Dallas Bar Association
HEADNOTES October 2013 Volume 38 Number 10
Focus Intellectual Property Law
Anderson Tobin PLLC & Gruber Hurst Johansen Hail Shank LLP Support Access to Justice Campaign By Alicia Hernandez
The law firms of Anderson Tobin PLLC and Gruber Hurst Johansen Hail Shank LLP have each stepped up and donated $15,000 to the 2014 Equal Access to Justice Campaign benefitting the Dallas Volunteer Attorney Program. “It is a pleasure to support the Equal Access to Justice Campaign” said partner Michael K. Hurst. “We stand behind access to justice for all and DVAP and its pro bono lawyers are committed to helping people understand and protect their legal rights.” Gruber Hurst Johansen Hail Shank lawyers are a part of that effort. In addition to financially supporting DVAP, Gruber Hurst lawyers volunteer with the program, and their litigation expertise makes them a perfect match to help DVAP clients in need. Anderson Tobin PLLC, a business litigation and transactional firm of eight lawyers, is likewise committed to defending their clients with skill and passion. “Our passion for the law isn’t limited to our paying clients. We feel the entire legal system and legal profession benefits from having a strong pro bono program in our community,” said R. Scott Anderson, a name partner at Anderson Tobin. The power that lawyers have to impact our world is significant. “Extending some legal advice at a legal clinic can have a tremendous influence on someone’s life even if it is to impart some bad news such as ‘you don’t have a case and let me tell you why,’ said Sally Crawford, DBA President. “That small bit of advice can help people accept what has happened and move on with their lives.” But the giving of legal aid does not stop there. Attorneys with the program also help keep problems from becoming even worse. “Writing a letter on behalf of a pro bono client can have a tremendous impact,” said Shonn Brown, Co-Chair of the 2014 Equal Access to Justice Campaign and a partner at
Focus
Scott Anderson and Aaron Tobin of Anderson Tobin PLLC.
Gruber Hurst. “Suddenly the opposing party who has been ignoring your client is ready to talk after getting a letter from a lawyer and the situation can be resolved before it worsens.” Many of the cases are much more heart wrenching such as Joseph’s case. Joseph’s home was stolen from him by a fraudulent lender. Under the guise of getting him a home improvement loan to help him make his home wheelchair accessible, a fraudulent lender tricked Joseph into selling his home and unknowingly entering into a lease to rent and live in it. Years went by, and Joseph struggled to pay his pricey “home loan” until he received an eviction notice. Joseph was shocked and confused as to why he would be evicted from a house he owned. Only then, did he uncover what had happened to him. He sought DVAP’s assistance and volunteer attorneys Courtney Gilbert, Jon Shepherd, Rick Robinette and Cedric Allen of Alston & Bird immediately accepted Joseph’s case and put their litigation skills to work. Through their efforts in litigating and negotiating with opposing counsel, the volunteer attorneys restored the client’s right to live in his childhood home, payment free, for the rest of his life, as well as
The partners of Gruber Hurst Johansen Hail Shank LLP.
the return of rents previously paid and assistance with yearly maintenance costs. “Joseph’s case demonstrates the great power and influence that lawyers and their legal talents can have on the people in our community. The Equal Access to Justice Campaign is about providing financial support for DVAP, and that financial support directly benefits people like Joseph,” said Aaron Tobin, partner at Anderson Tobin and Co-Chair of the 2014 Campaign. “But for these fine pro bono lawyers, Joseph would have lost everything.” For more information on the Campaign or the Dallas Volunteer Attorney Program, please contact Alicia Hernandez at 214220-7499 or ahernandez@dallasbar.org. Recognition levels and donor benefits are available. In addition, all individual donors at the $1,000 level and above and all firm and corporate donors at the $5,000 level and above will be recognized in an ad in the Dallas Morning News on December 15, 2013 and in Texas Lawyer in January or February 2014. *Note – The client’s name has been changed HN to protect his confidentiality. Alicia Hernandez is the director of the Dallas Volunteer Attorney Program and the DBA director of community services. She can be reached at ahernandez@dallasbar.org.
Intellectual Property
Refurbishers Beware: Using a Manufacturer’s Trademarks By Julia Chester
The owner of a trademark or service mark controls the nature and quality of the goods and services provided under the mark. The Lanham Act, 15 U.S.C. §1051, et seq. governs the rights of trademark owners and provides remedies for infringement for both registered and non-registered marks. Under the Act, no person may use a mark or symbol that so resembles the trademark of another so as to cause likelihood of confusion between the source or origin of products or services provided
under the mark. Refurbished goods that are not under the trademark owner’s control and that are sold bearing the owner’s mark often leads to litigation over trademark infringement. A line of cases starting with the Supreme Court’s decision in Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947), hold that a merchant can sell refurbished products bearing the manufacturer’s mark, even of inferior quality, as long as the public is adequately informed of the nature of the product. What emerges from Champion and later cases is that the
Inside 3
Kim Askew Selected for Professionalism Award
7
Early Damages Assessment in Patent Cases
11 The Uniform Trade Secrets Act Comes to Texas 13 Is This Something That I Can Patent?
controlling factor in determining refurbishment cases is the likelihood of confusion, not the quality of the product. Under Champion, the inferiority of second hand products is immaterial as long as the product is clearly marked with words like “repaired,” or “used,” and the packaging bears a disclaimer. In that case, the defendant removed burned and pitted portions of spark plugs, welded new metal onto the plugs, wore away porcelain insulation through sandblasting and cleaned and painted the spark plug. The Supreme
Court held that Champion only was entitled to full disclosure because the disclosure distanced Champion from the inferiority of the product, thus lessening the likelihood of confusion. Sixty-six years later, Nitro Leisure Products, LLC v. Acushnet Co., 341 F.3d 1356 (Fed. Cir. 2003), followed Champion in a case involving refurbishment of golf balls. Acushnet, a golf ball manufacturer, asserted trademark infringement in refurbished golf balls bearing the TITLEIST trademark. continued on page 16
DBA MEMBER REMINDER: Your 2014 DBA DUES STATEMENT will be mailed to your office or home in mid-October! 2014 DBA DUES must be paid by December 31, 2013 to continue receiving ALL your member benefits. Thank you for your support of the Dallas Bar Association!
2 He a d n o t e s l D a l l a s B a r A s s o ciation
Calendar
October Events
Visit www.dallasbar.org for updates on Friday Clinics and other CLEs. Johnson Frwy., Ste. 240, Dallas, TX 75240. Parking is available in the Visitor’s Lot located in front of the entrance to Two and Three Lincoln Centre. There are several delis within the building. Food is allowed inside the Conference Center. Thank you to our sponsor Underwood Perkins, P.C. RSVP to kzack@dallasbar.org.
FRIDAY CLINICS
OCTOBER 4-BELO Noon
October 2013
“Attorney-Client Privilege Issues in Bankruptcy,” Judge Harlin Hale. (MCLE 1.00)*
OCTOBER 11-NORTH DALLAS** Noon
“The Ethical Attorney: Avoiding Malpractice and Honoring the Law,” Robert Tobey. (Ethics 1.00)* At Two Lincoln Centre, 5420 Lyndon B. Johnson Frwy., Ste. 240, Dallas, TX 75240. Parking is available in the Visitor’s Lot located in front of the entrance to Two and Three Lincoln Centre. There are several delis within the building. Food is allowed inside the Conference Center. Thank you to our sponsor Underwood Perkins, P.C. RSVP to kzack@dallasbar.org.
OCTOBER 18-BELO Noon
“Notable Trends and Changes in Construction Law Litigation: From the Anti-Indemnity Act to the Zachry Saga,” Brenda T. Cubbage. (MCLE 1.00)* RSVP to kzack@dallasbar.org.
TUESDAY, OCTOBER 1 Noon
Corporate Counsel Section “2013 Texas Legislative Wrap-Up,” Mark Vane. (MCLE 1.00)*
Tort & Insurance Practice Section “Trying The Coverage/Bad Faith Case To The Generation X And Generation Y Jury,” Brent Cooper. (MCLE 1.00)*
DAYL Attorneys Serving Troops
6:00 p.m. DAYL Board of Directors Meeting
Two-day event. To register, or for more information, log on to www.collaborativelaw.us. (Total MCLE 15.00, Ethics 2.00) Noon
MONDAY, OCTOBER 7 Noon
WEDNESDAY, OCTOBER 2
9:00 a.m. Solo & Small Firm Section “Explanation of the Various Financial Products and how to Utilize Them in your Practice,” Joe Chenoweth, Reed Schnittker and Todd Champney. (MCLE 3.50)* Noon
Employee Benefits & Executive Compensation Section “The Clients Speak Back: A General Counsel Panel on Current Topics in EB & EC,” Stephanie Edwards, Kristy Rohrshach, Nellie Strong and Lacy L. Durham, moderator. (MCLE 1.00)* Probate law Symposium. (MCLE 4.00, Ethics 1.00)* Sponsored by the Dallas Volunteer Attorney Program and DAYL Elder Law Committee. To register, email reed-brownc@lanwt.org.
Juvenile Justice Committee
Public Forum Committee
DAYL Judiciary Committee
Friday Clinic-Belo “Attorney-Client Privilege Issues in Bankruptcy,” Judge Harlin Hale. (MCLE 1.00)*
30th Annual Stephen Philbin Awards Luncheon Recognizing Excellence in Legal Reporting. Keynote speaker Aminda “Mindy” Marqués Gonzalez. (MCLE 1.00)* Tickets $45/Tables $450. Register online at www.dallasbar.org. Tax Law Section “International Tax Update,” Willie Hornberger. (MCLE 1.00)*
TUESDAY, OCTOBER 8
Family Law Section Board Meeting
Judiciary Committee
St. Thomas More Society
Real Property Law Section “Texas Title Insurance Endorsements for Commercial Real Estate Transactions,” Lee Cox. (MCLE 1.00)*
Peer Assistance Committee
TUESDAY, OCTOBER 15 Noon
Franchise & Distribution Law Section “The Intersection of Immigration and Franchise Law,” Kimberly Kinser and Cheryl Mullin. (MCLE 1.00)*
International Law Section “Brazilian Oil and Gas Market and its Upcoming Bid Rounds,” Thales de Miranda and Larry Pascal. (MCLE 1.00)*
DAYL Elder Law Committee
WEDNESDAY, OCTOBER 16 Noon
Energy Law Section Topic Not Yet Available
Health Law Section “Stark Law Self-Referral Disclosure Protocol,” JoiLee Beachler. (MCLE 1.00)*
Courthouse Committee “Learn About the New TexFile e-filing System,” Brian McGrath. (MCLE 1.00)*
Mergers & Acquisitions Law Section “Lessons Learned from Decades in the Trenches and Expert Advice on Current Hot Topics,” Jeffrey Chapman, Janice Sharry and Glenn West. (MCLE 1.00)*
Law Day Committee
Library Committee
Pro Bono Activities Committee
Non-Profit Law Study Group
DAYL Work/Life Balance Program
DAYL Lawyers Promoting Diversity Committee
WEDNESDAY, OCTOBER 9 11:30 a.m. House Committee Walk Through Noon
Family Law Section “Two-Hour Special Presentation on the Dallas District Clerks Office’s New E-File System.” (MCLE 1.00)* All members invited.
DAYL Lunch & Learn CLE. For more information, contact cherieh@dayl.com.
5:15 p.m. Legalline. Volunteers welcome. Second floor Belo.
THURSDAY, OCTOBER 10 Noon
CLE Committee
Law in the Schools & Community Committee
5:30 p.m. 22nd Annual Labor & Employment Law Evening Seminar “Recent Case Law and Statutory Developments: Employee’s & Employer’s Perspective,” Hal K. Gillespie and Mark A. Shank. (MCLE 1.50)* $20 at the event. RSVP to blarson@littler.com.
Publications Committee
Christian Lawyers Fellowship
FRIDAY, OCTOBER 4
Noon
8:30 a.m. Collaborative Law Section Ninth Annual Civil Collaborative Law Training.
