PRIMA FACIE NEWS

COPYRIGHT MYTHS

Perry Clegg — Mon, 14 Dec 2009 23:25:00 GMT

In October 2009, I spoke to a group of lawyers at a construction law seminar on issues surrounding architectural copyrights. At the end of the presentation we discussed some of the common myths regarding copyrights. It is amazing how frequently law suits are the result of an unwitting infringer’s reliance on one or more of these myths. Here is a partial list of some common copyright myths. When in doubt, it is always better to consult with a legal professional experienced in copyright law.

Copyright Myths

There is no copyright infringement if the plans or design are changed by 10 or 20 percent.
If there is no copyright notice, a work is not protected.
The copyright covers the plans, not the building.
The client owns the copyright if s/he pays for the work.
Only novel or unique plans and buildings are protectable.
If you do not know of the copyright, you are not liable for infringement.
Copyright liability is limited to the cost of the plans.
If it is been anonymously published on the internet, it is in the public domain.
Postings on social network sites (e.g., Facebook) or message boards are “fair use.”
If the owner emails you a copy, you can post it on the internet.
If you give credit to the author, you do not need permission to use his/her work.
If a book is out of print, it is in the public domain.
Using something for nonprofit educational purposes is automatically “fair use.” (factually dependent)
A work must be registered with the U.S. Copyright Office to obtain copyrights.
If you don’t charge for the work, it is not a copyright violation.
If you only use a small portion of a work, it is not copyright infringement. (factually dependent)
If the author does not enforce the copyright, s/he loses it.
You can copyright or patent a name.

Below is a photograph of me presenting at the Construction Law Seminar, which was organized by the Construction Law Section of the Utah State Bar. The photograph was taken by Connie Howard using a cell phone camera.

GOOGLE NOW FEATURES SEARCHABLE CASE LAW

Perry Clegg — Fri, 20 Nov 2009 08:50:00 GMT

Google now indexes and searches federal and state case law through the new beta version of Google Scholar. While still in its beta phase, Google Scholar should significantly reduce legal research costs for legal professionals and laypersons alike. The impact Google Scholar will have on large legal research companies like Westlaw and Lexis is uncertain; however, one would expect to see some sort of response shortly.

While Google Scholar does not provide many of the features that Westlaw and Lexis provide, it does allow one to search legal opinions totally free. It also provides a reference index of cases and articles citing a selected case. Legal articles may also be searched, but some articles, such as Law Review articles, must be purchased. Try out Google Scholar at http://scholar.google.com.

CHRIS JOHNSON WILL RECEIVE PRESTIGIOUS CYBER PIONEER AWARD

Perry Clegg — Mon, 14 Sep 2009 17:44:00 GMT

Chris Johnson, founder of the Scientific Computing and Imaging Institute (SCI) at the University of Utah, will be the 2009 recipient of the prestigious Cyber Pioneer Award. The award will be presented by Alan Hall, chair of the Utah Technology Council on September 25, 2009 at the 2009 Cyber Symposium.

This past year, Chris Johnson has spun-off new award winning computer visualization technology, sold another computer visualization company, established an NVIDIA research center in the Sugar House neighborhood of Salt Lake City, created a business launch pad for future computer technology startups, and contemporaneously runs a $14 million, 165 person, nationally renowned research center at the University of Utah.

Chris’s SCI Institute distributes and maintains 13 different computer visualization packages. Chris has brought national recognition to the SCI Institute and recently spoke at the Library of Congress on how computer imaging has changed the face of medicine. You can see Chris’s speech at the Library of Congress below.

ALAN HALL WILL PRESENT CYBER PIONEER AWARD

Perry Clegg — Mon, 07 Sep 2009 20:31:00 GMT

Alan Hall, founder and chairman of Grow Utah Ventures, will be presenting the Cyber Pioneer Award at Cyber Symposium 2009. The 2009 Cyber Pioneer Award honoree is expected to be announced later this week. The award will be presented to an individual who in the previous year has been a pioneer in Utah’s high tech industry. Presentation of the award will take place in the Garden Visitors Center at Thanksgiving Point on Friday, September 25, 2009 during Cyber Symposium 2009.

Alan Hall has been a lifetime leader in Utah’s high tech industry so it is intuitive to have him present the Cyber Pioneer Award. For example, under Alan Hall’s leadership, Grow Utah Ventures is supervising the state-wide rollout of SEED Utah, a private initiative to increase entrepreneurism. In fact, Mr. Hall, a prevalent Angel investor, has personally made at least sixty investments in early stage Utah technology companies.

