges and other legal professionals who donate pro bono services. This year, the award for Pro Bono Law Firm of the Year was given to the Dallas Office of Haynes and Boone. Haynes and Boone has made a firmwide commitment to providing pro bono services not only here in Dallas, but also nationwide, proving their motto of “serving the common good where we live and practice” to be a reality. Serving the local Dallas community, as well as others, is not a new concept at Haynes and Boone as their Pro Bono/Public Service Committee was formed nearly 20 years ago. In 2010, Haynes and Boone donated nearly 1,500 hours of pro bono services to DVAP clients, and numerous partners and associates in the firm’s Dallas office participated in the program by staffing clients or taking cases. Haynes and Boone partner Jonathan Wilson said that “providing pro bono services to our community and those in need is something very important to us here at Haynes and Boone.” Mr. Wilson added that “providing pro bono legal services is encouraged at all levels throughout Haynes and Boone and is something we are honored to do.” At Haynes and Boone, each attorney is encouraged to aspire to at least 50 hours of pro bono legal service per year, reporting them in the same fashion as they report billable hours. Obtaining 17,500 pro bono hours annually is a testament to the commitment that Haynes and
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Boone has made to providing pro bono services. Pro Bono matters undertaken by Haynes and Boone have been as diverse as society’s needs and consist of: helping abused and neglected children, death penalty cases, assisting indigent clients with matters involving family violence, landlord tenant litigation, estate matters, seekers of political asylum who face violence or death if they return to their home countries, and assisting with the diverse legal needs of many fine charitable causes and shelters. Haynes and Boone is also a very active participant in the East Clinic where they routinely screen candidates for pro bono services, provide legal guidance and accept pro bono cases as needed. Haynes and Boone recently paired up with the in-house legal department at American Airlines to support DVAP and to increase and enhance pro bono services in Dallas. After conducting an in-house training session, Haynes and Boone enlisted more than 30 volunteer attorneys and accepted 17 cases. In addition to Haynes and Boone’s pro bono work with DVAP, the firm is also involved in other pro bono activities throughout Dallas, including Camp Fire U.S.A., Goodwill Industries of Dallas, Human Rights Initiative of North Texas, Justice for Children, Kids in Need of Defense, National Center for Missing and Exploited Children, Promise House, State Bar of Texas Access to Justice Commission and Volunteer Legal Services of Central Texas. DVAP congratulates Haynes and Boone as the 2010 Pro Bono Firm of the Year and thanks each and every one of its attorneys for their service and commitment to providing these pro HN bono services. Rob Ramage is a Member of the Dallas Office of Dykema Gossett. He can be reached at RRamage@dykema.com.
Focus Intellectual Property Law
Pro Bono Lawyer of the Year: Sean M. Whyte, Jones Day by Jessica D. Smith
Sean M. Whyte, an associate at Jones Day, was presented the Dallas Volunteer Attorney Program (DVAP) Pro Bono Lawyer of the Year Award at the annual awards reception October 28. Mr. Whyte donated more than 700 hours to the Dallas Volunteer Attorney Program during a 12-month period. A 2004 graduate of The University of Texas at Austin Law School, Mr. Whyte practices general civil litigation and has assisted in the defense of clients in toxic tort, intellectual property and securities cases in state and federal courts. He also has significant class action experience, having participated in the defense of several class actions in federal courts throughout the country. Before joining Jones Day, Mr. Whyte completed all of the course requirements for a doctoral degree in philosophy and taught at several small colleges in Michigan and Ohio. In 2009, Mr. Whyte served as Jones Day’s second attorney to participate in the Lend-A-Lawyer program, which is a unique program in which a firm commits to pay one associate attorney’s normal salary and benefits while that attorney works in-house for the Dallas Volunteer Attorney Program. He worked on matters including contract disputes, divorces, SAPCRs, consumer matters and landlord/tenant disputes. According to coworkers at DVAP, Mr. Whyte was always willing to step up and help out, particularly in cases with deadlines quickly approaching where they would have had extreme difficulty finding another pro bono lawyer willing to accept the case. He even took one of the pro bono consumer cases all the way through
a jury trial in Justice Court in 2009, working under severe time pressure. As part of the Lend-A-Lawyer program, Mr. Whyte said he “enjoyed being able to level the playing field for people who were previously pro se in cases where the opponent had counsel. [Pro bono work] is a great opportunity to grow as a lawyer.” Mr. Whyte is one of the founding members of the Jones Day Dallas Associate Pro Bono Committee. This committee has partnered with several of the pro bono service providers in Dallas, including the Dallas Volunteer Sean M. Whyte Attorney Program and Legal Aid of NorthWest Texas, to help staff emergency pro bono cases with Jones Day partners and associates. “In addition to being a fine lawyer and committed to pro bono, Sean is a delightful person who has been an excellent ambassador for Jones Day, DVAP and pro bono overall,” said DBA President Ike Vanden Eykel. Mr. Whyte has helped staff legal clinics and has assisted in the representation of DVAP clients, as well as Jones Day pro bono clients, since he began practicing law in 2004. He has also participated in numerous DVAP clinics, including South Dallas, East Dallas, Garland and HN the Wills Clinic. For more information about DVAP or pro bono opportunities, visit www.dallasvolunteerattorneyprogram.org or contact Alicia Hernandez at ahernandez@dallasbar.org. Jessica D. Smith is the DBA’s Communications/Media Director. She can be reached at jsmith@dallasbar.org.
Intellectual Property Law
Using a Residuals Clause In a Nondisclosure Agreement by Jonathan K. Hustis
Your client wants to look at confidential information from a prospective business partner or acquisition target and has been asked to sign a nondisclosure agreement. Before you sign and receive any confidential information, why should you consider using a “residuals clause” and other measures to protect your client?
Background: The Risk of Contamination
The review of another company’s secrets may contaminate your client’s reviewing employees and inhibit its ability to use them on future assignments. That may impact
your plans to move into markets where the disclosing party also intends to operate. Here’s why. In trade secret and employment law, courts have permitted claims where former employers have used the doctrines of “misappropriation by memory” and of “inevitable disclosure” to seek injunctive relief against an employee who had gone to work for a competitor. The most prominent recent lawsuit advancing this theory was reported this month in the September 7 The New York Times. Reporting on HP’s California lawsuit against its former CEO Mark Hurd, the Times said that “[t]he suit accused Mr. Hurd of violating his severance agreement to protect HP’s confidential information by taking a job as co-president of Oracle,
Inside 5 IP Due Diligence in Mergers & Acquisitions 8 DBA Salutes Veterans 11 Intellectual Property in Corporate Transactions 13 Trademark Basics for Small Businesses—Common Pitfalls
an HP rival and partner.” In these cases the claimants allege that the former employee has necessarily retained trade secrets in memory and that the former employee cannot help but employ that information in his or her new position with the competitor. The same concepts logically apply to the situation where a receiving company returns or destroys the confidential information in tangible, written form, but then uses its same employees who reviewed that information in competition against the disclosing company. The disclosing party may claim that by using these employees in a competitive activity, the receiving continued on page 12
2 He a d n o t e s l D a l l a s B a r A s s o ciation
Calendar
November Events
NOVEMBER 5 – Belo Noon
FRIDAY CLINICS
“Top 10 Cocktail Party Topics,” Cass Callaway, Liza Farrow-Gillespie, Hon. Dennise Garcia and Jennifer M. Trulock. (MCLE 1.00)*
NOVEMBER 12 – North Dallas** Noon
“The Best Defense Is A Strong Offense: Navigating Patent Litigation,” Tonya Gray and Kacy Miller. (MCLE 1.00)*. RSVP to kzack@dallasbar.org. At Two Lincoln Centre, 5420 Lyndon B. Johnson Frwy., Suite 240 Dallas, Texas 75240. Parking is available in the Visitor’s Lot located in front of the entrance to Two and Three Lincoln Centre. There are several delis within the building. Food is allowed inside the Conference Center. Thank you to our sponsor, Griffith Nixon Davison, P.C
NOVEMBER 19 – Belo
Noon
Topic Not Yet Available
MONDAY, NOVEMBER 1
Noon
Tax Section “International Tax Primer,” Willie Hornberger. (MCLE 1.00)* Peer Assistance Committee
TUESDAY, NOVEMBER 2
Legal Ethics Committee Public Forum Committee
5 p.m.
Bankruptcy & Commercial Law Section “Fiduciary Duties – In and Around Bankruptcy,” Ian E. Roberts and Joseph J. Wielebinksi. (MCLE 1.00)*
THURSDAY, NOVEMBER 4
Noon
Corporate Counsel Section “Ripped from the Headlines: The Story Behind the Corporate Fraud Headlines,” Susan Hartman and Susan Markel. (MCLE 1.00)*
Tort and Insurance Section “Recent Insurance Cases at the Fifth Circuit,” Hon. Catharina Haynes. (MCLE 1.00)*
Mentoring Committee
St. Thomas More Society
Morris Harrell Professionalism Committee “Texas Disciplinary Rules of Professional Conduct,” Linda Eads. (Ethics 1.00)*
DAYL CLE Committee
WEDNESDAY, NOVEMBER 3
Noon
“Capital Punishment on Trial: Furman v. Georgia and the Death Penalty in Modern America,” Dr. David M. Oshinsky. Sponsored by the Appellate Law Section, Criminal Law Section, CLE Committee, and Legal History Discussion Group, The J.L. Turner Legal Association, and The Department of History of the University of Texas at Austin. (MCLE 1.00)*
Employee Benefits/Executive Compensation Section “DOL/EBSA Dallas Region Update,” Susan Hensley. (MCLE 1.00)*
Solo & Small Firm Section “Future of Estate Planning in Uncertain Times,” Joe Chenoweth and Lynn Smith. (MCLE 1.00)*
Novem ber 2010
Dallas Hispanic Bar Association “The Emerging Hispanic Workforce—From I-90s to English Only Rules and Beyond,” Fred Gaona, Jamie Ramon, Gail Salcido and Maricela Siewczynski. (MCLE 1.00)*
Noon
Construction Law Section “The Impact of Recent Insurance Coverage Decisions on the Construction Industry,” Lee Shidlofsky. (MCLE 1.00)* Lawyer Referral Service Committee Family Law Section Board
FRIDAY, NOVEMBER 5 Noon 3:30 p.m.
Friday Clinic – Belo “Top 10 Cocktail Party Topics,” Cass Callaway, Liza Farrow-Gillespie, Hon. Dennise Garcia and Jennifer M. Trulock. (MCLE 1.00)* DBA Annual Meeting
MONDAY, NOVEMBER 8 11:30 a.m. Federalist Society Noon
Alternative Dispute Resolution Section “Dealing with Egomaniacs, Jerks and Subterfuge in Mediations,” Hesha Abrams. (MCLE 1.00)* Real Property Law Section “Acquisitions and Dispositions of Non-Performing and Sub-Performing Mortgage Loans,” William T. Cavanaugh, Jr. (MCLE 1.00)*
TUESDAY, NOVEMBER 9 Noon
Business Litigation Section “The Personal Injury Lawyer Handling Commercial Litigation,” Frank Branson. (MCLE 1.00)*
Mergers & Acquisitions Section “Panel Discussion on Developments in Distressed
District Attorney Forum Held at Belo
Visit www.dallasbar.org for updates on Friday Clinics and other CLEs.
Mergers & Acquisitions.” (MCLE 1.00)*
DAYL Equal Access to Justice Committee
DVAP New Lawyer Luncheon. For more information, contact Chris Reed-Brown at reed-brownc@lanwt.org.
4 p.m. 6 p.m.
Noon
Energy Law Section “Online County Filings and Court Records,” Robert J. Stack. (MCLE 1.00)*
Senior Lawyers Committee
Health Law Section “Chapter 74’s Unanswered Questions,” Charles Josef Blanchard.” (MCLE 1.00)*
Home Project Committee
Law Day Committee
Pro Bono Activities Committee
Municipal Justice Bar Association
5:15 p.m.
