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Lisa Warren Examines the Value of In-Person Interviews for Expediting Patent Allowance in Mass. Lawyers Weekly Article 08/15/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Life Sciences.
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LMW Headshot Photo 2015 (M0846622xB1386)In her Massachusetts Lawyers Weekly article “Expediting Patent Allowance with In-Person Interviews,” patent attorney Lisa Warren explains why it may be beneficial to take advantage of in-person interviews with the U.S. Patent & Trademark Office in order to expedite the allowance of a patent. Although options such as telephone or video conference interviews may be available and more convenient, Lisa notes:

sometimes there is simply no substitute for direct interpersonal interaction with an examiner to build rapport and improve the mutual understanding of the issues.”

Additionally, Lisa addresses relevant considerations when deciding if in-person interviews are preferable during the patent application process, as well as requirements for the interview itself. These and other insights from Lisa can be found in the full article.

Corporate Attorney Shannon Zollo Explains In-House Counsel’s Role in Due Diligence 07/05/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Corporate, Intellectual Property.
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M0846567In Corporate Counsel’s article “10 Uber In-House Attorneys Saw Due Diligence Report in Battle With Alphabet“, Shannon Zollo comments on the role of in-house counsel in the due diligence process. The article discusses a due diligence report from Uber’s acquisition of Otto, in which Alphabet claims there is proof that Uber knowingly acquired stolen intellectual property. As such, the importance of the due diligence process is highlighted and, in particular, in-house counsel’s role in the process.

Shannon explains that the goal of the due diligence period is to review a target company in a merger or acquisition and ascertain whether or not there are any potential issues. He notes:

The purpose of a diligence report is to understand as best as is possible before you close, the nature of the target and whether that target fits within your acquisition profile across the board.”

If any issues do arise, Shannon states that the buyer’s internal team has to discuss the next best steps and that “in-house counsel should be deliberate in trying to maintain privilege”.

For more information from Shannon on the due diligence process read the full article.

Matal v. Tam: The Supreme Court Rejects the Prohibition on Disparaging Trademarks 06/22/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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Sean D. Detweiler (SDD)By: Sean Detweiler and Bianca Sena

On Monday June 19, 2017, the U.S. Supreme Court ruled that the U.S. Trademark Office’s denial of registration for “disparaging” trademarks under Section 2(a) of the Lanham Act violates the Free Speech Clause of the First Amendment and is therefore unconstitutional. The case, Matal v. Tam (previously known as Lee v. Tam) concerned the federal trademark registration of “The Slants,” an all Asian-American rock band. The Court affirmed the Federal Circuit’s decision that Section 2(a) constituted viewpoint-based discrimination because it necessarily required a subjective value judgment on whether something is “disparaging.” The decision upended a portion of statute that has been in place since 1946. The decision will likely impact a parallel trademark case, Pro Football Inc. (a.k.a., the Redskins case), which involves the same disparagement clause section of the Lanham Act and cancellation of the Redskins trademark registrations.

For further detail, read “Matal v. Tam: The Supreme Court Rejects the Prohibition on Disparaging Trademarks”. For more information on trademarks, please contact Sean Detweiler.

Howard Zaharoff Co-Chairing 2017 MCLE Annual IP Law Conference 05/11/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property.
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HGZ Headshot Photo 2015 (M0846618xB1386)As in previous years, intellectual property attorney Howard Zaharoff will co-chair MCLE’s 20th Annual Intellectual Property Law Conference 2017. The conference will cover various intellectual property topics, including IP litigation, protecting designs, IP issues in software, and the Defense of Trade Secrets Act.

The conference will be held on June 20th, both in-person and available via live webcast.

Lisa Warren Moderating Panel at Northeastern University School of Law 2017 Women in the Law Conference 05/08/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property.
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LMW Headshot Photo 2015 (M0846622xB1386)Don’t miss Lisa Warren next Friday, May 19 at the Northeastern University School of Law (NUSL) 2017 Women in the Law Conference. Lisa will moderate the panel “Unlocking the Mysteries of the ‘New Girl’ Network“, where panelists will discuss how women’s networks can spark ideas, recharge your career, build client relationships, and lead to meaningful connections with others in the public and private sectors. Attorney General Maura Healey will be the keynote speaker at the conference.

