Dallas Bar Association
HEADNOTES |
|
Focus | Intellectual Property/Science & Technology Law
January 2022 Volume 47 Number 1
Krisi Kastl: DBA’s 113th President BY LINDSAY DRENNAN
The Dallas Bar Association (DBA) is delighted to welcome its 2022 President, Kristina N. “Krisi” Kastl, the 10th female President of the DBA since its founding in 1873. Kastl is the founder of Kastl Law, P.C., a plaintiff ’s personal injury firm she started with the primary goal of making a difference in the lives of her clients. In particular, Kastl has been noted for her accomplishments in the courtroom, including over 75 trials that have gone to jury verdict, and has been a long-time advocate for women in the legal profession. This commitment to helping others is reflected in all areas of Kastl’s life according to Laura Benitez Geisler, who has known Kastl for nearly 20 years. Geisler says she and Kastl connected as two of only a few female plaintiff ’s lawyers who were active in the Bar when they started out. Geisler shares that one of Kastl’s defining characteristics is her generosity, which is demonstrated by her support of local Bar activities and Equal Access to Justice, “not to mention the countless volunteer hours she has given in service to the profession.” Geisler went on to say that, “aside from her generosity, what makes Krisi stand out as a person, lawyer, and leader is how she goes out of her way to lift people up and make them feel included. Humble in her own accomplishments, Krisi is truly a champion of others.” Indeed, Kastl’s new role is just the next chapter in a long history of Bar service and involvement. Since graduating from the University of Texas—El Paso in 1995 and Texas Tech University School of Law in 1999, Kastl had been constantly active in Bar groups and associations, including, but not limited to, the Texas Trial Lawyers Association, Dallas Trial Lawyers Association, Dallas Association of Young Lawyers, Dallas Women Lawyers Association, as well as the DBA. She also participates in Dallas Hispanic Bar Association, J.L. Turner Legal Association, and the Dallas Asian American Bar Association events and programs. Kastl also brings a wealth of previous leadership experience to her role as DBA President. She previously served as the President of the Dallas Women Lawyers Association in 2011, President of the Texas Women Lawyers in 2018-2019, and Chair of the American Association for Justice Women Trial Lawyers Caucus in 2018-2019. She currently serves on the board of directors for the Dallas Trial Lawyers Association, the Texas Trial Lawyers Association, and the DBA. She continues to serve as an advisory board member for the Dallas Women Lawyers Association and the Texas Women Lawyers Association. Kastl assumes the presidency as the DBA (along with the world) continues to navigate the ever-changing circumstances of the pandemic, a role those who know her say she is well-equipped for. Retired Justice Elizabeth Lang-Miers, who has known Kastl more than
Karen McCloud to Receive 2022 MLK, Jr. Justice Award Posthumously BY LAURA BENITEZ GEISLER
Krisi Kastl
10 years through their joint participation in the DBA, notes that some of Kastl’s best qualities are “energy and enthusiasm tempered by the ability to focus on what is necessary.” Whether through her signature eye-catching pink clothing or her championship of those around her, this passion shines through in all Kastl does. Lang-Miers notes, “There’s always something that comes up when you are president that you don’t expect. It’s great to have that enthusiasm in our leadership, especially in light of COVID where we’ve had to pivot on a dime so many times.” Kastl’s passion for the role is apparent in speaking with her. When asked what she was most excited about in the coming year, Kastl quickly listed a variety of speaker programs and events aimed at reuniting the bar in person, to the extent it is safely possible. In fact, Kastl named finding ways to get DBA members back to the Arts District Mansion as a top goal for 2022. While she hopes to build on the accessibility the remote options, she also plans to launch a campaign to return in-person programming as we are “Better Together; Reunited—Back in the Grove for 2022.” Among the programs Kastl hopes to bring to the Arts District Mansion are a speaker series highlighting past female DBA presidents, a speaker series of attorneys who have been significant “firsts” for the legal profession, a Young Lawyers initiative—the Future is Bright—and a more lighthearted Spring Fling or Fall Festival to celebrate the return of in-person events. Kastl also emphasized her enthusiasm for building on the diversity, equity and inclusion work outgoing DBA president Aaron Tobin, and past Presidents Paul Stafford and Rob Crain have done over the last year, bolstering the affiliation of the DBA and affinity bars. A particularly exciting project for Kastl is “Relaunch”—a program aimed at returning attorneys to the workforce who left the continued on page 26
Inside 6 Major EAJ Campaign Donors Make Impact During Times of Crisis 12 Meet Your Sister Bar Presidents for 2022 16 Federal Trade Secrets Litigation Update 25 Software M&A: Beware These Three Potential Deal Killers
“The greatest among you shall be your servant.” – Martin Luther King, Jr. (February 4, 1968) The greatness of a life lived in service to others embodies Dr. Martin Luther King, Jr.’s life and legacy. It is why we commemorate Dr. King’s birthday each year with a National Day of Service. It is why the Dallas Bar Association will recognize Karen D. McCloud posthumously with the 2022 Martin Luther King, Jr. Justice Award. Through his words and deeds, Dr. King was a champion at communicating the virtues of a life led in service to others. In doing so, Dr. King left behind a legacy of service that endures through humble servant leaders like Karen D. McCloud. Dr. King’s “Drum Major Instinct” sermon speaks to the greatness of leading in service to others. That is, the greatness that comes when our “Drum Major Instinct”—the ego’s desire to be out front, to be the best, to feel important—is channeled to lead in service to others with “a heart full of grace” and “a soul generated by love.” Dr. King delivered the “Drum Major Instinct” sermon two months before his life was tragically cut short. A powerful lesson in leadership and humility, Dr. King concluded by sharing some prophetically introspective thoughts he had been having about death, and how he hoped to be remembered. He asked that his eulogy not mention unimportant things like where he went to school, or that he had won a Nobel Peace Prize. Rather, Dr. King expressed the hope that someone would mention that he tried to give his life in service to others, that he tried to love others, and that he lived his life trying to help those in need. And if he were to be remembered as a drum major, Dr. King asked that it be said he was a drum major for peace, justice, and righteousness. In the end, he said, all he wanted to leave behind was a “committed life.”
Committed to Exemplifying Dr. King’s Life and Legacy
When her life was cut short at age 49, Karen D. McCloud left behind a “committed life” —a life led in furtherance of her commitment to do good for others. By Dr. King’s definition of greatness, Karen was one of the greatest among us, a true servant leader. She lived every day striving to answer what Dr. King called life’s most persistent and urgent question, “What
2022
DBA
Karen D. McCloud
are you doing for others?” —and for as much as Karen did for others, she was always asking what more she could do. Karen exemplified greatness with extraordinary humility. As my best friend for more than 20 years, I bore witness to her greatness many times, along with the modest manner with which she would refuse applause and recognition. Rather than accept thanks or praise for her good deeds and accomplishments, Karen would downplay her efforts, give credit to someone else, then seize the opportunity to recruit others to join her in service. However, there are a few things that should be known about Karen D. McCloud and her greatness. You should know that Karen would rather be remembered as a person who went to law school to help others and fight injustice than be remembered as a graduate of Georgetown Law School and an accomplished employment lawyer. Karen would rather be remembered as a drum major for service to the profession than be remembered for her service as President of the Dallas Association of Young Lawyers, Dallas Women Lawyers Association, J.L. Turner Legal Association, and that as First Vice-President of the Dallas Bar Association she was slated to serve as President in 2022. Karen would rather be thought of as a drum major for pro bono and equal access to justice for all than be remembered for the countless hours she spent as a volunteer pro bono lawyer or Equal Access to Justice campaign cochair who helped raise over $1 million dollars for DVAP. Karen would hope to be remembered as a drum major for mentoring rather than be recognized for the
COMMITTEE
continued on page 26
SELECTIONS
You can now select your Committees with your 2022 dues renewal. DBA dues must be current to continue receiving all Committee communications & benefits. Thank you for your ongoing support and commitment to volunteer!
2 He a d n o t e s l D a l l a s B a r A s s o ciation
January 2022
Welcome Back!
We are open! Come see us at the Arts District Mansion!
We look forward to seeing you in-person at the hybrid programs listed below. Programs in green are Virtual Only programs. Check the DBA website (www.dallasbar.org) for the most up-to-date information.
Calendar January Events Noon
Peer Assistance Committee
TUESDAY, JANUARY 11
TUESDAY, JANUARY 4
Tort & Insurance Practice Section “Jury Selection: The Importance of Getting the Panel to Hate Your Case but Not You,” Ray Khirallah, Jr. (MCLE 1.00)* Virtual Only
Noon
WEDNESDAY, JANUARY 5
Employee Benefits & Executive Compensation Law Section “ERISA Fiduciary Duties Through the Eyes of An Expert Witness,” Eric Dyson interviewed by Jim Griffin. (MCLE 1.00)* Virtual Only
Immigration Law Section Topic Not Yet Available
Equality Committee. Virtual Only
Construction Law Section Topic Not Yet Available
FRIDAY, JANUARY 7 Alternative Dispute Resolution Section Topic Not Yet Available
Home Project Committee. Virtual Only
Entertainment Committee
WEDNESDAY, JANUARY 19 Noon
Bankruptcy & Commercial Law Section “Recent Developments in Bankruptcy,” Judge Harlin Hale, Rakhee Patel, and Gerrit Pronske. (MCLE 1.00)*
Real Property Law Section “Case Law Update,” David A. Weatherbie. (MCLE 1.00)* Tax Law Section “Tribune Media Company v. Commissioner,” Baker McKenzie and Richard Lipton. (MCLE 1.00)*. In-person only.
THURSDAY, JANUARY 13 Noon
Government Law Section planning meeting. Virtual Only CLE Committee. Virtual Only
Law in the School & Community Committee. Virtual Only
Noon
Science & Technology Law Section “California Privacy Law Update: CCPA Enforcement and CPRA Rulemaking,” Jeewon Serrato. (MCLE 1.00)* Virtual Only Securities Section “To IPO or Not to IPO: An Analysis of the Exempt Offering Framework and the Decision to Stay Private,” Samantha Agnich. (MCLE 1.00)* Golf Tournament Committee
TUESDAY, JANUARY 25 Noon
Probate, Trusts & Estates Law Section “Treatment of Qualified Funds in Medicaid Applications,” Monica Benson. (MCLE 1.00)*
WEDNESDAY, JANUARY 26 Noon
Collaborative Law Section Topic Not Yet Available
Entertainment, Art & Sports Law Section Topic Not Yet Available 4:00 p.m. LegalLine E-Clinic. Volunteers needed. Contact mmejia@dallasbar.org.
THURSDAY, JANUARY 27 Noon
Criminal Law Section Topic Not Yet Available
4:00 p.m. LegalLine E-Clinic. Volunteers needed. Contact mmejia@dallasbar.org.
Environmental Law Section “Will the Well Run Dry? The 2022 Texas State Water Plan and Texas Water Issues,” Prof. Howard Slobodin. (MCLE 1.00)* Virtual Only
THURSDAY, JANUARY 20
Intellectual Property Law Section “Venue Games,” Jeff Becker and Bethany Salpietra. (MCLE 1.00)*
Noon
Appellate Law Section Topic Not Yet Available
Minority Participation Committee. Virtual Only
FRIDAY, JANUARY 21 Noon
Relax & Reconnect
MONDAY, JANUARY 24
Pro Bono Activities Committee. Virtual Only
1:00 p.m. Criminal Justice Committee. Virtual Only
WELCOME BACK
6:30 p.m. Inaugural of DBA President Krisi Kastl. At the Westin Galleria Dallas Hotel. Tickets available online at www.dallasbar.org.
Energy Law Section “Cessation of Production and Production in Paying Quantities: A Primer for Operators,” Thomas G. Ciarlone, Jr. (MCLE 1.00)*
Health Law Section “The False Claims Act: 2021 Year in Review,” Neil Issar, Taryn McDonald, and Bill Morrison. (MCLE 1.00)* Virtual Only
Publications Committee. Virtual Only
3:30 p.m. DBA Board of Directors Meeting
SATURDAY, JANUARY 22
Antitrust & Trade Regulation Section Topic Not Yet Available International Law Section Topic Not Yet Available
4:00 p.m. LegalLine E-Clinic. Volunteers needed. Contact mmejia@dallasbar.org.
MONDAY, JANUARY 10 Noon
Noon
Public Forum Committee. Virtual Only
No DBA Events Scheduled
Begon, Jeremy Rucker and John Shin. (MCLE 1.00)* Virtual Only
TUESDAY, JANUARY 18
Family Law Section Topic Not Yet Available. Virtual Only
Admissions & Membership Committee. Virtual Only
Martin Luther King, Jr. Justice Award Luncheon Recipient: Karen McCloud, posthumously. Keynote Speaker: Hon. Ada Brown. Register online at www.dallasbar.org. In-person only at the Arts District Mansion.
Community Involvement Committee. Virtual Only
WEDNESDAY, JANUARY 12 Noon
THURSDAY, JANUARY 6
Noon
Courthouse/Library Committee. Virtual Only
Legal Ethics Committee. Virtual Only
4:00 p.m. LegalLine E-Clinic. Volunteers needed. Contact mmejia@dallasbar.org.