Non-Profit Law Study Group
WEDNESDAY, NOVEMBER 10 7:45 a.m.
Dallas Area Real Estate Lawyers Discussion Group
Noon
Family Law Section “Understanding the Diagnosis and Treatment of Addiction” and “Helpful Ideas on How to Interact with Clients who Have Personality Disorders,” Chris Jones and Mary Sanger. (MCLE 1.00)*
Sports & Entertainment Section “Legal Aspects of Purchasing a Major League Baseball Club out of Bankruptcy,” Chuck Greenberg. (MCLE 1.00)*
4 p.m.
CLE Committee
House Committee
5:15 p.m.
LegalLine—Volunteers welcome. Second floor Belo.
Antitrust & Trade Regulation Section “Federal Trade Commission Update,” Commissioner Edith Ramirez. (MCLE 1.00)*
THURSDAY, NOVEMBER 11 11:45 a.m. DAYL Barristers for Babies Noon
Collaborative Law Section “Ethical Implications of the Use of Cooperative Law,” Norma L. Trusch, Esq. (MCLE 1.00, Ethics 0.50)*
Admissions and Membership Committee
6 p.m.
J.L. Turner Legal Association
Publications Committee Dallas Asian American Bar Association Christian Lawyers Fellowship
FRIDAY, NOVEMBER 12 Noon
Friday Clinic – North Dallas* “The Best Defense Is A Strong Offense: Navigating Patent Litigation,” Kacy Miller and Tonya Gray. (MCLE 1.00)
Trial Skills Section “Ethical Issues in Discovery: What You Do or Don’t Do In Discovery Can Hurt You At Trial,” Kirby Drake. (MCLE 1.00)
MONDAY, NOVEMBER 15
Labor & Employment Law Section “Cyber Issues in Employment Law: How Internet, Email and Technological Advances are Creating Workplace Headaches,” Mike Birrer and Angelina LaPenotiere. (MCLE 1.00)*
Noon
TUESDAY, NOVEMBER 16
The DBA Public Forum Committee hosted a District Attorney Forum for the two candidates for Dallas County DA: Craig Watkins and Danny Clancy. The event was moderated by KXAS-TV report Ken Kalthoff (back, center). Other participants of the event included panelists (front row, left to right) Russell Wilson II, Sandy Grayson and Laura Benitez-Geisler; and Cheryl Camin, Committee Co-Chair. (Back row, left to right) Aaron Tobin, Committee Vice Chair; Mr. Kalthoff; Vincent Ansiaux, Committee member; and Philip Kingston, Committee Co-Chair.
WEDNESDAY, NOVEMBER 17
8:30 a.m.
Justice in Education Symposium, speakers include Dr. Michael Hinojosa, Hon. Teresa Guerra Snelson and more. Registration $35, includes lunch. RSVP to ahernandez@dallasbar.org
Noon
Government Law Section “Three Secrets to Effective Witness Presentation,” Asst. U.S. Attorney Shane Read. (MCLE 1.00)*
International Law Section Topic Not Yet Available
Community Involvement Committee
Entertainment Committee
Law in the Schools and Community Committee
DAYL Animal Welfare Committee
DAYL Elder Law Committee
LegalLine—Volunteers welcome. Second floor Belo.
THURSDAY, NOVEMBER 18 Noon
Appellate Law Section “The Law Governing Jury Selection,” Hon. Jim Jordan. (MCLE 1.00)*
Minority Participation Committee
Dallas Gay and Lesbian Bar Association
Christian Legal Society
UPL Subcommittee
3:30 p.m.
DBA Board of Directors
5:30 p.m.
DBA New Member Reception. Honoring our New DBA Members and Newly Licensed Attorneys. For more information, contact Kim Watson at kwatson@dallasbar.org. or (214) 220-7414.
FRIDAY, NOVEMBER 19 8 a.m.
Juvenile Justice Committee, “Off the Beaten Path: Engaging Parents, Children And Families in CPS Cases,” 8 a.m. -4:30 p.m. Numerous topics and speakers. For more information, contact AHernandez@dallasbar.org. (MCLE 6.25, Ethics 1.00)* Tort and Insurance Practice Section “Trial Practice Essentials: Tools You Need to Win Your Case,” (MCLE 5.25, including .5 Ethics)*
11:45 a.m. J. Reuben Clark Society Noon
Friday Clinic – Belo Topic Not Yet Available
MONDAY, NOVEMBER 22 Noon
Securities Section “Get Ready—Shareholder Proxy Access is Here,” C. Alex Frutos and Kevin Jones. (MCLE 1.00)*
Computer Law Section Topic Not Yet Available
Criminal Justice Committee
TUESDAY, NOVEMBER 23 Noon
Probate, Trusts & Estates Section “Multiple Party Representation Ethics,” Bill Elliott. (Ethics 1.00)*
Courthouse Committee
American Immigration Lawyers Association
6 p.m.
Dallas Hispanic Bar Association
WEDNESDAY, NOVEMBER 24 Noon
Juvenile Justice Committee
THURSDAY, NOVEMBER 25 DBA Offices Closed for Thanksgiving Holiday
FRIDAY, NOVEMBER 26
DBA Offices Closed for Thanksgiving Holiday
MONDAY, NOVEMBER 29 Noon
No DBA Meetings Scheduled
TUESDAY, NOVEMBER 30 Noon
No DBA Meetings Scheduled
DBA Justice in Education Symposium
Tuesday, November 16~ 8:30 a.m. to 1:30 p.m. ~ Belo Mansion Speakers include DISD Supt. Dr. Michael Hinojosa, Susan Hoff, Rene Martinez and various panels. The Jack Lowe Sr. Award for Community Leadership will be presented to Charles “C.J.” Johnson during the luncheon. Registration $35, includes lunch. Contact Alicia Hernandez at (214) 220-7499 or ahernandez@dallasbar.org
If special arrangements are required for a person with disabilities to attend a particular seminar, please contact Cathy Maher at 214/220-7401 as soon as possible and no later than two business days before the seminar. All Continuing Legal Education Programs Co-Sponsored by the DALLAS BAR FOUNDATION. *For confirmation of State Bar of Texas MCLE approval, please call Teddi Rivas at the DBA office at 214/220-7447. **For information on the location of this month’s North Dallas Friday Clinic, contact KZack@dallasbar.org.
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D al l as Bar A ssoci ati on l Headnotes 3
Goranson, Bain, Larsen, Greenwald, Maultsby & Murphy, PLLC Dallas 214.373.7676 Plano 214.473.9696 :: gbfamilylaw.com
4 He a d n o t e s l D a l l a s B a r A s s o ciation
Novem ber 2010
Headnotes
President's Column
Published by: DALLAS BAR ASSOCIATION
More Hidden Treasures by ike vanden eykel
As 2010 begins to wind down, I feel compelled to highlight several more important members of TEAM DBA that don’t always get the recognition they deserve, especially when you consider how important they are to our overall success. As with any team you assemble, it takes the consistent work and execution of all members of the team to be able to achieve the best possible result from your efforts. TEAM DBA is no exception to that principle.
Dallas Lawyers Auxiliary
This organization has been a part of TEAM DBA for many decades. Some people are aware that the festive look of our Belo Mansion during the holidays is due to the hard work and precision of this group. They annually turn our headquarters into a holiday destination and our thanks go out to them for this effort. They also sponsor the annual Justinian Award and banquet, which is one of the most successful events at the Belo Mansion each year. Since 1987, the Dallas Lawyers Auxiliary has also distributed a booklet, Now You Are 18, to high school seniors in Dallas County. In October these booklets were again delivered to requesting high schools and others such as judges with teens under their supervision, rehab organizations and citizenship classes. The booklet covers subjects such as marriage, making contracts, jury service, drinking and driving, apartment leasing and military service. Schools may disseminate this information in government classes or in homerooms and libraries. The Dallas Lawyers Auxiliary piloted this program originally, and it is now available in 239 counties in Texas. A copy of this great piece of literature can be obtained by contacting Marianne Gwinn, DLA Third Vice President, at (214) 528-7144 or Marianne@gwinn.net. As a quiet partner in the success of the DBA, we salute the Dallas Lawyers Auxiliary. Your support of TEAM DBA continues to be extremely important and much appreciated.
Our Sister Bar Associations
When Team DBA takes the field, it does so with the support of several important and significant bar associations who work as integral members of our organization. As a result of this partnership, the Dallas Bar Association has been able to strengthen its team with expanded participation of the membership of each of these organizations. The Dallas Association of Young Lawyers (DAYL) is an active Sister Bar which is ably run this year by its President Jennifer Edgeworth and its President-Elect Penny Brobst Blackwell. Many of the leaders of the DBA have come up through the ranks of DAYL over the years and we are very proud of our association with this vital and active group. The Dallas Hispanic Bar Association (DHBA) is one of our proud Sister Bar Associations which contributes to our success every year. Its President for 2010 is Jose Ortiz and the PresidentElect is Hon. Teresa Guerra Snelson. The DHBA has many fine programs that benefit our DBA and our community in general. We rely on this group and are grateful for their support. The Dallas Asian American Bar Association (DAABA) is a proud member of Team DBA. Its President this year is Hope Shimabuku and its President-Elect is Eunice Kim Nakamura. DAABA continues to sponsor many excellent programs and they are always ready to step up on behalf of the DBA. Rounding out the All-Star group of Sister Bar Associations is J. L. Turner Legal Association. Founded in 1952, J.L. Turner has been an integral part of TEAM DBA for many years. Our past and current leadership in the DBA comes from the ranks of this proud organization. The 2010 President is Karen McCloud and
the President-Elect is Eric Blue. With our Sister Bar Associations working with us as active partners, the strength of our association is significantly increased and we are more able to provide the much needed services we offer to our members and our great city.
Finance Committee
This standing committee made up of members of the DBA Board of Directors, as well as DBA staff member Sherri Evans, is often overlooked in its contributions to the success of the Dallas Bar. This committee is chaired by DBA Board Vice-Chair Brad Weber for 2010 and it has responsibility for the financial integrity of the DBA from its budget, audit procedures and follow-up, monitoring and responsibility of our investments, as well as many other financial matters that face an organization of our size. We are fortunate to have the continued support of Sherri Evans as our controller and we appreciate her important contribution to the work of this committee.
House Committee
There is not a bar association in the entire country that does not envy the Dallas Bar in many ways, not the least of which is the spectacular headquarters complex of the Belo Mansion and the Pavilion. That we are fortunate to have this incredible headquarters is a direct tribute to the many members and law firms in Dallas who contributed to their purchase and refurbishment. What is shocking is that few people know what goes into the maintenance and continued excellence of our property. Much credit goes to the House Committee which is ably chaired this year by Rob Roby with the able assistance of John Goren, Jim Klancnik, Bill Dowdy and Nick LaBranche. The work of this committee cannot be overstated and is too often overlooked. We are eternally grateful for their daily contribution to TEAM DBA!
The 2010 DBA Board of Directors
Whatever TEAM DBA accomplishes in 2010, it is directly due to the tireless efforts of its many committees and sections and those people look directly to our Board of Directors for leadership and hard work. I have been proud to be able to serve with such a distinguished Board. Our Chair for 2010, Scott McElhaney, has led with distinction and has been backed up by our Vice-Chair Brad Weber. In addition to these members, the Executive Committee is rounded out by President-Elect Barry Sorrels, First Vice-President Paul Stafford, Second Vice-President Sally Crawford, Immediate Past-President Christina Melton Crain and Secretary/Treasurer Wesley Young. In addition to the distinguished members of the Board, we have been blessed by a legendary group of directors to the State Bar of Texas in Talmage Boston, Christina Melton Crain, Beverly Godbey, Timothy Mountz, Rob Roby, Mark Sales and Frank Stevenson, and to the ABA Delegates, Justice Douglas Lang, Kim Askew and Rhonda Hunter. Credit for our success goes to our board for a great 2010.