Mr. Hall was the 2009 Mountain West Capital Network Entrepreneur of the Year and the 1997 Ernst and Young Entrepreneur of the Year in the State of Utah. Mr. Hall is also the founder, former CEO, and chairman of MarketStar Corporation. MarketStar is an outsourced global marketing and sales organization that represents thirty of the world's largest high tech companies, helping them generate billions of dollars in revenues.

Mr. Hall continues to be highly involved in the high tech market. For example, last year, Alan Hall and Greg Warnock launched Mercato Partners, a multi-million dollar venture capital firm that will focus on investing in the marketing and sales growth of U.S. high tech companies.

Mr. Hall is also currently chairman of the Utah Technology Council; a member of Wells Fargo's community advisory board; a founding board member of World Trade Center Utah; sits on the board of the Intermountain Healthcare Foundation; and a member of the board of trustees of Weber State University. He was also the Utah co-chair of Romney for President. He and his wife Jeanne are chairman and president of the Hall Foundation, which has the motto "No poor among us."

MICROSOFT XML INJUNCTION STAYED BY FEDERAL CIRCUIT

Perry Clegg — Fri, 04 Sep 2009 19:18:00 GMT

Microsoft breathed some temporary relief as the United States Court of Appeals for the Federal Circuit stayed a recently issued permanent injunction, which prohibited Microsoft from selling Word products having XML capabilities. The injunction was originally issued by a U.S. District Court for the Eastern District of Texas in the i4i v. Microsoft case. The District Court's injunction, however, was stayed yesterday in a per curiam decision from the Federal Circuit stating that "Microsoft has met its burden to obtain a stay of the injunction." Microsoft, however, is not out of the woods yet because the stay is only provisional, meaning relief from the injunction will only continue pending a determination by the Federal Circuit of the merits of Microsoft's appeal.

The 2006 eBay v. MercExchange case, a unanimous decision by the United States Supreme Court in which the Supreme Court vacated an injunction against eBay, will likely have a significant impact on the i4i v. Microsoft case. The appeal from the permanent injunction against Microsoft Word products having XML capabilities will be highly followed and is expected to receive an enormous amount of commentary.

STATE OF UTAH TECHNOLOGY ADDRESS WILL BE PRESENTED BY DEREK MILLER, HEAD OF GOED

Perry Clegg — Wed, 02 Sep 2009 23:38:00 GMT

Derek Miller, who heads the Utah Governor’s Office of Economic Development (GOED) for newly inaugurated Governor Gary Herbert, will present the State of Utah Technology Address at Cyber Symposium 2009. The State of Utah Technology Address is expected to offer the Utah GOED’s perspective on the current state of Utah’s high tech industry along with some of the GOED’s goals in this regard. The speech is highly anticipated because it will be one of the GOED’s first public presentations on the subject since the inauguration of Governor Herbert. Cyber Symposium 2009 will take place Friday, September 25, 2009 at the Garden Visitors Center at Thanksgiving Point, Lehi, Utah. For more information about Cyber Symposium 2009 see www.utahcyberlaw.org.

EXPANSION OF TOP-LEVEL DOMAIN NAMES OPPOSED BY INTA

Perry Clegg — Wed, 26 Aug 2009 18:09:00 GMT

The International Trademark Association (INTA) announced in its August 1, 2009 Bulletin that INTA passed a resolution to oppose the current proposal by the Internet Corporation for Assigned Domain Names and Numbers (ICANN) for an unlimited expansion of new generic Top-Level Domain Names (gTLDs).

ICANN sets and manages global policies for Internet gTLDs and has proposed expanding from the 21 existing gTLDs, e.g., .com, .org, and .net, to an unlimited number of gTLDs. A number of organizations in addition to INTA have expressed opposition to ICANN’s proposed expansion of gTLDs. Some view the new policy as a money grab. Others focus on the concerns regarding increased potential for trademark infringement and dilution and complaints that ICANN’s existing system has not been effective at protecting trademarks against cybersquatters already trading among the current gTLDs.

According to the INTA Bulletin, INTA will be issuing a revised Draft Applicant Guidebook for new gTLDs in September 2009. Text of INTA’s resolution opposing the proposed unlimited expansion of gTLDs can be found at www.inta.org.

Expansion of new gTLDs has been a hot topic among domain name and trademark professionals, including business and legal professionals and cyber entrepreneurs. If this topic interests you, consider attending Cyber Symposium 2009 in Lehi, Utah on September 25, 2009. Cyber Symposium 2009 is a full day seminar for business and legal professionals interested in strengthening their presence in the high tech industry. Douglas R. Bush, a partner in Arent Fox’s Intellectual Property practice group in Washington, DC, will be lecturing at the Cyber Symposium on the new gTLDs and on monetizing domain names. For more info see: www.utahcyberlaw.org.