MONDAY, JANUARY 17
Mergers & Acquisitions Section “Delaware Corporate Law Update,” S. Mark Hurd and Eric Klinger-Wilensky. (MCLE 1.00)* Virtual Only
Solo & Small Firm Section “What’s Necessary to Secure and Keep Hold of an Award of Attorneys’ Fees Under Recent SCOTx Decisions,” Brent M. Rubin. (MCLE 1.00) Virtual Only
Noon
Business Litigation Section “Litigation Funding, Judgment Preservation Insurance, and Claim Monetization – Risk Transfer Tools that Should be in Every Litigator’s Toolkit,” Jonathan Erwin, Lewis LeClair, Kirstine Rogers, and Dean Gresham, moderator. (MCLE 1.00)*
Living Legends Program Hon. Barbara M.G. Lynn,, interviewed by Lisa Sotelo and Crystal Jamison Woods. (Ethics 1.00)* Virtual Only Trial Skills Topic Not Yet Available
Senior Lawyers Committee
DBA Offices closed in observance of New Year’s holiday
Noon
Noon
“Panel Discussion on Cyber Security,” Anthony Begon, Jeremy Rucker and John Shin. (MCLE 1.00)* Virtual Only
MONDAY, JANUARY 3 Noon
FRIDAY, JANUARY 14
FRIDAY CLINICS
JANUARY 21
Visit www.dallasbar.org for updates on Friday Clinics and other CLEs.
Friday Clinic “Panel Discussion on Cyber Security,” Anthony
FRIDAY, JANUARY 28 No DBA Events Scheduled
MONDAY, JANUARY 31 No DBA Events Scheduled
Thank You Donors!
Still working from home? Not quite ready to wear a suit and tie or high heels? That works for us! When returning to in-person meetings and events at the Arts District Mansion, feel free to dress business casual. And yes, we consider jeans to be business casual. We look forward to seeing you soon! Please visit the COVID resources page on our website for the DBA mask policy.
Thank you to all of our Equal Access to Justice Campaign sponsors who attended the Bachendorf’s Reception. And thank you to Bachendorf’s for their continued support of the EAJ Campaign.
If special arrangements are required for a person with disabilities to attend a particular seminar, please contact Alicia Hernandez 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 the DBA office at (214) 220-7447. **For information on the location of this month’s North Dallas Friday Clinic, contact yhinojos@dallasbar.org.
HN_JAN2022_Succession-Hall_Final.pdf 1 11/29/2021 4:16:46 PM
Jan u a ry 2 0 2 2
C
M
Y
CM
MY
CY
CMY
K
D al l as Bar A ssoci ati on l Headnotes 3
4 He a d n o t e s l D a l l a s B a r A s s o ciation
January 2022
President’s Column
Headnotes Published by: DALLAS BAR ASSOCIATION
The People
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.
BY KRISI KASTL
Happy New Year! After an unpredictable last couple of years, the legal profession and the world continue to navigate an ongoing pandemic. We are reminded of the importance of connection with others and we are charged with the responsibility of finding innovative ways to connect in this new world. We have reached a pivotal point in our community. While the virtual world has taught us new ways to interact, we should not forget the importance of good old-fashioned togetherness. The DBA is lucky to have a beautiful building in the heart of Downtown Dallas, the Arts District Mansion, a place for the people to gather in person. I am honored to serve as President during a year when we have the opportunity to recommit to what makes our profession great and celebrate being together again in person. In the summer of 2006, shortly after my sixth year of practice and having worked for two personal injury law firms, I felt it was time to open my own firm. While I am grateful for the experience, the exposure, and the opportunities I was given during this time, I knew practicing law was so much more than sitting at my desk working, rather I knew I needed to be more involved with the people of the legal community. So, immediately after starting my own firm, I applied for the DAYL Leadership Class. It was in that class, that I got to really know my good friend, Karen D. McCloud, and where I found my people—the DBA and its affinity bars. It was here that I finally got to do what I love, in that I was able to meet people from diverse backgrounds, different practice areas, and experiences. For the first time, I went from not knowing where I was headed in my career to finally knowing I had made the right career choice. Bar involvement was just what I needed. The DBA has been such a formative experience for me, so much more than a networking group. It has been a place where I have connected with so many people from all walks of life, it has provided endless opportunities for me to grow, both personally, and as an attorney. My involvement with the DBA opened doors for me elsewhere. It led me to board positions with the Dallas Trial Lawyers Association, the Texas Trial Lawyers Association, the American Association for Justice, the Texas Women Lawyers, where I served as President, and the American Association for Justice—Women’s Trial Lawyer Caucus, where I served as Chair. As I step into the role of President of the Dallas Bar Association, a role that has only been held by nine women before me throughout the Bar’s 150-year history, it has been impossible not to think of my friend Karen McCloud. This was supposed to be Karen’s year to be the 10th woman President of the DBA. It feels so strange to take on this role without her, although I know she is with us in spirit. Knowing that this should have been her
OFFICERS President: Krisi Kastl President-Elect: Cheryl Camin Murray First Vice President: Bill Mateja Second Vice President: Vicki D. Blanton Secretary-Treasurer: Liz Cedillo-Pereira Immediate Past President: Aaron Z. Tobin
year, I have been thinking about what Karen would have wanted this year to be. I am certain those of you who knew her would agree, Karen would want it to be about the people. I have countless memories of Karen. She was always intimately involved in our community and intrinsically knew the value of involvement. She considered us all as her family, particularly the strangers she never met. So many of my memories of Karen involve DBA, DWLA, DAABA, DHBA, JLTLA, and DAYL events, many of which took place within the walls of the Arts District Mansion. One of my fondest memories was when Karen vigorously encouraged me to go to the DBA Family Christmas Party at the Arts District Mansion. I was a bit confused as I thought the event was meant for children. Neither Karen nor I have children, however, Karen said we “needed to show up to support those that planned the program and the party.” So, of course we showed up and had the best time. That was Karen. While most of us will not give our time, talent, and our treasure to the DBA in the way that Karen did, I hope you join me in taking the time to engage in one of our 30 sections, 30 committees, and other service opportunities and special projects… and pull your friends along, the way Karen did. No experience necessary. As we kick off this new year, here are some upcoming opportunities to come to the Arts District Mansion and meet some of the people of the DBA: January 17, 2021 – MLK Jr. Luncheon, Karen D. McCloud Award Recipient (posthumously) – Arts District Mansion January 17, 2022 – Celebration of Life of Karen D. McCloud – with music and dancing (Immediately following the MLK Jr. Luncheon) - Arts District Mansion January 22, 2022 – Inaugural Dinner and Dance – this also happens to be my 51st birthday – I hope you will join our celebration - Westin Galleria. Tickets available at dallasbar.org. I have always told my young associates who sought my advice that, “90 percent of success is showing up.” This is so true. Karen was living proof. Karen showed up for her people. This year, I encourage all of you to make an extra effort to show up at our beautiful Arts District Mansion, home of the Dallas Bar Association, to see some old friends and meet some new ones. It has been the location for countless meetings and events. My husband Sean and I even hosted our wedding reception at the Arts District Mansion when we got married. The Arts District Mansion, home of the DBA, has been a home for me and I hope that it becomes a home for you, the people.
Martin Luther King Jr. Luncheon & Memorial Reception Honoring Karen D. McCloud
Luncheon at Noon; Reception at 1:00 p.m.
MLK Justice Award to be posthumously awarded to Karen McCloud with Keynote Speaker, Hon. Ada Brown RSVP at www.DallasBar.org
Advisory Directors: Alison Ashmore (President-Elect, Dallas Women Lawyers Association), Carla Green (President-Elect, Dallas Hispanic Bar Association); Nadia Haghighatian (President, Dallas LGBT Bar Association), Amber Hamilton (President-Elect, J.L. Turner Legal Association), Nicole Munoz (PresidentElect, Dallas Association of Young Lawyers), and Janet Smith (President-Elect, Dallas Asian American Bar Asso ciation) Delegates, American Bar Association: Rhonda Hunter, Mark Sales Directors, State Bar of Texas: Chad Baruch, Rebekah Brooker, Michael K. Hurst, Mary Scott, Robert Tobey HEADNOTES Executive Director/Executive Editor: Alicia Hernandez Communications/Media Director & Headnotes Editor: Jessica D. Smith In the News: Judi Smalling Display Advertising: Annette Planey, Jessica Smith PUBLICATIONS COMMITTEE Co-Chairs: James Deets and Joshua Smeltzer Vice-Chairs: Elisaveta (Leiza) Dolghih and Ted Huffman Members: Logan Adcock, Benjamin Agree, David Brickman, Catherine Bright Haws, Ian Brown, Srinivasan Chakravarthi, Gracen Daniel, Lindsay Drennan, Alexander Farr, Dawn Fowler, Neil Issar, Beth Johnson, Andrew Jones, Alexandra Jones, Krisi Kastl, Jon Kettles, Brian King, Jared Knight, John Koetter, Alan Lightfoot, Margaret Lyle, Derek McKee, Majed Nachawati, D. Mason Parham, Keith Pillers, David Ritter, Carl Roberts, Sarah Rogers, John Shipp, Jared Slade, Sarah Spires, Jay Spring, Sarah-Michelle Stearns, Scott Stolley, Robert Tarleton, Paul Tipton, Anastasia Triantafillis, Pryce Tucker, Kathleen Turton, Peter Vogel, Benton Williams, Jason Winford DBA & DBF STAFF Executive Director: Alicia Hernandez Accounting Assistant: Jessie Smith CLE Coordinator: Viridiana Rodriguez Communications/Media Director: Jessica D. Smith Controller: Sherri Evans Events Director: Rhonda Thornton Executive Assistant: Elizabeth Hayden Executive Director, DBF: Elizabeth Philipp LRS Director: Biridiana Avina LRS Interviewer: Giovanna Alvarado LRS Program Assistant: Marcela Mejia Marketing Coordinator: Mary Ellen Johnson Membership Director: Shawna Bush Publications Coordinator: Judi Smalling Receptionist: Araceli Rodriguez Staff Assistant: Yedenia Hinojos Texas High School Mock Trial & Law Related Education Director: Melissa Garcia DALLAS VOLUNTEER ATTORNEY PROGRAM Director: Michelle Alden Managing Attorney: Holly Griffin Mentor Attorneys: Kristen Salas, Katherine Saldana Paralegals: Whitney Breheny, Miriam Caporal, Tina Douglas, Carolyn Johnson, Suzanne Matthews, Andrew Musquiz, Alicia Perkins Community Engagement Coordinator: Marísela Martin Secretary: Charnese Garrett
Krisi
Please Join Us Monday, January 17, 2022 Noon at the Arts District Mansion
Directors: Lauren Black, Rob Cañas, Jonathan Childers (Vice Chair), Stephanie G. Culpepper, Rocio Garcia Espinoza, Ashlei Gradney (President, J.L. Turner Legal Association), Hon. Martin Hoffman, Andy Jones (President, Dallas Association of Young Lawyers), Jennifer King, Jonathan Koh (President, Dallas Asian American Bar Association), Elsa Manzanares (President, Dallas Hispanic Bar Association), Hon. Audrey Moorehead, Marisa O’Sullivan (President, Dallas Women Lawyers Association), Kelly Rentzel, Sarah Rogers, Drew Spaniol, and Amy M. Stewart
Copyright Dallas Bar Association 2022. All rights reserved. No reproduction of any portion of this publication is allowed without written permission from publisher.
Friday, January 14 | Noon - 1:00 PM MCLE: 1.00 Ethics
Hosted virtually on Zoom. Register at Dallasbar.org.
Chief Judge Barbara M.G. Lynn U.S. District Court Northern District of Texas
Interviewed by Lisa Sotelo, Sotelo Immigration Law Group and Crystal Jamison Woods, DLA Piper LLP (US)
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 800 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.
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 5
6 H e a d n o t e s l D a l l a s B a r A s s o ciation
January 2022
Major EAJ Campaign Donors Make Impact During Times of Crisis BY MICHELLE ALDEN
The high demand for pro bono legal services in Dallas County during these uncertain times continues. The Dallas Volunteer Attorney Program (DVAP) stands ready to assist, with virtual clinics happening every week. “Anna” applied for a housing rehabilitation program and secured a $50,000 low-interest loan for necessary repairs to her house. Unfortunately, the contractor did a terrible job on foundation repairs, painting, and other “improvements.” Anna’s house was now in even worse shape. Her complaints to the city were ignored as they claimed governmental immunity, so she applied to DVAP for help. Michael Hatcher, of Sidley Austin LLP, accepted the case, and the firm ultimately spent over 1,000 hours on her case. “Sidley’s representation of Anna against the city and their recommended general contractor illustrated to me the importance of pro bono work. It took hundreds of hours of attorney work to secure settlements for Anna, including appealing the court’s initial dismissal of our suit on governmental immunity grounds and then making new law when the appeals court reversed and allowed the case to go for-
ward. Anna could never have afforded the fees necessary to secure these settlements without our firm’s pro bono support. For Sidley, it was a pleasure and honor to represent Anna, and we look forward to helping more pro bono clients like her,” Michael explained. Anna is grateful for this life-changing result. DVAP relies not only on the pro bono attorneys who represent clients, but also the major donors who provide the funding to keep the program thriving. The Witherite Law Group stepped up to support the Equal Access to Justice Campaign at the $20,000 level. Amy Witherite stated, “Witherite Law Group is committed to putting people first. The essential work DVAP offers to those who could not otherwise afford an attorney embodies the WLG core value of improving the lives of all people. We are proud to play a small role in assisting DVAP in its mission to pursue justice for all those in need.” Corporate citizens AT&T, Capital One, and Vistra Corp. have committed their support at the $15,500 level this year. “Now more than ever, access to legal counsel cannot be a luxury enjoyed by some, but unattainable to others. AT&T is proud to support DVAP’s fight to bring greater equality to the provision of legal services,”
Client Development— Speak at a DBA Program Interested in sharing your legal knowledge and expertise with your colleagues? The CLE Committee is looking for speakers and hot topics for the Friday Clinic programs it holds throughout the year. Please submit a short bio, title, and 2-3 sentence description of your presentation to yhinojos@ dallasbar.org. Submissions will be discussed at monthly CLE Committee meetings.