Alternative Dispute Resolution Section “Mediation at the Courthouse 2012 – 2015,” Othel Bursey. (MCLE 1.00)*
Government Law Section “Punishment Evidence: The Good, The Bad and The Ugly,” Stephanie N. Mitchell. (MCLE 1.00)*
7:45 a.m. Dallas Area Real Estate lawyers Discussion Group
Noon
THURSDAY, OCTOBER 3
Construction Law Section “Panel Discussion on Zachry Construction Corporateion V. Port of Houston Authority of Harris County,” Jeff Ford, Tony Jach and Richard Thomas. (MCLE 1.00)*
MONDAY, OCTOBER 14
Business Litigation Section “The Science and Art of Winning (Or At Least Not Losing) Your Case During Jury Selection,” John Bickel and Ted Prosise. (MCLE 1.00)*
6:00 p.m. Home Project Committee
Noon
Trial Skills Section Topic Not Yet Available
Noon
5:30 p.m. Bankruptcy & Commercial Law Section “Chapter 15: Theory and Practice,” Leif Michael Clark and Adam Swick. (MCLE 1.00)*
8:30 a.m. Collaborative Law Section Ninth Annual Civil Collaborative Law Training. Two-day event. To register, or for more information, log on to www.collaborativelaw.us. (Total MCLE 15.00, Ethics 2.00)
5:15 p.m. Legalline. Volunteers welcome. Second floor Belo.
THURSDAY, OCTOBER 17 Noon
Appellate Law Section “Pre-Originalism,” J. Carl Cecere. (MCLE 1.00)*
Transition to Law Practice CLE “Civility in the Legal Profession,” Justice Molly Francis, Laura Geisler, Frank Stevenson, Paul Stafford and Justice Douglas Lang, moderator. (Ethics 1.00)*
Minority Participation Committee
Christian Legal Society
DAYL Animal Welfare Committee
Dallas Gay and Lesbian Bar Association
3:30 p.m. DBA Board of Directors Meeting
FRIDAY, OCTOBER 18 Noon
6:00 p.m. J.L. Turner Legal Association
FRIDAY, OCTOBER 11
Friday Clinic-North Dallas** “The Ethical Attorney: Avoiding Malpractice and Honoring the Law,” Robert Tobey. (Ethics 1.00)* At Two Lincoln Centre, 5420 Lyndon B.
T HE P OWER OF THE P RESS : F REEDOM , E THICS & R ESPONSIBILITY Thursday, November 7, 6:00 p.m. at Belo | ETHICS 1.00
Friday Clinic-Belo “Notable Trends and Changes in Construction Law Litigation: From the Anti-Indemnity Act to the Zachry Saga,” Brenda T. Cubbage. (MCLE 1.00)* RSVP to kzack@dallasbar.org. Criminal Justice Committee CLE “The Michael Morton Act: Criminal Defense and Prosecution Perspectives,” Brad Lollar and Russell Wilson. (MCLE 1.00)* Transition to Law Practice Committee
MONDAY, OCTOBER 21
8:30 a.m. Justice in Education Symposium Registration $35, includes lunch. RSVP to ahernandez@dallasbar.org. Noon
Labor & Employment Law Section “Preserving Error: Amaze Your Friends, Astonish Your Enemies, Astound Your Judge,” Richard Phillips and Scott Stolley. (MCLE 1.00)*
Senior Lawyers Committee
sevans@dallasbar.org.
Celebrate Pro Bono Week—“Family Law and Immigration Issues.” (MCLE 1.00)* Co-sponsored by the Dallas Volunteer Attorney Program and J.L. Turner Legal Association
American Immigration Lawyers Association
3:30 p.m. Celebrate Pro Bono Week—“DVAP Small Business Clinic.” Co-Sponsored by the Dallas Volunteer Attorney Program, Texas C-Bar and Association of Corporate Counsel. 6:00 p.m. Annual Evening Ethics Program “Annual Evening Ethics Program,” Nancy Thursby, Bob Davis, Frank E. Stevenson II, Charlie Blau, John G. Browning, Hon. Royal Furgeson and Justice Kerry FitzGerald, moderator. DBA members: $20, Non-members: $90. RSVP required, contact kzack@dallasbar.org. (Ethics 3.00)*
WENDESDAY, OCTOBER 23 Noon
5:00 p.m. DVAP Belo Legal Clinic. Volunteers needed. For more information, contact reed-brownc@lanwt.org. 6:00 p.m. Happy Hour Benefitting Campaign for Equal Access to Justice at Four Corners Brewery (423 Singleton Blvd.) Sponsored by DAYL, DAABA, DHBA, JLTLA and DWLA
THURSDAY, OCTOBER 24 Noon
Criminal Law Section Topic Not Yet Available
Environmental Law Section “Hot Topics and Initiatives of the TCEQ,” Toby Baker. (MCLE 1.00)*
Mentoring Committee
6:30 p.m. An Evening With Bill Bradley Benefiting the Sarah T. Hughes Diversity Scholarships. Hosted by the Dallas Bar Foundation. Tickets $300. To purchase, log on to www. dallasbarfoundation.org or call (214) 220-7487.
FRIDAY, OCTOBER 25
9:00 a.m. Celebrate Pro Bono Week—“Wills Intake Clinic at The Senior Source.” Co-sponsored by the Dallas Volunteer Attorney Program, Hunton & Williams LLP and American Airlines Noon
Intellectual Property Law Section “Trademark/Trade Dress/Product Configuration Topic,” Paul Reilly. (MCLE 1.00)*
DAYL CLE Committee
MONDAY, OCTOBER 28 Noon
Computer Law Section “Partly Sunny with a Chance of Rain” II: Forecasting the Legal Issues in Cloud Computing,” Tom A. Kulik. (MCLE 1.00)*
Securities Section “Securities Arbitration: What It Is and How To Succeed While Doing It,” Corbet Bryant. (MCLE 1.00)*
DAYL Solo & Small Firm Committee
TUESDAY, OCTOBER 29 Noon
Carolyn Barta SMU Division of Journalism
Dr. Rita Kirk Center of Ethics, SMU
Shawn Williams Media Relations, Dallas Police Department
Free Event. RSVP to jsmith@dallasbar.org. Sponsored by the Media Relations Committee & Press Club of Dallas
Noon
Probate, Trust & Estate Law Section “Arbitration Clauses in Estate Planning Documents,” Keith Novick and Bill Whitehill. (MCLE 1.00)* Public Forum Committee “Affordable Care Act: What You Need to Know,” Joel Allison, Den Bishop and Cheryl Camin, moderator. Public Invited. RSVP to
DAYL Aid to the Homeless Committee
6:00 p.m. Dallas Hispanic Bar Association Meeting
WEDNESDAY, OCTOBER 30 Noon
Morris Harrell Professionalism Committee “Reflections on the Texas Lawyers Creed,” Sally Crawford, Justice Douglas S. Lang, Judge Craig Smith and Mike Gruber. (Ethics 1.25)*
DAYL Equal Access to Justice Committee
DAYL Foundation Board Meeting
Municipal Justice Bar Association
5:30 p.m. Pro Bono Awards Help the Dallas Volunteer Attorney Program celebrate! RSVP to popee@lanwt.org.
THURSDAY, OCTOBER 31
9:00 a.m. DBA Blood Drive. Save a life—donate today! For more information, contact mjohnson@dallasbar.org. Noon
TUESDAY, OCTOBER 22 Chip Babcock Jackson Walker LLP
Celebrate Pro Bono Week—“Veterans’ Legal Issues.” (MCLE 1.00)* Sponsored by the Dallas Volunteer Attorney Program
Collaborative Law Section “Using Collaborative Law in Loan Work-Out Situations to Preserve Collateral Value by Avoiding Litigation,” Robert A. Miller, Don Reavis and John Wedemeyer. (MCLE 1.00, Ethics 0.25)*
FRIDAY, NOVEMBER 1 Noon
Friday Clinic-Belo “How to Effectively Use the Internet to Market a Law Firm Within the Boundaries of the State Bar Rules,” Chad Ruback. (MCLE 1.00)*
3:30 p.m. DBA Annual Meeting
If special arrangements are required for a person with disabilities to attend a particular seminar, please contact Cathy Maher at 214/220-7401 as soon as possible and no later than two business days before the seminar. All Continuing Legal Education Programs Co-Sponsored by the DALLAS BAR FOUNDATION. *For confirmation of State Bar of Texas MCLE approval, please call Teddi Rivas at the DBA office at 214/220-7447. **For information on the location of this month’s North Dallas Friday Clinic, contact KZack@dallasbar.org.
October 2013
D al l as Bar A ssoci ati on l Headnotes 3
Kim J. Askew Selected for Professionalism Award by Jessica D. Smith
Professionalism: the skill, good judgment, and polite behavior that is expected from a person who is trained to do a job well. Kim J. Askew personifies the definition of professionalism. A graduate of Georgetown University Law Center who clerked for the late U.S. District Judge Jerry Buchmeyer, Ms. Askew, a Partner at K&L Gates, is one of the state’s leading trial lawyers. She represents clients in complex commercial and employment litigation throughout the country. “Kim epitomizes professionalism on every level through her service to the profession, the bar and the community,” said DBA President Sally Crawford. “To know Kim is to know what it means to be a true professional. She is a proven leader. This accomplished lawyer has served as a mentor and role model to lawyers, young and old, in Dallas and around the country. We are fortunate to have Kim as one of our own.” Ms. Askew exudes the qualities of professionalism and it is easy to see why she was selected to receive the DBA’s 2013 Professionalism Award, which recognizes the “attorney who best exemplifies, by conduct and character, truly professional traits who others seek to emulate and who all in the bar admire.” “We are advocates, counselors and advisors who work to protect the life, liberty and property of our clients,” said Ms. Askew. “We represent the poor. We lead in our communities.” Ms. Askew is a national leader in the profession. This trailblazer was the first African American lawyer to chair the Board of Directors and Section of Litigation of the State Bar of Texas and the Section of Litigation of the American Bar Association. She was awarded a Presidential Citation for her work on the State Bar Board. She is currently the Chair of the DBA’s Morris Harrell Pro-
fessionalism Committee and a member of the DBA Judiciary Committee. A former member of the DBA Board of Directors, she has been the chair or board advisor to the Minority Participation Committee and the Strategic Planning Committee. She served as the DBA’s representative to the ABA House of Delegates for over a decade. She is on the Council and Membership Committee of the American Law Institute. She especially enjoys being a Kim J. Askew Master in the Patrick E. Higginbotham American Inn of Court. She has held numerous leadership positions in the American Bar Association, including service as chair of the Standing Committee on the Federal Judiciary, where she the led the ABA evaluations for the nominations of Justices Sonia Sotomayor and Elena Kagan to the U.S. Supreme Court. Throughout her career, she has focused on issues of importance to women lawyers and lawyers of color. She currently serves on the Board of Directors of the National Women’s Law Center and the NAWL Foundation, and formerly served on the ABA Commission on Women in the Profession and as a liaison to the ABA Commission on Opportunities for Minorities in the Profession. She is actively involved in the Dallas community through her work on the boards of the Citizens Council of Dallas, the Dallas Museum of Art, Baptist Foundation of Texas, Dallas Theater Center and St. Philips School. She has served on the Georgetown University Board of Regents and is currently a member of the Board of Visitors of the Law Center, which awarded her its Alumnae Achievement Award in 1998.
Leading By Example
her childhood in Savannah, Georgia. Her parents focused on the importance of education and the need to excel. Traits she took to heart. After graduating summa cum laude from Knoxville College, she completed her J.D. at Georgetown Law in 1983 and clerked for Judge Buchmeyer before beginning her career with Hughes & Hill, now K&L Gates, as one of the first African American women lawyers to join a major Dallas law firm. She has handled complex litigation throughout her career, from the Ross Perot campaigns of the 1990s to significant commercial and employment cases today. She continues to write and speak on discovery, evidentiary, business litigation and employment law topics. “I like being a lawyer. We are problemsolvers. Lawyers make a difference,” said Ms. Askew. Making a difference with style and a professional attitude is what she does. Whether you see her in action in the courtroom, testifying before Congress or at a local function, Ms. Askew portrays the
ultimate in professionalism. She has helped open doors in the profession for others. She always has a kind word. She leads by example. Her talent and professionalism have been recognized throughout the profession and she has ample achievements on record. She has been named one of the Top 25 Texas Lawyers of the Past Quarter Century. Named to Law Dragon’s list of the Nations’ Most Powerful Employment Attorneys, she has also been listed among Best Lawyers in America, Best Lawyers in Dallas, Extraordinary Women in Texas Law, a Texas Super Lawyer and many more. Other highlights of her many accolades include the State Bar of Texas Section of Litigation’s Luther Soules III Award for professionalism and outstanding service to the profession, DBA’s Martin Luther King, Jr. Justice Award, J.L. Turner Legal Association’s Trailblazer Award and the Dallas Women Lawyers Association’s’ Louise Raggio Award. With her skills, judgment and goodwill to others, Ms. Askew is a true professional who is emulated and admired throughout HN the bar and profession. Jessica D. Smith is the Communications/Media Director of the Dallas Bar Association. She can be reached at jsmith@dallasbar.org
Professionalism Tip This year is the 25th anniversary of one of the Northern District’s most important opinions. Dondi reminds us that, “...cooperation between opposing counsel is essential to the efficient operation of our justice system.” Dondi Properties Corp. v. Commerce Sav. & Loan Ass’n, 121 F.R.D. 284, 292 (N.D. Tex. 1988) (en banc).