MICROSOFT PERMANENTLY ENJOINED FROM XML CAPABILITIES

Perry Clegg — Wed, 12 Aug 2009 22:06:00 GMT

Microsoft must be sucking an Actiq* lollipop right now to sequester the pain from the legal beating they took yesterday in the U.S. District Court for the Eastern District of Texas. The Eastern District of Texas held that Microsoft unlawfully and willfully infringed U.S. Patent 5,787,449, which relates to the manipulation of document architecture and content, particularly data representation and transformations. Sounds complicated, but in this case it really boils down to XML files.

Damages and interest awarded against Microsoft total over $277,241,000. Maybe more importantly is that the Court permanently enjoined Microsoft from selling Word 2003, Word 2007 and any future Microsoft Word products that have the capability of opening .XML, .DOCX, or .DOCM files – basically XML files. Ironically, I am writing this news article using Microsoft Word 2007. Fortunately, the injunction does not go into effect for 60 days, so I am safe. Phew!

Microsoft is also permanently enjoined from using, instructing or encouraging anyone to use, providing support or assistance to anyone or doing any testing, demonstrating, or marketing of any of the Microsoft Word products describing the ability to open XML files. Talk about tough love.

Of course, there are a couple of exceptions to the Order. For example, the injunction does not apply to Word products opening of XML in plain text. The injunction also does not apply to Word products that upon opening an XML file also apply a custom transform that removes all custom XML elements. Sound paradoxical?

Fortunately, and maybe most importantly, the injunction also does not apply to Microsoft providing support and assistance to anyone wanting to open XML files if their Word product was licensed or sold before the date of the injunction.

*Actiq is a raspberry-flavored lollipop loaded with narcotic pain-killer for treatment of cancer patients.

CYBER SYMPOSIUM 2009 - SPEAKER ROLL

Perry Clegg — Mon, 20 Jul 2009 14:47:00 GMT

Cyber Symposium 2009 has completed its speaker roll for this year’s premier high tech seminar for business and legal professionals. The Cyber Symposium will take place on Friday, September 25, 2009 at Thanksgiving Point in Lehi, Utah. Details regarding the Cyber Symposium can be found at www.utahcyberlaw.org. A list of the speakers is provided below. Speaker biographies and registration details can be found on the Utah Cyber Symposium website.

Speakers:

David Bradford
CEO, Fusion-io
Salt Lake City, Utah

Paul Alan Levy
Public Interest Attorney, Public Citizen National Non-Profit Public Interest Organization
Washington, DC

David Kelly
Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Washington, DC

Brock Blake
CEO, FundingUniverse.com, Inc.
South Jordan, Utah

Charles Mudd
President, Privacy Innovations, Inc.
Chicago, Illinois

Paulo Parente Marques Mendes
Principal, Di Blasi Parente Vaz e Dias & Associados
Rio de Janeiro, Brazil

Pete Ashdown
CEO, XMission
Salt Lake City, Utah

Doug Bush
Partner, Arent Fox
Washington, DC

Steve Spencer
President & CTO, Twelve Horses North America, LLC
Draper, Utah

Michael J. McCue
Partner, Lewis & Roca
Las Vegas, Nevada

Lee Livingston
CFO, Fibernet Corp.
Orem, Utah

Utah Governor’s Office
A representative of the Utah Governor’s Office will be presenting a brief State of Utah Technology Address. Confirmation of the actual presenter is dependent on scheduling of the confirmation hearings for Governor Huntsman’s appointment as U.S. Ambassador to China. Details will be forthcoming.

UTAH GENIUS RESULTS 2009

Perry Clegg — Wed, 13 May 2009 06:13:00 GMT

The 2009 Utah Genius results are in and all of the awardees have been announced. Results are posted below. Results are based on patents and trademarks issued by the United States Patent and Trademark Office during 2008. Photographs and information about each of the Utah Genius awardees should be available at www.utahgenius.com later today.

The awards ceremony was well organized, interestng, and fun, which is a word I heard from a number of attendees. Jack Brittain's keynote speech was engaging, enlightening, and kept the attention of everyone. (It appeared that about 300 people attended the event.). The food was excellent as one would expect from the Grand America Hotel.