DAMAGES
stated David R. McAtee II, Senior Executive Vice President and General Counsel of AT&T. Stewart Clancy, Senior Director, Attorney, and Risk Professional at Capital One, and Co-Chair of this year’s Campaign, agreed. “Capital One is committed to finding opportunities to promote equity, fairness, and justice for our community. We are proud to support the EAJ Campaign and DVAP because they provide legal representation to thousands of people across the Dallas area who wouldn’t otherwise have access to the protections our system has to offer. This makes a huge impact for so many, including offering housing stability, foreclosure prevention, and socioeconomic mobility where it might not otherwise exist.” Stephanie Zapata Moore, Executive Vice President and General Counsel of Vistra, and former Honorary Chair of the Campaign, added her support. “Vistra is guided by its four core principles, one of which is helping the communities where we live and do business—and we are deeply committed to fulfilling this purpose. More than ever, we are keenly aware of the inequalities and social injustices inflicting our society. Vistra is proud to continue its ongoing support of the Equal Access to Justice Campaign as it exemplifies one of the company’s core principles by delivering critical legal services for those individuals most in need in our community.” The Haynes and Boone Foundation also pledged their support at the $15,500 level this year. “Pro bono is an integral part of being a Haynes & Boone lawyer. We are blessed and fortunate to be lawyers, and part of being a lawyer is donating time and effort to those less fortunate than ourselves,” said David Taubenfeld, Partner at Haynes and Boone, LLP. Gibson, Dunn & Crutcher LLP
joined to support the Campaign at the $15,500 level as well. Finally, Stewart Law Group PLLC and Amy and Ed Stewart made a combined donation of $15,500. “Stewart Law Group, and my husband Ed and I, are all in for EAJ because of the amazing contributions DVAP provides to Dallas citizens to assist them in a critical time of need. Based on our experiences growing up on the Southside of Chicago and as I say the ‘mean streets of High Point, North Carolina,’ we understand the struggle and how unexpected legal issues can be daunting and may negatively impact a generation for a family, like losing their land or being evicted from their home. That is why we are empathetic to our Dallas neighbors-in-need and give to EAJ. We know our funds are going directly to saving their livelihood, but most importantly their dignity, by helping them retain a lawyer to walk them through the civil justice system with less anxiety and fear. We hope you join us in supporting EAJ,” said Amy Stewart. Witherite Law Group, AT&T, Capital One, Gibson, Dunn & Crutcher LLP, the Haynes and Boone Foundation, Vistra, Stewart Law Group PLLC, and Amy and Ed Stewart have joined forces to support access to justice during this challenging year. Their contributions allow DVAP to continue to assist thousands of clients. Once again, the commitment of Dallas attorneys and the DBA to the Equal Access to Justice Campaign is impressive. Since 1997, the DBA and Legal Aid have joined forces to raise money for the program, with Dallas lawyers donating over $17.5 million. For more information, or to donate, visit www.dallasvolunteerattorneyprogram.org. HN Michelle Alden is the Director of the Dallas Volunteer Attorney Program. She can be reached at aldenm@lanwt.org.
2021 DBA President Recognized
Personal injury Wrongful termination Intellectual property Commercial damages/lost profits Business valuations
When you need a number call our number
214.665.9456
On behalf of the Board, Vicki Blanton (right), Chair of the Board, presented Aaron Tobin, DBA’s 2021 President, with an oil painting by Texas artist Jerral Derryberry. Mr. Derryberry’s work is currently represented and sold in fine art galleries and national exhibitions. More of his work can be seen at www.jerralderryberry.com.
RENEW YOUR MEMBERSHIP DUES Don’t risk being dropped from the DBA membership! Renew TODAY in order to continue receiving all your member benefits including FREE online CLE programs and Committee Communications. DALLAS • FORT WORTH • HOUSTON • ATLANTA
WWW. TH OMAS R ON EY L L C . C O M
Look for an email reminder with links to renew your Dues online or go online now and click on My DBA to log in to check your status and renew your Membership!
Thank you for your support of the Dallas Bar Association!
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 7
8 He a d n o t e s l D a l l a s B a r A s s o ciation
Focus
January 2022
Intellectual Property/Science & Technology Law
Third-Party Discovery in Patent Cases After Wi-LAN infringement, and obtained declarations from the third-parties to authenticate the source code. Importantly, the plaintiff did not take any third-party depositions to demonstrate the authenticity of the source code. In granting summary judgment of non-infringement, the district court found that, notwithstanding the declarations, the source code was inadmissible hearsay. The district court also noted that the source code printouts ran afoul of general principles of authentication given the “highly dubious circumstances” surrounding the production of the code, and the lack of indicia of trustworthiness in the source code. In affirming the district court’s ruling, the Federal Circuit specifically rejected the argument that a routine business record declaration could be used to authenticate the source code, holding that “the declarations could not be used
BY PHILLIP AURENTZ AND ERIK FOUNTAIN
It has become commonplace for litigants in patent cases to rely on source code to prove their claims and defenses because issues of infringement and invalidity regularly turn on the precise operation of underlying computer code. Relevant source code, however, is often in the possession of a third party, requiring the issuance and negotiation of third-party subpoenas. In view of recent guidance from the courts, it has become increasingly important to understand the proper protocol for collecting, authenticating, and using source-code evidence. Earlier this year, the Federal Circuit issued an important opinion on the admissibility of third-party source code in patent cases. In Wi-LAN Inc. v. Sharp Elecs. Corp., the plaintiff had obtained third-party source code to demonstrate
Texas Lawyers’ Assistance Program TLAP provides confidential help for lawyers, law students, and judges who have problems with substance abuse and/or mental health issues. In addition, TLAP offers many helpful resources, including: Live Ethics CLE presentations
Request of specific educational materials
TLAP Newsletter
1-1, group telephone calls on topics
Friday noon AA telephone meeting 1-800-393-0640, code 6767456
Find out more at www.texasbar.com.
MARTIN
to authenticate the source code printout on the theory that the declarations were a proxy for trial testimony.” The court explained further that the declarations would not suffice at the summary judgment stage unless the plaintiff could show a custodial witness would be available to testify at trial. Finally, the court rejected the plaintiff’s argument that the source code could come in through a technical expert under Federal Rule of Evidence 703, because there was no showing that experts in the field would reasonably rely on unauthenticated source code. This case is instructive to plaintiffs and defendants alike. If you are a proponent of third-party source code, it is critical that you collect and authenticate the source code in a manner that ensures its admissibility at trial. In view of Wi-LAN, this likely requires taking a third-party custodial deposition to establish the source code as a business record. This may be a challenge, however, as third-parties often seek to negotiate a declaration in lieu of a corporate deposition. Once the deposition is scheduled, the custodial witness should clearly testify about the creation and maintenance of the source code to satisfy the strictures of the business record exception to hearsay. A boilerplate business-record declaration will not suffice, particularly if the declarant is unavailable to testify at trial. It is also important to ensure that the source code is produced in a manner reflecting an indicium of trustworthiness. Undated, unlabeled, or otherwise dubious source-code printouts may warrant exclusion. If you are unable to obtain the appropriate deposition testimony to authenticate the source code, you may be instead relegated to relying on a technical expert’s
review of the source code. It will be important that the expert’s report include a meaningful discussion of the source code and a thorough explanation of the reasons experts in the field would rely on the particular type of source code. If you fail to properly authenticate the source code through witness testimony or sponsor the source code through a technical expert, your last resort is the residual exception to the hearsay rule, which may permit the admission of source code if it has sufficient guarantees of trustworthiness, and is considered more probative than any other evidence. If your client opposes the admission of third-party source code, the Wi-LAN decision provides several mechanisms to seek exclusion of the source code. For instance, if the proponent of the source code seeks to rely on unauthenticated source code, a motion in limine at the pretrial stage may be in order. If the proponent is seeking to “backdoor” unauthenticated source code through a technical expert, a Daubert motion may prove effective, particularly if the expert report failed to explain why experts in the field would rely on the particular source code at issue. Finally, if the other side relies solely on unauthenticated source code to establish its claim, as was the case in Wi-LAN, a summary judgment motion may be in order. Regardless of which side of the issue you find yourself, the Federal Circuit’s guidance in Wi-LAN provides important guidelines for the production, authentication, and admission of source code in patent cases going forward. HN Phillip Aurentz is a Partner, and Erik Fountain is an Associate, at Sidley Austin L.L.P. They can be reached at paurentz@sidley.com and efountain@sidley.com, respectively.
MERRITT
Health Law and Healthcare Litigation
“I highly recommend Martin As Co-Counsel in Healthcare Litigation Cases.” --Brad Jackson/ Commercial Litigator, Dallas •
Healthcare Trials/Hearings
•
Analysis of Illegal “kickback” contracts
•
Enforceability of 15.50 Non-Competes
•
Insurance “Clawbacks”
•
FBI, OIG, CMS Investigations
•
Medical License Revocations
NEW CODE FOR FREE ONLINE CLE 15 Hours of FREE Online CLE per year for DBA Members Use code 2022FREECLE to access your free CLE in 2022. Go to onlinecle.dallasbar.org to get started!
Martin Merritt Chair, DBA Health Law (2021) Ex. Dir. Texas Health Lawyers Association Martin@MartinMerritt.com Dir. (214) 952.1279 Martin Merritt is your co-counsel in healthcare litigation cases. If one side has an experienced health lawyer in their firm and you do not, you can level the playing field by associating Martin Merritt as co-counsel.
Is it your birthday month? Need CLE? Need Ethics?
You keep the client. Hourly and flat monthly rates available. Martin can try the case, prepare and argue hearings, or simply serve as health law analyst. You stay in control of the case and keep the client. Experienced. Over 30 years, in Texas and nationally, Martin Merritt litigates cases against the FBI, DEA, OIG, CMS, AUSA, TMB, Tex. OAG, Tex. Med. Bd, Pharm. Bd., TXDSHS, Civil False Claims Act Subpoenas and lawsuits, civil investigative demands, arbitration, criminal and other administrative actions. He has a proven track record applying this knowledge to win victories for business litigators. (D Mag. Best 2018, 2020)
onlinecle.dallasbar.org
Find what you need in the DBA Online CLE Catalog Anytime - Anywhere!
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 9
connatserfamilylaw.com
10 H e a d n o t e s l D a l l a s B a r A s s ociation
January 2022
DBA Launches DEI Goals to Bar None: Virtually Legal Encourage Member Participation STAFF REPORT
STAFF REPORT
This year, the DBA’s Equality Committee is putting into action a part of their 2021 plan for additional Diversity, Equity, and Inclusion programs and participation. The 2022 DBA DEI challenge is as follows: the DBA encourages its members to aspire to complete three hours of CLE training in the areas of diversity, inclusion, equity each calendar year; the DBA will recognize members who complete such training. Members who complete the three hours of training must self-report to be included in the recognition. Be on the lookout for more information on how to self-report. Below is the motion that the Equality Committee presented to and had approved by the DBA Board of Directors: “The DBA seeks to encourage continuing legal education (CLE) on the important topics of Diversity, Equity, and Inclusion. Diversity focuses on the representation of groups of people within an organization through the organization’s demographic makeup. A diverse team consists of people from different backgrounds with a rich mixture of different life experiences, identities, characteristics, traits, and beliefs. Examples of diversity demographics include (but are not limited to) race, color, religion, sex, pregnancy, gender identity, sexual orientation, national origin, age, disability, or genetic information.
Inclusion focuses on actively respecting and valuing every individual’s ideas, knowledge, perspectives, approaches, and styles to maximize organization-wide success by ensuring that individuals have a sense of belonging and feel valued in their authentic presentation to and participation in the organization. Equity involves the recognition and active efforts to remove or remedy barriers and biases faced by diverse individuals to ensure equal access to advancement opportunities and resources and to ensure the individual is on an equal footing with their colleagues in terms of growth and development within the organization. With these principles in mind, the DBA moves that (1) the Dallas Bar Association call upon its members to aspire to complete 3 hours of CLE training in the areas of diversity, inclusion, equity each calendar year, (2) the Association specially recognize members who complete such training, and (3) the Association call upon its Sister Bars, other local bars, and the State Bar of Texas to make a similar aspirational request of their members coupled with a recognition system to include recognition by the State Bar College.” The DBA will strive to identify programs that qualify for the DEI Challenge. If you know of an up-coming program, please contact DBA Equality Committee liaison Mary Ellen Johnson at mjohnson@ dallasbar.org. HN
DIVERSITY: FROM ROADBLOCKS TO RUNWAYS SUPPORTING FIRMS Clark Hill Jones Day Kane Russell Coleman Logan, PC Kastl Law, P.C. Kirby Drake Law PLLC Lopez Law Firm, PC Lynn Pinker Hurst & Schwegmann McGuireWoods LLP Sidley Austin L.L.P. Stafford Law Firm, P.C. The Law Offices of Darice N. Shaw
THANK YOU SPONSORS GOLD SPONSOR
John V. McShane, P.C. SILVER SPONSOR
BRONZE SPONSORS D I G I TAL
Though COVID put a dent in the plans for the 2021 show, as they say in the business—the show must go on! So, this year, you can watch Virtually Legal online anytime from now until January 1. This year, Bar None has Proceeds benefit legal charities across the state, Virtually Legal is an original musical comedy parody show which will feature four of Texas’ beloved legal theater companies: • Bar & Grill (presented by the Austin Young Lawyers Association) • Bar None (presented by the Dallas Bar Association) • Houston’s Night Court – Lawyers Entertaining for Charity • The Tortfeasors of Tarrant County Each city has a long tradition of cre-
ating musical shows each year, always to raise funds for charitable causes. Virtually Legal is no exception, with beneficiaries including our own Dallas Bar Foundation’s Sarah T. Hughes Diversity Scholarship, Houston’s Houston Volunteer Lawyers, Austin Bar Association’s Austin Young Lawyers Association Foundation, and Tarrant County’s Tarrant Area Food Bank. The streamed show premiered on December 9, 2021, and will run through January 1, 2022. Ticket prices are $20 and attendees will have the option to donate to each of the four charitable organizations throughout the period. For more information, to purchase tickets and to watch the show, please visit: https://buff.ly/3xPy3AI. This 1-hour show will feature the best of what the cities typically perform for their local audiences. HN
BAR NONE 2021 proudly presents
"Virtually Legal" A collaboration with other state bar shows Online December 9-January 1 Tickets on Sale Now AustinBar.Muradbid.com
When you cannot help a prospective client, remember...