Becoming an attorney was a life-long dream—one that began in the early days of
Provided by the DBA Professionalism Committee
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4 He a d n o t e s l D a l l a s B a r A s s o ciation
October 2013
Headnotes
President's Column
Published by: DALLAS BAR ASSOCIATION
Back to School By sally crawford
Fall brings with it the excitement of going back to school. No matter how old we are, the first weeks of the new school year bring back memories of our youth and the sights and sounds of learning. New shoes, new books, new friends—what fun! Ah to be young again!! But wait, as lawyers, young and old, we have the opportunity to continue going to school year round through continuing legal education. I can see some of you cringing at the thought. So perhaps not all of us enjoyed school that much. However, there is a direct correlation between education and happiness. So smile the next time you attend a CLE program. Seriously, I think we all realize that in our profession it is mandatory that we keep up with changes and new developments in the law on a regular basis if we are going to be able to serve our clients adequately. For those of you, like me, who were licensed in 1986 or later, you may not realize that continuing legal education was not always mandatory for lawyers in Texas. Prior to 1986, lawyers were encouraged by the State Bar to remain current on developments in the law but CLE was not mandatory. As a result of the work of Jim D. Bowmer and Franklin Jones, Jr., both past presidents of the State Bar of Texas, the Texas Supreme Court established the State Bar College in 1981. Mr. Bowmer and Mr. Jones believed that lawyers should be given credit for attending CLE programs and they urged the State Bar to adopt the concept of a college for continuing legal education. Through a sub-committee on continuing legal education of the State Bar, their ideas were crystallized and put into action. The result was the creation of the State Bar College. Pursuant to the 1981 order of the Texas Supreme Court, the purpose of the College was: 1. To recognize lawyers who maintain and enhance their professional skills and the quality of their service to the public by significant voluntary participation in continuing legal education; 2. To sponsor or otherwise assist in the presentation of programs of significant merit and widespread relevance and applicability, such as programs on professionalism and legal ethics; and 3. To promote among members of the Bar and the general public the educational and public purposes of the College and its members. Remember that there was no mandatory requirement for continuing legal education at that time. All CLE was voluntary but both the courts and the bar acknowledged the importance of continuing legal education for the profession. In 1986 rules requiring Texas lawyers to attend a minimum of 15 hours of continuing legal education were instituted by the State Bar. In response, the State Bar College changed its membership rules to require 80 hours of CLE over a three-year period or 45 hours of CLE in a single year in order to join the Col-
lege. To maintain membership, College members are required to attend 30 hours of continuing legal education each year. College members are recognized for going above and beyond the minimum educational requirements necessary to be licensed as a lawyer in the State of Texas. In fact, in 2001 the Texas Supreme Court amended its 1981 order establishing the College to add the following to the purposes of the College: “To recognize and encourage outstanding service to the legal profession and the public.” In 2001 the Supreme Court also directed the College to be incorporated as a Texas non-profit corporation. As a result, in February 2002 the College was incorporated and became a 501(c)(3) stand-alone bar-related entity. I am proud to say that I have been a member of the College for over 20 years, serving as the chair of the board in 2009-2010. One of the reasons I have been able to maintain my membership in the College, as have many other lawyers in the Dallas area, is because of the amazing number of quality CLE programs offered by the Dallas Bar each year. Last year the DBA sponsored almost 400 CLE courses, most of which were offered for free. The sections and committees of the bar present excellent CLE programs on every topic of law at convenient times (usually lunch and evening hours) so that the programs are accessible to all members of the bar. The sister bars also host regular CLE programs. Most programs are held at the Belo but there is also a North Dallas Clinic held on the second Friday of each month at noon. Of course there are other CLE programs sponsored by the bar such as the annual DBA Bench Bar Conference, the Bankruptcy Section In-Town Bench Bar and the Family Law Section Bench Bar, which are available to bar members for a fee. All of these CLE programs allow members of the Dallas Bar to conveniently fulfill their obligation to obtain a minimum of 15 hours of continuing legal education and more each year, including the required three hours of legal ethics and professional responsibility. As members of our proud profession, we must always be mindful of our role as leaders in our community and our responsibility to the legal profession. The bar encourages all members to maintain the highest levels of performance and professionalism. One important component of that responsibility is continuing to educate ourselves on new developments and changes in the law. As DBA president, I am extremely proud of the role that the DBA plays in maintaining the professionalism of our members through continuing legal education. I know that continuing legal education has certainly enabled me to become a better lawyer. I challenge each of you to do more than the mandatory 15 hours of CLE each year and to consider becoming a member of the State Bar College. Keep HN learning and keep smiling!
T HE T RIAL OF L EE H ARVEY O SWALD F RIDAY , O CTOBER 25, 2013
Toby Shook Defense Attorney Shook, Gunter & Wirskye
Judge Martin Hoffman Bill Wirskye Presiding Judge Prosecutor 68th District Court Shook, Gunter & Wirskye
2:00-5:00
P.M.
C ENTRAL J URY R OOM G EORGE L. A LLEN , S R . C OURTS B UILDING
2013 Sustaining Members of the Dallas Bar Association
The DBA sincerely appreciates the support of its Sustaining Members whose financial contributions enhance the preservation of the historic Belo Mansion. Ben Abbott Ben Abbott, P.C.
Justin Martin The Godsey Martin Law Firm, P.C.
Randolph D. Addison Addison Law Firm P.C.
Beirne, Maynard & Parsons, L.L.P.
Frederick J. Barrow The Godsey Martin Law Firm, P.C.
Mike McKool, Jr. McKool Smith P.C.
David Carlock Carlock-Gormley-Hight
Tahira Khan Merritt Tahira Khan Merritt PLLC
Al Ellis Sommerman & Quesada, L.L.P.
Nancy Arnole Nasher NorthPark Development Company
David L. Godsey The Godsey Martin Law Firm, P.C.
Richard D. Pullman Kessler Collins, P.C.
Hon. Bonnie L. Goldstein Bonnie Lee Goldstein, P.C.
Michael L. Riddle Middleberg, Riddle & Gianna
James J. Hartnett, Jr. The Hartnett Law Firm
Scott R. Seideman The Seideman Law Firm
Houston E. Holmes, Jr. Attorney at Law
Daniel J. Sheehan, Jr. Daniel Sheehan & Associates, L.L.P.
Paul M. Hood Paul M. Hood, P.C.
F REE E VENT . MLCE 3.00 RSVP TO JSMITH @ DALLASBAR . ORG
Kathleen E. Irvin Attorney at Law Justice Tom James Kristina N. Kastl Kastl Law, P.C.
Sawnie A. McEntire
Darryl J. Silvera The Silver Firm M.J. Trusty Guaranty Bond Bank Peter S. Vogel Gardere Wynne Sewell LLP
2101 Ross Avenue Dallas, Texas 75201 Phone: (214) 220-7400 Fax: (214) 220-7465 Website: www.dallasbar.org Established 1873 The DBA’s purpose is to serve and support the legal profession in Dallas and to promote good relations among lawyers, the judiciary, and the community. OFFICERS President: Sally L. Crawford President-Elect: Scott M. McElhaney First Vice President: Brad C. Weber Second Vice President: Jerry C. Alexander Secretary-Treasurer: John A. Goren Immediate Past President: Paul K. Stafford Directors: A. Shonn Brown (At-Large), Rob Crain (Chair), Wm. Frank Carroll, Hon. King Fifer (Judicial At-Large), Laura Benitez Geisler, Hon. Martin Hoffman, Michael K. Hurst (Vice Chair), Michele Wong Krause, Angelina LaPenotiere (President, Dallas Hispanic Bar Association), Karen McCloud, Christina McCracken (At-Large), Mandy Price (President, J.L. Turner Legal Association), Sarah Rogers (President, Dallas Association of Young Lawyers), Mary Scott, Scott Stolley, Diane M. Sumoski, Robert L. Tobey, Aaron Tobin and Jennifer Wang (President, Dallas Asian American Bar Association). Advisory Directors: Tatiana Alexander (President-Elect, J.L. Turner Legal Association), Mey Ly (President-Elect, Dallas Association of Young Lawyers), Sakina Rasheed (PresidentElect, Dallas Asian American Bar Association) and Elisabeth A. Wilson (President-Elect, Dallas Hispanic Bar Association). Delegates, American Bar Association: Rhonda Hunter, Hon. Elizabeth Lang-Miers Directors, State Bar of Texas: Lawrence Boyd, Frank Carroll, Andy Payne, Tino Ramirez and Ike Vanden Eykel HEADNOTES Executive Director/Executive Editor: Catharine M. Maher Communications/Media Director & Headnotes Editor: Jessica D. Smith In the News: Judi Smalling Art Director: Thomas Phillips Display Advertising: Jessica Smith Classified Advertising: Judi Smalling PUBLICATIONS COMMITTEE Co-Chairs: Dawn Fowler and Lea Dearing Vice-Chair: Jared Slade Members: Timothy Ackermann, Kevin Afghani, Vincent Allen, Natalie Arbaugh, Favad Bajaria, Matthew Baker, Martha Beard-Duncan, Jody Bishop, Lisa Blackburn, Jason Bloom, Eric Blue, Bobby Braxton, Kandice Bridges, William Brown, Eliot Burriss, Stacie, Cargill, Lance Caughfield, Sally Crawford, James Crewse, Joel Crouch, G. Edel Cuadra, Walter Dean, David Dodds, Adam Dougherty, David Dummer, Paul Garrett, Megan George, Jenny Givens, Jennifer Gjesvold, Melanie Glover, James Gourley, Virginia Greenberg, Jerry Hall, Susan Halpern, William Hammel, Jeremy Hawpe, Zachary Hilton, Kelli Hinson, Zachary Hoard, Tyler Hokanson, James Holbrook III, Ezra Hood, Mary Louise Hopson, Dyan House, Michael Hurst, Michelle Jacobs, Jessica Janicek, Taylor Jerri, Soji John, Douglas Johnson, Yoon-Joo Jung, Adam Kielich, Robert Kisselburgh, Lissa Kivett, Michelle Koledi, Susan Kravik, Shruti Krishnan, Norman Lofgren, Mallory Loudenback, Sixuan Lu, Margaret Lyle, Andrew Mayo, Ashley Mayya, Jennifer McCollum, Scott McElhaney, Elizabeth McShan, John McShane, Paige Montgomery, Nick Nelson, Yvette Ostolaza, Seth Phillips, Kirk Pittard, Irina Plumlee, Laura Anne Pohli, Robert Ramage, Gabriel Reyes, Morgan Richards, Carl Roberts, Richard Salgado, Brendan Sansivero, Brooke Schultz, Isabel Segarra, Yon Sohn, Thad Spalding, Paul K. Stafford, Jacob Stasny, Jeanette Stecker, John Stevenson, Scott Stolley, Brian Stork, Michael Sukenik, Billye Summers, Christine Tamer, Kristopher Tate, Robert Tobey, Pryce Tucker, David Urteago, Peter S. Vogel, Suzanne Westerheim and Andrew Wirmani DBA & DBF STAFF Executive Director: Catharine M. Maher Accounting Assistant: Shawna Bush Communications/Media Director: Jessica D. Smith Controller: Sherri Evans Director of Community Services: Alicia Hernandez Events Coordinator: Rhonda Thornton Executive Assistant: Mary Ellen Johnson Executive Director, DBF: Elizabeth Philipp LRS Program Assistant: Biridiana Avina LRS Interviewer: Marcela Mejia Law Related Education Coordinator: Kimberlynn Taylor-Corbin Membership Coordinator: Kimberly Watson Projects Coordinator: Kathryn Zack Publications Coordinator: Judi Smalling Receptionist/Staff Assistant: Teddi Rivas DALLAS VOLUNTEER ATTORNEY PROGRAM Director: Alicia Hernandez Managing Attorney: Michelle Alden Volunteer Recruiter: Chris Reed-Brown Paralegals: Whitney Breheny, Miriam Caporal, Tina Douglas, Andrew Musquiz, Carmen Perales Program Assistant: Patsy Quinn Copyright Dallas Bar Association 2013. All rights reserved. No reproduction of any portion of this publication is allowed without written permission from publisher. Headnotes serves the membership of the DBA and, as such, editorial submissions from members are welcome. The Executive Editor, Editor, and Publications Committee reserve the right to select editorial content to be published. Please submit article text via e-mail to jsmith@dallasbar.org (Communications Director) at least 45 days in advance of publication. Feature articles should be no longer than 750 words. DISCLAIMER: All legal content appearing in Headnotes is for informational and educational purposes and is not intended as legal advice. Opinions expressed in articles are not necessarily those of the Dallas Bar Association. All advertising shall be placed in Dallas Bar Association Headnotes at the Dallas Bar Association’s sole discretion. Headnotes (ISSN 1057-0144) is published monthly by the Dallas Bar Association, 2101 Ross Ave., Dallas, TX 75201. Non-member subscription rate is $30 per year. Single copy price is $2.50, including handling. Periodicals postage paid at Dallas, Texas 75260. POSTMASTER: Send address changes to Headnotes, 2101 Ross Ave., Dallas, TX 75201.