Dallas Bar Foundation
Since its creation, the Dallas Bar Foundation has been a vital link to the continued success of the Dallas Bar Association. This valued member of TEAM DBA is chaired for 2010 by Mark Shank and we owe a steady and regular thank you to the membership and leadership of the DBF. In addition to being the owner of the Belo Mansion and Pavilion, the DBF funds many worthwhile projects of the Dallas Bar, as well as many other undertakings in our community. We are very proud of our association with the DBF. We have many to thank for the success of TEAM DBA for 2010. It has been a pleasure to highlight just a few of the people and groups who have made valuable contributions to our success this year. HN
Board of Directors Roundup Scott McElhaney, Chair, called the September 16 meeting to order and welcomed and introduced guests, including the members of the Dallas Bar Foundation Board of Trustees who were in attendance for the annual joint meeting of the boards. Justice Lang and Kim Askew gave an update on the recent meeting of the ABA House of Delegates. As Ms. Askew will be serving as a Delegate for the ABA’s Litigation Section; Rhonda Hunter will fill her unexpired term. Lee Baldwin, chair of the LRS Committee, gave a report on the committee explaining that revenues have increased this year. She thanked the LRS staff for their efforts. Mr. McElhaney then called on the Dallas Bar Foundation Chair, Mark Shank, to report on the Foundation. Mr. Shank gave a background report on the DBF and then Mr.
Roby gave a brief report on a new fundraising effort. Rey Rodriguez reported on the Collins Clerkship Program saying that it has funded summer clerkships in the amount of $400,000 since its inception in 1989. Tim Mountz, Chair of the DBF Grants Committee, gave a report on the Planned Giving Program and the Grants Committee. Jerry Alexander, Chair of the Equal Access to Justice Campaign, thanked Andy Payne and Jim Mitchell, of Payne Mitchell Law Group L.L.P., for their donation of $25,000. He announced that they are a lead donor to the Campaign. He also announced that DBA President Ike Vanden Eykel’s law firm of Koons, Fuller, Vanden Eykel & Robertson, P.C., is the largest donor, committing $30,000 to the Campaign. There being no further business, the HN meeting was adjourned.
North Texas Food Bank Service Saturday
Your Help is Needed!
Saturday, November 13 The North Texas Food Bank (4500 S. Cockrell Hill Rd., Dallas) The DBA Community Involvement Committee has committed 20 volunteers to help sort and box donated items from 9 a.m. to noon. Sign up to volunteer by contacting Kim Ratcliff at kratcliff@dehay.com.
2101 Ross Avenue Dallas, Texas 75201 Phone: (214) 220-7400 Fax: (214) 220-7465 Website: www.dallasbar.org Established 1873 The DBA’s purpose is to serve and support the legal profession in Dallas and to promote good relations among lawyers, the judiciary, and the community. OFFICERS President: Ike Vanden Eykel President-Elect: Barry Sorrels First Vice President: Paul K. Stafford Second Vice President: Sally Crawford Secretary-Treasurer: Wesley Young Immediate Past President: Christina Melton Crain Directors: Scott M. McElhaney (Chair), Brad C. Weber (Vice Chair), Jerry C. Alexander, Hon. Jane J. Boyle (At Large), Wm. Frank Carroll, E. Leon Carter, Rob Crain, Jennifer Edgeworth (President, Dallas Association of Young Lawyers), Laura Benitez Geisler, Michael K. Hurst, Hon. Marty Lowy, Michele Wong Krause, Karen McCloud (President, J.L. Turner Legal Association), Jose Ortiz (President, Dallas Hispanic Bar Association), Mary Scott, Hope Shimabuku (President, Dallas Asian American Bar Association), Scott P. Stolley (At Large), Diane M. Sumoski and Debra K. Thomas. Advisory Directors: Penny Brobst Blackwell (PresidentElect, Dallas Association of Young Lawyers), Eric Blue (President-Elect, J.L. Turner Legal Association), Eunice Kim Nakamura (President-Elect, Dallas Asian American Bar Association) and Hon. Teresa Guerra Snelson (PresidentElect, Dallas Hispanic Bar Association). Delegates, American Bar Association: Rhonda Hunter, Hon. Douglas S. Lang Directors, State Bar of Texas: Talmage Boston, Christina Melton Crain, Beverly Bell Godbey, Robert R. Roby, Frank E. Stevenson, II HEADNOTES Executive Director/Executive Editor: Catharine M. Maher Communications / Media Director & Headnotes Editor: Jessica D. Smith Calendar: Kathryn Zack In the News: Judi Smalling Art Director: Thomas Phillips Advertising: Karla Howes PUBLICATIONS COMMITTEE Co-Chairs: Vincent J. Allen, Timothy G. Ackermann and Suzanne Raggio Westerheim Vice-Chairs: Lea N. Clinton and Paul R. Clevenger Members: H. Joseph Acosta, Natalie Arbaugh, Wesley J. Bailey, Heather J. Barbieri, Vance L. Beagles, Eric Blue, Barbara Boudreaux, Quentin Brogdon, Lance E. Caughfield, Christina Melton Crain, Pat Driscoll, Dawn E. Fowler, Floyd R. Hartley Jr., John Thomas Hayes, Paul W. Herring, Mary Louise Hopson, Victor Johnson, Arshil A. Kabani, Mike Keliher, Jamie McKey, Elizabeth Jo McShan, Thomas L. Mighell, Mitchell S. Milby, Clay Miller, Jennifer Mitchell, Hon. Jim Moseley, Sonia Navia, Heather Bailey New, Jenna Page, Kirk L. Pittard, Irina B. Plumlee, Robert D. Ramage, Andrew Baxter Ryan, Gregory W. Sampson, Steven D. Sanfelippo, Barry Sorrels, Paul K. Stafford, Scott B. Stahl, Amy E. Stewart, Sherry L. Talton, Debra K. Thomas, Ike Vanden Eykel, Peter S. Vogel, Thomas Williams, Courtney Willis, Elizabeth A. Wilson and Sarah Q. Wirskye. DBA & DBF STAFF Executive Director: Catharine M. Maher Accounting Assistant: Shawna Bush Communications / Media Director: Jessica D. Smith Controller: Sherri Evans Director of Community Services:Alicia Hernandez Events Coordinator: Rhonda Thornton Executive Assistant: Michelle Dilda Executive Director, DBF: Elizabeth Philipp LRS Program Assistant: Biridiana Avina LRS Interviewer: Marcela Mejia Law-Related Education & Programs Coordinator: Amy E. Smith Membership Coordinator: Kimberley Watson Projects & Communications Assistant: Kathryn Zack Publications Assistant: Judi Smalling Receptionist/Staff Assistant: Teddi Rivas DALLAS VOLUNTEER ATTORNEY PROGRAM Director: Alicia Hernandez Managing Attorney: Michelle Alden Volunteer Recruiter: Chris Reed-Brown Paralegals: Whitney Breheny, Lakeshia McMillan, Andrew Musquiz, Jigna Gosal, Tina Douglas Data Entry/Office Support: Patsy Quinn Copyright Dallas Bar Association 2010. All rights reserved. No reproduction of any portion of this publication is allowed without written permission from publisher. Headnotes serves the membership of the DBA and, as such, editorial submissions from members are welcome. The Executive Editor, Editor, and Publications Committee reserve the right to select editorial content to be published. Please submit article text via e-mail to jsmith@dallasbar.org (Communications Director) at least 45 days in advance of publication. Feature articles should be no longer than 750 words. DISCLAIMER: All legal content appearing in Headnotes is for informational and educational purposes and is not intended as legal advice. Opinions expressed in articles are not necessarily those of the Dallas Bar Association. All advertising shall be placed in Dallas Bar Association Headnotes at the Dallas Bar Association’s sole discretion. Headnotes (ISSN 1057-0144) is published monthly by the Dallas Bar Association, 2101 Ross Ave., Dallas, TX 75201. Non-member subscription rate is $30 per year. Single copy price is $2.50, including handling. Periodicals postage paid at Dallas, Texas 75260. POSTMASTER: Send address changes to Headnotes, 2101 Ross Ave., Dallas, TX 75201.
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D al l as Bar A ssoci ati on l Headnotes 5
Intellectual Property Law
IP Due Diligence in Mergers & Acquisitions by Jim Chester, Roxana Sullivan, and Sita Desai
As the economy slowly recovers, merger and acquisition (M&A) activity is expected to increase. With the revival of M&A activity, many companies and their lawyers have become, or soon will be, immersed in “due diligence” investigations of assets and liabilities to assess the merits and risks of a given transaction. These days, the most important group of assets of a target company is often its intellectual property (IP), which includes patents, trademarks, trade dress, copyrights, trade secrets, domain names and other proprietary information and materials. As such, IP due diligence has become a vital component of a pre-M&A investigation.
Why IP Due Diligence?
Failure to include all IP assets in a due diligence investigation can have a significant impact on the true value of the acquisition. For an acquiring company, IP due diligence is crucial. Otherwise, the acquiring company cannot correctly value the target and might significantly overpay for the assets it acquires. Even worse, the acquiring company could be purchasing an IP infringement lawsuit. Perhaps the greatest cautionary tale supporting the use of IP due diligence is a 1998 purchase by Volkswagen, AG. Volkswagen bid and paid $795 mil-
lion for Rolls-Royce Motor Cars Ltd., but soon discovered that the “RollsRoyce” trademarks were not part of the deal. Rolls-Royce PLC had gone into receivership in the 1970s and, although Rolls-Royce Motor Cars, Ltd. was sold at that time, the “Rolls-Royce” trademark was retained by Rolls-Royce PLC. At the end of the day, Volkswagen had spent $795 million for a luxury car company, but could not use the RollsRoyce brand. IP due diligence should also be conducted by the target company in preparation for the negotiation of the terms of the deal. For the target company, IP due diligence allows it to better ascertain the value of its IP assets, and, therefore, overall worth. It also permits the target company to clean house and ensure that all registrations, licenses and assignments are current, properly-executed and recorded.
Develop an IP Asset Inventory
Before the parties can properly value the IP Assets of the target company, they must compile a full and accurate inventory of all IP assets: an “IP Asset Inventory.” Much information regarding pending and registered patents, trademarks, copyrights and domains can be gleaned from publicly available sources such as the U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office, as well as foreign registries
Sustaining Members of the Dallas Bar Association The DBA sincerely appreciates the support of its Sustaining Members whose financial contributions enhance the preservation of the historic Belo Mansion. David Carlock, of Carlock & Gormley, LLP Sawnie A. McEntire, of Beirne, Maynard & Parsons, L.L.P. Mike McKool Jr., of McKool Smith P.C. Tahira Khan Merritt of Martin Merritt Nancy Arnole Nasher, of NorthPark Development Company Jenna Page Michael L. Riddle, of Middleberg, Riddle & Gianna Scott R. Seideman, of The Seideman Law Firm Peter S. Vogel, of Gardere Wynne Sewell LLP
Capital Punishment on Trial: Furman v. Georgia and the Death Penalty in Modern America
Wednesday, November 3, Noon, Belo Mansion Speaker: Dr. David M. Oshinsky, professor of history and winner of the 2006 Pulitzer Prize in History MCLE 1.00 Presented by the J.L. Turner Legal Association and the Dept. of History of the University of Texas at Austin Sponsored by the DBA Appellate and Criminal Law Sections, CLE Committee and Legal History Discussion Group.
and databases. In addition to registration and ownership information, these sources often contain details regarding the IP assets such as prosecution history and chain of title. Additionally, the acquiring company must also evaluate the target company’s non-public IP assets, lest it base decisions on only a partial IP Asset Inventory. Of course, prior to releasing such information, the target company should require the parties to enter into a non-disclosure agreement (NDA) to protect its proprietary IP assets. The non-public portion of the IP Asset Inventory may include: • Non-published patent applications and related materials such as patentability or prior art searches; • Unfiled or unregistered trademarks and related materials such as clearance searches; • Trade secrets and confidential business information; • Licenses and assignments relating to the IP assets; and • Letters and other communications relating to litigation, claims of infringement, title disputes, or other adverse action related to the IP assets.