THE DBA LAWYER REFERRAL SERVICE! (214) 220-7444 | www.dallasbar.org/lawyerreferralservice • Qualified panel of lawyers in all areas of practice and most areas of town. • $20 fee to the client for a 30-minute consultation with a lawyer. • All lawyers carry professional malpractice insurance.
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 11
Touchstone Bernays is celebrating 75 years of providing the highest quality legal services to the insurance industry and self-insured. Our reputation in the legal, business, and insurance community is second to none and we intend to keep it that way. Our core values of honesty, integrity, and legal competence guide our approach of fairly and competently resolving every case to our client's best advantage and satisfaction. “Our key to success is simple. It is our people. Not only do we have excellent attorneys, paralegals, legal secretaries, and staff who are good at what they do... but also good people who consistently strive to do the right thing in all circumstances. That makes all the difference in the world!”- R. Wayne Gordon - Managing Partner
WE SET THE STANDARD TM
12 He a d n o t e s l D a l l a s B a r A s s ociation
January 2022
Meet Your Sister Bar Presidents for 2022 STAFF REPORT
As we begin a new year, we also welcome the new presidents of our sister bar associations. The DBA looks forward to working with these leaders as they seek to advance the goals of their organizations and promote the interests of their members in 2022. Ashlei Gradney will serve as President of the J.L. Turner Legal Association (JLTLA). A graduate of Southern University Law Center, Gradney is the owner of Gradney PC, a general practice law firm focusing on Family Law and Probate matters. She is a frequent speaker on issues of law throughout various bar associations, and personally on issues of race, society, and business development. Gradney has served on the DBA Board of Directors as Secretary-Treasurer, and was recognized in the 2017 class of the National Bar Association’s “40 Under 40 Nation’s Best Advocates” Award. She has been rated by Super Lawyers and has been named a Rising Star for 2020 and 2021. Nadia Haghighatian, an Intellectual Property litigator at Holland & Knight, will serve as President of the Dallas LGBT Bar Association (DLGBTBA). She focuses her practice on patent litigation, representing clients with matters involving various technologies, including software, telecommunications, electrical, mechanical and semiconductor technologies. A graduate of Texas Tech University School of Law, Nadia has served on the DLGBTBA Board since 2019. She is also a former Director of the Dallas Association of Young Lawyers and former Associate member of The Honorable Barbara G. Lynn American Inn of Court. She has
Ashlei Gradney
Nadia Haghighatian
Andy Jones
Jonathan Koh
Elsa Manzanares
Marisa O’Sullivan
been selected to the 40 Best LGBTQ+ Lawyers Under 40 list by the National LGBT Bar Association, Best Lawyers: Ones to Watch in America for Litigation - Intellectual Property, and Texas Rising Stars. Andy Jones, a plaintiff ’s personal injury attorney at Sawicki Law and a graduate of Baylor University School of Law, will serve as President of the Dallas Association of Young Lawyers (DAYL). Jones is proud to represent individuals and their families who have been seriously harmed by the negli-
gent and wrongful actions of others. He has been recognized for his work for three years in a row (2019-2021) by D Magazine “Best Lawyer Under 40.” He has also been named a Texas Super Lawyer Rising Star for the last four years (2018-2021). In 2021, Jones was a Top 40 Under 40 Plaintiff ’s Lawyer by The National Trial Lawyers. He has also been honored for his leadership by the Texas Lawyer Association with a President’s Award of Merit and by the State Bar of Texas with the Pedro “Pete” Serrano Leadership Award. Jones is board certified in Civil Practice Advocacy by the National Board of Trial Advocacy. He is a Life Fellow of the DAYL Foundation and a Fellow of the Dallas Bar Foundation.
Jonathan Koh will serve as President of the Dallas Asian American Bar Association (DAABA). He is Associate General Counsel for MB2 Dental Solutions. He received his undergraduate degrees in History and Political Science from Southern Methodist University in 2010 and his law degree from SMU Dedman School of Law in 2013. In his spare time, in addition to his service to DAABA, Koh enjoys playing the piano and guitar. Elsa Manzanares, a Partner at Stinson LLP, will serve as President of the Dallas Hispanic Bar Association (DHBA). In her practice, Manzanares advises on U.S. and international regulations on the import and export of goods, services, software and technology. She was appointed by the Office of the U.S. Trade Representative to serve as a panelist eligible to review antidumping and countervailing duty disputes under Chapter 19 of NAFTA and Chapter 10 of the USMCA. Manzanares has been recognized by Latino Leaders as a 2020 Top Latino Lawyer, by Lawyers of Color as a 2019 Nation’s Best, and has received the DBA’s Outstanding Minority Attorney Award in 2018, as well as the Texas Greater Dallas Hispanic Chamber of Commerce La Cima Latina Entrepreneur Award in 2018. Serving as this year’s President of the Dallas Women Lawyer’s Association (DWLA) is Marisa O’Sullivan. A Partner at Carrington Coleman, O’Sullivan practices in the areas of insurance coverage and cybersecurity. She has been selected as a Texas Rising Star by Super Lawyers since 2018, was named Best Lawyers in Dallas in Insurance Law 2021 by D Magazine, Best Lawyers in Dallas Under 40 by D Magazine, named 2019 DAYL Outstanding Young Lawyer, and selected by DAYL as One to Watch. She is a Fellow of the Dallas Bar Foundation and the DAYL Foundation. HN
FREE MCLE FREE MCLE OneOne of of the Member Benefits themany many Member Benefits that offers thatthe the DBA DBA offers is more than 400 courses each is more than 400CLE CLE courses each year,year, most of whichare are offered offered atat nono charge. most of which charge. JOINOR OR RENEW RENEW NOW AT AT JOIN NOW WWW.DALLASBAR.ORG. WWW.DALLASBAR.ORG.
RISK-TAKING CAN BE FUN...
TURLEY LAW CENTER Professional Friendly On-Site Staff 24-hour Cardkey AccessComplimentary Covered VALET Parking Reserved Conference Rooms - No Charge High-Speed Internet Deli-Service Breakfast & Lunch Full Service Salon & Spa
…BUT NOT WHEN IT’S A MALPRACTICE CLAIM. Real Estate Litigation Claim* • Lawyer sued for error in service of process • Damages of up to $1,000,000 alleged • TLIE settled claim for $2,500
INSURED BY TLIE Total out-of-pocket (deductible)
IF NOT INSURED = $1,000
* Based on actual claim handled by TLIE.
FIND OUT MORE:
TLIE.ORG or
(512) 480-9074
ATM FedEx Drop Box Walking Distance to Dart Station Satellite TV Connections Car Detail Service Furnished Executive Suites
Defense costs
$35,000
Settlement
+ $2,500
Total out-of-pocket
= $37,500
Take a tour Email us at Brendag@wturley.com Convenient at N. Central Exp. & University Blvd.
Competitive lease pricing
Is your office building “Dog Friendly?” OURS IS! 214-382-4118
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 13
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
Focus
January 2022
Intellectual Property/Science & Technology Law
Patent Marking: When Strict Liability Isn’t So Strict BY CHRIS STEWART, JOHN SUMMERS, AND SETH REICH
Those who do not practice patent litigation are often surprised to learn that patent infringement is a strict-liability tort. While deliberate infringement can give rise to liability for enhanced (up to treble) damages, an infringer need not even know a patent exists to be liable for up to six years of past damages from the date the patentee files suit. A defendant cannot avoid liability to a patentee simply because the defendant independently developed the invention and was ignorant of the patent—even though the patent may have issued without fanfare and laid dormant for fifteen years prior to an infringement suit. But that strict liability also has a very strict exception—the patent marking requirement in 35 U.S.C. § 287. Under Section 287, a patentee that distributes patented products (either directly or through its licensees) must “mark” those products with the patent number or else put at risk its ability to obtain past damages. The policy rationale behind
the marking requirement is grounded in the potential of unmarked goods to mislead the public. An inventor’s public disclosure of their invention (by way of filing a patent application) is normally sufficient, standing alone, to warrant infringement damages without any further notice or intent requirement. But if the patentee distributes an unmarked patented product into the marketplace, they have muddied the water by implying those products are not covered by any patents—in other words, that the technology is freely available. This confusion disrupts the status quo stemming from the patent application alone, so the law imposes an “actual notice” requirement before the patentee can obtain damages. Meeting the marking requirement, and thereby maintaining strict liability, can be onerous to a patentee. For operating companies manufacturing their own products, marking can be time-consuming and costly, especially for products that practice scores or hundreds of patents. There is also confusion in the law regarding exactly what type of marking
Need Help? You’re Not Alone. Texas Lawyers’ Assistance Program…………...(800) 343-8527 Alcoholics Anonymous…………………………...(214) 887-6699 Narcotics Anonymous…………………………….(972) 699-9306 Al Anon…………………………………………..…..(214) 363-0461 Mental Health Assoc…………………………….…(214) 828-4192 Crisis Hotline………………………………………..1-800-SUICIDE Suicide Crisis Ctr SMU.…………………………...(214) 828-1000 Metrocare Services………………………………...(214) 743-1200 More resources available online at www.dallasbar.org/content/peer-assistance-committee
Krisi Kastl 2022 President
Dallas Bar Association
Inaugural Dinner & Dance
Saturday, January 22, 2022 Westin Galleria Dallas Hotel Reservations available on a first-come, first-serve basis. Register now at www.dallasbar.org. The DBA has a room block at The Westin Galleria Dallas at a rate of $149. For reservations, please call 1-888-627-8536 and request the “DBA Inaugural Ball” room block. Contact rthornton@dallasbar.org for sponsorship opportunities.
suffices (for example, whether it must be on the product itself, the packaging, or elsewhere). For licensors trying to force their licensees to mark, it is often an uphill battle—licensees may refuse to do so to avoid the appearance of admitting infringement; and even if a licensee agrees to mark, a licensor must take reasonable efforts to police that obligation for it to be effective. Moreover, the consequences of a failure to mark have, in recent years, become more onerous as well. Until 2017, at least two areas of legal uncertainty favored patentees who failed (or whose licensees failed) to mark: (1) unsettled caselaw regarding whose burden it was to prove that an unmarked product practiced the patent (thereby triggering the marking requirement); and (2) an expectation that any limitation on damages would only be co-extensive with the period of non-marking (for example, if a plaintiff had six years of past damages and granted a license for unmarked products in years four and five, they could at least hope to retain past damages for years 1–3 and year six). But recent cases have beaten back those advantages. First, in 2017, the Federal Circuit in Arctic Cat Inc. v. Bombardier Recreational Products Inc. held that a patentee has the burden of proving that any unmarked licensed products do not infringe any claim of the asserted patent (and thus did not need to be marked). Rather than resting on strict liability, a patent owner must now often affirmatively prove entitlement to it.
Next, following remand to the district court, the Federal Circuit three years later held in Arctic Cat II that a licensee’s failure to mark extinguished any damages after the marking failure began, even once the distribution of unmarked products ceased (“year six” in the example above). Curing a failure to mark now requires more than merely taking the unmarked goods out of circulation. And most recently, the Eastern District of Texas—one of the nation’s busiest patent dockets—has suggested that a failure to mark extinguishes all past damages, even those predating the first marking failure (“years 1–3” in the example above). This year, in Team Worldwide Corp. v. Academy, Ltd., the court held that, because TWW had granted a license to Wal-Mart allowing unmarked products six months prior to filing suit against Academy, TWW had forfeited all six years of past damages, even those accrued in the five and a half years prior to the license (when TWW was fully compliant with Section 287). Given these developments in the law of marking, a large swath of patent litigants—both those that make patented products and even those that simply have any licensing history to speak of—may find that strict liability for patent infringement has become much less strict. HN Chris Stewart and, John Summers are Principals, and Seth Reich is an Associate at Caldwell Cassady Curry PC. They can be reached at cstewart@caldwellcc.com, jsummers@caldwellcc.com, and sreich@caldwellcc.com, respectively.
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 15
HardDivorce®com
SoftDivorce®com PALMER LAW GROUP _________________________________________________________________________
FAMILY LAW · ESTATE PLANNING · PROBATE
● ● ● ● ●
Arial Font. Bold. All caps. P and L and G are 28 font. almer aw roup are 22 font. The separator dots on the bottom row are 14 font and are TIMES NEW ROMAN font (so that they are round). The bottom Row is 11 font.
How to resize the logo: You adjust the size of the fonts to align the bottom row with the top row To finish it off, you draw a line between the two rows and make sure the spacing looks good.
WE HANDLE BOTH.
