The following changes have also been made:

• Marks will renew for 10 years in contrast to the previous 14 year term.
• Multiclass Applications are now available.

According to the New York Post, Franklin’s lawyer David Fish says that the ex-model has a “fairly good idea who was doing this, but we want to make 100 percent sure before we file the suit.” They have turned to a Manhattan judge in order to get Google and YouTube to uncover the identity of this anonymous YouTuber so that Franklin can take legal action against him and prevent similar incidents from happening to her in the future.

Despite the seeming novelty of this situation, there already exists a fairly large volume of caselaw which supports Ms. Franklin’s efforts to reveal her defamer’s identity.

In Doe v. Cahill, 884 A.2d 451 (2005), the Delaware Supreme court applied the Modified Dendrite Test to analyze whether plaintiff satisfied what amounted to a summary judgment standard for defamation to warrant the release of an anonymous blogger’s identity. While such a standard is fairly difficult to meet, many states have already applied it to release identities in “obvious” cases for defamation.

The Southern District of New York had previously ruled that such a “trap” buy, made by the plaintiff’s attorney for the sole purpose of creating jurisdiction, did not satisfy the statute’s nexus requirement. On 5 August 2010, the 2nd Circuit overruled the lower court, paving the way for future New York plaintiffs to bring suit against out-of-state infringers who peddle infringing goods via the World Wide Web.

The D.C. branch will focus exclusively on trademark law; specifically on appeals of Trademark Trial and Appeals Board (TTAB) decisions before the United States District Court for the District of Columbia and also before the United States Federal Circuit Court.

“Jailbreaking” is a term which describes the process of hacking a phone’s operating system in order to disable its security measures which otherwise prevent users from installing unauthorized applications. Prior to the FCC’s ruling, jailbreaking was a clear violation of the above statutes because it required the jailbreakers to hack the security measures of an operating system which necessarily contained underlying intellectual property (e.g., the operating system code).

This is likely to expand the market for 3rd party and user generated apps.

Economists are concerned that the new law will discourage businesses from buying goods and services from a wide array of vendors where they, instead, will consolidate their dealings to a smaller group of regulars.

Exemption: Businesses purchasing goods via credit or debit card are exempt from such reporting requirements as separate measures will be taken to capture such information.

Comment on Rules: The IRS is currently accepting public comment on how to implement the new rules. Comments can be made here.

Anthony H. Handal

Tony is Of Counsel to the firm’s Intellectual Property practice group and one of the most experienced intellectual property litigators in the United States. He focuses his practice on patent, trademark and copyright trial and appellate work. An experienced engineer who conceived the first digital data compression system while a University researcher under Project Apollo, he also has worked for many years in licensing, and related corporate matters, as well as in the enforcement and procurement of intellectual property rights in the United States, Europe, and Asia.

Over the past 30 years, Tony has served as lead counsel in over 200 intellectual property lawsuits with amounts at risk ranging up to $2 billion, representing such clients as ADM, JVC, Conair Corporation, Dayco, Estee Lauder, Clear Channel, Neiman Marcus and Target. These actions have been before the U.S. Supreme Court, many Federal appellate and district courts, and overseas tribunals, and include jury and bench trials. In his career, he has also obtained over 700 patents for his clients. He has experience representing clients from various technologies and industries, including pharmaceuticals, electronics, business methods, medical devices, software, molecular biology, biomedical systems, holography, apparel and retail. Tony has taught patent litigation strategy at the Patent Resources Group. He has also presented in-house training programs at many corporations, including Xerox, Pitney Bowes, J.P. Morgan Chase and General Electric.

Tony earned his Bachelor of Science in Engineering from Polytechnic University and his Juris Doctorate from the Georgetown University Law Center.

Admitted to Practice

Tony is admitted to practice in the states of New York and Connecticut. He is also admitted to practice before the United States Patent and Trademark Office, the U.S. Supreme Court, the Court of Appeals for the Federal Circuit, the U.S. Court of Appeals for the Second, Fourth, and Ninth Circuits, the Southern, Eastern and Northern Districts of New York, the Eastern District of Pennsylvania and the Eastern District of Texas.