October 2013
Focus
D al l as Bar A ssoci ati on l Headnotes 5
Intellectual Property
7 Things To Know About Trademark Registrations By Tim Ackermann
The federal (and state) trademark registration systems offer substantial advantages. Here are seven tips to the Texas registration system you might not know exist.
1. Prima Facie Facts
Shifting the burden onto your opponent is a good start. So, a key point in discussing trademark registrations under federal law (the Lanham Act, 15 U.S.C. § 1051 et. seq.) is that a certificate of registration is prima facie evidence of facts supporting trademark rights (unless registered on the “Supplemental Register”). Under Sections 1057(b) and 1115(a), a registration is admissible evidence that the mark is a valid trademark and owned by the identified owner, and that the mark is registered for the listed goods or services. And it is evidence of the owner’s exclusive right to use it for those goods or services.
2. Nationwide Use & Priority
Successfully filing a mark under the Lanham Act gives the owner a nationwide precedence that might otherwise be impossible to achieve. Federal registration grants constructive use and priority, nationwide, for the mark, excepting any prior users. This is important because trademark rights ordinarily only accrue through use and only for the area where that use occurs. And priority—who used the mark first in a geographic area—is used to resolve conflicts between owners. Under Section 1057(c), a filed application establishes nationwide use and pri-
ority as of filing (subject to prior users or filers), if the registration is granted. That is, the owner has constructively used the trademark nationwide, even if its actual operations are more limited. This system can also extend that early constructive use. A registration owner can have a date for priority of use preceding any actual use of the trademark. Registration of a trademark is, ordinarily, dependent upon the mark being used. But under Section 1051(b), one may apply based upon the good faith intent to use a trademark in the future. If registered, such applications also establish constructive use and priority as of their filing date, even though that date precedes actual use.
3. Domain Name Disputes
Trademark registrations also protect domain name rights. Many domain name disputes concern a domain alleged to be confusingly similar to a trademark. These disputes may be resolved under the UDRP (Uniform Domain-Name Dispute Resolution Policy), a form of arbitration. The complainant’s first step is proving its rights in that trademark. Federal registrations generally pass that first test, as they establish both ownership and validity of the trademark. On the other hand, the accused party in a UDRP can defend itself by showing it has rights or a legitimate interest in its domain name. A preexisting federal registration is strong evidence for such rights.
prevent their importation. Importing such goods bearing a registered mark is prohibited by Section 1124, allowing Customs & Border Patrol to exclude them.
5. Renewal of Registrations
Trademark rights can last forever (unlike patents) but registrations do not. Federal registrations are for 10-year terms, but will be canceled without a Section 1058 affidavit showing use (or special circumstances showing an excuse for non-use). Those affidavits are first due between the 5th and 6th anniversaries of registration. They are due again between the 9th and 10th anniversaries (and every 10 years thereafter). A Section 1059(a) application for renewal is also due during that same window.
6. Unregistered Trademarks
Surprisingly, in addition to the advantages that the Lanham Act affords registered trademarks, that law also protects common-law marks. Under Section 1125(a), an injured party can seek damages for a broadly-defined set of circumstances generally known as “unfair competition.” That section offers protection from: (a) use of “any word, term, name, symbol, or device;” (b) false or misleading
designations of a good or service’s source; and (c) false or misleading descriptions or representations of fact. There is also a second prong. The asserted unfair competition must: (a) be likely to cause confusion, mistake or deception about the user or its goods or services; or (b) misrepresent the user’s (or someone else’s) goods, services or commercial activities in commercial advertising or promotion. Thus, the Lanham Act also helps protect common-law trademarks.
7. Texas Trademark Registrations
The Texas trademark registration system is found in Chapter 16 of the Business & Commerce Code, and has many similarities to the federal system. For instance, there are applications examined, and registrations issued, by the Secretary of State, similar prima facie evidentiary rights (for Texas alone, of course), and renewals (5-year terms). A major advantage missing, however, are the federal system’s constructive use and priority rights and ability to file applications based upon the good HN faith intent to use a mark.
Tim Ackermann practices patent, trademark and copyright law at The Ackermann Law Firm. He was Co-Chair of the Publications Committee of the Dallas Bar Association from 2009-2011. He can be contacted at tim@ackermannlaw.com.
4. Infringing Imports
One way to prevent competition by infringing goods—i.e. unauthorized products bearing the trademark—is to
BELO LEGAL CLINIC Wednesday, October 23 ~ From 5 to 8 p.m. At the Belo Mansion VOLUNTEERS NEEDED! Bilingual attorneys and support (Spanish Language) are needed. Lawyers report at 6:15 p.m. to provide legal advice to those who cannot afford an attorney. Paralegal and law student volunteers report at 5:00 p.m. to perform intake/financial screening and assist with clinic coordination. Mentor-attorneys will be available to assist. Sponsored by the Dallas Volunteer Attorney Program, a joint project of the Dallas Bar Association and Legal Aid of NorthWest Texas. To volunteer, email reed-brownc@lanwt.org.
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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
October 2013
DBA Receives ABA Partnership Award Staff Report
The Dallas Bar Association was honored with a 2013 American Bar Association Partnership Award at the ABA’s Annual Meeting in August for its work on the 2012 DBA Diversity Summit. The ABA Partnership Awards Program salutes bar association projects directed at increasing the participation and advancement of lawyers of color as well as other underrepresented constituents. Rhonda Hunter, Past President of the Dallas Bar Association, served as the Chair of the Summit. Maricela Moore and Courtney Barksdale served as CoVice Chairs. The Diversity Summit Planning Committee members included Arthur Anthony, Fred Barrow, Vicki Blanton, Shonn Brown, Altresha Burchett-Williams, Winifred Cannon, Camille Corbin, Victor Corpuz, Sally Crawford, Caren des Vignes, Adrienne Dominquez, Dimitri Dube, Al Ellis, Hilda Galvan, Robin Gant, Rocio Garcia, Hon. Teresa Guerra Snelson, Sean Hamada, Glenwood Hill, III, Hon. Martin Hoffman, Tonya Holt, Hon.
Accepting the ABA Partnership Award was (left to right): Sally Crawford, Rhonda Hunter, Cathy Maher and Michele Wong-Krause.
Douglas S. Lang, Tom Mighell, Audrey Moorehead, Eunice Kim Nakamura, Cedric Powell, Gerald Roberts, Hope
Dear friends, After more than 14 months of planning and preparation, Texas A&M University School of Law began operations on August 12, 2013. Just days later, we welcomed 250 new Aggie law students — a talented and diverse class ready to make history. Complementing its extensive degree offerings with a law school has been a long-standing goal of Texas A&M University. In choosing to acquire Texas Wesleyan University School of Law, Texas A&M valued the achievements of the law school faculty, the strength of the academic program, and the success and professionalism of the school’s graduates. By affiliating with a comprehensive Tier One institution, we expect to enhance the quality of the law school’s educational program and to produce top quality graduates who embody the core values of Texas A&M: integrity, respect, loyalty, selfless service, leadership, and excellence. As we prepare our students to become not just the lawyers, but the leaders of tomorrow, we are mindful that they will need a range of skills and knowledge to succeed. That is why we continue to enhance our curriculum to add new clinical opportunities, advanced drafting classes, and courses that focus on real world ethical challenges. In an effort to enhance our students’ global perspective, we are also preparing to launch new study abroad programs in conjunction with Texas A&M. It is an exciting time for the law school and for the Dallas/Fort Worth community, where we live, work, and serve. We look forward to updating you as we continue our transition. In the meantime, I invite you to attend one of the events listed to the right or stop by the law school for a visit. Gig ’em!
Shimabuku, Emmanuel Socks, Camille Stearns Miller, Richard Stewart, and Angela Washington.
Calendar of Events Fall 2013 October 9
Fort Worth Business Press Power Attorneys Dinner Event, City Club, Fort Worth
October 25
Law Review, Intellectual Property Symposium, Law School
Teach the Law to Dallas ISD Students–Nov. 18-22 Volunteers are needed to teach in Middle School and High School classrooms this fall. Times and class sizes vary by school. Curriculum will be made available Sign-up no later than November 5. Please email your contact information and available volunteer date(s)/times to: ktaylor@dallasbar.org.
November 7
Arlington Happy Hour
November 15
The Journal of Real Property Law, Wind Energy Symposium, Law School
November 17-18
Swearing-in Ceremony & Reception, Austin, Texas
November 19 Austin CLE
December 5
Alumni Holiday Lunch, Joe T. Garcia’s, Fort Worth
December 13 Aric Short Interim Dean and Professor of Law Texas A&M University School of Law
The purpose of the DBA Diversity Summit was to promote diversity and inclusion in all sectors of the legal community, to develop best practices to increase diversity in the legal profession, and to discuss innovative models for increasing diversity in the legal profession. Following the summit, the planning committee developed a final report, including best practices, and the Dallas Bar Association Board adopted the report on June 19, 2013. The final report included information on best practices, including: • There must be a mandate from the top. • Monitor how firms are doing by paying attention to the annual Diversity Task Force Report Card. • Require that in-house counsel attend diversity seminars and come back with names of potential minority outside counsel or candidates to hire • Hire certified minority and womenowned law firms and small firms To view the complete report, and for more information about the Diversity Summit, visit www.dallasbar.org/diversi HN tysummit.