Left Justified Version:
PALMER LAW GROUP _________________________________________________________________________
FAMILY LAW · ESTATE PLANNING · PROBATE
Larger Version
PALMER LAW GROUP ______________________________________________________________________
FAMILY LAW · ESTATE PLANNING · PROBATE
214-789-4735
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
Focus
January 2022
Intellectual Property/Science & Technology Law
Federal Trade Secrets Litigation Update BY LEIZA DOLGHIH
This year marked the fifth anniversary of the federal Defend Trade Secrets Act (DTSA), which created a federal cause of action for trade-secrets misappropriation, giving parties everywhere the ability to bring these claims in federal court even in the absence of diversity jurisdiction. When DTSA first became law, many wondered how it was going to affect trade secrets litigation, how certain novel aspects of the statute were going to be interpreted, and whether the federal courts would interpret the federal statute in the same manner as their state court counterparts interpret the Uniform Trade Secrets Act, which has been in existence in almost every state in the country for many years. Taking stock of the DTSA-related case
Habla 1 ._espaiiol
law, the following trends have emerged in the past five years: The Key Terms Under the Statute Are Still Being Defined. In most jurisdictions, the definition of a “trade secret” under the DTSA is identical to the definition under the state version of the trade secrets statute, and many federal courts still rely on the preDTSA state case law in analyzing what is a trade secret. Some other terms, such as, for example, what constitutes “reasonable measures” and what is “readily ascertainable” are still being defined by the courts. Uniformity Has Been Elusive. DTSA expressly does not preempt any existing state laws. Thus, federal courts continue to be influenced by the case law built up in each state under their version of the Uniform Trade Secrets Act, which, of course, varies from state to state. For example, federal
Spanish for Lawyers 2022 Spring Session: January 11 - March 16 Cost: $180
courts are split on whether the inevitable disclosure doctrine applies under the DTSA. California courts continue to reject the doctrine, while Pennsylvania, Illinois, and Minnesota federal courts recognize it. The federal courts are similarly split as to whether irreparable harm can be presumed when seeking an injunction for trade secrets misappropriation. The federal court in Colorado in 2016 held that under the DTSA irreparable harm “presumptively exists,” while the 10th Circuit Court of Appeals held that the DTSA does not allow such a presumption of harm because the statute does not expressly so state. Trade Secrets Identification in Pleadings and Discovery Remains an Issue. Federal courts in many jurisdictions, including Texas, have begun to require a rather specific identification of trade secrets in both pleadings and before discovery begins. Many courts justify this requirement on the grounds that early identification of trade secrets is necessary to allow defendants to mount a defense. However, other federal courts, including Texas (yes, Texas courts are split on this issue), have ruled that pre-discovery identification of trade secrets is not required under the DTSA or otherwise, and defendants must follow normal discovery procedures. DTSA’s Extra-Territorial Reach Has Begun to Take Shape. DTSA states that it applies to conduct occurring outside of the United States if the offender is a U.S. citizen or is organized under the U.S. laws or “an act in furtherance of the offense was committed in the United States.” The latter portion of the test is not defined in the statute, but the federal courts have found that it is a term of art similar to “in furtherance of the conspiracy.” The act creating the jurisdiction under the DTSA need not be committed by
a defendant and need not be an element of the offense, but it must be connected to the misappropriation of a trade secret. While the cases interpreting this term are scarce, the few that exist have adopted an expansive interpretation and have found jurisdiction where an email was sent to a U.S. recipient or a participant in the misappropriation attended a U.S. trade show or met vendors in the U.S. Even allegations that a defendant used the plaintiff’s trade secrets in the U.S. can meet the jurisdictional allegation requirements under the DTSA. At least one court found that it had jurisdiction to issue an extra-territorial injunction that applied to parties within and outside the U.S. Ex Parte Seizures Flamed Out. One of the most controversial provisions of DTSA—the provision that allowed federal courts to authorize ex parte seizures of property “necessary to preserve evidence or to prevent the propagation or dissemination of trade secrets” —has been applied by federal courts in very limited circumstances. Contrary to the fear of many commentators, the courts have recognized the powerful effect this remedy may have on a business whose property is subject to seizure and have preferred to wield injunctive orders under Rule 65 of the Federal Rules of Civil Procedure rather than use the DTSA-created remedy. In conclusion, the case law interpreting the DTSA is still emerging and will continue to do so over the course of many years, and different jurisdictions will continue to interpret and apply the statute differently under the influence of the body of case law amalgamated over the years under their state version of the Uniform Trade Secrets Act. HN Leiza Dolghih is a Partner at Lewis Brisbois Bisgaard & Smith LLP and board certified in labor and employment law. She can be reached at Leiza.Dolghih@lewisbrisbois.com.
Judicial Investiture at Arts District Mansion
Learn how to read, write, and speak Spanish at an adult continuing education level, with emphasis on legal terminology at the intermediate and advanced levels. (Classes held online via video conference)
Register on line at dallasbar.org.
From the Bench JUSTICE CORY L. CARLYLE
Justice Cory L. Carlyle sits on the Fifth District Court of Appeals. Why did you decide to become a Judge? As soon as I became cognizant of appellate judges’ role in our legal system, I knew it would be the perfect job for me because each case is a riddle with a large pool of variables bearing on the resolution, not unlike a big board game. Why do you participate in Bar programs? I enjoy connecting with the local legal community immensely, and it continually helps remind me of the unique pressures they face and that we on the bench can easily forget if we isolate ourselves too much. It makes me a better judge.
On December 8, the DBA hosted the judicial investiture of Hon. Juan Renteria, County Court at Law No. 5. Judge Renteria is being sworn in by Chief District Judge Barbara M.G. Lynn, as his brother prepares to robe him.
Let's Keep it Social. Follow us! Find out what's going on at #DallasBarAssoc
What are you currently reading? American Pastoral, Philip Roth Fun fact about you: I try not to miss listening to the “Observation Deck” and “Corner” segments on The Ticket, as presented by a local property manager who appears on the morning radio show.
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 17
Hallett & Perrin Congratulates Shareholder Michael Alfred on Securing a Jury Verdict for $10,897,774
ONE OF THE LARGEST JURY VERDICTS IN COLLIN COUNTY’S HISTORY IN A THEFT OF CONFIDENTIAL, PROTECTED HEALTH INFORMATION CASE (Stephen Courtney, M.D., et al. v. Kelly Liebbe, Cameron Carmody, M.D., William C. McMurrey, and Jonathan Rute, in Collin County’s 417th Judicial District Court)
a full-service Texas business law firm meeting the business and litigation needs of Texas clients
HALLETT & PERRIN, P.C. 1445 Ross Ave., Suite 2400 Dallas, Texas 75202 hallettperrin.com
18 H e a d n o t e s l D a l l a s B a r A s s o ciation
Focus
January 2022
Intellectual Property/Science & Technology Law
A “Small Claims Court” for Copyright Infringement: The CASE Act BY BOB JOHNSTON
The Copyright Alternative in SmallClaims Enforcement (CASE) Act of 2020 (Act) was included in the 5,593-page Consolidated Appropriations Act, 2021 (H.R. 133), which was signed into law on December 27, 2020 with a target effective date of December 27, 2021. The Act basically establishes a small-claims court for copyright infringement matters. It has the potential to have a considerable impact on our clients. It took over 10 years of work by the creative community to bring the Act to fruition. Proponents were driven by the desire to lower the expense of litigation in enforcing copyrights and to make the process accessible for pro se parties. In this regard, the Copyright Office has implemented streamlined procedures, which make proceedings under the Act user-friendly. Under the Act, decisions regarding
infringement are made by the Copyright Claims Board (CCB). The CCB consists of three Copyright Claims Officers and is supported by Copyright Claims Attorneys and additional support staff. The CCB must issue written decisions setting forth their factual findings and legal conclusions. The CCB may consider infringement claims; claims for declarations of noninfringement; claims for misrepresentation related to notifications of alleged infringement, or counter notifications seeking to replace removed or disabled materials under the Digital Millennium Copyright Act; and certain counterclaims against the original claimant. Claims may not be asserted against a person or entity residing outside of the United States unless that party initiated the proceeding and is then subjected to a counterclaim. Proceedings under the Act are voluntary, and respondents may opt out and
NOT RECEIVING OUR EMAILS? Make sure we have your current contact information. Log in to your "My DBA Page," and click ‘Update Profile’ or email membership@dallasbar.org.
WWW.DALLASBAR.ORG
demand that the claim be brought in federal court. The opt-out request must be made in a particular manner—one cannot bring a claim or counterclaim at the Copyright Office and in federal court. However, if the respondent opts out, the claimant may still bring the action in federal court. Respondents may want to keep the matter at the CCB for many reasons, such as the limited relief available under the Act, discussed further below. The Act does not seek to change any underlying copyright law with respect to disputes. All CCB decisions are non-precedential. If there is conflicting precedent, the CCB follows the law of the jurisdiction in which the action could have been brought if filed in district court. The relief provided by the Act includes monetary damages of up to $30,000 per proceeding, regardless of the number of works involved and exclusive of attorneys’ fees. Recovery may be based on actual damages and statutory damages of up to $15,000 per work—which is reduced if the work was not timely registered. If a party seeks statutory damages, the CCB will not consider whether the infringement was willfully committed. The Act provides no injunctive relief, but the CCB can require the infringing party to cease or mitigate its infringing activity, but only in the event such party agrees, and if the agreement is reflected in the record. With this limited relief, respondents may be assured that they will not face damages as high as in federal court. The Act gave the Copyright Office 12 months for implementation, i.e., by December 27, 2021, but it also made a 180-day extension available. The Copyright Office recently announced that it is utilizing the
extension. A Notice of Proposed Rulemaking addressing the first steps of filing a claim was published last fall. 86 Fed. Reg. 53897 (September 29, 2021). That notice explicitly states that the Copyright Office will issue proposed rules related to later stages of a proceeding in subsequent rulemaking. The Act provides for limited review. The CCB may reconsider the matter within 30 days of a final decision for clear error of law or fact or for a technical mistake. Thereafter, the Copyright Register may review a CCB denial during a 30-day window for abuse of discretion. Finally, a losing party may challenge the determination in federal court on limited grounds. The Act gave the Copyright Office 12 months for implementation, i.e., by December 27, 2021, but it also provided a 180-day extension. The Copyright Office spent most of 2021 developing the new rules, and the relevant Notice of Proposed Rulemaking addressing the first steps for filing a claim was published last fall. 86 Fed. Reg. 53897 (September 29, 2021). That notice explicitly states that the Copyright Office will issue proposed rules related to later stages of a proceeding in subsequent rulemaking. There are a couple of immediate action items to consider on behalf of your clients. First, copyright registrations are more important than ever. You must have a registration, or be in the process of registering, to take advantage of the new venue. Second, with the predicted wave of actions coming, now is a good time to have your clients audit their websites for any clearly infringing photographs or materials. HN Bob Johnston is a Partner at Hubbard Johnston, PLLC, and can be reached at rjohnston@hubbardjohnston.com
A Mentoring Partnership Between the Dallas Association of Young Lawyers and the Dallas Bar Association
STEER is a mentorship program, formerly known as the Transition to Law Practice Program, that focuses on cultivating relationships and providing substantive and practical information through quarterly programming and monthly small group mentoring sessions.
Holmes Firm PC is Proud to Announce and Congratulate Kevin C. Moran on his Admission as Shareholder with the Firm. Holmes Firm PC welcomes Kevin C. Moran as a valued shareholder to its shareholder family. Kevin focuses his practice on civil litigation in the areas
of real estate, construction defects, contracts, corporate, finance, commercial business, and business partnerships. More information about Kevin Moran can be found at www.theholmesfirm.com. Kevin can be contacted at kevin@ theholmesfirm.com or (469) 916-7700 ext. 120.
Young lawyers (1-3 years) and recent graduates are encouraged to apply Program participants are matched based on practice area, practice goals, and other criteria Mentors and mentees will meet in large and small groups several times throughout the year
Apply at www.DAYL.com/mentoring Holmes Firm PC International Plaza III 14241 Dallas Parkway, Suite 800 Dallas, TX 75254 469-916-7700 | www.theholmesfirm.com
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 19
BRONZE ($1,500) SILVER ($2,750)
THANK YOU
DALLAS COMMUNITY FOR GIVING BACK
Dear Citizens of Dallas: The Equal Access to Justice Campaign is an annual fundraising drive benefiting the Dallas Volunteer Attorney Program. The Dallas Volunteer Attorney Program, or DVAP, is a free, civil legal aid program of the Dallas Bar Association and Legal Aid of NorthWest Texas. Through DVAP, over 3,000 volunteers donate their time and legal skills to help low-income people in Dallas resolve their legal problems. Those who have bravely served our country, innocent children, the elderly, and the disabled are some of the many people DVAP helps every day. The support of our donors is more important now than ever. Over 800,000 people in Dallas County already qualify for DVAP’s help, while the number of people living in poverty continues to grow. Please join us in thanking our generous donors for their support of access to justice for all. Krisi Kastl DBA President PRESIDENT’S COUNCIL ($30,500) Hartline Barger LLP Jones Day CHAIRMAN’S COUNCIL ($25,500) Jerry & Sherri Alexander Anonymous Foundation
Cheryl Camin Murray DBA President-Elect CHAIRMAN’S COUNCIL ($25,500) Bank of America Charitable Foundation, Inc. Condon Tobin Sladek Thornton Nerenberg PLLC Crain Brogdon Rogers LLP Margaret & Jaime Spellings
GOLD ($5,500) Baker Botts L.L.P. Baker McKenzie Balch & Bingham LLP Corporate Counsel Section D Magazine DLA Piper LLP Dentons US LLP Enoch Kever PLLC Exxon Mobil Corporation Faegre Drinker Biddle & Reath LLP Gary Fowler Paul R. Genender Hon. Mark Greenberg Greenberg Traurig, LLP Husch Blackwell LLP Jackson Walker LLP Kastl Law, P.C. King & Spalding LLP Kirkland & Ellis LLP The Mike and Barbara Lynn Philanthropic Fund Lynn Pinker Hurst & Schwegmann, LLP Lanesha Minnix Annette & Jeff Patterson Probate, Trusts & Estates Section Real Property Law Section Schiff Hardin Foundation Shearman & Sterling LLP Sheppard Mullin Richter & Hampton LLP Nancy & John Solana Sommerman, McCaffity, Quesada & Geisler, LLP SILVER ($2,750) Kim J. Askew Roger Bivans & Sarah Donch Nina Cortell Diane Pearlstone Couchman Sally L. Crawford Hon. King Fifer Fish & Richardson P.C. Hon. Royal Furgeson & Marcellene Malouf Mark Johansen Amb. Ronald Kirk Michael A. Krywucki
Stewart Clancy Campaign Co-Chair GOLD PATRON ($20,000) Witherite Law Group DIAMOND ($15,500) AT&T Capital One Gibson Dunn & Crutcher LLP Haynes and Boone Foundation Vistra Corp.