View the event page for registration information and the full conference agenda.

Shann Kerner Joins MBBP as Intellectual Property Partner 05/03/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Life Sciences, MBBP news.
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SLK Headshot Photo 2017 (M1062434xB1386)We are pleased to announce the addition of Intellectual Property Member Shann Kerner.

Shann has substantial experience advising emerging, mid-sized and public companies in the biotechnology, pharmaceutical and medical device fields, counseling them on the creation, leveraging and protection of IP, with a view towards strengthening the business strategy of her clients.

A versatile and seasoned member of the Intellectual Property department, Shann concentrates her practice on IP counseling, particularly on patent portfolio procurement and management and IP due diligence in connection with venture capital, mergers and acquisitions, IPOs, and internal audits. Shann also focuses on analyses regarding patentability, freedom-to-operate, inventorship, derivation, validity and competitive subject matter landscape.

We invite you to contact Shann directly.

MBBP’s Life Sciences Vector Newsletter, Spring 2017 04/20/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Corporate, Intellectual Property, Life Sciences, MBBP news, New Resources.
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Our Life Sciences team has published the Spring 2017 edition of its newsletter, Vector. Below you will find brief descriptions of the news and articles included in the publication. Read the full newsletter for more information.

DAVID CZARNECKI AND STANLEY CHALVIRE ELEVATED WITHIN THE FIRM

We are pleased to announce that David Czarnecki and Stanley Chalvire have been elevated to Member. Dave is exceptionally proficient in guiding both buyers and sellers through a wide range of corporate transactions. Stan is a Registered Patent Attorney, specializing in the licensing of intellectual property and related counseling.

AMANDA PHILLIPS NAMED 2017 UP & COMING LAWYER

Litigation associate Amanda Phillips has been named a 2017 Up & Coming Lawyer by Massachusetts Lawyers Weekly. The recognition is awarded to a select number of attorneys who have been practicing for fewer than 10 years but whose professional achievements are noteworthy and whose service to the community is also significant.

CORPORATE ATTORNEY MICHAEL JABBAWY JOINS FIRM AS PARTNER

Michael’s practice is focused primarily in the areas of emerging and growth technology companies, venture capital, M&A transactions, and corporate governance. As a member of the Corporate Department, Michael advises technology and other emerging companies through each stage of growth. Prior to joining MBBP, Michael was a member of the Technology Companies group at Goodwin Procter LLP.

RECENT LIFE SCIENCES TRANSACTIONS

MBBP represented several clients in life sciences transactions, including iSpecimen, Orionis Biosciences, First Light Biosciences, and Manus Biosynthesis. The transactions ranged from convertible debt to equity investments. Learn more on page 2.

FREEDOM TO OPERATE: PREVENTION IS THE BEST MEDICINE

Launching a new product or service can be fraught with uncertainty and involve large expenditures of limited resources. An FTO opinion can reduce uncertainty and provide some insurance against loss from an unfavorable finding of infringement of another’s patent. An FTO opinion makes a determination whether a product or service infringes issued patents. In other words, the opinion indicates whether or not there is “freedom to operate” the product or service within the patent landscape. Often, FTO opinions also identify patent applications that, if later issued as patents, may be problematic. Read the full article on page 2.

THE PATENT PROCESS: GET ON THE FAST TRACK

One of the biggest frustrations for patent applicants is the incredibly slow pace at which an application proceeds from filing to receipt of a substantive examination report to allowance. On average it takes 15.7 months for a patent application to receive even a first substantive examination report, though there is significant variability across technology areas. The Patent Office has recognized this problem and implemented several initiatives which attempt to address the problem from different angles. Two programs in particular have gained traction: the Patent Prosecution Highway (PPH) and Track One Prioritized Examination. Continue reading for more information about these programs.