Graduation & Reception First United Methodist Church, Fort Worth
Celebrating 31 Years! DVAP’s Pro Bono Awards Celebration Save the Date: Wednesday, October 30, 5:30 p.m. The Pavilion at the Belo Mansion Hosted by the Dallas Volunteer Attorney Program
TAMU Law DBA HEADNOTES Ad Oct. 2013 FINAL.indd 1
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Oct o b e r 2 0 1 3
Focus
D al l as Bar A ssoci ati on l Headnotes 7
Intellectual Property
Early Damages Assessment in Patent Cases by Carmen Bremer
Increasingly, federal courts are focusing on the damages aspects of patent cases as a means of narrowing or disposing of high-dollar disputes. In 2011, Federal Circuit Chief Judge Rader emphasized to district court judges at the Eastern District of Texas Bench Bar Conference that all patents, and all patent cases, are not created equal and beseeched them to ascertain an approximate dollar value early in the case so that “a billion-dollar case gets a ‘billion-dollars’ worth’ of process…and a thousand-dollar case gets…well, less.” Judge Rader recommended that district court judges use their authority during case-management conferences to conduct a “searching inquiry” into the parties’ damages models to better understand the worth of the contested technology and its implications in the marketplace. This not only provides an opportunity to tailor standard procedures to fit the case and its significance, he explained, but it can also provide “a realistic evaluation of both Defendant’s exposure and Plaintiff’s damages calculation and further promote early and effective mediation.” Further signaling the importance of early damages assessment in patent cases, Seventh Circuit Judge Richard Posner, sitting by designation in the Northern District of Illinois,
recently dismissed Apple’s and Motorola’s infringement claims against each other in one of the high-profile “smart phone wars” after finding that both side’s damages experts applied flawed methodologies that did not comport with economic realities. Because the ruling came well after the close of discovery and just days before trial was set to begin, it was too late for either party to offer an alternative damages theory. In light of these developments, parties to patent litigation may consider motion practice relating to damages issues early in their cases to educate the court about the value of the case and any key damages issues. This approach also offers an opportunity for litigants to obtain early guidance as to which damages theories the court is likely to allow before expending significant resources pursuing a particular theory or, worse, locking themselves into a theory they may not ultimately be permitted to present to the jury. Consistent with Judge Rader’s guidance, litigants who desire early consideration of damages issues in their cases can signal this approach as part of their first case management conference statement, where the parties typically inform the court of their respective views of the case and issues they believe the court will need to decide. If the parties expect to dispute, for example, whether the patentee’s damages expert
can appropriately include the entire market value of a software application in the royalty base when only one feature is accused of infringement, one or both parties may include application of the entire market value rule as an issue in the case management conference statement and request the opportunity to file an early summary judgment motion addressed to that issue. The court in such a case may be willing to make an early dispositive ruling to bring the parties’ respective valuations of the case closer together and thereby encourage settlement. Another common damages issue in patent cases that may lend itself to early dispositive resolution is the availability of acceptable noninfringing alternatives. For instance, in the Apple v. Motorola case mentioned above, Judge Posner did not allow Apple to present one of its damages theories to the jury because its expert failed to consider that, rather than paying millions to license Apple’s patent covering the “tap for next item” heuristic used by Amazon’s
Kindle Reader application, Motorola might simply drop the feature from its devices or ship them without the Kindle Reader application pre-loaded. Judge Posner’s ruling illustrates how litigants might benefit from testing the viability of a theory that assumes the presence or absence of non-infringing alternatives sooner in the case rather than later if the court is willing to entertain early motion practice on the issue. Whether and how aggressively district courts will engage on the merits of damages issues before discovery closes remains to be seen. However, there is clearly a trend towards evaluating damages in some capacity early in a patent case, and savvy litigants may be able to take advantage of the trend to streamline their cases and refine their damages theories to maximize settlement opportunities and avoid wasting valuable resources HN pursuing disfavored theories. Carmen Bremer is an associate at Weil, Gotshal & Manges LLP. She can be reached at carmen.bremer@weil.com.
Blood Drive! Thursday, October 31 | 9:00 a.m. to 4:00 p.m. The Belo Mansion RESERVATIONS ENCOURAGED!
VOTE NOW! DALLAS COUNTY COURT STAFF AWARDS
Reserve the best time for you and your firm today. Visit www.dallasbar.org/blooddrive.
Vote for the Outstanding Court Staff Awards (court staff from the civil, criminal, family, juvenile, IV-D, and probate courts). Deadline to vote October 31. Finalists will be recognized at the DBA Judiciary Committee Awards Luncheon on Thursday, December 5. For questions, contact kzacki@dallasbar.org.
For more information contact: Mary Ellen Johnson (214) 220-7474 or mjohnson@dallasbar.org Please have a good meal, drink plenty of fluids before your donation, and bring your photo ID.
Protecting the new, now.
is pleased to announce
Andrew C. Graham
Andrew C. Graham
Hsin‐Wei Luang
Has joined the rm as a Partner
Has joined the rm as a Of Counsel
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Patent & Trademark Prosecu�on Appeals—Re‐exams—Opposi�ons—Inter Partes Review Patent Por�olio Evalua�on—Licensing—Transac�onal & Li�ga�on Support
Two Lincoln Centre, 5420 Lyndon B. Johnson Freeway, Suite 660, Dallas, TX 75204 PH: (972) 479‐0462 * FX: (972) 479‐0464
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8 He a d n o t e s l D a l l a s B a r A s s o ciation
THANK YOU FOR SUPPORTING LAW JAM 4!
October 2013
Oct o b e r 2 0 1 3
D al l as Bar A ssoci ati on l Headnotes 9
Foundation Announces Speaker, Co-Chairs for Dinner Fundraiser STaff report
The Dallas Bar Foundation is pleased to announce that former U.S. Senator Bill Bradley, one of the foremost political and cultural thought leaders of our time, will serve as the featured speaker at the organization’s 3rd annual “An Evening With…” dinner fundraiser. The event will be held on the evening of Thursday, October 24, 2013. The Foundation is also pleased to announce that Michael Boone is joining Harriet Miers and Erle Nye as this year’s honorary co-chairs for the Evening with Bill Bradley dinner. This event, which debuted in 2011, raises funds for the Foundation’s Sarah T. Hughes Diversity Scholarship program. The previous two events, featuring David Brooks and Doris Kearns Goodwin as the keynote speakers, were sold out, and organizers are expecting a similar response this year with former U.S. Senator Bradley. The scholarship program, established in 1981, promotes diversity in the Dallas legal profession by attracting exceptional minority student leaders to Dallas. To date, the Foundation has awarded over $1.8 million in Hughes Scholarships to 51 students. This year’s Hughes Scholars, who are
now 1Ls at SMU Law School, are Dorlin Armijo and Camille Powell. Armijo grew up in Oak Cliff and graduated from the DISD Barefoot Sanders Law Magnet High School and Wellesley College. She is the first in her family to attend and graduate from college. Powell graduated from North Mesquite High School and the University of North Texas. Powell says she has chosen to use her previous life challenges as motivation and not as an Bill Bradley excuse for complacency. Both young women are examples of the cycle of success that the Hughes Scholarship helps to create in the Dallas community. “To have such prominent legal industry leaders as Harriet Miers, Erle Nye, and Michael Boone serve as honorary co-chairs of the Evening with Bill Bradley provides a testament to the importance of the Sarah T. Hughes Scholarships,” says Tim Mountz, DBF Chair. Both Miers and Nye served as DBF Trustees when the scholarship was established in 1981. Michael Boone is a member of the board
You are Invited to a Public Forum on:
Understanding the Affordable Care Act Tuesday, October 22, Noon at Belo
of directors of Haynes and Boone, LLP and one of the co-founders of the firm. He has been selected as one of the greatest Texas lawyers of the past quarter-century and was named a “Go to Lawyer” in Texas in the field of corporate/business law by Texas Lawyer. He currently serves as the Chairman-Elect of the SMU Board of Trustees. Harriet Miers is a partner at Locke Lord LLP in the Litigation and Public Policy sections and is a former managing partner of Locke Lidell & Sapp. She returned to the firm in 2007 after serving as counsel to President George W. Bush, in addition to previous prominent positions in the Bush administration from 2001-2007. Erle Nye is the chairman emeritus of TXU Corporation and chairman of the board of the Baylor Health Care System Foundation. Nye has always been active in the community having served as Chairman of the Dallas Regional Chamber and Vice Chairman of the Governor’s Business Council. In 2012, he received the Linz Award in
honor of his civic contributions. Now the president of EN Consulting, Nye enjoyed a long and successful career with TXU, including stints as its chairman and chief executive officer. Senator Bill Bradley gained prominence in the U.S. Senate as a bipartisan leader who brought people together to solve complex problems. Always placing the best interests of the nation first, Bradley has garnered respect on both sides of the aisle as a man of unquestionable character. In addition to being a U.S. Senator from New Jersey, he is also an Olympic gold medalist, two-time NBA Champion with the New York Knicks, Rhodes Scholar and author of six New York Times best sellers on the revitalization of American politics, culture and the economy. His latest book, “We Can All Do Better,” is a thought-provoking game-changer that provides a solution to the partisan divide and political stalemate in Washington, encouraging American voters to partake in a more participatory form of democracy. For information about table sponsorships and tickets, please contact Elizabeth Philipp at the Dallas Bar Association, 214-220-7487, or go to dallasbarfoundation.org for informa HN tion.
You are Invited to a Happy Hour
Benefiting the Campaign for Equal Access to Justice
Speakers: Den Bishop, President of Holmes, Murphy & Associates Stephen Love, President and CEO of the Dallas-Fort Worth Hospital Council John McWhorter, President of Baylor University Medical Center Cheryl Camin Murray, Winstead PC, Moderator
Wednesday, October 23, 6:00 p.m. at Four Corners Brewery (www.fcbrewing.com)
Open to the public. RSVP to sevans@dallasbar.org. Sponsored by the Public Forum Committee.
Hosted by DBA Entertainment Committee, DAYL, DAABA, DHBA, JLTLA, DAWL and TWLA
Sponsored by THE KENRICH GROUP LLC
PC Congratulates Its client Cox Operating, LLC, senior associate Alexandra Fernandez Stravinsky, and shareholders Jon-Bernard Schwartz and Jack Thomas Jamison On the return of a favorable unanimous jury verdict following a five-week trial in federal court, and the entry of judgment • Awarding $23,979,899.65, plus attorneys’ fees,
expenses and court costs in amounts to be determined
• Denying all relief requested in the counterclaim Cox Operating , LLC v. St. Paul Surplus Lines Insurance Company, Civil Action No. 4:07-cv-02724, in the United States District Court for the Southern District of Texas, Houston Division mission critical litigation
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10 H e a d n o t e s l D a l l a s B a r A s s o ciation
October 2013
Stay on Top of Credit Card Security in Your Law Firm by Amy Porter
The term “PCI Compliance” generally elicits one of three responses: complete confusion, vague recognition, or mild panic. You are not alone. From the moment the Payment Card Industry Security Standards Council rolled out these credit card regulations, attorneys have been struggling with how to understand their meaning and adhere to them.
What is PCI Compliance?
In 2006, the major credit card brands (Visa, MasterCard, Discover, American Express, and JCB) formed a security coun-
cil. The goals of the Security Council were to ensure the safety of cardholder data at all times and reduce credit card fraud by developing standardized regulations (Payment Card Data Security Standards or PCI-DSS) the entire credit card processing industry must follow. It applies to any business that processes, transmits, or stores credit card data (see pcisecuritystandards.org). The bottom line is if you accept credit card payments, you also accept the responsibility to protect sensitive card holder information.
How Does It Apply to My Law Firm?
Your day is already filled with mission
DVAP’s Finest Dan Garner
Dan Garner is a Partner specializing in Banking and Finance at Hunton & Williams LLP, where he also is a member of the firm’s Pro Bono Leadership Team and the Chair of the Dallas office Pro Bono Committee. He has handled social security, estate planning, public housing, and name change cases for DVAP clients. Along with his son, Bryan, he frequently staffs the monthly Triangle Clinic at St. Philip’s School & Community Center, and he also volunteers at DVAP Wills Clinics. He admits to generally championing DVAP within his firm and to anyone else who will listen. Thank you for all that you do, Dan!
Pro Bono: It’s Like Billable Hours for Your Soul. To volunteer or make a donation, call 214/748-1234, x2243.
critical tasks, so taking on compliance is not something you want to think about. It’s understandable. Perhaps your law firm only processes a few credit card transactions a month, you have a trusted staff, and you use a compliant gateway for your transactions. Your credit card data is safe, right? PCI Compliance is actually comprised of several key pieces — how credit cards are processed, who you use as service providers, and how you handle credit card information within the walls of your office. Think for a moment about how credit card data flows through your law firm. Do your clients pay online? Do they fax credit card authorization forms to your office? Are there copies of credit card numbers in client files? Those are just a few practical security points addressed by the security standards. The good news is that implementing small changes can have a major impact on your security. There are guidelines in the PCI-DSS that address Internet security and payment applications and also ones that address how businesses handle credit card data on a physical level. Assessing your vulnerabilities is a great way to fix potential issues and educate your staff. According to the 2012 Data Breach Investigations Report by Verizon Business, 97 percent of breaches could have been prevented by fairly simple measures. Office security policies that define procedures for changing passwords, storing information, and disposing of credit card data can make the difference between compliance and non-compliance
Why Now?
Until recently, most of the focus has been on major retailers that process in excess of 6 million Visa transactions per year. All merchants, regardless of credit card processing volume, must now comply with the regulations. Failure to meet requirements can result in security breaches, costly fines, and forensic audits.