SILVER ($2,750) Angelina LaPenotiere Derek Benjamin Lipscombe Matthew Lloyd Mayer LLP Mergers and Acquisitions Section MoneyGram International Morgan, Lewis & Bockius LLP Hon. Mary Murphy Roy A. Powell Reed Smith LLP Reese Marketos LLP Smith Law, PC Spencer Fane LLP Helen & Frank Stevenson Fund Amy & Edward Stewart Tax Section Robert L. Tobey Trial Skills Section Peter Vogel & Marguerite Burtis Robb L. Voyles Waters Kraus & Paul Winstead PC Zelle LLP BRONZE ($1,500) Anonymous Bankruptcy & Commercial Law Section Monica Lira Bravo Ted Brizzolara & Kate Hopkins Charitable Fund Judith W. Canon Family Foundation Carrington, Coleman, Sloman & Blumenthal, L.L.P. Jonathan & Katie Childers William Cobb Kathryn Coligado Victor N. Corpuz Dallas Women Lawyers Association Foundation DFW Association of Young Bankruptcy Lawyers Employee Benefits/Executive Compensation Section Energy Law Section Fragomen, Del Rey, Bernsen & Loewy, LLP Laura Benitez Geisler
Olesja Cormney Campaign Co-Chair
Amy M. Stewart Campaign Co-Chair
PLATINUM ($10,500) Akin Gump Strauss Hauer & Feld LLP Business Litigation Section Hilda & Mike Galvan Holland & Knight LLP Katten Muchin Rosenman LLP Latham & Watkins LLP
BRONZE ($1,500) J. Mark Hollingsworth Kathleen E. Irvin Lawrence Kelly Peter Laun Bridget Moreno Lopez Mary Kay, Inc. Bill & Sondi Mateja The Messina Law Firm, PC Kathryne M. Morris PepsiCo., Inc. Sidley Austin LLP Sandra & Richard Stewart Ross W. Stoddard, III J.L. Turner Legal Association Weaver & Tidwell LLP Joel & Terilyn Winful Angela & Luis Zambrano SPONSORS ($1,000) Rebecca Anthony Arcadi Jackson, LLP Barnes & Thornburg LLP The Baron and Blue Foundation Mark W. Bayer Vicki D. Blanton Talmage Boston Bowman and Brooke LLP Hon. Mary Brown Joseph F. Bruegger Bryan Cave Leighton Paisner LLP W. Ralph Canada, Jr. Alberto P. Cardenas, Jr. Deborah Coldwell Olesja L. Cormney Cozen O’Connor Criminal Law Section Stephanie Gause Culpepper Dallas Asian American Bar Association Glast, Phillips & Murray, PC Don M. Glendenning Hon. David & Beverly Godbey Goranson Bain Ausley Robert Hallam
PLATINUM ($10,500) Locke Lord LLP Mike McKool Munsch Hardt Kopf & Harr, P.C. Simon Greenstone Panatier, PC Stewart Law Group Toyota Vinson & Elkins LLP
SPONSORS ($1,000) Gina Hamada Jack W. Hawkins Health Law Section Michael K. Hurst Immigration Law Section Intellectual Property Law Section Johnston Tobey Baruch Labor & Employment Law Section Michael Jones Maria Katina Karos Bill Katz Dan Kelly David C. Kent Mark H. Kleinman Robert E. Luxen Ted B. Lyon & Associates, PC Elizabeth E. Mack Jacob Marshall John H. Martin Cristy & David McAtee McCullough Mediation McDermott Will & Emery LLP Retta Miller Maureen Murry Bill Nelson Pam Nelson Erle Nye Ogletree Deakins Patterson & Sheridan LLP John Reynolds Julie and Paul Rogers Robert F. Ruckman Will Russ Shook, Hardy & Bacon, L.L.P. Snell & Wilmer LLP Pamela St. John Paul K. Stafford Michael and Karen Tankersley Family Fund Julie Ungerman Verner Brumley Mueller Parker Taylor Wilson Donors as of December 10, 2021
To donate to the campaign, visit www.dvapcampaign.org. To learn more about DVAP, visit www.dallasvolunteerattorneyprogram.org. For more information contact Michelle Alden at aldenm@lanwt.org or (214) 243-2234.
20 H e a d n o t e s l D a l l a s B a r A s s o ciation
Column
January 2022
Ethics
Private Practice: Keeping Confidences While Working Remote BY ERNEST B. WHITE
The last two years witnessed a marked change in the practice of law. Before 2020, Zoom might have seemed a fun and revolutionary way to hold a mediation or involve an out-of-town witness in a hearing. Now, almost every attorney has used Zoom in some way for work. As the practice of law grows to involve more remote work, the risk of exposure to unprecedented issues also rises. This article covers one such issue broadly: data breaches. In October 2021, Forbes reported that data breaches increased more than 17 percent overall from 2020. Data breaches can be large and coordinated, such as the Panama Papers, which saw the release of 11.5 million documents, many of which contained privileged attorney-client information. However,
data breaches can also be small and unintentional, such as situations where an individual client’s confidential information is destroyed, misappropriated, or otherwise compromised. Long before the pandemic, the American Bar Association’s (ABA) Standing Committee on Ethics and Professional Responsibility issued Formal Opinion 483, which describes a lawyer’s obligations amid a data breach. The Opinion used the Model Rules of Professional Conduct for guidance; however, this article looks to the enforceable Texas Disciplinary Rules of Professional Conduct, which differ mildly from the Model Rules. Rules 1.01, 1.03, and 1.05 are the Texas Disciplinary Rules applicable to data breaches. Rule 1.01 states that a lawyer must competently and diligently represent a client. Rule 1.03 imposes the
Advertise Here! Don’t miss your opportunity to advertise (print & online) in the #1 “Legal Resource & Expert Witness Guide” in Dallas County. For more information, contact (214) 321-3238 or dba@legaldirectories.com
duty to communicate. And Rule 1.05 covers confidentiality of information. It is in Rule 1.05 where the Texas Rules and Model Rules differ, with each outlining different standards for attorneys. A data breach—and indeed any case a lawyer takes—involves Texas Disciplinary Rule 1.01 Competent and Diligent Representation. Comment 8 to the rule states, “Each lawyer should strive to become and remain proficient and competent in the practice of law, including the benefits and risks associated with relevant technology.” Similarly, the ABA Ethics Commission stated lawyers need to understand and use technology to reasonably protect information entrusted to them. Lawyers must employ reasonable efforts to monitor their technology and resources connected to the internet, external data sources, and third-party vendors providing services related to the data. Using a virtual private network, encrypting documents, and limiting work communications such as email to secure platforms may satisfy this reasonable standard. The ABA adds that lawyers should proactively develop incident response plans to respond to data breaches, in order to mitigate loss. Such measures might include documenting the breach, changing passwords, and isolating computers from the network. For client communication, Texas Rule 1.03 closely mirrors Model Rule 1.4. Thus, ABA scholarship may again be a guidepost. ABA Formal Ethics Opinion 95-398 states that lawyers must give clients notice of a breach of confidentiality committed by or through a third-party technology vendor or other service provider. Further, it states a lawyer owes a client notice of any serious breach. Here, best and ethical practices may require informing the client of any breach of data that may affect the out-
come of the case. Texas Rule 1.05 states that a lawyer shall not knowingly disclose a client’s confidential information. A strict textual analysis of this rule would assert no ethics violation would arise from an unintentional data breach. However, Comment 1 to Rule 1.05 more broadly states a lawyer’s fiduciary duty to preserve confidential information. ABA commentary provides insight into how a breach of fiduciary duty determination might be made. Comment 18 to Model Rule 1.6 lists five determining factors: (1) sensitivity of information; (2) likelihood of disclosure if safeguards are not employed; (3) cost of employing safeguards; (4) difficulty of implementing safeguards; and (5) extent to which the safeguards impair the lawyer’s ability to represent the client. At the time of this writing, Texas has not issued any commentary on Opinion 483, therefore it cannot be definitively stated whether the state will adopt this five-factor test. Going forward, data breaches may well become commonplace in the practice of law, so lawyers must be both proactive and reactive. Preemptively, attorneys must reasonably keep abreast of technological changes in the field. Using a VPN, data encryption, and a secure email provider may satisfy these requirements. If a breach does occur, lawyers should mitigate its effects methodically. Protocol may include documenting the breach, changing passwords, and isolating a computer from the compromised network. A lawyer must inform the client if the breach occurred through a third-party provider or if the breach may affect the outcome of the case. HN Ernest B. White practices law at Stanton LLP. He may be reached at ewhite@stantonllp.com.
DVAP’s Finest HEATHER BARGER
Heather Barger is a Senior Associate at Alston & Bird LLP.
TOGETHER, WE CAN MAKE A DIFFERENCE. Access to justice is hard to come by. There is less than one full-time legal services attorney for every 7,100 Dallas citizens living in poverty. That means that if you filled AT&T Stadium to its maximum capacity, you’d have 11 attorneys to service them. And if each client received a single 30-minute session, it would take those attorneys nearly five months of round-the-clock work, with no breaks, just to meet with everyone. That’s where DVAP comes in. DVAP provides access to justice by recruiting, training, and supporting over 2,000 volunteer attorneys each year who take meaningful time from their “day jobs” to provide pro bono legal aid to low-income people in Dallas County. Your support of DVAP will assist low-income people with eviction issues, family law matters, estate planning, bankruptcy filings, veterans benefits, and more.
1. What types of cases have you accepted? All sorts of things—asylums, divorces, contractors gone bad. 2. Which clinics have you assisted with? I’ve helped with a number of the intake clinics, which I love. Even when I’m drowning in billable work, I can find a few hours to help with intake clinics and listen to people’s stories, help them feel heard, and get them one step closer to securing the needed services. 3. Why do you do pro bono? It’s cliché, but I am very blessed. Even on the worst days, I am well-educated, wellloved, and safe. I have no doubts that if tragedy befell my family, someone from my support system would be there. It is a fact that I took for granted in my youth but a privilege so many do not have. I think it is our responsibility to support our neighbors when they need it most. 4. What impact has pro bono service had on your career? It has given me stand-up, in-court experience, the opportunity to navigate particularly difficult opposing counsel, and develop my leadership skills managing a team, but most importantly, it has given me perspective when I needed it most. 5. What is the most unexpected benefit you have received from doing pro bono? The stories!
Pro Bono: It’s Like Billable Hours for Your Soul. To volunteer or make a donation, call 214/748-1234, x2243.
Find out more at dallasvolunteerattorneyprogram.org
Jan u a ry 2 0 2 2
Focus
D al l as Bar A ssoci ati on l Headnotes 21
Intellectual Property/Science & Technology Law
Helping Your Clients Find Patentable Inventions BY KELCE WILSON
You do not need to be a patent attorney to provide valuable intellectual property (IP) assistance to your clients. While it is understandable to be wary about advising on matters outside your primary practice areas, by investing a few minutes to understand two key concepts and the process described below, you can initiate IP-related discussions that can lead your clients to find patentable inventions. The first concept appears superficially simple, yet is profound: Some inventions are merely new engineering trade-offs. There are two primary classes of inventions, new technology and using new technology to improve existing systems (i.e., finding new engineering trade-offs). Improving existing systems typically requires only a fraction of the investment and expertise than does inventing new technology. Although patenting new engineering tradeoffs may be relatively easy, resulting patents may have high value—provided they are filed quickly upon the underlying new technology becoming available. Essentially, there is a race to recognize practical applications when new technology becomes available. Winners are more likely to obtain valuable patents than late-comers. The second concept is related: Designs of complex systems are based on the relative costs and capabilities of the various components, attempting to find a balance point with some degree of performance optimization among cost and component capability. Due to interactions among components, rarely does a technology breakthrough for one component result in widespread marketplace adoption of a new system that differs from prior systems by only that single
improved component. Rather, the next successful system, measured by marketplace adoption, often includes additional changes that result in a new optimized balance point of cost versus component capabilities. With these two concepts in mind, secondary inventions, which change components of larger systems beyond only the single improved component that was improved by the initial new technology invention, may generate patents for innovators who move quickly enough. Your clients don’t need to come up with startling physics discoveries in order to have a valuable invention. They just need to move quickly, with a focused invention process that you can suggest to your client: a. Identify components of current and earlier-generation successful systems in your client’s industry. Identify component capabilities, and understand the engineering trade-offs that were made and why those trade-offs were successful. b. Identify relevant underlying technologies (e.g., device physics, properties of materials, communication protocols) and ensure that someone stays current in news about world-wide cutting-edge research projects. This is an important commitment; the significance of some technology advancements is often under-appreciated. c. Track changes in component cost and supplier capacity and focus. Are suppliers shifting their inventory levels among different offerings? d. Study the evolution of prior-generation systems, looking for patterns of how technology breakthroughs affected other system features. e. When there is a technology break-
through, or a shift in component cost, capability, or availability, assess the potential of a new optimization balance point for an engineering trade-off that may become the next successful system. While this process may be straightforward, investment is needed in the form of study time and money for subscriptions to industry publications that provide timely, reliable information on research projects. In this example, your client’s secondary invention could be a version of the sensing device that stores a look-up table which maps long data streams to shorter symbols, based on likelihood of occurrence. Using a look-up table does not require complex, power-hungry computations; a sensor device using a look-up table in the improved memory transmits shorter symbols instead of long data streams. The monitoring node uses a corresponding look-up table to recover the data.