However, what I enjoyed most about the Utah Genius Awards is that it honored the inventors and minds of creativity, who are often overlooked while the business management receives accolades for company success. The event exuded sincere and heart felt appreciation for the awardees. This was particularly evident when Lane Beattie, President of the Salt Lake Chamber of Commerce spoke of Dr. Dinesh Patel as he presented Dr. Patel with the Lifetime Achievement Award. Mr. Beattie was sincerely emotional and Dr. Patel appeared truly touched. Utah Genius was a touching event and a great success.

RESULTS:

Lifetime Acheivement Award: Dr. Dinesh Patel

Top 20 Utah Patentees of 2008:

Ranking        Name                         # of Patents         Company

    1                David R. Hall                    52                  Novatek International, Inc.
    2                Ronald B. Crockett          21                  Novatek International, Inc.
    3                Jeff Jepson                      19                   Novatek International, Inc.
    4                Scott Dahigren                18                  Novatek International, Inc.
    5                Brent L. Kidman              12                  Cheetah USA Corp.
    6                Gregory J. Boss              11                   IT Architect at IBM
    T-7            Stephen R. Carter             9                   Novell
    T-7            Joe  Fox                             9                   Novatek International, Inc.
    T-7            Tyson J. Wilde                   9                   Novatek International, Inc.
    T-10          David L. DeJong               7                   MeadWestvaco Calmar, Inc.
    T-10          F. Mark Ferguson              7
    T-10          Francis Leany                    7                   Novatek International, Inc.
    T-10          Fred P. Smith                    7                   Alpine Engineering & Design, Inc
    T-10          Bradley W. Smith              7                   Autoliv ASP
    15              Bruce Raile                        6                   Sun Optics, Inc.
    T-16          Ashok Challa                      5                   Fairchild Semiconductor
    T-16          Paul T. Clegg                     5                   Vantage Controls
    T-16          William T. Dalebout           5                    Icon IP
    T-16          Bob Frey                             5                   Fairchild Semiconductor
    T-16          Darren Jones                      5                   Alpine Innovations, LLC
    T-16          Michael P. Jordan              5                   Autoliv ASP
    T-16          David O. Meyers                5
    T-16          Stewart N. Middlemiss      5                   Smith International Inc.
    T-16         Donald D. Solomon            5
    T-16         Carl R. Standford                5                   Lifetime Products, Inc.
    T-16         David L. Thorne                  5                   Bard Access Systems (Specialized Health Products)

Top 5 Cities By Number Of Patents

Rank          City                             Total # of Patents

    1             Salt Lake City             257
    2             Provo                           110
    3             Sandy                          87
    4             Orem                           59
    T-5         Draper                         40
    T-5         Spanish Fork              40

Top 5 Cities By Patents Per Capita

Rank          City                             Patents Per Capita

    1             Park City                     1 in 211 residents
    2             Lindon                         1 in 501 residents
    3             Hyde Park                   1 in 534 residents
    4             Fruit Heights               1 in 566 residents
    5             Alpine                          1 in 599 residents

Honorable Mention: American Fork received honorable mention because it had scored close to the top 5 in both Total Number of Patents and Patents Per Capita categories.

Top 20 Trademark Registrants

Rank         Company                                             # of Trademarks

    1             Provo Craft and Novelty, Inc.                         29
    2             Close To My Heart (Cabin Creek, LLC)      20
    T-3         Talisker Mountain Incorporated                     12
    T-3         American Academy Holdings, LLC              12
    5             Neways, Inc.                                                    11
    T-6         O.C. Tanner Company                                     9
    T-6         Mediaport Entertainment, Inc.                         9
    T-8         CAO Group, Inc.                                               8
    T-8         Intermountain Health Care, Inc.                       8
    T-8         ProPay USA, Inc.                                             8
    T-8         Vantage Controls, Inc.                                     8
    T-12       Browning Arms Company                              7
    T-12       Controlled Entry Distributors, Inc.                  7
    T-14       Jans Ltd.                                                           6
    T-14       NuSkin (NSE Products, Inc.)                          6
    T-14       Sinclair Finance Company                             6
    T-14       Snap Lock Industries, Inc.                               6
    T-14       The Parvus Corporation                                  6
    T-14       Trivani International, LLC                                6
    T-14       Utah Central Credit Union                               6
    T-14       Washington City                                               6

CYBERSQUATTING IN MUMBAI UPDATE

Perry Clegg — Thu, 30 Apr 2009 01:06:00 GMT

New details regarding cybersquatters using a Mumbai registrar to assist in bad faith registration and use of domain names: yesterday, I received an email from an attorney in Mumbai, India who read my last article addressing this subject. See Domain Mining in India. According to this Mumbai attorney, he has several cases involving this rogue Mumbai registrar that sets up straw registrants so the cybersquatters can force challenges to UDRP decisions into the Mumbai High Court. There the cybersquatters can delay the case for years profiting from use of the infringing domain name while the case drags out.