Accepting credit cards is a great way to offer a flexible payment option for your clients and improve your cash flow; consequently, this means handling sensitive information that is very desirable to criminals. By following the PCI-DSS guidelines, you greatly reduce your vulnerability to a security breach. Most firms have found taking steps to become PCI Compliant is a productive, beneficial “house-keeping” exercise for their office. Becoming PCI compliant sends a strong message to your clients that you are doing your due diligence in protecting their sensitive information. The PCI process can also create a greater level of awareness with your staff when they handle credit card information, limiting the potential for a security breach and ultimately reducing the overall liability to your law firm.
How Do I Become Compliant?
There are several steps every merchant must complete to validate PCI compliance: • Identify validation type (this is based on how credit card transactions are processed). • Complete the self-assessment questionnaire. • Provide evidence of a passing vulnerability scan, if necessary, from an approved vendor on a quarterly basis. • Complete the attestation of compliance. • Submit the self-assessment questionnaire, attestation of compliance, and evidence of a passing scan (if required) to acquirer. • Create comprehensive Security Policies and Procedures Find out more at pcisecuritystandards. org/merchants/how_to_be_compliant.php. HN
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Oct o b e r 2 0 1 3
Focus
Dal l as Bar A ssoci ati on l Headnotes 11
Intellectual Property
The Uniform Trade Secrets Act Comes to Texas by Kelsey Weir Johnson
The recently enacted Texas Uniform Trade Secrets Act (TUTSA) governs any misappropriation of a trade secret that occurs on or after its effective date, September 1, 2013. Texas has now joined the overwhelming majority of states in adopting a version of the model Uniform Trade Secrets Act. While TUTSA primarily codifies current Texas common law, it also brings about a few major changes and clarifications that will strengthen trade secret protections and provide more certainty to trade secret misappropriation claims.
Expanded Definition of “Trade Secret”
TUTSA prohibits the unauthorized acquisition, disclosure and use of a trade secret. TUTSA defines a “trade secret” as information that derives independent economic value from its disclosure or use and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Information falling under the trade secret umbrella includes “a formula, pattern, compilation, program, device, method, technique, process, financial data, or list of actual or potential customers or suppliers.” While TUTSA is largely similar to the model act, it modifies the model act’s definition of a trade secret by adding “financial data” and a “list of actual or potential customers or supplier” to types of trade secret information. Although financial data and customer lists have typically been considered trade secrets under Texas common law, the specific inclusion of those categories of infor-
mation in TUTSA clarifies and further strengthens the protection of this information. Moreover, the inclusion eliminates the need for courts to perform a case-by-case examination to determine whether the information is indeed protectable. Also, TUTSA’s definition of trade secret conspicuously omits “continuous use” language, which suggests that there may no longer be such a requirement for a trade secret to be protectable. Under current Texas law, there is some uncertainty about whether information must be in continuous use in the operation of a business to gain trade secret protection. TUTSA also provides express limitations on what can be considered trade secret misappropriation. For example, TUTSA specifically excludes certain acts from being considered trade secret misappropriation, including discovery by independent development and reverse engineering.
Broadened Remedy of Injunctive Relief
Texas courts have been reluctant to expressly recognize the idea of “threatened misappropriation,” but TUTSA specifically broadens the availability of injunctive relief for actual and threatened misappropriation. This broadening of possible injunctive relief should be very useful for companies seeking to enjoin activities of an ex-employee before any trade secret information is actually disclosed and the damage is done. TUTSA also allows the continuation of an injunction to eliminate any
commercial advantage derived from misappropriation, rather than the termination of the injunction once the protected information is no longer secret. Moreover, TUTSA provides courts with the power to compel “affirmative acts to protect a trade secret” under certain circumstances.
Attorneys’ Fees a New Form of Relief
In saving perhaps the best change for last, TUTSA now makes the ability to recover attorneys’ fees a new form of relief. Texas courts will now have the discretion to award the prevailing party its reasonable attorneys’ fees where willful and malicious misappropriation is demonstrated. Additionally, attorneys’ fees may be awarded for any misappropriation claims brought in bad faith or where a motion to terminate an injunction was made or resisted in bad faith. Previously, any claim for attorneys’ fees required a separate cause of action. Thus, TUTSA’s damages provisions have the potential to benefit plaintiffs and defendants in trade secret misappropriation disputes, by penalizing frivolous claims but also permitting increased awards in cases of truly mali-
cious and willful conduct.
Other Notable TUTSA Provisions
With respect to monetary damages, TUTSA allows for the actual loss caused by the misappropriation, as well as any unjust enrichment not included in the actual loss calculation. Alternatively, damages may be calculated by a reasonable royalty for the unauthorized use or disclosure of a trade secret. TUTSA also makes exemplary damages available for willful and malicious misappropriation proven by clear and convincing evidence. Unlike common law, an exemplary damages award is limited under TUTSA to no more than twice the amount of actual damages. Finally, TUTSA also creates a presumption in favor of granting protective orders to preserve the secrecy of trade secrets during litigation. Under these provisions, courts can seal documents and limit disclosure of information to only the attorneys and their experts and can order parties not to disclose alleged HN trade secrets.
Kelsey Weir Johnson is a Senior Associate at Klemchuk Kubasta LLP and can be reached at kelsey.johnson@kk-llp.com.
The Criminal Justice Committee Presents: The Michael Morton Act: Criminal Defense and Prosecution Perspectives Speakers: Brad Lollar and Russell Wilson MCLE 1.00 | Friday, October 18, Noon at Belo
12 H e a d n o t e s l D a l l a s B a r A s s o ciation
October 2013
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O c t o b e r 2 0 1 3
Focus
D al l as Bar A ssoci ati on l Headnotes 13
Intellectual Property
Is This Something That I Can Patent? By Marc Hubbard
A few years ago, a patent lawyer could answer this question without much thought. The Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over appeals in cases arising under the patent laws, took a liberal view of what types of inventions were eligible for patenting. As long as the invention was new and not obvious, and it could be characterized as a process, a non-naturally occurring composition of matter, or an apparatus, it probably could be patented. However, an answer may no longer be so easy to give. After nearly 30 years of silence on the “subject matter eligibility” issue, the United States Supreme Court issued three opinions over a roughly three-year span, the most recent one in June of 2013, finding that inventions of a type that many had come to assume were eligible for patenting in fact were not. “Any new and useful process, machine, manufacture, or compositions of matter” is, according to the Patent Act, eligible for patenting. 35 U.S.C. §101. “In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Diamond v. Chakrabarty, 447 U. S. 303, 308 (1980). Nevertheless, patents on laws of nature, physical or natural phenomena, mental processes, and abstract ideas are not, and have never been, patentable. Id. at 309. Conceptually, these longstanding principles seem straightforward, but
they have proven difficult to apply in practice, as evidenced by the fact that the Supreme Court’s recent decisions indicate general disfavor of the Federal Circuit’s interpretation of the principles. The most recent of this trilogy of cases, concerning the patentability of human genes, received a great deal of media coverage. The Court’s decision in Association for Molecular Pathology v. Myriad Genetics, Inc., reversed a decade’s long practice of the United States Patent and Trademark Office of granting patents on “isolated DNA,” which critics contended were essentially patents on genes. Isolating a segment of human DNA corresponding to a gene results in a DNA molecule with slightly different chemical bonds. It does not exist in nature as such. Despite these differences the Court held that a claim to isolated DNA was essentially a claim to naturally occurring composition of matter and, therefore, ineligible for patenting. The Court explained that the process of isolating a fragment of DNA was well known and that the discovery that certain gene mutations linked to a high risk of breast cancer did not involve creation of anything new. “To be sure, [the patentee] found an important and useful gene, but,” the Court added, “separating that gene from its surrounding genetic material is not an act of invention.” In Mayo Collaborative Servs. v. Prometheus Labs., Inc., the Court ruled invalid a patent on a process of optimizing the treatment of a particular disease. The process involved steps of administering a dose of a particular drug to a patient and determining the
level of a metabolite of the drug in the patient, with specific levels indicating whether the dosage was therapeutic or toxic based on research done by the patentee. The Court found that the process was nothing more than a claim to the discovery of “natural” correlations between the levels of a metabolite and the toxicity and efficacy of the drug dosage, noting that process steps of administering and determining were a “well-understood, routine, conventional activity.” The Court in Bilski v. Kappos, found that the petitioner’s claims concerned nothing more than a well-known method of hedging and, thus, was an “abstract idea,” notwithstanding that the process required several steps that were not, in fact, abstract, but were nevertheless well-known, conventional and routine, such as buying and selling commodities.
The rationales underlying these decisions explicitly eschew brightline rules. Instead, a reasoned analysis that looks beyond the literal claim to the nature of what was purportedly invented and assesses whether a patent has placed meaningful limits on claims otherwise involving ineligible subject matter is required. Consequently, advising a client on patent eligibility has become a more complex and less predictable task, especially in the fields of computer software, business methods and biotechnology, where the way in which an invention is implemented is not as important as the concept or discovery HN underlying it. Marc Hubbard is a member of Hubbard Law, PLLC and Chair of the Patent Law Committee of the American Intellectual Property Law Association. He can be reached at mhubbard@hubbardip.com.
join us for the Dallas Bar Association’s
Fall Fiesta honoring our Newest DBA Members and newly licensed attorneys!
Thursday, November 14, 2013 5:30 - 8:00 p.m. at Belo For more information or to become a sponsor, please contact Kim Watson, Membership Coordinator at kwatson@dallasbar.org or (214) 220-7414
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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
with Bill Bradley
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Thursday, October 24, 2013 Belo Pavilion, 2101 Ross Avenue Cocktail Reception at 6:30 Dinner at 7:15 Seating is limited
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Oct o b e r 2 0 1 3
Focus
Dal l as Bar A ssoci ati on l Headnotes 15
Intellectual Property
Reverse Settlements Under the Hatch Waxman Act by Shaukat A. Karjeker
In a 5-4 decision, the Supreme Court reversed an 11th Circuit decision, which held that “a reverse-settlement agreement” in which defendant generic drug manufacturers agreed to accept payments not to compete with a patented drug, was lawful because the plaintiff patent owner could have excluded others from the market under its exclusive patent rights. The Court declined to hold reversesettlement agreements presumptively unlawful. Instead, the Court remanded with instructions that the lower courts apply a set of five considerations to assess the effects on competition of reversesettlement agreements involving patents under the Hatch Waxman Act (Act). The Court explained four pertinent sections of the Act. First, to market a new prescription drug, a drug manufacturer must submit a New Drug Application (NDA) to the US Food and Drug Administration (FDA) and undergo the testing protocol required for marketing approval. Second, once approved, a manufacturer of a generic drug can file an Abbreviated New Drug Application (ANDA). In the ANDA, the generic applicant can make assertions about drug similarity to avoid the testing pro-
tocol that the original drug manufacturer underwent. Third, the Act allows the pioneer manufacturer to list any patents it might have in its NDA. Fourth, any generic applicant has to certify a right to market, for example by certifying that any listed patents of the pioneer are expired, invalid or not infringed. Solvay filed an NDA with the FDA for “Androgel” and received approval in 2000. In 2003, Solvay obtained a patent covering the drug. In that same year Actavis filed an ANDA. Actavis certified that the Solvay patent was invalid and that its generic drug did not infringe the patent. This led to patent litigation between Solvay, Actavis, and two other generic manufacturer applicants, Paddock and Par. In 2006, the parties entered into a settlement agreement and submitted the agreement to the FTC. The FTC regarded the terms of this reverse-settlement agreement as anti-competitive, and filed suit to challenge the settlement. Under the reverse-settlement agreement Actavis agreed not to enter the market until August 31, 2015, unless another party entered the market earlier. Actavis also agreed to promote Androgel to urologists. Solvay promised to pay about $19 to $30 million annually to Actavis for nine years, $60 million in
CELEBRATE JFK DAY WITH THE CIC COMMITTEE The Community Involvement Committee will be celebrating JFK Day by volunteering on Saturday, November 23 from 1:00-4:00 p.m. at Buckner Center for Humanitarian Aid (5405 Shoe Drive, Mesquite 75149). Contact Peggy Heller at peggy.s.heller@gmail.com. For more information, http://jfkday.com/wp/
DALLAS MEMBERS
total to Par, and $12 million in total to Paddock. The FTC contended that these payments were compensation for not competing against Androgel. The FTC Complaint asserted that the parties unlawfully agreed to share in Solvay’s monopoly profits, abandoned challenges to the patent, and refrained from competing with Androgel. The District Court dismissed the Complaint on grounds that the allegations did not state an antitrust violation. On appeal, the Eleventh Circuit Court of Appeals affirmed and held that absent fraud or sham litigation, a reverse-settlement agreement is immune from antitrust attack, as long as the exclusionary effect is within the scope of the exclusionary patent rights. While the court recognized that the antitrust laws typically prohibit paying a competitor not to enter the market, the court found that reversesettlement agreements are “atypical” because one party owns a patent and can lawfully exclude others. The court also recognized that the patentee avoided the risk of patent invalidation if it settled. But, public policy favoring settlements, the courts could not compel parties to litigate to avoid antitrust liability. The Supreme Court acknowledged the value of settlements and the pat-
ent-related factor, but concluded that exclusive patent rights should not determine the outcome. The Court presented five sets of considerations to support its conclusion that the FTC should have been allowed to make its case. First, the reverse payment in effect amounted to purchasing the exclusive right to sell the product and to maintaining prices at patentee-set limits. Second, concerns about anticompetitive consequences may sometimes prove unjustified. The payments may reflect no more than a rough approximation of saved litigation expenses and might not reflect payments to avoid the risk of patent invalidation or non-infringement. An antitrust defendant may explain a term of the agreement under the “rule of reason.” Third, where the payment threatens a risk of anticompetitive harm, the patentee likely has the power to cause the harm. Fourth, the size of the payment is an indicator of power, and an unexplained large payment casts doubts on the patent’s validity. Fifth, the fact that a large unjustified reverse payment risks antitrust liability does not prevent settlement. The parties can settle HN on other terms. Shaukat A. Karjeker is a partner at Carstens & Cahoon LLP. He can be reached at karjeker@cclaw.com.