Because it transmits shorter symbols, your client’s sensing device design uses less power. Either a smaller battery may be used, or the original size battery will last longer. A version of the sensing device with the look-up table will likely be more successful in the marketplace than one that uses only the improved memory, but has no other changes. The inventor of the improved memory may receive a patent on the underlying technology and, because your client moved quickly, following the process outlined above, your client may also receive a patent on the new version of the sensing device. By leveraging these two concepts, you may be able to play an important role in growing your client’s IP, even if you are not a patent attorney. HN Kelce Wilson is Senior Counsel at Barta, Jones & Foley, P.C. He can be reached at kelce.wilson@bjfip.com.
Texas HS Mock Trial Needs Volunteers! HOW YOU CAN HELP Coach a Team • • • •
Help team prepare for competition Schools located in Dallas No litigation experience required Work around your schedule!
Score a Compet it ion • • • •
Earn self-study CLE & network with attorneys No litigation experience required Only 3 hour time commitment It takes over 20 0 at t orneys to score a day of competition! We need you!
20 22 Compet it ions: Sat , J anuary 22nd, Sat , J anuary 29 t h, Sat , February 5t h, Fri, March 4 t h - Sat , March 5t h Quest ions? Cont act t he St at e Coordinat or at t exashsm ockt rial@dallasbar.org or call 214 -220 -74 8 4 w w w.t exashighschoolm ockt rial.com
FEDERAL & STATE CRIMINAL DEFENSE | FEDERAL & STATE CIVIL TRIAL MATTERS
Knox Fitzpatrick ✯ Jim Jacks ✯ Bob Smith ✯ Mike Uhl ✯ Ritch Roberts 500 NORTH AKARD STREET, ROSS TOWER, SUITE 2150 DALLAS, TEXAS 75201-6654 | 214-237-0900 *Independent Law Offices
22 H e a d n o t e s l D a l l a s B a r A s s o ciation
January 2022
Law Firm Cybersecurity: Protect Your Practice in 3 Easy Steps BY JORDAN TURK
Cybersecurity incidents are on the rise and unfortunately, law firms are attractive targets for cybercriminals. Part of the appeal is that digital thieves know gaining entry into a law firm’s database sometimes means accessing the sensitive payment information of multiple companies or entities in one fell swoop. But it isn’t just external threats law firms need to worry about. Every employee in the office has the ability to either intentionally or accidentally compromise the security of your firm. This is why it’s so important to take a proactive approach to maintaining strong cybersecurity protections. To avoid becoming another cybercrime statistic, you need to be wellversed in the most effective ways to decrease your vulnerability to a cybersecurity incident. To help get you
started, here are three simple things you can do.
Draft an Acceptable Use Policy
An acceptable use policy (AUP) explicitly outlines the rules employees must follow in regards to the firm’s network, software, computers, laptops, and mobile devices. It clearly states how employees should and shouldn’t use both employer-provided technology and personal mobile devices like smartphones and tablets. One of the main reasons to implement an AUP is the ability of employees to either deliberately or inadvertently compromise the security of your company. Ipswitch, a provider of IT management software, reported that nearly 3/4 of security breaches are due to employee actions (either intentional or accidental).
Need Referrals?
Take out an Area of Practice and/or Foreign Language Proficiency listing in the 2022 DBA Member Directory to get great exposure for your practice. For just $35 per listing you will be included in both the printed and online DBA Member directory. Listing Cost: $3 35.00 For more information and an order form contact Judi Smalling at jsmalling@dallasbar.org or (214) 220-7452.
Something as simple as connecting your firm computer to a hotel’s Wi-Fi network can lead to a major security breach. An AUP ensures employees understand their responsibilities in regards to technology use and helps educate them on identifying possible cybersecurity threats. A comprehensive yet easy-to-read AUP can substantially decrease your firm’s risk of cyberattacks and data breaches.
Adopt Cloud-Based Technology
Many (if not the majority of) law firms that favor on-premise or hosted solutions to cloud-based platforms will cite security as the reason they refuse to move their data to the cloud. But the truth is, cloudbased solutions are considerably more secure than on-premise or hosted software (and nearly 30 percent of respondents in a survey conducted by Aderant, the legal time and billing software provider, agree.) An on-site IT team may do periodic network vulnerability checks, but they have dozens of other issues to worry about, too. Providers of cloud legal solutions have employees dedicated exclusively to ensuring their IT infrastructure is as strong and secure as possible. Additionally, because updates to cloud solutions are deployed automatically, you will know the platform always has the latest patches and the provider has addressed known vulnerabilities. As an added bonus, cloud-based solutions are also generally less expensive and easier to maintain than hosted or on-premise options.
Develop an Incident Response Plan
Ideally, your firm will never expe-
rience a data breach or cyberattack. Realistically, you need to be prepared for the day when it happens. That is why an incident response plan is an essential part of any large law firm’s cybersecurity program. The steps your firm takes immediately upon discovery of the issue will determine just how extensive (and expensive) the damage will be. An effective incident response plan includes the following steps: • Designate an incident response planning team • Classify the type/extent of the incident • Complete initial reporting • Escalate the incident, as appropriate • Inform affected individuals and organizations • Investigate and collect evidence • Mitigate further risks • Execute recovery measures Your incident response plan (in addition to any other security policies and procedures) should be regularly evaluated and updated. With existing threats continuously evolving and new threats appearing almost daily, your firm must take a proactive approach to maintaining strong cybersecurity protections. Any strategy you develop to keep your firm safe from cybersecurity dangers and reduce compliance liabilities should center around knowledge. Knowing your requirements, your risks, and your resources makes it much easier to maintain proper security and stay in compliance with local rules. Commit to being prepared and staying aware so that your law practice does not become a cautionary tale for other firms. HN Jordan Turk is an Attorney and Law Practice Advisor at LawPay.
Jan u a ry 2 0 2 2
D al l as Bar A ssoci ati on l Headnotes 23
I love LawPay! I’m not sure why I waited so long to get it set up.
+
– Law Firm in Ohio
Member Benefit Provider
Trusted by more than 150,000 professionals, LawPay is a simple, secure solution that allows you to easily accept credit and eCheck payments online, in person, or through your favorite practice management tools. 22% increase in cash flow with online payments Vetted and approved by all 50 state bars, 70+ local and specialty bars, the ABA, and the ALA 62% of bills sent online are paid in 24 hours
YOUR FIRM LOGO HERE
Trust Payment IOLTA Deposit New Case Reference ***
**** **** **** 9995
TOTAL: $1,500.00 POWERED BY
PAY ATTORNEY
Get started at
lawpay.com/dallasbar 877-260-1115
Data based on an average of firm accounts receivables increases using online billing solutions. LawPay is a registered agent of Wells Fargo Bank N.A., Concord, CA and Synovus Bank, Columbus, GA.
24 H e a d n o t e s l D a l l a s B a r A s s o ciation
January 2022
DBA We Lead Graduation – Class of 2021 DBA We Lead held an in-person graduation on November 16 at the Arts District Mansion. Before the graduation ceremony, the class participants were treated to a special Managing Partner/Senior Partner Panel from Kandace Walter, Lisa Atlas Genecov, Dena DeNooyer Stroh, Michelle Alonzo, and Amy M. Stewart, and a fireside chat with Stephanie Zapata Moore and Cheryl Camin Murray. Congratulations to the 2021 class! And thank you to class program directors Ophelia Camiña and Lisa Tomiko Blackburn.
The Dallas-Fort Worth Lexus Dealers
Ticket to Drive Raffle Winner receives a 2022 Lexus NX 300*
Are you a lawyer ready to RELAUNCH your career -- or do you know one? The Relaunch Program is designed to help attorneys who have left the profession for any number of reasons explore a new path in the practice of law. The program provides substantive workshops, coaching, and guidance on everything from discovering individual strengths, interests, and meaning, how to channel these into relaunching a satisfying career, and interviewing, networking, and reconnecting with the profession.
Proceeds benefit the Dallas Volunteer Attorney Program, which provides legal services to the less fortunate in our community. No more than 1,500 tickets will be sold. Runner-up receives: A choice of Belize All-Inclusive Trip, Tennessee Whiskey Adventure, or a Broadway in Chicago Trip.
2022 Program Dates: February 22, 2022 March 23, 2022
Raffle tickets are $100 each - or 6 tickets for $500.
April 22, 2022 May 10, 2022
Program Fee: $250 Register at DallasBar.org/2022Relaunch Registration Deadline: Monday, January 31, 2022 Questions? Contact Viri Rodriguez at vmejia@dallasbar.org
*Picture shown is not exact winning vehicle
Purchase raffle tickets online at www.dallasbar.org/dvapraffle Drawing will be held at the DBA Inaugural celebration on January 22, 2022 The winner need not be present to win. The winner is responsible for all taxes, title and licensing. Prize is non-transferable. No cash option is available.
Jan u a ry 2 0 2 2
Focus
D al l as Bar A ssoci ati on l Headnotes 25
Intellectual Property/Science & Technology Law
Software M&A: Beware These Three Potential Deal Killers BY TODD BASILE
Software M&A activity continues to soar as tech companies and investors vie for broader customer bases, better data analytics, and enhanced consumer offerings. That said, despite fears of missing out on the software M&A gold rush, buyers are diligencing software assets with increased scrutiny. Cautionary tales abound of deals-gone-wrong, with unwitting buyers discovering too late that the purchased assets were riddled with landmines. This article explores three potential deal killers unique to software deals.
Clouded Title to Software & Data
Software development is often a collaborative effort, with some portions being written by teams of in-house developers and others outsourced to third-party developers. It may seem natural that the company would own all of the resulting code and intellectual property, but in many situations, this is not so straightforward. For example, what if a developer reuses code originally developed for another party? Or what if the developer thinks of itself as the company’s partner rather than an independent contractor? Absent a clear written agreement to the contrary, the developer or third party may claim rights in the company’s software. Regardless of merit, resolving such claims can be costly and distracting, potentially leading to purchase price holdbacks or even termination of the deal. Questionable data rights can be equally damaging, especially if the company’s software relies on certain datasets to function optimally. For example, if the company’s software must reference a particular dataset
in order to perform certain tasks, the software could be relatively useless if and until permission to use the dataset is obtained, or a suitable replacement is identified. Likewise, if the company’s software uses algorithms that can only be derived from a particularly valuable dataset, not having exclusive rights to the dataset could destroy the company’s competitive edge. Many software companies seek to mitigate these risks via contractual assignment provisions, under which developers or data providers convey any rights they may have in these assets to the company. That said, many such provisions focus only on copyrights, failing to capture other valuable intellectual property rights such as trade-secret protection for datasets, and patent rights in functional aspects of the software. Other provisions may fail to protect the company’s freedom-to-operate in cases where the developer’s rights may not be assignable or, in the case of moral rights, waivable. Buyers are wise to consider how these pitfalls could potentially impact their vision for the software post-acquisition.
Lack of Control Over Use and Access
The company’s inability to control how its software and data can be used, and by whom, can be another potential deal killer in software M&A. While this issue can sometimes be remedied by updating the company’s terms of use and future processes, in many cases the damage may be difficult to remedy or perhaps, may even be irreversible. For example, say a competitor buys a copy of the company’s software and tasks its own developers with reverse engineering a similar software product. Depending on the jurisdic-
tion, the company may have few options for legal recourse absent any patent or copyright protection. However, were the company to have required users to agree to robust terms of use including prohibitions on the competitor’s actions, the company could potentially have a contract claim for damages and injunctive relief. Likewise, were the terms of use to prohibit unauthorized access, the company may have a contract claim if the competitor obtained access under an alias or by using another’s credentials. Maintaining little or no control over data can also result in significant damage to the company’s competitive edge. Failure to limit another’s use of the data to a specific purpose can result in the data being used in ways the company may not have anticipated. Likewise, failure to impose confidentiality obligations can make it more difficult for the company to claim the data was misappropriated if used wrongfully.
Costly Remediation of License Noncompliance
Many buyers also explore how open-
source software (OSS) and third-party libraries are used in a company’s proprietary software. It is important for companies to ensure such use complies with the licensing terms and conditions associated with each thirdparty component, otherwise significant issues could arise. For example, some OSS is subject to copyleft licensing terms that may force software companies to publish their source code or provide their software to the public for free. Removing OSS often involves costly redesigns to avoid potential copyright infringement going forward, and having to obtain missing third-party licenses can be expensive and subject to additional financial penalties. Companies should track their use of OSS and third-party software and ensure its agreements require developers to adhere to the company’s policies, and identify all such software components included in their deliverables. With the right know-how and approach, savvy buyers can spot these potential deal killers and stake more productive claims in the software M&A gold rush. HN Todd Basile is a Shareholder at Greenberg Traurig LLP. He can be reached at basilet@gtlaw.com.
DBA/DAYL Moms in Law January Events Being a working mom can be challenging. Being a working lawyer mom can be a different ballgame with its own unique challenges. Moms in Law is a no pressure, no commitment, informal, fun, support group for lawyer moms. The January events are: Moms in Law’s first lunch of 2022 is at Ida Claire in Addison on January 14, Noon. RSVP to Rebecca Nichols at rfitzgib@gmail.com. Email cpleatherberry@gmail.com to join the Moms in Law email listserv.