Apparently, one of the tactics used by the cybersquatters is to intentionally file a defective petition by not fulfilling all the technical requirements for the suit to be processed and listed for hearing, thus leaving the petition open to objections. By doing so the cybersquatters can delay the proceedings for months before the objections are removed. The intention of this tactic is to frustrate claimants so they will want to settle.

The tactic has been working because many U.S. and European claimants are settling. Unfortunately, the rate of settlement by the U.S. and European claimants is only encouraging more Mumbai cybersquatting.

Fortunately, Mumbai cybersquatters are not untouchable. While there are no ideal solutions, investigative techniques are available to get past the straw registrants.

SAMUEL MORSE: SIMPLE CAN BE POWERFUL AND NOT SO SIMPLE

Perry Clegg — Mon, 27 Apr 2009 19:11:00 GMT

Monday, April 27, 2009, marks the 218th anniversary of the birth of Samuel F.B. Morse, inventor of the telegraph. Samuel Morse’s birthday should be a reminder to us that simple can be powerful. The invention of the telegraph had profound effects on the history of the United States and the entire world. Yet the telegraph is a simple device basically comprising three parts: an electric current, a “key” for completing or breaking an electrical circuit, and an electromagnet. See, e.g., History, Theory, & Construction Of The "Electric Telegraph."

The history of the telegraph should also be a reminder to new entrepreneurs that simple is not always simple. While Samuel Morse obtained a U.S. patent for his telegraph, it was challenged and generally ignored. Morse wrote of defending his patent:

“I have been so constantly under the necessity of watching the movements of the most unprincipled set of pirates I have ever known, that all my time has been occupied in defense, in putting evidence into something like legal shape that I am the inventor of the Electro-Magnetic Telegraph!! Would you have believed it ten years ago that a question could be raised on that subject?”

See Wikipedia Biography of Samuel Morse. In fact, Morse defended his telegraph patent before the U.S. Supreme Court, which decided in 1854 that the eighth claim was invalid as being overly broad. However, the first seven claims of Morse’s telegraph patent were upheld. See, e.g., Presentation by Richard Nydegger.

Furthermore, while the public generally recognizes Samuel Morse as the inventor of the telegraph, that title is not without controversy. See, e.g., The Telegraph Invention: A Claim That It Was Due To Alfred Vail Rather Than To Morse. See also The History of the Electric Telegraph and Telegraphy.

Nonetheless, whether Samuel Morse was the actual inventor of the telegraph or not, he played a primary role in the commercialization of the electric telegraph in the U.S. and in 1851 his telegraph apparatus was adopted as the official standard for European telegraphy.

What to remember? Simple inventions can be powerful, but commercializing and defending any valuable invention can be a challenge.

DOMAIN MINING IN INDIA

Perry Clegg — Thu, 23 Apr 2009 04:30:00 GMT

A domain name registrar in Mumbai, India has discovered a great way to market its business to cybersquatters. Here is how it works.

Under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), someone who files a UDRP proceeding agrees to “submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction.” Mutual Jurisdiction basically means that that if you decide to challenge the UDRP decision in court, you have to do so in one of two jurisdictions: either the jurisdiction where the registrar’s principal office is located or the jurisdiction where the listed address of the existing registrant is located. See UDRP Rules Definitions.

So how has this Mumbai registrar taken advantage of the Mutual Jurisdiction provision? In India, lawsuits can be extended for substantial periods of time – maybe even up to 10 years or more. The Mumbai registrar says it will set up straw registrants to hold domains in India for cybersquatters. The Mumbai registrar will also file lawsuits on behalf of the cybersquatters in India to appeal UDRP proceedings. What this means is that cybersquatters can delay transfer of domains names they have registered in bad faith for up to 10 years or more by forcing the proceeding into Indian courts. During the delay period the cybersquatter continues to profit from use of the domain.

Some have suggested that this can be avoided by first filing an action in the United States under the Anticybersquatting Consumer Protection Act (ACPA) instead of filing a UDRP proceeding. See, e.g., article by Deborah Wilcox et al. Such a suit would be brought under in rem jurisdiction provisions of the ACPA. While this may seem like a simple solution, in rem jurisdiction is not always as straight forward as it appears. See, e.g., article by Evan Brown. Nonetheless, it remains a viable option to consider.