Conducting the IP Due Diligence Investigation
After obtaining the information described above, the acquiring com-
pany can more fully evaluate the risks and benefits associated with the proposed transaction. Although each situation is unique, an IP Asset Inventory evaluation should involve the following steps: • Step 1: Review the IP Asset Inventory to determine the target company’s rights with respect to each of those IP assets (e.g., owner, coowner, licensee). • Step 2: Review any active litigation, settlements, coexistence/consent agreements, assignments, and any other agreements affecting the target company’s rights in the IP assets. • Step 3: Ensure that the IP is enforceable, and that registrations are current. • Step 4: Assess the value of the IP. Analyze the value of the IP as it relates to current production and future expansion of the business. Only after reviewing all of the target company’s IP Asset Inventory can the parties to an M&A transaction accurately value the transaction. Therefore, IP due diligence should be an integral part of any pre-M&A investigation to determine the value of IP assets, as well HN any potential liabilities.
Jim Chester is a partner at Klemchuk Kubasta LLP. Roxana Sullivan and Sita Desai are associates at the firm. They can be reached at jim.chester@kk-llp.com, roxana.sullivan@ kk-llp.com and sita.desai@kk-llp.com, respectively.
Wine Cork Pull Fundraiser for DVAP We need your tax-deductible donations! The DBA will hold its 2nd Annual Wine Cork Pull at the Inaugural Dinner-Dance honoring incoming President Barry Sorrels and we need your donations. What’s needed? A selection of all types and values of wine (750ml bottles) When do you need it? By Friday, Dec. 3 Who do I send it to? Rhonda Thornton at the DBA. E-mail rthornton@dallasbar.org or call (214) 220-7403.
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Focus
Novem ber 2010
Intellectual Property Law
IP Issues for Bloggers by Peter S. Vogel
Many bloggers are violating copyrights, trademarks or trade secrets without understanding how intellectual property (IP) can be properly used, or avoided altogether. With just a little thought and work, bloggers can avoid embarrassing or costly infringement claims. In 2009 the Federal Trade Commission (FTC) issued guidelines that require bloggers to disclose promotional blogs for which the bloggers receive some benefits. This article will discuss IP laws and the FTC guidelines relating to blogging.
Trademarks
In simple terms trademarks “protect words, names, symbols, sounds or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods.” In the U.S., trademarks can be of three varieties—common law, state or federal. However, the most important trademark for bloggers is federal, which includes registration with the U.S. Patent & Trademark Office (USPTO –uspto.gov). Many bloggers think nothing of adding trademarks and logos on blogs without getting permission. But bloggers should think twice. For instance, Google has guidelines for third-party use of Google Brand Features (www.
google.com/permissions/guidelines. html), including logos and trademarks. In order to use a Google trademark or logo, bloggers must get express permission and then comply with a specific set of terms and conditions. Similarly, Facebook restricts the use of trademarks and logos without written permission (www.facebook.com/ terms.php?ref=pf), and the list goes on. Using a trademark on the Internet is very simple, but may be difficult to police since there are billions of Internet users who might be infringing trademarks. The trademark owner must be vigilant to protect their trademarks or they run the risk of losing the marks.
Copyrights
Under the 1976 Copyright Act, the author owns a copyright in a work at the moment it is created and there is no requirement to file a registration at the Copyright Office (copyright.gov) or even mark the work (© or Copyright, author and the year created). Under the U.S. Constitution, the author has a monopoly on making copies. Most readers know that there is a “fair use” for copyrights when used for educational and/or non-profit purposes, but if a blogger copies one phrase out of a 1,000-word article, the
Justinian Award Nominations Due Soon
The 29th Annual Justinian Award will be presented in April 2011 at the Belo Mansion. The Dallas Lawyers Auxiliary is seeking nominations for this prestigious award which is given annually to a member of the Dallas Bar Association who has dedicated his or her career to volunteer service through civic, educational, health, welfare or philanthropic endeavors in the Dallas community. The recipient will be chosen by a panel of distinguished non-lawyer community leaders. Attorneys serving in public office or candidates for public office are not eligible. Please consider nominating one of the many outstanding attorneys in the community for the Justinian Award. Past recipients include lawyers from large and small firms, solo practitioners and corporate attorneys. Nominations must be submitted in writing no later than January 10, 2011, to Carolyn Raney, 2413 Grandview Drive, Richardson, TX 75080, or by e-mail at carolynraney@sbcglobal.net. Nominations forms online at www.dallaslawyersauxiliary.org/justinian.html.
line gets very blurry about whether it is an infringement or fair use. Many bloggers give credit for such quotes and are probably not in big trouble. However, copying a complete work into a blog is different, and under the Google and Facebook terms of service the blogger would need to get specific permission to use the work. Bloggers who include photos and videos from other sources run into a different law known as the Digital Millennium Copyright Act (DMCA - copyright.gov/legislation/pl105-304. pdf). The DMCA is the law that is used by copyright owners to get YouTube to take down infringing videos under the DMCA’s safe harbor provisions. However, if a blogger includes a video that is infringing someone’s copyrighted work, the blogger may not be protected from an infringement claim if they fail to take down the video under the DMCA. So if a blogger includes videos, even from YouTube, they run the risk of not being protected by the DMCA and being an infringer if the video is later taken down under the DMCA.
Trade Secrets
Generally, a trade secret is something that gives one business an advantage over others, but in order to be a secret there are specific guidelines that must be followed. Written confidenti-
ality agreements are generally required between the blogger and the owner of the trade secrets to prevent disclosure under trade secret law. There is no federal trade secret law, but 46 states (not including Texas) have adopted the Uniform Trade Secrets Act (UTSAwww.law.upenn.edu/bll/archives/ulc/ fnact99/1980s/utsa85.htm). Even some of those 46 states, however, continue to use common law on certain aspects. As an example, a blogger who has agreed to maintain certain information as a trade secret would clearly violate the trade secrecy by posting that information on a blog.
FTC Disclosures
In December 2009, the FTC established its final rules about endorsements and testimonials, which now require that bloggers disclose that they receive products and services about which they may be blogging (Guides Concerning the Use of Endorsements and Testimonials in Advertising: ftc.gov/os/200 9/10/091005endorsementguidesfnnoti ce.pdf). So if a blogger is given a free iPhone or subscription to a service, for example, the blogger must disclose HN these facts in the blog.
Peter Vogel is a trial partner at Gardere Wynne Sewell LLP, an Adjunct Professor at SMU on the Law of eCommerce, and a former President of the DBA. He blogs at VogelITlawBlog.com and can be reached at pvogel@gardere.com.
•2010 Pro Bono Awards• LAWYER & JUDICIAL AWARDS
Lawyer of the Year Sean Whyte, Jones Day
East Dallas Clinic Fred Gross
Hartman Judicial Pro Bono Service Award Hon. Jim Jordan, 160th District Court
Pro Bono Court Reporter of the Year Wynne Pauly
Outstanding New Pro Bono Lawyer Vynessa Nemunaitis, Fullbright & Jaworski, L.L.P. Pro Bono Coordinator of the Year Marjorie Powell Outstanding Clinic Attorney Volunteers West Dallas Clinic Thomas A. Wheeler III Garland Clinic William “Bill” Milne, Attorney at Law South Dallas Clinic Elizabeth Upchurch
Outstanding Court Personnel Catherine Nicholson Outstanding Support Volunteer Kathy Cleveland Outstanding Sole Practitioner Marsha Hunter, Law Office of Marsha L. Hunter Lois Bacon Special Services Award Fullbright & Jaworski, L.L.P. Pro Bono Appreciation Award Ike Vanden Eykel, Koons, Fuller, Vanden Eykel & Robertson, P.C. Outstanding Outreach Clinic Attorney Ceaser Espinoza
LAW FIRM AWARDS Law Firm of the Year Haynes and Boone, LLP 2009 Outstanding Clinic Sponsor Hunton & Williams, LLP Gold Award for Pro Bono Service American Airlines Patton Boggs, LLP Baker Botts, L.L.P. Jones Day
Silver Award for Pro Bono Service Cozen O’Conner Weil Gotshal & Manges, LLP Akin Gump Strauss Hauer & Feld LLP Locke Lord Bissell Liddell, LLP Bronze Award for Pro Bono Service DLA Piper LLP Andrews Kurth LLP Jackson Walker L.L.P. Thompson & Knight LLP
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D al l as Bar A ssoci ati on l Headnotes 7
Intellectual Property Law
Stormy Weather: Forecasting the Legal Issues in Cloud Computing by Tom Kulik
Driven by ever-increasing costs for computer infrastructure and the resources necessary to manage it, companies have begun using hosted services and solutions available through the Internet for their required IT needs. Commonly referred to as “cloud computing,” these service models provide infrastructure, software or platforms via the Internet, rather than through more traditional on-site hardware and software installation and support. Recent technological developments have spurred somewhat of a “perfect storm” for the growth of cloud service providers (CSPs). Larger (yet more cost-effective) communications bandwidth and ever-increasing microprocessor speeds and storage capabilities have spawned the growth of server virtualization (i.e. the ability to host a number of simulated computer environments, or “virtual machines,” on a single hardware platform) in high-security data centers. But clients and lawyers weighing this option must address the evolving legal risks inherent in this model, and may need to consider taking an umbrella before stepping “outside.” In engaging any CSP, better scalability, management and technology costs must be weighed against the risks inherent in placing data, and the means for accessing and storing it, outside a client’s (or lawyer’s) direct control, and, in many cases, jurisdiction. Unlike a traditional outsourcing relationship, cloud computing can geographically disperse client data over multiple computing platforms that trigger security and pri-
vacy concerns. Under the European Union Data Protection Directive, for example, trans-border data flow of private information of EU customers to the United States is prohibited unless the same level of protection is afforded such EU residents in the United States as they would get in the EU or “adequate assurances” are made by satisfying the “safe harbor” framework provided by the Directive. If the data spans multiple countries, how can a client properly address such compliance issues? Domestically, statutory protections for data (such as HIPAA and the HITECH Act for “personal health information”) must also be addressed. As cloud services are governed by contractual terms that may or may not be negotiable, jurisdiction/venue, indemnification and liability provisions become crucial. Litigation holds and e-discovery are even more problematic. Once a litigation hold is initiated, CSPs may need to deal with third-party providers to preserve or access applicable data. This process can introduce delay or, even worse, cause spoliation of evidence. Intellectual property rights protections in the cloud service model are far more nuanced. For example, U.S. law dictates that a copyright vests in an author of an original work when such work is fixed in a tangible medium of expression. Where such works are created and saved by a foreign-national contractor on behalf of a domestic client, using a platform that resides on servers outside the United States, whether U.S. law or the laws of the contractor’s nationality of locality apply depend upon a multitude of factors that may affect the rights
New Parking Rate in Belo Garage Ten years ago the DBA began the process of seriously exploring how to expand our Belo facility to meet the needs of our rapidly growing membership. As part of that process, we would ask our members what they perceived our greatest needs to be and the response was typically singular, PARKING. With very limited land available, the only solution to satisfy that unanimous request was to construct our underground parking garage, which was completed in 2003 at a cost of $4,700,000— or $19,000 PER SPACE!!! We were also aware that there would be significant costs associated with the safe, clean and efficient operation of the garage once it was completed. As a result, the decision was made to have a minimal parking fee for our members of $3 per visit, regardless of how long the member would be at the facility. Over the last seven years that fee has never been raised, but our expenses and costs of operation have increased significantly. As just one example, all of us who pay an electric bill each month are painfully aware that the cost of electric-
ity has almost doubled in the last seven years. What most people never focus on is that an underground, 100,000-square foot garage, with three elevators, highwattage security lighting and a sophisticated exhaust system, takes a lot of power to operate. Last year, the garage electric bill alone was $75,000—that’s $300 per space annually, compared to $40,000 or $160 per space seven years ago! As a result, the time has come for us to face this reality and adjust our parking rates accordingly in order to maintain the level of security and quality service we all expect from the Belo facility. Starting January 1, 2011, our member parking rate will adjust to $4 per visit. However, if you are really attached to that $3 rate, we will be selling $30 parking coupon books good for 10 visits throughout 2011. Thanks for your understanding as we all continue to keep the Belo Mansion and Pavilion at the gem quality we, and the Dallas community, have and will continue to enjoy for decades to come.