OWNERSHIP OF ARISING INVENTIONS IN JOINT DEVELOPMENT AGREEMENTS

Collaboration remains a valuable means of fostering innovation and advancing scientific, clinical and commercial objectives. Towards that end, two or more parties contemplating a collaboration often consider entering into a Joint Development Agreement, where they define, among other things, their respective contributions and responsibilities towards their common objectives. These types of collaborations require a careful and thorough consideration of the disposition of intellectual property rights that may arise as a result of each party’s performance of its responsibilities under such collaborations. Read more starting on page 3.

GUEST COLUMN:
FOR SKILLED IMMIGRATION TO THE U.S., THE TIMES, THEY MAY BE CHANGING

The last year of the Obama Administration saw an increased activism by President Obama in the area of skilled immigration. Through Executive Orders and regulations, the President made a number of important changes including providing Employment Authorization for spouses on H-4 visas, increasing the period of post-graduate employment authorization for foreign students in STEM fields (Science, Technology, Engineering and Mathematics), increasing the number of academic fields included in STEM and formalizing a grace period for foreign nationals on H-1B visas that find themselves between jobs. Read the full article beginning on page 5.

Faith Kasparian Comments on Privacy & Data Security Implications of Burger King’s New Google-Triggering Ad 04/14/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Privacy and Data Security.
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FDK Headshot Photo 2015 (M0846572xB1386)Intellectual property attorney Faith Kasparian comments on the potential privacy and data security repercussions of Burger King’s new ad in Bloomberg’s article, “Burger King’s Google-Triggering Ad Invites Complaints, Scrutiny“. The article discusses Burger King’s recent ad controversy, after it prompted consumers’ Google Home devices to respond to the prompt “OK, Google. What is the Whopper burger?”.

Faith notes that:

It’s unreasonable for Google not to have appropriate mechanisms in place so that the device couldn’t be activated by a third party.

She also states that the FTC could have a claim against Google for the ad since consumers did not receive proper disclosures, and that Google could also take legal action against Burger King for “inappropriately leveraging that device”.

For more information on the legal implications of the ad, read Bloomberg’s article.

Why You Should Spend Dollars on Patent, Trademark Protection 04/11/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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Sean D. Detweiler (SDD)In the article, “Why You Should Spend Dollars on Patent, Trademark Protection“, published on CFO.com, patent and trademark attorney Sean Detweiler discusses why it is important for companies to protect the thoughts they pay for through patent and trademark protection. According to Sean, failure to protect this information could lead to loss of company value and a narrowing of opportunities.

Most often, patents are the best form of protection for innovations implemented in your products or services. But if you take your time in pursuing them they may no longer be available to you.

For more information, read the full article on cfo.com or feel free to contact Sean directly.

List Mania: Top IP Developments of 2016 04/04/2017

Posted by Morse Barnes-Brown Pendleton in Computer Software & Hardware, Intellectual Property, Internet and E-Commerce, Privacy and Data Security, Telecommunications & Networking.
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wrs-headshot-photo-2016-m0980966xb1386While you may have been distracted by a tumultuous 2016, at MBBP we have been monitoring developments in intellectual property. We are happy to present, in no particular order, our list of the top IP developments of 2016, plus an Honorable Mention for 2017.

In the full article on our website, “List Mania: Top IP Developments of 2016“, Bill Schmidt covers the following developments:

  1. Patent Infringement Plaintiffs Get a “Halo”: Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc.
  2. A Light at the End of the Tunnel for Software Patents?: Enfish v. Microsoft Corp.
  3. High Octane Fee Shifting: Octane Fitness, LLC v. Icon health & Fitness, Inc.
  4. Limits on “Common Sense”: Arendi S.A.R.L. v. Apple
  5. Shhh… It’s a Secret: Defend Trade Secrets Act of 2016
  6. Designs, Damages, and Dinner Plates: Apple Inc. v. Samsung Electronics Co.
  7. Personal Information Expressway: EU-US Privacy Shield Framework
  8. In Defense of Abbott and Costello: TCA Television Corp. v. McCollum
  9. Thanks, but No Thanks: UK votes to exit the European Union
  10. Honorable Mention for 2017: CRISPR/Cas9

Patent and Trademark Attorney Sean Detweiler Discusses Possible Risks from Using Low-Cost Trademark Registration Services in New Article 03/21/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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Sean D. Detweiler (SDD)In the past 5 or so years, there have been a number of online, low-cost, entrants into the trademark registration space. Companies like The Trademark Company, TTC Business Solutions, and others, promote low-cost trademark registration services. However, questions have surfaced as to whether such services are operating ethically.