DINESH PATEL BEING HONORED AS UTAH GENIUS

Perry Clegg — Fri, 17 Apr 2009 19:40:00 GMT

Dr. Dinesh Patel is being honored with the Utah Genius Lifetime Achievement Award on May 12, 2009 at the Grand America Hotel in Salt Lake City, Utah. Dr. Patel is well known among Utah's entrepreneur and biotech community. A few of his many achievements include:

*    Founding managing director of vSpring Capital
*    Founder, and former Chairman, President & CEO of Ashni Naturaceuticals, Inc.
*    Currently holds 15 US Patents and Foreign Counterparts
*    Has been an active angel investor in over 20 biotech and technology companies
*    Co-founder and former Chairman of Salus Therapeutics, Inc.
*    Co-Founder, and former Chairman of The Board of Directors and President & CEO of TheraTech, Inc., a biotechnology company which he took public and eventually sold for $350 million to Watson Pharmaceuticals.

Dr. Patel also serves on a number of non-profit boards, and has received various awards, such as 2006 Utah Technology Council Hall of Fame Inductee, 2006 Ellis Island Medal of Honor, US Small Business Administration’s Business Achiever Award, Scientific and Technology Award (State of Utah), Entrepreneur of the Year Award (Mountain West Venture Group) and Scientific and Technology Development Pioneer of Progress Award.

Dr. Patel is also a charter member of The Indus Entrepreneurs, served as co-chair of Utah Governor Huntsman’s transition team, and is currently on the board of the Utah Policy Partnership (UPP). Recently Dr. Patel was appointed Chairman of the USTAR Governing Authority board.

You can learn more about UTAH GENIUS at www.utahgenius.com.

Technophiles Voice Your Opinions

Perry Clegg — Thu, 02 Apr 2009 01:01:00 GMT

Technophiles, we want your opinions. Utah’s 2009 Cyber Symposium will take place on Friday, September 25, 2009 at Thanksgiving Point in Lehi, Utah. It will be an all day event including breakfast and lunch, with speakers, panelists, etc. presenting on issues at the heart of the technology sector. While the 2009 Cyber Symposium is being organized by the Cyberlaw Section of the Utah State Bar, our goal is to make this an event enjoyable for both tech-businesses and tech-lawyers.

Here is how you can help. I am currently the Chair of the Cyberlaw Section of the Bar and on the Cyber Symposium organizing committee. Our itinerary is still flexible being that the Symposium is six months away. Technophiles, tech-businesses, and tech-lawyers are our audience so your opinions matter. If you have an opinion regarding what subjects you would like addressed at the Cyber Symposium, please post. If you would like to assist by volunteering your time, please let me know. If you know people you think should present or be on a panel, again, please contact me.

Also, sponsor opportunities are still available. If you are interested, contact me and we will do our best to provide you a cost effective way to get your name on our program.

REPUBLICAN LEADERS GO METRO, OR WAS THAT RETRO?

Perry Clegg — Sun, 29 Mar 2009 07:37:00 GMT

Saturday, March 28, 2009 - this evening the Utah County Republican Women honored former Congressman Chris Cannon with a dinner at Utah Valley University in Orem, Utah. After the dinner and speeches, comedian Shawn Rapier brought Republican leadership on stage as part of his act. As you can see, he tricked them into dressing as the Village People. Do you recognize any of them?

From left to right are Utah State Senator John Valentine, Lieutenant Governor Gary Herbert, U.S. Senator Orrin Hatch, U.S. Senator Bob Bennett, and former Congressman Chris Cannon. After the Utah Republican leadership realized they were dressed as the Village People, Rapier played "Macho Man" and being good sports they all danced as seen below.

The crowd went wild. I am not sure that I have ever seen anything more hilarious. Below you can see the "before" photo of the unsuspecting politicians.

LEGALZOOM’S LOOMING LEGAL PROBLEMS

Perry Clegg — Tue, 24 Mar 2009 20:20:00 GMT

The Center for Nonprofit Creation (CNC) has brought suit against Legalzoom for breach of contract. Apparently, CNC entered a business relationship with Legalzoom in 2004 under which CNC developed questionnaires that Legalzoom used to help its customers establish non-profit organizations. Legalzoom clients would complete the questionnaires which CNC used to prepare tax-exempt status applications. Under the arrangement, Legalzoom was to pay CNC a fixed $350 fee for each application completed.

According to the suit, Legalzoom continued to use CNC’s proprietary information after Legalzoom stopped sending questionnaires to CNC. CNC had apparently received approximately $1.6 million in fees prior to Legalzoom’s alleged breach of contract.

In addition to CNC’s lawsuit against Legalzoom, questions remain whether in any number of states Legalzoom is in violation of the rule against the unauthorized practice of law. See, e.g., LegalZoom Continues Unauthorized Practice of Law; also compare eLawyering and the Unauthorized Practice of Law.