DBA Annual Meeting Nominations for DBA directors and officers will be made at the Annual Meeting on Friday, November 5, at 4 p.m. (A reception begins at 3:30 p.m.). Six director and four officer positions are elected annually. Within seven days following the Annual Meeting, all DBA resident members with an e-mail address on file with the DBA will be sent an online ballot. If you wish to vote online, please make sure the DBA has your e-mail address by visiting the DBA website at www.dallasbar.org, or call Kim Watson at (214) 220-7414 before 5 p.m. on Thursday, November 3, 2010. Please update your spam software to allow the e-mail ballot to enter you inbox from DallasBar@BallotBoxOnline.com. If you receive an online ballot but wish to vote by hard copy, please contact Cathy Maher at (214) 220-7401 to request that a paper ballot be mailed to you. Only those resident members without an e-mail address on file with the DBA will be mailed a hardy copy of the ballot.
available to the client. Further, trade secret information stored in the cloud may be subject to loopholes that permit unauthorized third-party disclosure. For instance, in Sherman & Co. v. Salton Maxim Housewares, Inc., 94 F.Supp.2d 817 (E.D. Mich. 2000), the court held that the federal Stored Communications Act only prohibits the disclosure of stored communications where the disclosing party provides an “electronic communication service,” and a person who does not provide such a service “can disclose or use with impunity the contents of an electronic communication unlawfully obtained from storage.” These issues multiply for law firms seeking to “virtualize” computer infrastructure, given the attendant ethical considerations. As of the time of this writing, both New Jersey and Nevada have issued ethics opinions allowing for the use of CSPs for storage of client files so long as a reasonable standard of care is exercised, with others likely to follow suit. N.J. Sup. Ct. Advisory Comm. On Professional Ethics, Opinion 701 (2006);
Nev. State Bar Standing Commission on Ethics and Prof. Responsibility, Formal Opinion 33 (2006). And another state has a proposed opinion. North Carolina Proposed 2010 Formal Ethics Opinion 7, “Subscribing to Software as a Service While Fulfilling the Duties of Confidentiality and Preservation of Client Property” (April 15, 2010). Without question, a lawyer’s duty to maintain the confidentiality and security of client data does not disappear in the “cloud.” From remotely-hosted productivity services such as Google Docs and Zoho to full-scale infrastructure platforms like Amazon’s EC2, remarkable capability and options have become available for clients (and law firms) to offload IT infrastructure to offsite vendors. Unfortunately, the outlook is only partly sunny—a storm of legal issues is brewing for cloud services that reflects anything HN but clear skies. Tom Kulik is a partner at Scheef & Stone, L.L.P. and chairman of the firm’s Intellectual Property Practice Group. His blog on intellectual property law topics can be found at www.legalintangibles.com.
Dallas Bar Association
ANNUAL MARDI GRAS FALL PARTY Honoring our New DBA Members and Newly Licensed Attorneys Thursday, November 18, 2010 5:30pm - 8:00pm The Belo Mansion, 2101 Ross Avenue, Dallas, TX 75201 Business or Business Casual Attire For sponsorship or event information please contact: Kim Watson, Membership Coordinator kwatson@dallasbar.org or (214) 220-7414
8 He a d n o t e s l D a l l a s B a r A s s o ciation
Novem ber 2010
DBA Salutes Our Veterans The Veterans Legal Clinic – Helping to Serve Those Who Served by Michael Regitz and Dan Scott
The Veterans Legal Clinic is a monthly pro bono legal clinic that is held at the Dallas Veterans Administration (VA) Medical Center. The clinic is generally held on the first Friday of each month from 1:30 to 4:00 p.m. and has been in operation since December 2009. Veterans call the VA Social Services office to make appointments, which are limited to 40 each month to allow for a certain number of veterans who come to the clinic without appointments. The legal clinic is available to veterans and active duty servicemen and servicewomen, as well as to spouses of veterans and active duty military. The Dallas Volunteer Attorney Program (DVAP) has been a co-sponsor of the Veterans Legal Clinic since its inception. Accordingly, the Veterans Legal Clinic operates much like other area legal clinics operated by DVAP. Veterans are interviewed by attorneys at the Veterans Legal Clinic regardless of their legal issue or income eligibility and attorneys will visit the hospital rooms of those veterans who are physically unable to attend the clinic. Common legal issues encountered at the Veterans Legal Clinic involve family law, probate, wills, landlord/tenant disputes, tax,
employment, criminal law, bankruptcy and immigration law. Sometimes the veteran simply needs advice that the attorney can provide during the clinic. More often, however, the veteran requires further legal assistance. Veterans’ cases generated from the clinic are placed through DVAP, clinic sponsors and the ever-growing “Veterans Network.” In addition to legal issues, the veterans often have issues with their VA benefits. The Texas Veterans Commission typically has a Veterans’ Counselor on staff at the clinic to assist the veterans with benefits issues, and they do a fantastic job. If the benefits issue involves an appeal of a benefits decision, however, the veteran most likely will require legal representation. We are currently developing a list of attorneys who can handle such cases, and Dallas is fortunate that Hunton & Williams LLP is both experienced in handling benefits cases and is committed to serving the needs of our veterans. Thanks in large part to SBOT President Terry Tottenham’s efforts in establishing and promoting the Texas Lawyers for Texas Veterans initiative, which develops and assists pro bono legal clinics for veterans throughout the state, countless veterans have received pro bono legal rep-
Volunteer Now! Veterans Free Legal Advice Clinic First Friday of Each Month from 1:30 to 3:30 p.m. Friday, November 5 | Friday, December 3 at the VA North Texas Health Care System (4500 South Lancaster Road, Dallas, TX 75216) For more information, contact DVAP at (214) 742-5768 or www.dallasvolunteerattorneyprogram.org.
Numerous attorneys, legal personnel and DVAP employees volunteered at the monthly the DBA Veterans Legal Clinic. However, the clinic is always in need of additional volunteers.
resentation. Members of the Dallas Bar Association have selflessly answered the call and are already devoting substantial time and resources to this cause. However, the legal needs of our veteran population are great and far too many of our veterans cannot afford, or do not otherwise have access to, the legal services they need. Since the first Veterans Legal Clinic was held in December 2009, it has been staffed primarily by lawyers and administrative staff from Fulbright & Jaworski L.L.P. and Gardere Wynne Sewell LLP. The entire DBA has now joined the cause and various firms, companies and legal organizations have committed to sponsor the monthly clinics, including the Senior Lawyers of the Dallas Bar Association, American Airlines, Inc., Haynes and Boone, LLP, Akin Gump Strauss Hauer & Feld LLP, and the Business Litigation Section of the Dallas Bar Association. Additionally, countless firm,
solo and in-house attorneys have joined the Veterans Network, helped staff the Veterans Legal Clinic and handled veterans cases on a pro bono basis. We are especially grateful for Pro Bono Activities Committee CoChair Christina McCracken for her relentless efforts to get the entire legal community involved in the Veterans Legal Clinic. If you are interested in joining the Veterans Network, sponsoring a Veterans Legal Clinic, or otherwise working to assist our veterans with their legal needs, please contact us. Help us to ensure that these brave protectors of our legal system HN have full access to it. Mike Regitz is a Program Coordinator of the Veterans Legal Clinic and an associate in the Intellectual Property Section of Fulbright & Jaworski L.L.P. He can be reached at mregitz@fulbright.com. Dan Scott is a Program Coordinator of the Veterans Legal Clinic and an associate in the Bankruptcy and Business Reorganization Section of Gardere Wynne Sewell LLP. He can be reached at dcscott@gardere.com.
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D al l as Bar A ssoci ati on l Headnotes 9
Thank you, for your service! The articles below highlight just a few of our DBA members who are serving our country. If you know of a DBA member who is also a military member, please let us know by e-mailing jsmith@dallasbar.org. Thank you for your service!
Chuck Aris—Army National Guard Colonel by Andy Ryan
Chuck Aris, a partner in the firm of Byrne, Cardenas, & Aris LLP, practices a bit of everything—business litigation, insurance defense and plaintiff’s work. As Mr. Aris says, “It’s interesting work.” But more interesting is that Mr. Aris is a Colonel in the Texas Army National Guard, and on September 24, he deployed for a one-year assignment in Iraq. Mr. Aris attended Texas A&M University on an ROTC scholarship and married his Bonfire Buddy at the start of his active duty stint in the Army. After active duty, he joined the National Guard because, “I had active duty experience, so I thought I could help make the Guard better. And I enjoy the service part of it. It’s just a different way to help people feel good.” This is Mr. Aris’ third trip overseas since September 11, 2001. He serves in the 36th Infantry Division, which includes 8,000 soldiers. His unit will be in charge of Southern Iraq for the next year. For those attorneys who might complain about billables, consider this: during the next year, Mr. Aris will work 18 hours a day, seven days a week and will sleep in a shared-housing unit smaller than most conference rooms. He will return home only once, for just two weeks. “The hardest thing is that you miss part of your kids’ lives,” said Mr. Aris. And for the modern lawyer, the lack of communication is devastating. “You can’t imagine how out of touch you are,” he added. “There is no cell phone coverage. They jam everything because of IED’s and our secure Internet runs at a snail’s pace.” During an 18-month deployment to Kosovo, he was so cut-off that his daughter temporarily stopped talking to him. But Kate is now seven and his son, Matthew, is 11, so both children understand that daddy leaves to help keep the world safe. For all of us, Mr. Aris suggests one surefire way to help our soldiers: thank them for their service. He and his fellow soldiers love returning home to people greeting them with cheers and waving American flags. “It makes you feel like everybody appreciates you, which makes the hardship a lot easier to han HN dle.” Andy Ryan is an associate at Diamond McCarthy LLP, and is a member of the DBA Publications Committee. He can be reached at ARyan@diamondmccarthy.com.