Sean Detweiler discusses recent charges brought against low-cost trademark registration companies by the USPTO and the potential risks from using one of these services. He states that:

It is true that the counseling and advice will likely cost more than going it on your own, or using one of these low-cost services that claim an attorney is involved. However, there is clearly a substantial risk in skipping the advice and counseling that experienced trademark attorneys offer, and either filing trademark applications pro se (as an individual, on your own) or using some of the low-cost online trademark registration providers, such as The Trademark Company.

Read the full article, “Recent Developments Should Have Trademark Owners Thinking Twice About Using Low-Cost Registration Services” for more information.

Pick Up the (Patent Process) Pace! 03/07/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Life Sciences.
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LMW Headshot Photo 2015 (M0846622xB1386)A common frustration for patent applicants is the incredibly slow pace at which an application proceeds from filing to receipt of a substantive examination report to allowance. On average it takes 15.7 months for a patent application to receive even a first substantive examination report! The Patent Office has recognized this problem and implemented several initiatives which attempt to address the problem from different angles. Lisa Warren, MBBP Managing Partner and Patent Attorney, discusses the Patent Prosecution Highway and the Track One program in her new article.

Interested in moving your patent application into the fast lane? Contact Lisa directly.

MBBP Attorneys Sean Detweiler and Bill Schmidt to be Panelists for Intellectual Property Event 02/28/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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wrs-headshot-photo-2016-m0980966xb1386Sean D. Detweiler (SDD)

MBBP patent and trademark attorney Sean Detweiler and patent attorney Bill Schmidt are scheduled to be panelists for an upcoming event on March 23rd as they discuss “Intellectual Property: The Ins and Outs of Intellectual Property (IP)”. Sean and Bill will be answering questions as they relate to Intellectual Property, specifically patents, in order to save people time and money by answering general questions prior to a client contacting an attorney.

This event will take place on March 23rd from 2-4pm at TechSandbox, with the attorneys covering the basics of IP and patents, and a Q&A session to follow. In addition, attendees with further questions will each have the special opportunity of a one-on-one session with one of the attorneys.

This is a very special event you don’t want to miss! View the event page for more information.

Howard Zaharoff Highlights 2016 Copyright Legislative and Regulatory Developments 02/16/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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HGZ Headshot Photo 2015 (M0846618xB1386)While many are reflecting on the key copyright cases of 2016, Howard Zaharoff states the necessity of noting the important copyright legislative and regulatory developments that also took place. In his most recent article, Copyright Law: Legislative and Regulatory Developments, Howard discusses developments by the House Judiciary Committee, the Small Copyright Claims Tribunal, and the new procedure for registering designated agents under the DMCA, among others.

For an overview on these and other copyright developments, read the full article.

Contours of Copyright #4: No Protection for Game Play 12/21/2016

Posted by Morse Barnes-Brown Pendleton in Games & Interactive Entertainment, Intellectual Property.
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The battle between an Ancient Chinese themed game, and a Wild-West game, reminds us that rules of game play are generally not protectable by copyright, but certain expressive game aspects may be.HGZ Headshot Photo 2015 (M0846618xB1386)

Discussion: The plaintiff in DaVinci Editrice v. ZiKo Games (S.D. Tex. 2016) published Bang!, a role-playing card game with Wild-West themes that became a world-wide success. Bang! players are assigned one of four roles – Sheriff, Deputy, Outlaw or Renegade – each with its own “winning condition” (e.g., the Sheriff wins by outliving the Outlaws and Renegades).  Each player also gets assigned a card evoking a familiar Wild-West character (e.g., Calamity Janet) with its own unique ability and 1-to-5 “life points.” Players also draw “weapon cards” (enabling them to reduce competitors’ life points) and “mount cards” (enabling them to gain distance from competitors, making them harder to attack).