From personal experience, our firm has seen a number of individuals having first used Legalzoom. The result has been potential risk to their intellectual property and at times increased costs to correct issues that could have been avoided had an experienced intellectual property attorney been engaged from the start. The risks of using Legalzoom are particularly heightened when it involves patents and trademarks. Complex fact dependent issues involving priority, disclosure, offers for sale, use, and strict time deadlines are not easily addressed via canned online legal help.

Oddly, there has been a dearth of investigations by State Bars and Attorneys General. This is not for lack of merit, but rather there does not seem to be enough political pressure to start a meaningful investigation. Hopefully, having the legal spotlight on Legalzoom will bring more public awareness to the issue and encourage authorities to take a closer look.

Twitterpated About Coca Cola

Perry Clegg — Sat, 21 Mar 2009 07:46:00 GMT

I recently searched Twitter for Twitterheads using trademarks of Coca Cola in their username or name. I found less than expected – somewhere in the range of 80 Twitterheads. Most of them were unrelated to the subject of the all American soft drink. About 24, however, appeared to be using the term Coke or Coca Cola in reference to the soft drink company. Again, most of these were benign and would not likely cause any dilution of or a likelihood of confusion with the Coca Cola Company’s trademarks. Some were fans, others were critics.

One of my favorite Coca Cola Twitterheads was username coke_blog. You can find his blog at www.coca-colaconversations.com. According to his blog site, he was the historian/archivist for Coca Cola for 30 years. It is not clear whether coke_blog has any official ongoing affiliation with the Coca Cola Company, although I did not attempt to confirm one way or the other.

There were also about 8 or 9 Twitterheads that were using combinations of Coca Cola trademarks and trade dress more closely approaching trademark infringement. A couple of them were probably no-brainers. These more problematic user accounts ranged among Twittersquatting (something akin to cybersquatting except that a username is at issue instead of a domain name), misuse of trademarks as actual names, and misuse of trademarks and trade dress on Twitterhead profiles.

In an upcoming blog I will be discussing legal issues surrounding Twittersquatting in more depth, so stay tuned.

End Notes/Definitions:

Twitterpated – confused by affection or infatuation. See Dictionary.com.
Twitterhead – one who twitters. Although see Urban Dictionary for an alternative definition.
Twittersquatting - something akin to cybersquatting except that a username is at issue instead of a domain name. See Slashdot.

UTAH GENIUS AWARDS ON MAY 12, 2009 AT LITTLE AMERICA

Perry Clegg — Fri, 20 Mar 2009 00:48:00 GMT

The Utah Genius Awards will be presented on May 12, 2009 at a luncheon at Little America Hotel in Salt Lake City. The purpose of the awards is to recognize individuals driving Utah’s creative economy. Unlike other awards programs, Utah Genius focuses on the creative individuals and municipalities driving Utah's economy, rather than on the corporations. Awards are given based on objective data gathered for 2008. Awards include, among others:

* Top 20 Utah Patentees

* Top 5 Cities by Number of Patents

* Top 5 Cities by Patents per Capita

* Top 20 Utah Trademark Registrants

Jack Brittain will be the keynote speaker at this event. Jack Brittain is the Dean of the David Eccles School of Business and the University of Utah’s Vice President of Technology Venture Development.

UTAH GENIUS is being presented by Utah Pulse and Bateman IP Law Group. Platinum sponsors include the Daily Herald and Rocketship. Gold sponsors include Utah CEO and the Salt Lake Chamber of Commerce. Silver sponsors include Lumin Publishing, Lassonde Center, and Utah Valley Entrepreneurial Forum.

For registration or more info go to: www.utahgenius.com

INSIGHT ON UTAH SENATE’S SEDATION OF HB 450

Perry Clegg — Tue, 17 Mar 2009 15:20:00 GMT

As many already know, HB 450, the bill to amend Utah’s Trademark Protection Act, did not get past the Utah Senate before the end of the 2009 Legislative Session. Since Utah’s 2009 Legislative Session has closed, I thought I would provide some interesting insights regarding the last days of HB 450.

My perspective comes in part from my experience as Chair of the Cyberlaw Section of the Utah State Bar and from participation this year as a member of the Utah State Bar’s Governmental Relations Committee. However, my comments here are solely mine and I do not write on their behalf.