Journey to the Netherlands MAY 1-5, 2022
WITH OPTIONAL 2-NIGHT EXTENSION MAY 5-7 ORGANIZED BY CLE ABROAD
LEARN MORE AT WWW.CLE-ABROAD.COM/TRIP/TXNL
26 H e a d n o t e s l D a l l a s B a r A s s o ciation
January 2022
In The News FROM THE DAIS
Circle Ten Council of the Boy Scouts of America and UNT Dallas College of Law hosted an opportunity for Scouts BSA to earn the Law Merit Badge. The speakers included Judge Irma Ramirez, United States Magistrate Judge of the United State District Court of the District Court for the Northern District of Texas, Aaron Tobin, Condon Tobin Sladek Thornton Nerenberg, and Charles Hosch, Hosch & Morris, PLLC. Wesley S. Alost, Mayer LLP, and Professor Edward Hart, UNT Dallas College of Law, were the event’s organizers. In recognition of military veterans, Richard G. Stewart, Jr. Esquire, Captain JAGC, US Navy (Ret), was the Project Unity’s November Listen & Learn Speaker.
KUDOS
Michelle Wong Krause, of Wong Krause & Associates, was elected as Chair of the Dallas Area Rapid Transit Board of Directors. Lindsey Obenhaus, of GoransonBain Ausley PLLC, was selected to be part of the 2021-22 Leadership SBOT class, a program is designed to increase diverse leadership participation in the legal community.
Judge Tonya Parker, of the 116th District Court received the 2021 Luminary Award presented by The Diversity and Flexibility Alliance.
tual Property Law Association President’s Outstanding Service Award.
Linda Wilkins joined The Sulentic Law Firm, PLLC as Of Counsel.
Brandan Montminy, of Locke Lord LLP, has been promoted to Partner.
Kerry Tassopoulos joined GrayRobinson PA as Of Counsel in the firm’s Washington, DC office.
John G. Browning, of Spencer Fane LLP, received the Oklahoma Bar Association’s top legal writing award, the Dr. Maurice Merrill Golden Quill Award.
Paul Koning, of Koning Rubarts LLP, was designated Chair of the Professional Ethics Committee by the Supreme Court of Texas.
Martha Hardwick Hofmeister, of Shackelford, Bowen, McKinley & Norton, LLP, was awarded Altrusa International, Inc.’s highest honor: the Eleanor Roosevelt Humanitarian Award.
John R. Norris III, of Norris & Weber, received the 2020 Judge William W. Treat Award of Excellence presented by the National College of Probate Judges.
Charla Aldous, of Aldous Walker LLP, received the Texas Trial Lawyers Association Lifetime Achievement Award for 2021. Quentin Brogdon, of Crain Brogdon Rogers, was elected President of the Texas Trial Lawyers Association. Richard G Stewart, Jr, Attorney at Law was presented the Certificate of Congressional Recognition for the honorable service he performed while serving in the Armed Forces of the United States of American. Jerry Selinger, of Patterson + Sheridan L.L.P., received the American Intellec-
Matt Berde, Erin Marie Choi, and Brendan Conley, of Weil, Gotshal & Manges LLP, have been promoted to Counsel. Henry Talavera, of Polsinelli, received a Lifetime Achievement Award at the Texas Lawyer’s 2021 Texas Legal Excellence Awards.
ON THE MOVE
Amy LaValle joined Munck Wilson Mandala as Partner. Bobby Majumder, Jason Villalba, and Ed McQueen joined Frost Brown Todd as Members.
Kala Simpson and Conor Whiate joined Munsch Hardt Kopf & Harr, P.C. as Associates. Brian Lidji and Kyle Hooper joined Jackson Walker as Partners. Jonathan James joined Goranson Bain Ausley, PLLC as Associate in the Plano office. Christopher Livingston joined FarrowGillespie Heath Witter LLP as Of Counsel. Megan Legband joined the firm as Associate. Arianna L. Smith joined Brousseau Naftis & Massingill as Associate. Amanda Miller joined Weil, Gotshal & Manges LLP as Associate. 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
Karen McCloud to Receive 2022 MLK, Jr. Justice Award Posthumously CONTINUED FROM PAGE 1
14-plus years she devoted as a facilitator for the DAYL Leadership Class, or as the longtime director and organizer of the J.L. Turner Trial Academy. And despite the numerous awards and accolades Karen received throughout her notable career, she would rather be remembered as a loving daughter, loyal friend, and good person who did all she could to help others up until her dying days. Karen loved a parade and leading out front—but not for the attention. She loved it because she loved bringing people along with her, to share in the joy she found living in service to others. It was a joy that was reflected in her leadership style, a style for which she will always be remembered. “Karen accumulated and inspired her friends to become leaders for the betterment of our profession and community. The Dallas legal community has never had a leader that presided over and connected a more diverse cross-section of our profession. Karen’s vocal leadership was always passionate, but never dogmatic. We just wanted to follow her.” - Michael Hurst, 2018 DBA President. “Karen lived a life that epitomized so many of Dr. King’s values. She set the example for service and helping others while she led important institutions in our Bar.” - Kim Askew, 2010 Martin Luther King, Jr. Justice Award recipient. “Karen was never known to be shy, especially while being a drum major for the Dallas legal community. Her mantra
was ‘show up’ and bring others with you. And Karen always showed up. Through my work with the DAYL Foundation, I would often receive grant applications from smaller non-profit organizations that would have Karen’s name somehow attached to them, demonstrating to me Karen’s commitment to service outside of the legal profession. Karen was a true and generous servant who was always free with her time and always ready to lead or follow, as long as it involved helping others.” Cherie Harris, DAYL Executive Director, “Karen was the greatest servant among us, living her life ‘doing for others.’ Service to the bar and in support of others gave her great joy and purpose. She wanted to give others opportunity, she created programs, put together CLEss, and panels; not for the accolades but so that those in attendance would be better lawyers. Karen was a leader among leaders, never expecting praise for her great accomplishments, but always making sure others were recognized. Karen lived her life with a smile on her face, a drink in her hand, and a dance in her step.” - Krisi Kastl, 2022 DBA President. As we celebrate Martin Luther King, Jr. Day on what is also a National Day of Service, let Karen’s memory serve as a reminder that we all have the capacity for greatness—all that is needed is a desire to serve others with “a heart full of grace” and “soul generated by love.” HN Laura Benitez Geisler is a Partner at Sommerman, McCaffity, Quesada & Geisler, L.L.P. and served as 2019 DBA President. She can be reached at lgeisler@textrial.com.
Krisi Kastl: DBA’s 113th President CONTINUED FROM PAGE 1
practice of law to raise children, to take care of sick family members, or due to circumstances raised by the pandemic. The program will start in February, with anticipated graduation in May or June 2022. The program will guide the selected participants through re-entering the workforce, and will assist with business development, technological
literacy, and self-promotion. For those interested, the application deadline is January 31, 2022. Finally, Kastl wanted to be sure that we remember our close friend, Karen D. McCloud, who was slated to be the DBA President for 2022. McCloud sadly lost her life to multiple myeloma in 2020 and Kastl was elected to the role following her loss. Geisler, a long-time friend to both Kastl and
McCloud, shared “Karen intertwined our bar service and friendship for years, so it is fitting that Krisi steps into what would have been Karen’s term as DBA President.” Kastl and McCloud’s wish for membership for the DBA is embodied by the song that reminds Kastl of her good friend, Karen D. McCloud, “I Hope You Dance,” by Lee Ann Womack. The song captures what “both Karen and I want for the DBA—for us
to work hard, be humble, take chances, and to dance…” Join us in celebrating 2022 Dallas Bar Association President Krisi Kastl at her Inaugural on January 22, 2022. Tickets are available at www.dallas bar.org. HN Lindsay Drennan is with U.S. Department of Education | Office for Civil Rights. She may be reached at Lindsay. Drennan@ed.gov.
Jan u a ry 2 0 2 2
Focus
D al l as Bar A ssoci ati on l Headnotes 27
Intellectual Property/Science & Technology Law
The Delta-8 THC Minefield and Counterfeit Concerns BY SUZIE TRIGG, DAVID BELL, JOANNA PEARCE, AND KAYLA CRISTALES
If you follow cannabis news, you have likely heard of delta-8 tetrahydrocannabinol and Texas’ recent announcement that Texas considers it to be a Schedule I controlled substance. Known as “delta-8 THC” or “delta-8,” this compound is one of many naturally occurring cannabinoids within the Cannabis plant. Delta-8’s legal status is hazier than that of its better-known cousins, delta-9 THC and CBD, making it prone to unique risks. Since the federal Agriculture Improvement Act of 2018 (the “2018 Farm Bill”) decriminalized industrial hemp (a low-THC Cannabis variety), demand for hemp-derived products has soared. Initially, many such products only contained CBD, a non-hallucinogenic cannabinoid. But over time, delta-8 became the new “it” ingredient in hemp-derived products like snacks, beverages, and vaping devices because unlike CBD, it can produce a marijuana-like “high.” The 2018 Farm Bill made it clear that delta-9 THC, the cannabinoid most commonly associated with marijuana’s hallucinogenic effects, is a Schedule I controlled substance when present in concentrations above the 0.3 percent permitted in industrial hemp.
The legality of delta-8 THC after the 2018 Farm Bill was less clear, leading many manufacturers to start using it in hemp-derived products marketed to consumers as “legal” marijuana alternatives. But several state and federal agencies have indicated that delta-8 may not actually be legal. In August 2020, the DEA issued an interim final rule clarifying that all synthetically derived tetrahydrocannabinols remain Schedule I controlled substances. Most of the delta-8 THC available on the market is chemically synthesized because it naturally occurs in only small amounts within the Cannabis plant. This suggests that delta-8 is not federally legal. Several states, including Texas, have also announced that they consider delta-8 an illegal controlled substance. Industry stakeholders have initiated litigation to challenge DEA’s interim rule and state prohibitions, including a challenge to Texas’s ban that resulted in a temporary injunction in November 2021. Proponents have also argued that the DEA suggested, in a September 2021 letter to the Alabama Board of Pharmacy, that it may not consider all forms of delta-8 to be illegal. However, that letter failed to indicate that DEA would view the synthetic forms of delta-8 commonly used in the industry as federally legal. Further, courts will usually afford judicial deference to regulatory
Office Space, Position Wanted, Positions Available, Services
Classified Ads available Online
agencies when interpreting laws the agencies enforce. In September 2021, as further indication of the regulatory skepticism of delta-8, the FDA and CDC jointly issued warnings to flag health risks associated with delta-8 THC. FDA is concerned that products containing delta-8—most (or all) of which are not evaluated or approved by governmental authorities—may be advertised for unsafe uses (e.g., ingestion or inhalation), cause unpredictable intoxication or other adverse effects, or contain unsafe chemicals or by-products. These concerns affect more than just the legality of delta-8. The potential for untested or counterfeit products creates unique IP risks for brands trying to protect their hemp-derived products. Because federal agencies like DEA and FDA have cast significant doubt on the federal legality of delta8, it may be difficult for brands to secure trademark registration (or even unregistered rights that could otherwise be the basis of an enforcement action). U.S. law requires trademarks to be used in connection with goods or services that are lawful. Presently, no federal trademark registrations explicitly cover delta-8 products. Only about five such trademark applications have been examined, and the Trademark Office has so far refused each on the ground that delta-8 is federally illegal, particularly under the Controlled Substances Act. Delta-8’s growing popularity has also created a market for counterfeit or copycat products designed to mimic products made by reputable brands.
In 2021, the producer of a popular line of flavored delta-8 vaping products launched copyright infringement suits against counterfeit distributors that it accused of selling inauthentic “rip-offs” of its products. One of the brand owner’s concerns, which is also shared by regulators, is that counterfeit delta-8 products may not be subject to the testing, quality control, and oversight needed to ensure that consumers are actually getting what is listed on the label and not ingesting something harmful instead. Counterfeit delta-8 products pose a unique threat to brands because of their ability to quickly damage a company’s reputation and goodwill. And, because many counterfeit products may be sold in small shops or via third-party websites, it can be difficult for established brands to know when their products are being mimicked by illicit producers. Dealing in delta-8 comes with unique legal and business challenges, including, but not limited to, the foregoing IP-related risks. Such challenges may be difficult to predict, and even harder to overcome. Attorneys with clients involved or interested in cannabis should advise such clients to carefully consider whether to include this hotly contested cannabinoid in their hempderived products and to consult counsel regarding the associated legal landmines before doing so. HN Suzie Trigg and David Bell are Partners, and Joanna Pearce and Kayla Cristales are Associates, at Haynes Boone, LLP. They can be reached at suzie.trigg@haynesboone.com, david. bell@haynesboone.com, joanna.pearce@haynesboone.com, and kayla.cristales@haynesboone.com, respectively.
Two Two Texas Texas Regions. Regions. Two Must-Have Bench Books.
Two Must-Have Bench Books.
Contact Judi Smalling jsmalling@dallasbar.org 214-220-7452 www.dallasbar.org
Get noticed!
Update your resume on the DBA Career Center today!
There is no better way to prepare for trial Thousands of top employers could be looking at your resume right now. The first way to stand out from the other candidates on the DBA Career Center is to update your resume to show the employers why you’re the one they’re looking for.
Here are some simple tips on how to diversify yourself from the others: 1. Add your objective in the title 2. Add your LinkedIn, Twitter and Facebook links so employers can see your personality 3. Add more accomplishments to show your strengths
www.dallasbar.org/careercenter
There is no better way to prepare for trial than to research your judge through than to research your judge through
Texas Book Series! Series! Texas Lawyer’s Lawyer’s Bench Bench Book Call 800-756-8993 or shop online to order your county’s Bench Book today! www.TexasLawyerBooks.com
28 H e a d n o t e s l D a l l a s B a r A s s o ciation
January 2022
2022 Dallas Bar Association President
Kristina N. “Krisi” Kastl Personal Injury & Civil Litigation
Personal Injury Trial Lawyers Strategic. Excellence. Qualified. Caring. Referrals encouraged and appreciated.
Dallas • Fort Worth • El Paso 4144 N. Central Expressway, Suite 1000 | Dallas, Texas 75204 Tel: (214) 821-0230 | (817) 219-2053 | (855) 99-KASTL | Email: info@kastllaw.com | www.kastllaw.com