Luther Jones—Air Force, 1st Mitch Martzen— Air Commando Wing, Officer Air Force Captain by Jessica Smith
United States Air Force Air Commando officer attached to the Special Forces, three-time Vietnam tour veteran, paratrooper, professional chef, cookbook author, certified personal trainer, community college instructor…and oh yes, attorney at law. What do these all have in common? Mr. Luther Jones, solo practioner and 1971 graduate of UC Hastings College of the Law. Mr. Jones grew up an “Army brat” and knew that his future would be one of service to others. “It has never been important to me to see a competitive advantage, either in a career or wealth, over anyone else,” he said. “I knew that to serve my country was my first obligation.” In 1964, he voluntarily enlisted in the USAF Air Commandos—now known as “Special Ops”—and was sent to Laos/Thailand on his first Vietnam tour of duty because, “[I] could not hide behind books or a desk. I wanted to go where history was being made.” Once that tour was complete, he was sent back for two more tours in Vietnam. Mr. Jones says he didn’t actually plan his last tour, but was asked by Gen. Abrams, Commander of the U.S. Forces in Vietnam, to stay on for one more tour, and so he did. “I was proud to serve with the Special Forces ad proud of my silver wings as a paratrooper,” said Mr. Jones. He is extremely proud of his service during the Vietnam Conflict and feels that, “It’s about time to honor those who served in Vietnam.” After his service in Vietnam, he returned to the U.S. and went to law school. He then spent 15 years with the Army & Air Force Exchange Services as Chief of Labor Litigation and then another 15 years practicing labor and employment law, also serving a short while as Assistant Disciplinary Counsel for the SBOT Ethics Committee. He says that his years of service in the military helped in his transition to the practice of law. “I learned not to let fear defeat you,” he said, “and I guess it made me immune to intimidation in my trial practice.” After his many years as an attorney, Mr. Jones decided to try something new, so he signed up for cooking school, became a professional chef and authored a cookbook entitled “Le Chef’s Fitness Foods”(www.blurb.com). He also became a certified personal trainer and teaches the class “Healthy Lifestyle for Seniors” at Brookhaven Community College and the VA Medical Center. Now at age 70, Mr. Jones still runs marathons and volunteers at various organizations, including sitting on the DBA Veterans’ Assistance Subcommittee. Not one to sit around, he states, HN “Just because I’m retired, doesn’t mean I’m tired.”
by Hugh A. Fuller
A third generation officer in the United States military, Captain Ernst “Mitch” Martzen was born in Manila in the Philippine Islands and raised in California. Capt. Martzen was a member of the Reserve Officer Training Corps at Baylor University, receiving a double major in Political Science and Environmental Studies before graduating with distinction from the University of Oklahoma College of Law. He joined the Air Force as a commissioned officer in the Judge Advocate General’s Corps after becoming licensed to practice law in Texas, a decision made in large part because of his family’s long tradition of military service. While practicing as an Assistant Staff Judge Advocate on Barksdale Air Force Base in Louisiana, Capt. Martzen received experience in many legal fields since his graduation from law school in 2006. Capt. Martzen represented the Air Force successfully before the Louisiana Conservation Commission, headed the base legal clinic where he counseled service members and their families “on any issue that walked through the door,” advised the base hospital on regulatory and compliance issues and drafted hundreds of wills for service members. As a prosecutor, he tried nine court martials for offenses, including drug use and firearm assaults. In addition to his responsibilities as an Assistant Staff Judge Advocate, in 2008 Capt. Martzen was appointed a Special Assistant U.S. Attorney, prosecuting more than 50 state and federal misdemeanor offenses against military personnel and civilians for criminal activity on the Barksdale Air Force Base. In 2009, Capt. Martzen took the position of Area Defense Counsel, defending service members in criminal matters, nonjudicial punishments for petty offenses, and adverse personnel actions. For his work, Capt. Martzen has repeatedly been honored by his superiors as one of the top attorneys on the Barksdale staff. Capt. Martzen looks forward to permanently joining the Dallas legal community after transitioning to the Air Force Reserve later this year. While he is as yet undecided about practicing criminal defense as a solo or joining an established civil litigation firm, the Dallas Bar Association can count itself fortunate to have this accomplished attor HN ney among its ranks. Hugh Fuller is an associate attorney handling civil and commercial litigation matters at Looper, Reed & McGraw, P.C. He can be reached at afuller@lrmlaw.com.
10 H e a d n o t e s l D a l l a s B a r A s s o ciationâ€
DBA Bench Bar Conference At Horseshoe Bay
Novem ber 2010
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Dal l as Bar A ssoci ati on l Headnotes 11
Intellectual Property Law
Intellectual Property in Corporate Transactions By Danica Mathes
Intellectual property rights are some of the most valuable assets any company has. IP rights are present from inception to sale of a company or product and are in virtually every transaction and agreement in between. Yet these rights are often the most overlooked and underrated aspect of representing clients for many attorneys. This article will provide a brief overview of IP basics and highlight when and why IP issues should take center stage instead of a playing supporting role.
IP Overview
Copyrights protect “original works of authorship” that are “fixed in any tangible medium of expression,” such as: literary and musical works; pictorial, graphic and sculptural works; computer software; motion pictures and other audiovisual works; sound recordings; and architectural works. Trademarks and Service Marks include any word, name, symbol, or device, or any combination of these, used, or intended to be used, in commerce to identify and distinguish the goods or services of one entity from those sold or provided by others, and to indicate the source of the goods or services. Trademarks can include trade names, logos, domain names, 800 numbers, adver-
tising slogans, jingles, store designs and trade dress, such as product configurations, color and packaging. Trade Secrets generally include any information that derives independent economic value from not being generally known or reasonably ascertainable, and is the subject of reasonable efforts to maintain its secrecy. Patents can be granted to anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Patents confer the right “to exclude others from making, using, offering for sale, or selling” the invention in or “importing” the invention into the United States for a limited time in exchange for public disclosure of the invention when the patent is granted.
Company/Product Name Selection
Coined, arbitrary, fanciful or suggestive marks are preferable to descriptive (protectable with acquired distinctiveness) or generic (not protectable) terms. Before an entity uses/registers a name for its operations or products perform a comprehensive search to determine whether a third party is using the same or similar
name for the same/similar goods/services. At the very least, perform a quick “knockout” availability search: • Check for entity names and state trademark registrations with Secretary of State Offices where business will be done. • Search the federal U.S. trademark database, available at www.uspto.gov. • Perform a Google search to determine whether third parties have common law rights to the name. • Perform a “WHOIS” search at www.internic.net to determine whether domain names are available (as clients often want a corresponding web presence).
Ownership/Transfer of IP Rights
Unless an employee is performing services within the scope of his employment (work-for-hire), it is best (and often required) to have a signed, written agreement transferring to your client the rights in IP created by an individual, independent contractor or entity. Entity names and ownership of IP change for various reasons, and it is important that the title to IP is correct to avoid future issues. Draft and file assignments/ name changes with the Copyright Office, USPTO and Secretary of State Offices.
IP Audits and Due Diligence Review
Performing an IP audit/due diligence review to determine IP assets your client (or a business being acquired) has is important for operation and valuation of a business, especially in buy/sell transactions. An audit should include: • Name/description of IP (mark, title of
DVAP’s Finest Jodie Michalski
Jodie Michalski is an associate with Jones Day, specializing in labor and employment law. Along with assisting at the South Dallas Clinic, she has completed several no-children, no-property divorces, adoptions and custody cases. Of these DVAP cases, the most rewarding included a recent custody case, which was referred to Jones Day on an emergency basis. The custody case involved two girls, ages 8 and 16. Their father was murdered in the spring of 2008, they lost their mother to cancer a few months later, and then, in August of 2009, their maternal grandmother was killed in a car accident. Throughout these tragedies, the girls’ aunt (their mother’s sister and the DVAP client) had been their rock; at only 28 years old, she quit her job and put her life on hold to take care of her nieces. She even helped to re-establish the girls’ relationship with their paternal grandparents, whom they had not seen regularly since their parents’ separation several years earlier. In January 2010, the girls’ paternal grandparents sued for custody. Jones Day attorneys Jeff Orkin, Angie Boliver and Jodie helped the aunt retain custody of the girls. Jodie and her colleagues were able to work out an arrangement that was satisfactory to all parties and allowed the girls and their aunt to move on with their lives. Jodie describes the cases she has taken through DVAP as among the most rewarding of her legal career. Jodie states, “I feel privileged to have had the opportunity to work on these cases and to serve the interests of such deserving clients.” Thank you for all you do, Jodie!
Pro Bono: It’s Like Billable Hours for Your Soul. To volunteer or make a donation, call 214/748-1234, x2243.
A joint legal aid program of the Dallas Bar Association and Legal Aid of NorthWest Texas (formerly Legal Services of North Texas).
copyright or patent). • Subject of IP (goods/services, copyrighted material, description of patent). • Status of IP (application/registration number(s), intent-to-use/actual use, renewed, not protected, litigation or other issues). • When/how the IP has been used (dates of first use/publication, where/how used/ published, U.S./international use). • Chain of title (who owns the IP, have all transfers been recorded, any gaps).
Key IP Issues in Agreements and Licenses
• Look for IP ownership and confidentiality provisions, noting the following terms: work-made-for-hire, assign, transfer, convey, license, rights, title, interest, exploit, own, goodwill, exclusive, non-exclusive. • Determine who has ownership of/rights granted in any IP in agreements with vendors, manufacturers and licensees. Verify that quality-control rights/procedures, provisions for dealing with returned goods, overruns, etc. that contain or utilize your client’s IP are in place. • Compile a list of IP encumbrances (license restrictions, security interests). Note what IP is affected (mark, goods/services), any limitations on transfer/assignment rights, geographic limitations, and termination/ HN renewal dates.
Danica L. Mathes, of counsel with Bell Nunnally & Martin LLP, handles intellectual property, new media and entertainment matters. She is a member of the Intellectual Property Law and Sports & Entertainment Law Sections of the DBA. She can be reached at danicam@bellnunnally.com.
12 H e a d n o t e s l D a l l a s B a r A s s o ciation
Novem ber 2010
Jones Day and Weil Lend a Lawyer Residuals Clause by David W. Dummer
While most firms encourage pro bono work, two firms have gone the extra mile. Jones Day and Weil, Gotshal & Manges LLP have both made a commitment to the Dallas community by annually providing an associate attorney to work full time in-house for three months a year for the DBA’s Dallas Volunteer Attorney Program (DVAP)— a program designed to provide legal services to low-income families. The firms pay the associates’ salaries and benefits Star Carter while they are on loan to DVAP, and DVAP and the Dallas community get the benefit of their legal expertise. Weil launched the Lend-A-Lawyer program in 2005, the first program of its kind in Dallas. Jones Day joined the program in 2008, and has been staffing it along with Weil ever since. Together, the firms jointly provide staffing to DVAP for six months of the year with the long-term goal of finding other firms or attorneys to provide staffing for the remaining six. This year, Jones Day selected Daniel O’Brien to participate in the Lend-ALawyer program. Mr. O’Brien is a patent-litigator at Jones Day and is a 2006 graduate of the University Of Illinois College of Law. Mr. O’Brien admits that he was a little intimidated when he went to DVAP because he knew he would be managing cases in areas outside of his expertise. But once he started working, he quickly realized that DVAP was there to help. “The mentors at DVAP [were] extraordinarily helpful and [would] bend
over backwards to help you out,” he said. When all was said and done, Mr. O’Brien found the work “very rewarding.” When he achieved a good outcome for a client, he “instantly saw the gratification on the client’s face.” And often times the smile was a result of a simple call or letter; work did not have to be complex to be important and meaningful. By the end, he said that the Lend-A-Lawyer program allowed him to “help someone in need” while also “helping [himself] grow as a lawyer and as a person.” When Mr. O’Brien finished his time at DVAP, Star Carter from Weil took up residency. Ms. Carter is a fifth-year corporate associate at Weil and a graduate of Harvard Law School. After her time with DVAP, Ms. Carter hopes to debunk the myth that pro bono work is not well suited for corporate lawyers. She found that the same skills that worked in a large law firm corporate practice also worked in the pro bono setting. “Preparation is key,” she said. “Serving the client is key.” Ms. Carter says the experience yielded benefits across the board. She says that she finds herself “betDaniel O’Brien ter in research, in asking questions and in thinking on my feet—all of which are transferable to my practice at Weil.” When asked what she wanted to bring back to Weil from the program other than technical skills, Ms. Carter was stated, “I want to bring back the spirit of roll up your sleeves and dig HN in.” David W. Dummer is a senior associate in Weil’s complex commercial litigation practice. He can be reached at david. dummer@weil.com.
continued from page 1
party inevitably uses or discloses confidential information and violates the nondisclosure agreement. The impact on the receiving party is that, in potentially competitive situations, it may no longer freely deploy its employees without increasing its risk of a claim. Nondisclosure agreements typically prohibit both (1) disclosure and (2) use of a disclosing party’s confidential information. Among other considerations, counsel of the company receiving confidential information should look at the following: 1. Is the information to be received capable of competitive use by the receiving company? 2. Will the information be reviewed by receiving company’s personnel who might later work for the receiving company in the disclosing company’s market field? Where the receiving company is relatively small or for other reasons cannot segregate the received information from key employees that may become involved in competitive endeavors, there are risks involved in receiving the confidential information.