Publications

• “Does the Power of the Internet Justify Changing Traditional Rules for Trademark Infringement?” · Intellectual Property Today, February 2009
• “Intellectual Property Update: Inter Partes Reexamination Becoming Efficient and Effective in Removing Weak Blocking Patents” · Thompson Hine LLP Bulletin, September 2008
• “Second and Fifth Circuits Clash on Copyright Protection for Costumes and Clothing” · Intellectual Property Today, October 2005

Awards & Honors

• Selected for inclusion in New York Super Lawyers® magazine (intellectual property litigation)

Anthony H. Handal

online at

visit superlawyers.com

Section 512(c) of the DMCA protects ISPs from copyright infringement claims for storing user-uploaded infringing content so long as the ISP does not have “actual knowledge” of the infringement or “is not aware of the facts and circumstances from which infringing activity is apparent” or expeditiously removes the infringing content upon receiving notice of the violation. The Court has ruled that YouTube benefits from the DMCA’s safeguard because its services are analogous to that of an ISP (it provides storage for user uploads of videos) and it does not directly benefit from the uploaded content (e.g., YouTube does not charge people to watch the uploaded videos).

The most interesting aspect of this case is the Court’s decision that YouTube’s general knowledge that users tend to upload infringing content (like music videos) does not raise sufficient “red flags” to count as being “aware of the facts and circumstances from which infringing activity is apparent.”

In other words, YouTube knows that it hosts infringing content; we, the users, know that YouTube hosts infringing content; the entire world pretty much knows that YouTube hosts infringing content; but this knowledge is too “general” to raise red flags of infringement. Thus YouTube is liable only if YouTube is notified of infringement by the content owner and then fails to expeditiously remove that content.

This is a big ruling for publishers of user-based content who, by emulating YouTube’s Terms of Service and Policy, can likewise shield themselves under the DMCA’s safeguard.

The distributor license – a common product licensing agreement — is a complicated agreement whose drafters must take extra care to delineate each party’s rights and responsibilities else costly litigation is the surefire end-result.

Here’s what a typical distributor agreement should have:

1)      The parties (obviously).

2)      The Services: This is a detailed description of each party’s responsibility to the other. For example: Party A agrees to distribute software in New York for party A. In return, Party B agrees not to license any other parties to distribute the software in New York. Perhaps party B will also be responsible for updating and providing customer warranties for the software? That’s ultimately up to the parties…

3)      The Payment: Who pays whom? At what intervals? What are the penalties for late payments? Who is responsible for dealing with the end-client, collecting on invoices, etc…?

4)      Additional Warranties: This is where the parties make additional promises to one another. This is also where a good attorney will anticipate and provide for as many contingencies as possible: should an unanticipated contingency occur, costly litigation becomes inevitable (e.g., the distributor’s state passes a new tax on the type of product distributor sells and the agreement fails to provide which party bears the burden of this new tax). Best Advice: Do not rely on Googled forms, especially for large value agreements; hire a lawyer who knows your industry and, therefore, knows what can go wrong.

5)      Proprietary Rights: This is the trademark law section. The agreement should clearly state which intellectual property belongs to which party. After several years of working together and using one another’s logos on your products, the lines between who owns what can get blurred…

6)      Limitation on Liability: This is usually standard language where each party agrees not to hold the other liable for standard failures under the agreement (you can’t disclaim non-standard failures, like setting fire to the warehouse).

7)      Term (time): This is self-evident.

8)      Termination: This is also very important and requires sound legal counsel. How a relationship terminates and what continuing rights and responsibilities the parties have are just as important and litigation-prone as how the agreement begins.

9)      Arbitration and Choice of Law: These are optional but highly recommended. A strong arbitration clause will ensure that any disagreements go to arbitration. While arbitration can get costly, such costs do not come near the years-long engagement of motion practice, discovery and appeals you see in traditional litigation.

In sum, the main goal of a well-drafted agreement is to provide for as many contingencies as possible in order to avoid future disputes and certainly to avoid costly litigation over such disputes.

Most cross-examination methods are analogous to walking the witness out to the edge of a tree branch (the tree representing their argumentative position) and then giving that branch a good shake. This technique, which works better with expert witnesses (“experts” in their respective fields and probably experts in the sense that they find themselves in the courtroom as often as do lawyers), is analogous to getting the witnesses to cling tighter and tighter to the trunk only to finally show him that he was climbing entirely the wrong tree.

The trick is to play on the expert’s desire to display his expertise to the jury by “yessing” him through a long series of questions which subtly build up the contrary side of his ultimate conclusion. Once you have helped him lock himself to that position, it is a simple matter of casually revealing how such a position is entirely contrary to the other party’s conclusions.

Note: Do not fear objections! This video also serves as a good example of how the other party will attempt to interrupt your narrative with a constant stream of objections. Such disruptions tend to freeze many a counsel up as they pause their narrative to argue with the other side. If you are in the middle of a nice little narrative, it is best to keep your response to the objection to one or two words — keep that incredulous look on your face — and let the judge overrule them as they come. Sticking to an entertaining/interesting narrative for the jury is far more important than getting into a side tiff with opposing counsel!

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