One defendant, Yoka Games, based in China, produced the card game Legends of the Three Kingdoms, distributed in the U.S. by the other defendant, ZiKo Games, LLC. Despite the different setting (Ancient China) and accompanying different artwork, the four roles in LOTK – Monarch, Minister, Rebel and Turncoat – had the same abilities, functions, goals and winning conditions as the comparable roles in Bang!; players were subject to nearly identical rules of play; players drew Chinese hero cards with similar abilities and life points as the Bang! character cards; and similar action cards were used.

Notwithstanding procedural wrangling over the lay vs. expert status of a witness and arguments about the significance of various similarities, this was an easy summary judgment for the Court:  “Bang!’s characters, roles, and interactions are not substantially similar to those in LOTK. The aspects of the roles, characters, and interactions that are similar are not expressive, and aspects that are expressive are not substantially similar. ZiKo and Yoka are entitled to summary judgment of noninfringement.”

An Interlude for Copyright Aficionados:  The Court’s reasoning begins with the black letter principle that copyright protects expression, not ideas. Therefore, “Copyright does not protect game rules because they fall within the section 102(b) exceptions for an ‘idea, procedure, process, system, method of operation’.”

On the other hand, the Court acknowledges that “courts have found expressive elements copyrightable, including game labels, design of game boards, playing cards and graphical works.” The present dispute focuses on the roles and characters and their interactions, which are very similar in both games. Thus, the key issue is: Are the characters’ similar interactions “unprotectable game play,” as the defendants argue, or “protectable expressive content,” as the plaintiffs argue?

The Court begins by distinguishing two types of games: (1) those like books and movies, which have a progression of events (plot) and developed characters (who interact following a script) “that make the game expressive” (e.g., The Legend of Zelda), and (2) those like NBA games, which consist of “loosely prescribed progression” (“teams trade offensive possessions over four quarters”) between players with assigned roles (guard, forward, center) but without predetermined interactions, which are therefore neither expressive nor copyrightable.

Bang!, says the Court, “has no specific plot or detailed information about the characters that tells us what these characters will do or how they will interact with other characters.” Rather, like basketball, Bang! has created a number of roles, defined their alignment with and opposition to other roles, and created rules for their interaction, but has not created a scripted or detailed performance for each game.  Thus, Bang! is more basketball than novel, and its character interactions are not protected by copyright.

The Court also addresses character copyright and explains why LOTK wasn’t infringing, despite the near-identity of the 4 main roles (excluding their look and labels). The answer lies in the “distinctiveness” requirement: To earn copyright protection, characters cannot be stock, generic or indistinct, but must embody enough original expression to attain copyrightability. However, “Bang! has no specific plot or detailed information about the characters… LOTK’s alignment of roles tracks Bang!’s, which in turn was drawn from the general alignment of stock characters in ‘spaghetti Westerns.’”

The Court also considers and rejects the plaintiff’s argument that, even if the characters themselves are not copyrighted, their special abilities may be: “The Bang! characters’ abilities are largely drawn from stock-character abilities. Like a punch or kick in a karate game, Bang! characters’ abilities are common in games in which the object is to kill the other players.” Moreover: “Even if the Bang! characters’ abilities were not stock, they are still not expressive because they are essentially rules of game play.”

A similar conclusion applies to the plaintiff’s key claim, namely, that the Bang! characters’ interactions via the game rules are themselves subject to copyright. But that argument fails here for the same reason it failed at the higher level of character copyright: “Bang! characters do not have delineated personalities, temperaments, back stories, or other features typical of characters in movies and books that contribute to making those characters’ interactions protected.”