Use of the Residuals Clause
A residuals clause creates an exception to the prohibitions against use and disclosure. It permits the subsequent use of “residual” information--information that is retained by the unaided memory of employees who had access to it. The disclosing company frequently resists the inclusion of a residuals clause, because it fears the consequences of any use or disclosure whatsoever. Also, it may fear that the residuals clause will create an unintended loophole for later massive use or disclosure. To counter this fear, additional qual-
ifying terms may be appropriate. One might be a requirement that the disclosing company not be identified as the source of the residual information in any use or disclosure by the disclosing party. Another might be to specify a range or field of permitted use for residual information, and that any disclosures of residual, confidential information will be limited to those that are inherent in the permitted use. Another common qualification to a residuals clause is that the permission to use or disclose, as an exception to the confidentiality obligation, does not extend to create a license to duly-issued patents or valid copyrights of the disclosing party.
Other Tools
In addition to the residuals clause, you may want to discuss other possible workarounds with your client. One is to use “information walls” to segregate your client’s reviewing team from anyone who might later be involved in fields competitive with the discloser. Your client could also hire third party evaluators to review the information to determine whether reviewing the information is worth the risk of further examination by key employees. Finally, the HP lawsuit against its former CEO illustrates that there is a great deal of heat and emotion surrounding the use of confidential information in a competitive marketplace. Advise your client accordingly. Residuals clauses can be tricky to draft and negotiate. But even a residuals clause does not eliminate later claims of misuse or disclosure in a HN competitive environment.
Jonathan K. Hustis is an attorney with Phillips & Reiter PLLC in Dallas. His general counsel practice includes businesses in telecommunications, information technology and software. He can be reached at jhustis@outsourcegc.com.
N ove mb e r 2 0 10
Focus
Dal l as Bar A ssoci ati on l Headnotes 13
Intellectual Property Law
Trademark Basics for Small Businesses—Common Pitfalls by Jennifer Scannell and Paul Russell
Prior to registering a domain name, creating a website or Facebook page, displaying a mark on a product or advertising services, it is imperative that small business owners understand the importance of selecting the right trademark, the proper procedures for determining if the mark is available for use and the process for obtaining trademark registration. Failure to take the proper steps at the beginning of the process can result in a trademark owner with prior rights forcing a name change, often at great expense to the business owner. That expense can include the cost of rebranding, potential litigation expenses and loss of goodwill. The first step in securing protection for a trademark is selecting a registrable and protectable mark. In the United States, a generic term cannot be registered or protected as a trademark. In addition, marks that are merely descriptive of a business’s goods or services offer very limited protection, and are difficult to register. The trademark owner may, moreover, be unable to stop competitors from using the same or similar marks. The strongest marks are those which are arbitrary, i.e., Apple for computers, or fanciful, such as Xerox for copiers. Once a mark has been selected, a trademark search should be performed prior to any use of the mark, including use on the Internet. A variety of cost-effective methods for searching are available, and on-line records of the U.S. Patent and Trademark Office can be searched free of charge. However, such a search will provide only records of federal registrations and pending applications, while failing to identify
similar but non-identical marks or common law uses. It is always advisable to order a full trademark search, which will provide information on state and federal trademark registrations and pending federal applications, as well as common law uses, including business names and Internet usage. All trademark searches should be reviewed by an attorney with experience in trademark clearance. Failure to perform an adequate trademark search can result in the filing of a proceeding to oppose one’s application for, or to cancel a registration of, a mark and, ultimately can result in costly litigation. Defending an opposition or cancellation proceeding can cost up to $500,000 –which does not include the cost of rebranding a product or service following an unwanted name change. Obtaining a competent legal opinion prior to adoption of a mark can be used to establish good faith, which is one of the factors considered by the courts when determining liability for trademark infringement and unfair competition claims. A finding that a defendant’s actions were undertaken in bad faith or were intentionally deceptive may give rise to a rebuttable presumption of consumer confusion. See George Bashe Co. v. Blue Coral, Inc., 968 F.2d 1532, 1537 (2d. Cir. 1992). Conversely, a competent legal opinion establishing good faith adoption of a mark may be used to avoid a finding of willful infringement or an exceptional case, warranting the recovery of treble damages or attorney’s fees, respectively, under the Lanham Act. Once a trademark has been cleared for use, it is advisable for the owner to apply for registration of the mark. Although trademark rights in the United State are
acquired through use, registration offers certain benefits to the mark owner, including nationwide priority in the mark, the right to use the ® symbol with the mark and provision of notice to others of your ownership of the mark. Some points to remember in preparing a trademark application include the following: • Apply for registration of the mark exactly as it will be used. Do not include a company designation, such as LLC, Inc. or LP, unless that designation will be used in the mark each and every time. • The person filing the application must be the owner of the mark or the person or entity who is entitled to use the mark in commerce. If an applicant is not such a person at the time the application is filed, the application is void.
• The identification of goods and services should be specific enough to identify the nature of the goods and services. The identification may later be narrowed, but may not be broadened. Generally, it is advisable to seek the advice of a competent trademark lawyer as early in the process of selecting a new mark or name as practical. Although clearing and protecting a new trademark requires upfront expenditures in terms of time and money, failure to take the proper steps prior to use of the mark may result in far greater HN costs down the road. Jennifer Scannell is an associate in the trademark and copyright group of Baker Botts LLP. She can be reached at Jennifer.Scannell@ bakerbotts.com. Paul Russell, an associate in the litigation group of Baker Botts LLP, contributed to this article. He can be reached at Paul.Russell@bakerbotts.com.
Mock Trial Competition Judges Wanted The Texas High School Mock Trial Competitions in Jan., Feb., and Mar. 2011 are in need of attorneys to help critique. Teams are from DISD, Region 10 and across the State. Variety of dates available. Earn self-study CLE credit. Sign-up online at www.dallasbar.org/thsmtc or contact Amy Smith at asmith@dallasbar.org.
Global Perspective. National Strength. Texas Spirit. Dykema Welcomes Mark K. Sales We are proud to welcome veteran Texas litigator Mark K. Sales to our Dallas team. Mark focuses his practice on probate litigation with an emphasis on tax and fiduciary disputes in trust and estates matters. He also counsels clients on a variety of trial and appellate matters involving product liability, personal injury, toxic tort, energy and insurance. As a former Dallas Bar Association President, Mark is a well-recognized figure in the Texas legal community. His arrival is the latest milestone in the growth of Dykema’s Dallas office where our experience in all substantive areas of the law provide optimal, cost-effective results that can help your business grow and prosper. For more information, contact Darrell Jordan, Office Managing Member, at 214.462.6410.
www.dykema.com Chicago . Dallas . Detroit . Los Angeles . Ann Arbor . Bloomfield Hills . Grand Rapids . Lansing . Lisle . Washington, D.C.
14 H e a d n o t e s l D a l l a s B a r A s s o ciation
In the News
Novem ber 2010
November
FROM THE DAIS
Mimi Coffey of the Coffey Law Firm has been selected by the American Bar Association to serve as a delegate with the Rule of Law and Criminal Justice Delegation to South Africa in October to learn about the South African legal system. Robert Voelker, of Munsch Hardt Kopf & Harr, P.C., spoke at the National Association of Local Housing Finance Agencies fall conference in New York. Mr. Voelker also spoke at the San Antonio Community Development Summit. Aaron Johnston, Jr., also with the firm spoke at the Higher Education Real Estate Lawyers Conference at Princeton University in New Jersey.
KUDOS
Leslie DeCillis, of Thomson Reuters Corporation, has been appointed Senior Counsel. Mike Massad Jr. and John Nolan, of Winstead PC, have been elected to serve on the board of the Salesmanship Club of Dallas as president and treasurer, respectively. Alia Derrick, of Jackson Walker L.L.P., was recently accepted to the 2010-2011 class of
the State Bar of Texas’ LeadershipSBOT Program. Heather Forrest, also of the firm, was elected to the board of trustees of the Dallas Children’s Theater. Joseph J. Wielebinski, of Munsch Hardt Kopf & Harr, P.C., has been elected the Executive Director of FraudNet, a global network of lawyers dedicated to assisting victims of commercial fraud and corruption throughout the world. Raymond Van Dyke, who has opened a new practice in Washington, DC, has been reappointed the Greater Washington, DC and Northern Virginia Chapter Chair of the Licensing Executive Society and Chair of the Professionalism and Ethics Committee of the AIPLA. Justice Elizabeth Lang Miers, of the Fifth District Court of Appeals of Texas, was elected Secretary of the Appellate Judges’ Conference of the American Bar Association at the annual meeting and elected Chair-Elect of the Judicial Section of the State Bar of Texas at the Annual Judicial Conference.
Angela Neville recently won two 2010 regional awards from the American Society of Business Publication Editors for articles written in 2009 for POWER magazine: a bronze award for two “Legal & Regulatory” columns and a gold award for a case history “Lessons Learned from a Hydrogen Explosion.”
ON THE MOVE
Matthew R. Baade has joined Stinnett Thiebaud & Remington LLP as an Associate. Greg Sampson has joined Looper, Reed & McGraw, P.C. Edward Fishman, Scott Jackson and Monica Luebker have formed the new firm of Fishman Jackson Luebker PLLC, located at Three Galleria Tower, 13155 Noel Road, Suite 700, Dallas, TX 75240, Phone: (972) 419-5500. David Beverly has also joined the firm. Aimee Pingenot has joined Goranson, Bain, Larsen, Greenwald, Maultsby & Murphy
Al Dia: CIC’s Eyes & Ears Drive Coppell Gazette: Legalline Dallas Business Journal: DA Candidate Forum announcement; Philbin Awards
★ Full-Time Mediator since 1989 ★ 90%+ settlement rate ★ 35 years of judicial experience ★ Justice retired 5th Court of Appeals ★ Chair - The Civil Collaborative Group ★ Member - The Association of Attorney-Mediators
3023 Hester Avenue Dallas, Texas 75205-3525 (214) 821-6370 www.judgeakin.com
★ Distinguished Mediator - Texas Mediator Credentialing Association ★ Panel - FINRA Dispute Resolution ★ Panel - CPR: International Institute for Conflict Prevention & Resolution
Mediator ★ Arbitrator ★ Special Judge
Bart Biggers has joined Winstead PC as a Shareholder. Thad D. Spalding has joined The Law Offices of Marc H. Richman. Drew N. Bagot has established the law firm of Drew N. Bagot, P.C., located at 8117 Preston Road, Suite 300, Dallas, TX 75225. Seema Tendolkar has joined Wick Phillips Gould & Martin, LLP as an Associate. John Burkhead has joined The Law Offices of Frank L. Branson. News items regarding current members of the Dallas Bar Association are included in Headnotes as space permits. Please send your announcements to Judi Smalling at jsmalling@dallasbar.org.
Dallas Morning News Business Section, Bob Miller’s column print & online: Legalline Dallas Morning News Political column by Gromer Jeffers, Jr.: DA Candidate Forum announcement and coverage of event
dBusinessNews.com: Philbin Awards; CIC’s Eyes & Ears Drive; Appealing to the Public
Dallas Morning News trailblazersblog.com: DA Candidate Forum announcement and coverage of event
Dallas Morning News Community Calendar: DA Candidate Forum announcement, CIC’s Eyes & Ears Drive; Philbin Awards
Dallas Observer: DA Candidate Forum announcement and coverage of event
Dallas Morning News crimeblog.com: DA Candidate Forum announcement
★ 4,000+ cases mediated
Robert K. Radcliff has joined Langley Weinstein LLP as a Partner.
. . . . . . DBA In the News . . . . . .
During the past two months, your DBA has been highlighted in the following media:
Ted M. Akin
PLLC as an Associate.