Attorney Coaches Needed for Mock Trial Teams – Civil Case Coaches are needed to instruct teams for the 2013-2014 mock trial season (a civil case). Firms and partners can adopt teams as well. Dates and times vary with the schools. To sign up, please email Kimberlynn Taylor at ktaylor@dallasbar.org.
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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
October 2013
DBA Member Becomes Chief Justice Using a Manufacturer’s Trademarks Coif and an editor for the Southwestern Law Journal. He served as law clerk to On September 10, 2013, Governor Judge Roger Robb of the U.S. Court of Rick Perry appointed Justice Nathan Appeals for the District of Columbia L. Hecht as the next chief justice Circuit and is a former lieutenant in of the Texas Supreme Court. He is the U.S. Naval Reserve JAGC. After practicing genreplacing Wallace Jeffereral litigation at the firm son, who is stepping down. of Locke Purnell Boren Justice Hecht’s term will Laney & Neely, now become effective October Locke Lord, he began his 1 and will expire at the judicial career with his next general election. At appointment to the 95th that time, he intends to District Court of Dallas run for a full term as chief County. He was reelected justice. in 1982 and 1984. In 1986 Governor Perry said he ran for, and was elected Justice Hecht was selected to, the Court of Appeals because of “his dedicafor the Fifth District of tion to the rule of law and Texas at Dallas where he wealth of knowledge and served until his election judicial experience.” to the Supreme Court. Justice Hecht is the Justice Hecht is a memlongest-serving justice on ber of the American law the Texas Supreme Court. He has been on the court Chief Justice Nathan Hecht Institute, the Texas Philsince 1988, won re-election four times osophical Society and a Fellow of the and has written more than 350 opin- American, Texas and Dallas Bar Foundations. In 2000, he received the SMU ions in his 24 years on the bench. A DBA member since 1986, Justice Dedman School of Law’s Distinguished Hecht received a bachelor’s degree Alumni Award for Judicial Service, from Yale University and his law degree and in 2004 he received the Hatton from the SMU Dedman School of Law, W. Sumners Foundation Distinguished HN where he was elected to Order of the Public Service Award. Staff Report
EVENING ETHICS
Tuesday, October 22 ~ 6:00 to 9:00 p.m. At the Belo Mansion (Ethics 3.00)
SPEAKERS
Nancy Thursby, Regional Counsel, State Bar of Texas Bob Davis, Partner, K&L Gates, LLP Frank E. Stevenson II, Partner, Locke Lord LLP Charlie Blau, Charles W. Blau P.C. John G. Browning, Partner, Lewis Brisbois Bisgaard & Smith LLP Hon. Royal Furgeson, U.S. District Court Justice Kerry FitzGerald, Fifth District Court of Appeals, Moderator $20 for DBA members. ($90 for non-members). Price includes light buffet. RSVP is required by October 18 to kzack@dallasbar.org.
continued from page 1
The court was unsympathetic to Acushnet’s arguments on inferiority of the product and application of the “material difference” test, an analysis of whether the difference is one that consumers consider relevant to their decision to purchase a product. The refurbished golf balls were stripped of the outer coating, repainted, restamped with the TITLEIST mark and clear coated. The court held for the defendant, Nitro, reasoning that consumers expect used goods to exhibit inferior qualities and are not likely to be confused. Nitro passed the Champion test because the balls were well marked as refurbished. An exception to Champion is found in cases of post-sale confusion when the initial purchaser but not the end user knows that the product has been reconditioned. For example, in Sunsport, Inc. v. Barclay Leisure Ltd., 984 F.Supp. 418 (E.D. Va. 1997), the defendant sold reconditioned tanning beds that bore the ULTRABRONZ trademark, but otherwise bore no disclaimers. The court held there was trademark infringement because the distributor’s knowledge did not pass to the end consumer, and, unlike a used car, consumers would not be able to determine if a tanning bed was refurbished. Thus, malfunctions would be attributed to the trademark owner. In a similar case involving endoscopic tables, a hospital ordered refurbished tables with knowledge that the tables were completely rebuilt with substitute parts and bore the original KARL
STORZ trademark. No disclaimers were affixed. Karl Storz Endoscopy-Am. v. Surgical Techs., Inc., 285 F.3d. 848 (9th Cir. 2002). The court decided this use of the mark was an infringement because the end-user surgeons were not aware of the refurbishment and would attribute any malfunctions to the trademark owner. Courts also take exception to Champion when an essentially new design or product is created through extensive reconditioning or repair. In Bulova Watch Co. v. Allerton Co., 328 F.2d 20 (7th Cir. 1964), the defendants removed genuine Bulova movements from Bulova watches and recased them in diamond decorated cases. In Rolex Watch USA, Inc. v. Meece, 158 F.3d 816 (5th Cir. 1998), non-genuine parts were used to reconstruct or convert new and used Rolex watches to look like more expensive models. In both cases, the courts held that use of the BULOVA and ROLEX marks constituted trademark infringement because, essentially, the watches were no longer the same product and the reference to refurbishment too subtle. Refurbished products bearing original manufacturer trademarks may be freely sold as long as a disclaimer is evident to the purchaser or the end-user. Concerns about quality control are discounted. However, the disclaimer should not be too subtle and refurbishment not so extensive as to create a dif HN ferent product. Julia Chester is Counsel at Sidley Austin, LLP. She can be reached at jchester@sidley.com.
JFK Public Forum Thursday, November 21, Noon at Belo
Speakers:
Jerry Alexander, Attorney, Passman Jones Darwin Payne, Professor Emeritus, Southern Methodist University Chirs Vognar, Dallas Morning News, Moderator Free Event. Open to the public. RSVP to sevans@dallasbar.org. Sponsored by the Public Forum Committee
October 2013
Dal l as Bar A ssoci ati on l Headnotes 17
Column Ethics
Maintaining Confidentiality while Cooperating with an Insurer by Lyndon F. Bittle and Jesse K. Shumway
A lawyer retained by a liability insurer to represent an insured in defending a lawsuit often faces tension between the demands of the insurer and the interests of the insured. One context in which conflict can arise is in determining the appropriate level of information-sharing between counsel and the insurer. An insurer that is bearing the costs of litigation and possibly the ultimate exposure to loss naturally wants to stay fully informed about the litigation, but full disclosure by counsel to the insurer is not always in the insured’s best interests. As an ethical matter, the question whether counsel should share confidential information with the insurer seems simple on its face, at least under Texas law. Unlike many other states, Texas generally does not recognize a “dual client” relationship, in which the lawyer represents both the insurer and the policyholder. In Texas, the lawyer’s only client is the insured— even if the lawyer is an employee of the insurer. In the absence of a specific agreement to represent both the insurer and the insured, counsel hired by an insurer to represent an insured thus does not usually owe an ethical duty of disclosure to the insurer and, indeed, owes a contrary duty of confidentiality to the insured. But insurance policies require the insured to cooperate with the insurer in defending litigation and otherwise mitigating losses. Failure by an insured or its counsel to comply with the insurer’s appropriate requests for information can result in a loss of coverage—certainly not in the insured’s best interests. This cooperation must be undertaken carefully,
however, with an eye toward preserving privilege and work-product protections. Contrary to a perception that has taken root in some circles, there is no “insurerinsured privilege” in Texas or most other jurisdictions. Protection of some communications between an insured’s counsel and an insurer may be available under the attorney-client privilege, the workproduct doctrine, or the common-interest extension of these privileges, but application of these privileges is often unclear and always limited. Several judicial opinions, including the Texas Supreme Court’s opinion last year in In re XL Specialty Insurance Co., 373 S.W.3d 46 (Tex. 2002), have declined to apply the attorney-client privilege to communications between an insurer and its insured. The XL Specialty opinion leaves the door open for an argument, under appropriate facts, that an insurer is acting as the insured’s representative within the meaning of TRE 503, but it shuts the door on the more general common-interest privilege (or “allied litigant privilege”) in many insurer-insured contexts. Under the current state of the law, counsel for an insured should not assume the attorney-client privilege broadly protects communications with the insurer. Work-product protection is often a more promising option because both the Texas and federal rules identify insurers as qualified client representatives in their definitions of work product, and because work-product protection is not necessarily waived by disclosure to a third party who is not an adversary. But the work-product doctrine has its own limitations. It applies only to material created in anticipation of litigation, and its protection is not absolute: an opponent’s demonstration of sub-
stantial need and hardship can result in compelled disclosure. Perhaps most important to keep in mind is that both the attorney-client privilege and the work-product protection can be defeated by conflicts between the insurer and the insured. For example, an insurer providing a defense subject to a reservation of rights likely is not sufficiently aligned with the insured to qualify for the “privileged circle” with respect to some information, particularly information that relates to coverage. When counsel representing an insured is aware of conflicts between the insured and the insurer, counsel must carefully consider his or her ethical obligations before sharing specific non-public information with the insurer. Not only is counsel prohibited from making disclosures that would have a direct adverse effect on the insured, but
counsel must consider the effect of the conflict on available privileges. In some situations, the policyholder may need to retain separate coverage counsel to sort through these issues. In sum, sharing information with the insurer that is paying to defend your client is sometimes necessary and often appropriate, but, given the fact-sensitive ethical risks, disclosing client information to insurers should not be viewed as routine. Instead, disclosure should be preceded by consultation with the insured and individualized consideration of the implications of disclosing the particular information at HN issue. Lyndon Bittle is a partner at Carrington, Coleman, Sloman & Blumenthal, L.L.P. He can be reached at lbittle@ccsb.com. Jesse Shumway is an associate at Carrington Coleman, and can be reached at jshumway@ccsb.com.
PRO BONO WEEK 2013 Monday, October 21 to Friday, October 25 DVAP Pro Bono Awards—Thursday, October 30—Belo—5:30-7:30 p.m. For more information, contact Ellie Pope at popee@lanwt.org. Sponsored by the DBA Pro Bono Activities Committee and the Dallas Volunteer Attorney Program in conjunction with the ABA National Pro-Bono Celebration.
Pro Bono Week Schedule of Activities Volunteers needed for all Legal Clinics
October 22 October 22 October 23 October 23 October 23 October 25 October 30
Noon-1:00 p.m. 3:30 p.m. Noon-1:00 p.m. 5:00-8:00 p.m. 6:00-8:00 p.m. 9:00 a.m.-Noon 5:30 p.m.