A few weeks ago, HB 450 was submitted to the Utah State Bar’s Governmental Relations Committee (GRC) for review. As stated on the Bar’s website:

“The Bar’s Governmental Relations Committee meets on a weekly basis throughout the Legislative session each year. A legislative representative retained by the Bar tracks all pending or proposed legislative action. Under direction from the Utah Supreme Court, the Committee studies and provides assistance on public policy issues, and advises the Bar Commission on positions to adopt on public policy issues. This includes the courts of this state, procedure and evidence in the courts, the administration of justice, the practice of law, and matter of substantive law on which the collective expertise of lawyers has special relevance and/or which may affect an individual’s ability to access legal services or the legal system defined by the Utah Supreme Court. The Committee also uses the broad participation of the Bar members to review and analyze pending legislation which may affect an individual’s ability to access legal services or the legal system, and to provide technical assistance to the Legislature, the Governor, the Judicial Council and other public bodies upon request.”

As a practical matter, the Bar avoids taking positions where there are competing views among its members with respect to policy. Consequently, in most cases the GRC votes to take “no position” except where there is problematic language, such as language creating unintended consequences, or where there is a negative impact on access to justice.

In the case of HB 450, it came before the GRC towards the end of the 2009 Legislative Session. My initial reaction was concern with the cumbersome language selected by the drafters. Several other lawyers from other Sections of the Bar but who were also experienced in the relevant field likewise expressed concern. In fact, two former Chairs of the Cyberlaw Section of the Bar also expressed to me many of the same concerns. In each case, except one, those expressing concerns over HB 450 confided they were in favor of HB 450’s underlying policy, but had doubts regarding the language and/or approach.

I attempted to contact one of HB 450’s sponsors so I could discuss my concerns with him before the GRC took a vote. I wanted to discuss my concerns with the language and to make sure I understood the intent behind the HB 450’s language. My hope was to suggest language that would both comply with the sponsors’ intent and avoid the problems stemming from the existing language (which was conflicting and had substantial potential for unintended consequences).

Unfortunately, I did not hear back from the bill’s sponsor before the GRC took a vote. Consequently, several members, including myself, recommended that the Bar oppose HB 450 as written (based on the language problems and not on the underlying policy). The GRC ended up voting (unanimously, as I recall) for the Bar to oppose HB 450 "as written."

After the GRC vote, the Bar Commission requested that I meet with one of HB 450’s legislative sponsors and one of its drafters to discuss the Bar’s concerns. We had what I believed to be productive meetings and discussions. We eventually came to a consensus regarding the problems and how HB 450’s language could be amended to address them. It was my understanding that the changes would be made by way of a floor amendment in the House.

Based on the apparent consensus, I agreed to make a recommendation to the Bar to withdraw its opposition with the understanding that the discussed changes would be made to HB 450 on the House floor. Apparently, another communication also took place between one of the bill’s supporters and one of the Bar Commissioners to the effect that if the Bar withdrew its opposition, the agreed to changes would be made by way of floor amendment. It is not perfectly clear what happened next, except that HB 450 passed in the House by a vote of 38-36-01 and the agreed upon changes were never made.

After HB 450 went to the Utah Senate, opponents of the bill reinvigorated their campaign to sway Senate votes against HB 450. Apparently, one or more of the opponents had influence on the Utah Technology Council (UTC), which began a campaign against HB 450 with what I believe were misleading talking points. The UTC’s arguments were not well made and certainly led some of the local attorneys who specialize in “cyberlaw” to believe the UTC was merely acting as the mouthpiece for another entity.

Sources tell me that the law firm Workman Nydegger was behind the UTC’s campaign against HB 450; and Workman Nydegger, of course, represents Microsoft on a substantial number of matters. So an educated guess leads one to believe that Microsoft may have had substantial influence, albeit indirect, behind the UTC’s campaign against HB 450. You can read more about the UTC’s talking points against HB 450 at Rand Bateman’s IP Thoughts or in my previous blog on the subject.

Shortly before the end of Utah’s 2009 Legislative Session I called a friend who is in the know on bills being voted on. He sent me the following via text messages:

“It’s not going to make it through this year. Senate leadership decided to pull it back, study it over the next year, and then bring it back next year. I think they want to call Google’s bluff, i.e., they want to tell those who oppose the bill that the Senate leadership sees the use of trademarked ad-words as a problem, and that the bill’s opponents should either propose a compromise solution or expect some form of this bill to pass next year. Senate leadership apparently believed that there were not enough votes to pass it this year, but that they could gather the votes to pass it by next year.”

It appears that of the two major debates over HB 450 - language and policy - the Utah legislature is generally behind HB 450’s policy but want to make sure they do their homework so the policy is implemented using the right language. Utah’s Senate may have sedated HB 450, but they did not kill it. We can likely expect to see it rise again during next year’s legislative session.