Conclusion: The Court was mindful that game rules are generally not copyrightable, a principle that anchored its holding in favor of the defendants. However, the Court did recognize at least three game elements that could potentially give rise to copyrights:

  1. expressive graphics or other original visual elements;
  2. a relatively fixed progression of themes, dialog, mood, setting and character; or
  3. well-delineated characters themselves.

Still, if a character (whether in a novel, film or videogame) is not sufficiently distinct to be copyrightable – which may be because it is a “stock” character defined only by generic traits, or because it is a positional player guided only by rules of play – then its interactions with other characters will not be copyrightable, unless these interactions are at least partly fixed or scripted.

In short, despite displaying some of the artistry of its namesake, DaVinci’s characters (and their traits and interactions) were too stock and generic to be copyrightable … and thus its suit failed to produce more bucks for its Bang!.

For more information on this topic, please contact Howard Zaharoff.

MBBP’s Howard Zaharoff Will Be a Panelist in Boston Bar’s 17th Annual Intellectual Property Year in Review 12/19/2016

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, MBBP news.
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MBBP’s Howard Zaharoff will be a panelist at this year’s Boston Bar Association Intellectual Property Year in Review, one of Boston’s premier annual IP events. Howard will be discussing some of the most important copyright developments of the HGZ Headshot Photo 2015 (M0846618xB1386)past year, with his co-presenter, Attorney Lucy Lovrien.

This annual panel has been organized for intellectual property specialists to discuss the latest developments with practitioners in the field. Howard and his fellow panelists will discuss patents, copyrights, trademarks, and trade secrets, and the event will close with a networking opportunity for all attendees.

The event is scheduled for Thursday, January 26th, 2017 from 3:00 PM to 6:00 PM at the Boston Marriott Long Wharf. See the event details for more information.

Copyright Alert: New Copyright Office Electronic System to Register Designated Agents Under the DMCA 12/02/2016

Posted by Morse Barnes-Brown Pendleton in Intellectual Property.
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ip-news-jpeg-m0118331xb1386Effective December 1, 2016, the US Copyright Office rolled out a new electronic system for the online registration of designated agents under the Digital Millennium Copyright Act (“DMCA”). Consequently, all online service providers who want the benefit of the safe harbor against copyright infringement claims are required to register under the new electronic system or, if they’re already registered under the old paper system, to submit fresh designations under the electronic system by December 31, 2017. Thus, agents who previously filed hardcopies of their DMCA agent designations must now do so again online, within the next 13 months, in order to keep the benefits of the safe harbor.

To learn more about the DMCA and necessary compliance, read the full alert.

Privacy & Data Security Video: Privacy & Data Security Issues for Service Recipients and Service Providers 11/01/2016

Posted by Morse Barnes-Brown Pendleton in Client News, Intellectual Property, Privacy and Data Security.
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In our eighth and final Privacy & Data Security video clip, MBBP attorney Faith Kasparian discusses how companies sharing information with third-party service providers can create liabilities, both because many data breaches arise from third-party access, and because companies fail to oversee these third parties as required by law.  Faith will guide you through a few key points relevant to both service recipients and service providers.

Make sure to subscribe to our YouTube channel and to check out our Privacy & Data Security playlist for related videos.

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Privacy & Data Security Video: Privacy and Data Security in the Cloud 10/11/2016

Posted by Morse Barnes-Brown Pendleton in Attorney News, Computer Software & Hardware, Intellectual Property, Privacy and Data Security.
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In our fifth Privacy & Data Security video clip, MBBP attorney Howard Zaharoff identifies the legal and practical measures that both cloud providers and cloud customers should take, including the critical terms each should require in their contracts.

Make sure to subscribe to our YouTube channel and to check out our Privacy & Data Security playlist for related videos.

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Privacy & Data Security Video: Privacy in M&A Transactions 09/19/2016

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Privacy and Data Security.
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In our second Privacy & Data Security video clip, MBBP Attorney Faith Kasparian discusses key privacy and data security issues that companies must consider when participating in an acquisition.

Make sure to subscribe to our YouTube channel and to check out our Privacy & Data Security playlist for related videos.

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