Family Law and Immigration Issues (MCLE 1.00) Small Business Legal Clinic Veterans’ Legal Issues (MCLE 1.00) Belo Legal Clinic Equal Access to Justice Happy Hour at Four Corners Brewery Wills Intake Clinic at The Senior Source Pro Bono Awards
Congratulations to Robert Udashen on his selection as Best Lawyers in America 2014 Dallas Criminal Defense: White-Collar “Lawyer of the Year”
Robert Udashen Board Certified in Criminal Law and Criminal Appellate Law
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18 H e a d n o t e s l D a l l a s B a r A s s o ciationâ€
October 2013
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9400 N. Central Expwy., Suite 1305
serve with balance and respect.
Dallas, TX 75231
(214) 365-9000
2014 INAUGURAL OF Scott M. McElhaney At The Westin Galleria Dallas
Saturday, January 11, 2014 The Dallas Bar Association will inaugurate its 105th President, Scott M. McElhaney at the inaugural ball on Saturday, January 11. The black-tie ball will include dinner, dancing to music by the band New Ground and silent and live auctions.
Cocktails 6:30 p.m. | Dinner 7:30 p.m. Tickets $150; Tables $1,500 | Judiciary $100
Drawing will be held at the DBA Inaugural Ball on January 11, 2014. 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.
To reserve your ticket, contact Shawna Bush at (214) 220-7453 or sbush@dallasbar.org. Visit www.dallasbar.org for more information!
October 2013
Dal l as Bar A ssoci ati on l Headnotes 19
Classifieds
October
EXPERT WITNESS
Drug/Alcohol Expert - Pharmacy Professor; 33 years’ experience consulting, teaching, researching prescription, illegal, overthe-counter drugs, alcohol, drug testing. Trial and deposition experience specializing in drug-related domestic, civil, criminal cases. Reviews, summaries, depositions, discovery, trials. Allison Welder, Ph.D. (361) 5425636; allisonannewelder@yahoo.com; www. welderconsulting.com. Economic Damages Experts - Thomas Roney has more than twenty five years’ experience providing economic consulting services, expert reports and expert testimony in court, deposition and arbitration. His firm specializes in the calculation of economic damages in personal injury, wrongful death, employment, commercial litigation, IP, valuation and divorce matters. Mr. Roney and his experienced team of economic, accounting and finance experts can help you with a variety of litigation services. Thomas Roney LLC serves attorneys across Texas with offices in Dallas, Fort Worth and Houston. Contact Thomas Roney in Dallas/Fort Worth (214) 665-9458 or Houston (713) 513-7113. troney@thomasroneyllc.com. “We Count.” Mexican Law Expert - Attorney, former law professor testifying since 1997 in U.S. lawsuits involving Mexican law issues: FNC motions, Mexican claims/defenses, personal injury, moral damages, contract law, corporations. Co-author, leading treatise in field. J.D., Harvard Law. David Lopez, (210) 2229494. dlopez@pulmanlaw.com
OFFICE SPACE
Small law firm with transactional and litigation practice seeks relationship with established attorney(s) having portable complementary practice, and/or office sharing. Firm is located in a downtown Dallas Class A building minutes away from courthouse with partner/associate offices, conference room, law library, secretarial station, kitchen, parking garage, photocopy/scanner/ postage/facsimile and related amenities. Contact Laura at (214) 922-9265. North Dallas Tollway (Galleria area) office space. Hardwood floors and ornate mahogany paneled walls in common areas. Several offices available in different sizes, all with accompanying mahogany secretarial carrel. All have access to three conference rooms, copier, postage meter, high speed Internet, phones and two kitchens. Receptionist services also available. Please call Sandra at (972) 934-4100. Park Cities/Central Expwy – Law firm has up to 3 window offices in Class A building for
lease. Great location at 8080 Central Expwy. at Caruth. Spectacular views of downtown and Park Cities. Elevator exposure and expensive finish out. Large conf. room and kitchen. Secretarial space, high speed scanner/copier, broadband, extra storage and other amenities available. Call John (214) 546-6337 or (214) 292-4202. Available Immediately - Uptown Dallas Office Space Law office seeks to sublease to attorney or non-attorney businesses. Shared amenities, free visitor parking and convenient to DART rail. Contact dallasuptownoffice47@gmail.com. Downtown Dallas – Office available, located in the historic KATY Building directly across from the Dallas County Courthouses. Receptionist, phone system, conference room, wifi, fax and copier available for tenants use. No lease required. Please inquire at 214/7481948. Downtown AV preeminent law firm has two window offices available for lease with secretarial station (if needed), reception area, conference room, elevator exposure and kitchen. Please call Mark or Vicki at (214) 752-0400. Uptown/ Travis Walk: Law firm has up to 2 affordable window/patio offices in Travis Walk off Knox St. for sublease. Great location at 4514 Travis Street, large conference room, kitchen, secretarial space, all amenities, short walking distance from a dozen restaurants. Seek compatible attorneys with their own practice to office with friendly group of litigators. Call Andrew Bergman at (214) 528-2444 or Paul Sartin at (214) 5990448 or email rsanchez@abergmanlaw.com. Office Space - Nicely decorated in North Dallas has 2 window attorney offices available to share with a Board Certified Family Law specialist. Great location and easy access from either LBJ or Central Expressway. Attractive reception area, free covered parking, large conference room, copier, high-speed Internet, phones, kitchen and free health club. (214) 580-8000 or email kim@buholzlaw.com. Office Space In Campbell Center – Near North Park, Full Service Building, All Amenities. Three year sublease available immediately. Window office, conference room, waiting room, kitchen and storage. Underground parking for tenants. Contact linsolomon@sbcglobal.net or (214) 361-8771.
POSITION AVAILABLE
Estate Planning practice for Sale. Great opportunity for an experienced estate plan-
Justice in Education Symposium
ning attorney to build own practice. Established high-net worth clientele, steady income stream, experienced paralegal/secretary. Ideal for attorney wanting to focus exclusively on estate planning, but who does not yet have a large client base or existing infrastructure (office furniture, phone system, extensive forms, etc.) Current practice does not handle any litigation matters and does not advertise to the general public. Owner will stay on as long as necessary to assist with a smooth transition. Send confidential letter to Dallas Bar Association, Box 13–10, 2101 Ross Avenue, Dallas, Texas 75201. Intellectual Property Associate. Law firm and great place to work, seeking intellectual property associate for its downtown Dallas office. USPTO Registration and a minimum of 2 years of patent prosecution and/or litigation experience required. An electrical engineering background preferred. Interested candidates please forward a resume and writing sample to resumes@solidcounsel.com. Patent Agent. Law firm and great place to work, seeking a Patent Agent for its downtown Dallas office. USPTO Registration and a minimum of 5 years of patent prosecution required. Advanced degree in mechanical or electrical engineering preferred. Interested candidates please forward a resume and writing sample to resumes@solidcounsel.com. IP Litigation Assistant. Mid-size law firm in downtown Dallas looking for experienced IP litigation assistant for busy desk. Patience, attendance, time management, and communication are key attributes. Excellent proofing and drafting skills a must. Word, PowerPoint, and scanning experience required. Minimum five (5) years’ experience necessary. Interested candidates please forward a resume and writing sample to resumes@solidcounsel.com. Health Law Attorney Needed. Experience in healthcare regulatory and payment matters - Medicare, Medicaid, licensing, transactional or criminal law services to healthcare providers. We prefer a problem solver with a disciplined work ethic, excellent writing skills, good attitude who is self-motivated and will participate in marketing & seminar presentations. Please email resume to markskennedylaw@msn.com. Come practice law with (not for) a really great 14-lawyer firm in beautiful offices in Campbell Centre. Walk in the door and start practicing immediately. We will take care of virtually everything else. Bring your own staff or we will supply. Also 1 or 2 window offices with secretarial space and conference room available for sublease. Contact Steve Palmer @ (214) 242-6440 or spalmer@pamlaw.com. See our website at www.pamlaw.com. Downtown Dallas law firm seeks an associate attorney with 2-5 years of
litigation experience including products liability and/or personal injury law. Compensation negotiable. Reply to: kmighell@cowlesthompson.com. AV- Rated, well-established midsize law firm seeks lateral partners with portable business for its downtown Dallas office. Successful candidates will be equipped with drive, energy, leadership potential and high professional standards. The firm, which has been a distinguished part of the North Texas law community for over 30 years, offers the opportunity for a practice in virtually any area. The firm will consider flexible financial arrangements for individuals seeking support to expand their current book of business. The firm features an excellent reputation, great benefits and strong colleague support in a friendly and professional atmosphere. Send resume to: Dallas Bar Association, Box 13–08, 2101 Ross Avenue, Dallas, Texas 75201. Uptown Attorney seeks Legal Assistant/ Paralegal with at least 5 years of experience in Probate/Estate Planning. We are a firm dedicated to our clients and need a candidate that will portray our philosophy and client driven attitude with a friendly can do spirit. We offer business casual (no jeans or tennis shoes), health insurance, life insurance and garage parking. The ideal candidate MUST be: punctual, reliable, friendly, out-going, and team oriented. Hours are 8:00 am to 5:00 pm Monday – Friday with little to no over time. The ideal candidate must have experience with the following software programs: Word Perfect, Microsoft Word, Microsoft Outlook, Quicken, and TimeSlips. Good typing skills are also required. References, salary history and salary requirements are required with submission of resume for consideration. Salary commensurate with experience. Send resumes to rearley@dwgpc.com.
SERVICES
Oil and Gas Buyer. Buying royalty interests, overriding royalty interests and non-operating working interests. Send descriptive information to royalty@coromandelenergy.com for a prompt and fair evaluation. Owner is SBOT and DBA member. Diamond and Gold Buyer. Buying all types of Diamonds, Immediate Cash Paid. Consignment terms available @ 10 -20% over CASH. For consultation and offers please call (214) 739-0089. To place an affordable classified ad here, contact Judi Smalling at (214) 220-7452 or email jsmalling@dallasbar.org.
Connect jobseekers with employers in the legal field. Run your ad in the DBA’s online Career Center. www.dallasbar.org/career-center.
Monday, October 21~ 8:30 a.m. ~ Belo Mansion
The Jack Lowe Sr. Award for Community Leadership will be presented during the luncheon. Registration $35, includes lunch. Contact Alicia Hernandez at (214) 220-7499 or ahernandez@dallasbar.org
DBA Annual Meeting The Annual Meeting is Friday, November 1, in the Pavilion. A reception begins at 3:30 p.m. and the meeting begins at 4:00 p.m. If you wish to run for a position, you must contact Cathy Maher cmaher@dallasbar.org (214) 220-7401, no later than Thursday, October 31, at 5:00 p.m. to receive information about service on the Board. You are required to complete a biographical form prior to the meeting. Following the meeting all DBA resident members with an e-mail address on file will receive an online ballot. If you wish to vote online, please make sure the DBA has your e-mail address by visiting the DBA website at www.dallasbar.org, or call Kim Watson at (214) 2207414 before 5 p.m. on Thursday, October 31, 2013. Please update your spam software to allow the e-mail ballot to enter your inbox from DallasBar@BallotBoxOnline. com. If you receive an online ballot but wish to vote by hard copy, please contact Cathy Maher at (214) 220-7401 to request that a paper ballot be mailed to you. JRFRIM_Ad2012.indd 1
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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
October 2013
OUR CAUSE In 1983, Judge Merrill Hartman led a group of Dallas visionaries to create the first volunteer attorney program in North Texas. Today, the project is known as DVAP, the Dallas Volunteer Attorney Program. DVAP attorneys help families living at or below the federal poverty guidelines who cannot afford an attorney in civil cases. For Judge Hartman, ‘Justice for All’ was not just a slogan, it meant access to the courts started with access to a lawyer. This year, funding for DVAP faces unprecedented challenges due to state budget cuts, lower interest rates on IOLTA accounts, and reductions in institutional giving. Among the many remarkable projects organized by you, the members of the Dallas Bar Association, this may be the most important collective effort we endeavor. As we embark on the 2013-2014 Equal Access to Justice Campaign, please consider helping our cause. For those of you in leadership positions, please educate your firm members about this important effort and consider a coordinated giving campaign. To the many champions of DVAP who have given so generously in the past, thank you for setting our example. You have taught us that DVAP is what we do, that DVAP is our cause. For more details and to donate: www.dvapcampaign.org Or contact Alicia Hernandez- (214) 220.7499 Email: ahernandez@dallasbar.org Rob Crain Chris Lewis www.CrainLewis.com