Focus Daily News: DA Candidate Forum, Legalline, Frank Branson Trial Lawyer of the Year
N ove mb e r 2 0 10
Classifieds
Dal l as Bar A ssoci ati on l Headnotes 15
November
Office Space
Seven offices available for rent in our historic West End building. Five upstairs offices rent at $750 each and two downstairs offices are $650 per month each. All offices can rent individually or as a package. Contact Craig Miley at (214) 692-8800 or craig@mileybrown.com. Northpark/Central Expwy— Law firm has “turnkey” office for sublease in Class A building for $1200. Includes use of office furniture (if needed), telephone, high-speed DSL, fax line, parking, and large conference room and kitchen. Great location with downtown and Park Cities views, excellent finish out with hardwoods in lobby, elevator exposure, and easy access to/from Central Expwy. Call (214) 292-4202. Attorney sublease in downtown Dallas business law firm. Easy freeway access, great views and free parking. $16.75 sq ft (tracks primary lease). Inquiries to: Dallas Bar Association, Box 10-10A, 2101 Ross Avenue, Dallas, TX 75201. SMU(Yale)/Central. Partner office and secretarial space. Beautiful 12th floor view of SMU/Park Cities. Professionally decorated, beautifully furnished. Overflow business. Receptionist, elegant conference room, kitchen, DSL, door signage, restaurant, bank, parking, DART. Office $1,095.00/mo., secretarial space $300.00/mo. (214) 369-9888 High-rise views at low-rise rates. Panoramic views from 63rd floor. Class-A downtown space close to courthouse, AVrated law firm. Access to large conference room, library, kitchen. Secretarial, clerical, reception available. Offices available with very nice secretarial stations. Negotiable. Call Kay (214) 761-6463.
No Rent Until Next Year! Preston Tower—3 offices with shared amenities, as low as $595/mo. (kitchen, conference room, reception area, bathroom). Convenient and accessible. 10 minutes from courthouse. Call (214) 369-1171 or e-mail: herbhooks@aol.com.
Medium size AV rated downtown Dallas law firm seeks partner-level business lawyer with varied corporate law experience. Candidate must have some portable business. Respond to Dallas Bar Association, Box 11– 10B, 2101 Ross Avenue, Dallas, TX 75201.
Lower your rent without compromising your professional image. 4 window offices near 75 and Walnut Hill (+/-2600 feet). This office condo space is For Sale or For Lease. Highly competitive pricing. For more information, contact Kevin at (214) 269-4252
Well-established North Dallas Law firm seeks an experienced BILINGUAL (Spanish/English) family law attorney with a minimum of five years’ experience. Please forward resume and salary requirements to famlawattny@yahoo.com.
We are looking for space for 2, 30+ year lawyers and a paralegal, north of downtown Dallas, Central Expwy corridor or near, Royal or south. Prefer to share space with existing firm with conference room(s) and kitchen. Prefer space naturally or easily partitioned. Need space by March 1. Roger Claxton (214) 969-9029 or Dan McDonald (214) 754-8782 or roger@claxtonlaw.com.
Executive Director Dispute Mediation Service. Dispute Mediation Service (DMS) is a private, non-profit organization that provides accessible, high quality dispute resolution service such as mediation, conciliation, arbitration and training for the Dallas County. It operates under a contract with the Dallas County Commissioners Court. Visit www. dms-adr.com for more information. Opportunity/Position Summary: There is currently an opportunity for the Executive Director. He/She will be accountable to a diverse Board of Directors and will lead a team of 6- 8 associates. The Executive Director will provide oversight of all operations including staff supervision, volunteer management, financial management, funding, communications, and implementation of the agency’s programs. Qualifications: The most desirable candidates should have broad experience in leading, directing, and advancing the cause of a non-profit organization. An understanding and working knowledge of mediation, alternative dispute resolution models, the justice system and case management system is critical. Candidates should have appropriate academic credentials, i.e. bachelor’s degree; however, an advanced degree or a JD would be a plus. A minimum of three years in managing/leading/developing a team of subordinates, working with a Board of Directors, volunteers, government officials, clients, funders, media and the public is required. Forward confidential resume, along with salary history to: DMS – ED, P.O. Box 700967, Dallas, TX 75370 or ada@gte.net M/F/D/V/ - EEO.
Position Available
Well-established North Dallas Law Firm seeks a Family Law Attorney with a minimum of 10 years’ experience in Family Law. Please forward resume and salary requirements to famlawattny@yahoo.com. Assistant General Legal Counsel. A multinational real estate and energy group is looking for an attorney with 20 years or more of experience in commercial litigation and bankruptcy work. This professional will help develop and review litigation strategies with outside litigators regarding complex cases handled by outside law firms, initially file and answer lawsuits that will be handled by outside law firms, and monitor the status of litigation handled by outside law firms. Most of these cases will involve real estate matters or other commercial litigation. Send your resume to: Dallas Bar Association, Box 11-10A, 2101 Ross Avenue, Dallas, TX 75201.
Take Me Out to the Ballgame
Dallas area Firm seeking a lawyer with at least four years’ experience practicing family law. Medical and Dental Benefits available. Please forward salary requirements and resume to familylawyerjob@yahoo.com.
Dallas Associate Position. Established 30+ attorney firm seeking attorney with 2-4 years of judicial clerkship, civil litigation or insurance related experience. Primary case load will consist of insurance coverage litigation, civil appeals and preparing coverage opinions. Young firm with offices throughout Texas offers associates substantial responsibility in a congenial work environment at a competitive compensation level and good benefits. Strong research, writing, and advocacy skills a must. Please forward resume and references to hr_lawfirm@yahoo.com. Medium sized family law firm in Dallas is seeking a 3-5 year family law attorney. Such attorney must have significant experience drafting family law related pleadings, decrees, and briefs, as well as experience handling trial matters before the court. Collaborative law training is a plus. Interested applicants must have strong oral and writing skills and be comfortable working independently as well as with other attorneys. If interested and qualified please submit your resume and references via fax to the HR Department at (214) 692-8255. Higier Allen & Lautin Is Growing! Higier Allen Lautin PC is a 25-lawyer Firm based in Addison, Texas, and an equal opportunity employer. Learn more about us here: www. higierallen.com. If you are self-motivated, team oriented, have excellent organizational and verbal communication skills, strong attention to detail, outstanding work ethic and excellent research and writing skills, then send your resume to hiringpartner@higierallen.com. Real Estate Associate Requirements: two years of law firm experience in commercial real estate transactions. Experience with real estate finance/lending transactions is helpful.
SERVICES
Mexican Law Expert—Attorney, law professor testifying since 1997 in U.S. lawsuits involving Mexican law issues - forum non conveniens, Mexican claims/defenses, personal injury, moral damages, Mexican contract law. Co-author, leading treatise in field. J.D., Harvard Law. David Lopez (210) 222-9494 / dlopez@pulmanlaw.com. PLACE YOUR AD HERE! For affordable classified advertising rates call Judi Smalling at: (214) 220-7452.
DBA MEMBER REMINDER: Your 2011 DBA DUES STATEMENT will be mailed to your office or home on October 15, 2010. The DBA Bar None Singers performed at the Ballpark at Arlington for the September 28 Texas Rangers game. Performing were (from left to right) Leslie Holloway, Allen Griffin, Rhonda Hunter, David Indorf, John Horany and Cathy Sargent.
Ensure your family coverage is tailor-made... The State Bar of Texas Insurance Trust specializes in helping all Bar Members and their Eligible Employees obtain complete insurance coverage at any point in their lives. From Health Insurance to Long Term Disability Insurance, the Trust has you covered.
State Bar of Texas Insurance Trust
800.460.7248 www.sbotit.com
2011 DBA DUES must be paid by December 31, 2010 to continue receiving all your member benefits. Thank you for your support of the Dallas Bar Association!
Speak To Dallas ISD Students for ½ Day PROPOSED AMENDMENTS FOR THE U.S. DISTRICT COURT Visit www.txnd.uscourts.gov to view proposed amendments to the local civil rules for the U.S. District Court, Northern District of Texas. Unless modified after receipt of public comment, these amendments will be effective December 1, 2010. The deadline for public comment is November 1, 2010.
During the week of November 15-19, volunteers can teach up to 3 classes a day in the secondary social studies classrooms. Curriculum is available. Deadline to sign up is November 1. For more information, contact Amy Smith at asmith@dallasbar.org.
Join the Dallas Lawyers Auxiliary at the following events: Belo Decorating Day
November 22, 9:00 a.m. to noon Share in the fun of decorating the Belo Mansion for the holidays.
DBA Family Holiday Party Volunteers Needed
December 13, 6:00 to 8:00 p.m. Volunteers are needed to be face painters or to apply rub-on tattoos. Absolutely no experience required. If you are interested in helping contact Lori Alexander at (214) 522-6465 or at loribebop@msn.com. To learn more about DLA, contact Joan Nye at (214) 460-1096 or at joannye@sbcglobal.net.
16 H e a d n o t e s l D a l l a s B a r A s s o ciation
Novem ber 2010
DBA Legal History Discussion Group by Josiah Daniels
In the fall of 2007, several Dallas Bar Association members organized an informal group under the association’s umbrella called the Legal History Discussion Group. The assumption was that there were a number of historically minded lawyers who would be interested to come to Belo periodically to hear a presentation on a topic of “legal history”— a subject matter broadly conceived as pertaining in some way to the history of law, lawyers and courts—and to discuss questions raised by such presentations, while receiving MCLE credit for doing so. Three years and 16 presentations later, the concept seems to be working.
Sometimes the group’s meetings resemble a university seminar, with attendees of 15-20, while other presentations have shown a broad appeal, drawing attendances of 40-85. Topics presented have all had a strong historical perspective, running from elections and postelection litigation, to Lincoln as lawyer, to Social Darwinism in the jurisprudence of Oliver Wendell Holmes, to the career of late 19th century Dallas lawyer Jerome Kearby, to the Blaine Amendments on public support for religious schools, to the law in Spanish and Mexican Texas, to property law in the earliest days of the common law, and to a famous trial in Germany about the nature of treason in the aftermath of World War II.
Happy Hour at Jimmy Choo Brought to you by the Entertainment Committee Thursday, November 3, 6:00 to 9:00 p.m. Jimmy Choo at Highland Park Village (79 Highland Park Village, Dallas) For more information, contact Rhonda Thornton at rthornton@dallasbar.org.
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The group alternates presentations by law school and college history professors with those by Dallas lawyers who have nurtured their own legal-historical papers or projects. The Legal History Discussion Group has also arranged an interesting slate of legal history presentations for the months ahead. On November 3 at noon at the Belo Mansion (in the Winstead Ballroom), the group, together with the Criminal Law and Appellate Sections, the CLE Committee and the J.L. Turner Legal Association, will present a significant lecture by Pulitzer-Prize winner David Oshinsky, professor of history at the University of Texas at Austin. Based on his just-published history of the death penalty cases from Fur-
man v. Georgia in 1972 to the present, Prof. Oshinsky’s topic will be “The Future of Capital Punishment.” The lecture will be, as always, free and MCLE-accredited, and all Dallas lawyers are invited. Then in 2011, the group will initiate an occasional series of legal-historical presentations on the broad topic of the legal history of the Civil War and following. Watch for notices of future programs sponsored by the Legal History Discussion Group or e-mail Josiah Daniel, the Chair at jdaniel@velaw.com, to be added to the HN notification list. Josiah Daniel is a partner at Vinson & Elkins, Chair of the Legal History Discussion Group, and Vice Chair of the State Bar’s History Committee. He can be reached at jdaniel@velaw.com.
What Do These Have In Common?
• A lawyer fluent in Russian • A Forensic Expert • An Environmental Law specialist
All three can be found in the yellow page listings of your 2010 DBA Membership Directory and online a http://www.dallasbar.org/pictorial/guide.asp
Take advantage of the #1 Legal Resource & Expert Witness Guide in Dallas County! Need a copy of the new directory? Contact Judi Smalling at jsmalling@dallasbar.org.