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MBBP Partner Joseph Martinez Participating in MIT Enterprise Forum’s Spring Start Smart Class 05/11/2016

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Client News, Corporate, Employment, Events, Financial Services, Intellectual Property, Licensing & Strategic Alliances, MBBP news.
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Corporate partner Joseph Martinez will take part in MIT Enterprise Forum’s (MITEF) Spring Start Smart Class, which will run from May 23-June 20.  M0846610He will appear as a Guest Speaker during the third class, which will focus on legal issues for startups.  Specifically, Martinez will discuss the employment, financing, and intellectual property legal issues facing startups.

MITEF’s Spring Start Smart Class is an eight session program focused on providing expertise to entrepreneurs on how to launch a successful new business.  The program is structured as a hands-on workshop, and features guest speakers whose fields of expertise correlate with each class’s specific topic of discussion.

For more information and to register for the course, see the full details here.MITEF-Full-Color-e1438717228333

New Federal Law Protects Trade Secrets But Also Requires Changes to Employee and Contractor Agreements 05/05/2016

Posted by Morse, Barnes-Brown Pendleton in Client News, Employment, Intellectual Property, Licensing & Strategic Alliances, Privacy and Data Security, Public Companies.
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By, Sandra E. Kahn SEK Headshot Photo 2015 (M0912965xB1386)

It is expected that President Obama will soon sign into law the Defend Trade Secrets Act of 2016 (DTSA), which creates a new federal civil cause of action for trade secret theft.  While claims for trade secret theft may still be brought under the various state laws which protect intellectual property, this new law will provide uniform protection on the federal level.

The DTSA defines trade secrets consistently with the Uniform Trade Secrets Act (UTSA), and applies broadly to any trade secrets “related to a product or service used in or intended for use in, interstate or foreign commerce.”  Along with the ability to bring a lawsuit to fight trade secret theft and pursue equitable remedies and the award of damages for the misappropriation of a trade secret, the DTSA also includes a provision for expedited relief on an ex parte basis to prevent the dissemination of misappropriated trade secrets, which may be obtained under “extraordinary circumstances.”

The DTSA also provides protection for whistleblowers, granting immunity to  parties who, under certain circumstances, disclose a trade secret to the government or an attorney to report wrongdoing, or as part of an anti-retaliation lawsuit.  Of particular interest to our clients is the requirement that employers must now provide a notice of this immunity protection in any contract or agreement with an employee (or an independent contractor or consultant) that governs the use of a trade secret or other confidential information.    If this notice is not included in all contracts which are signed or revised after the effective date of the act, the employer will not be able to recover exemplary damages and attorneys’ fees under the DTSA (although the employer may still pursue any available damages under other causes of action).  Employers are advised to consult with their counsel to revise all agreements with employees and contractors in order not to run afoul of this requirement.

The DTSA, by itself, may not be used to prevent a departed employee from entering into a new employment relationship with a competitor, and provides that any conditions placed on such employment must be based on “evidence of threatened misappropriation and not merely on the information the person knows,” in effect rejecting the doctrine of inevitable disclosure.

Survey Says: Top NINE Intellectual Property Developments of 2015 03/04/2016

Posted by Morse, Barnes-Brown Pendleton in Computer Software & Hardware, Intellectual Property, Licensing & Strategic Alliances, Life Sciences, Privacy and Data Security, Publishing & Media.
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happy-birthdayBy: Callie L. Pioli

2015 was another busy year in terms of intellectual property law, but luckily, MBBP has been carefully monitoring all of the important developments. There were many contenders for spots in our list, but only a select few could make the cut.

Get a recap on 2015 (and prepare for success in 2016) by reading our list.

We cover:

  1. Happy Birthday to All! – Marya v. Warner/Chappell Music, Inc.
  2. Google Books (Authors Guild v. Google, Inc.)
  3. Disparagement versus Free Speech: In re Tam
  4. Issue Preclusion & The TTAB: B&B Hardware, Inc. v. Hargis Indus., Inc.
  5. Patient Infringement Liability: Akamai Techs., Inc. v. Limelight Networks, Inc.
  6. Biosimilarity: Amgen v. Sandoz
  7. ­Patentability of Natural Phenomena: Ariosa Diagnostics, Inc. v. Sequenom, Inc.
  8. Computer Fraud & Abuse Act
  9. Safe Harbor Down, EU-US Privacy Shield Up

 

Clearing Away Cloud Confusion; MBBP Team to Illuminate Intricacies of Buying and Selling Cloud Services 02/01/2016

Posted by Morse, Barnes-Brown Pendleton in Computer Software & Hardware, Corporate, Events, Intellectual Property, Licensing & Strategic Alliances, Privacy and Data Security, Telecommunications & Networking.
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Lawyers for technology companies are increasingly asked to assess the risks of client companies shifting from standard sales and licenses to a cloud model, and lawyers for every company need to assess the pros and cons of receiving core technology as a service over the internet. On Wednesday February 3rd, at a NECCA (New England Corporate Counsel Association, Inc.) seminar  held at the Westin Waltham from 10:00 to noon, MBBP attorneys Howard Zaharoff, John Hession, Mark Tarallo and Faith Kasparian will address the complexities of cloud computing and offer guidance to in-house counsel and other professionals advising their clients on these critical issues.

Among the topics to be covered are understanding the legally relevant features of cloud computing, identifying the key contract issues, recognizing the terms a standard vendor contract should contain, and discovering the implications of  recent developments in data privacy, particularly in the EU, for companies that are purchasing or selling cloud services.

To explore these and many other aspects of this complex and rapidly -evolving subject, reserve your space for this important and edifying NECCA seminar. Lunch will be served at 12:30 p.m.

The Contours of Copyright #3: Too Short for Copyright? 01/04/2016

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Intellectual Property, Licensing & Strategic Alliances, New Resources, Publishing & Media.
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M0846618It is axiomatic that copyrights do not protect words or short phrases. But how short is too short for copyright? 10 words? 5 words? 3 words? Consider Henny Youngman’s classic 4-word joke, “Take my wife … please.” Is that a copyrightable jocular expression, or an uncopyrightable short phrase (or, for you copyright pros, a merged idea)? The answer is important, not only to comedians, but also to epigrammatists, songwriters, poets … and anyone who wishes to include, in a work they are creating, word sequences they’ve seen used by another.

A recent case, William L. Roberts v. Stefan Kendal Gordy (U.S D.C., S.D. Florida 2015), provides helpful guidance, though not a definitive answer.

Discussion: The plaintiffs, Roberts et al., owned the musical composition Hustlin’, whose chorus consists of the repeated refrain “everyday I’m hustling.” The defendants, Gordy et al., had a hit song, Party Rock Anthem, which included the phrase “everyday I’m shuffling.” When the defendants began marketing their “shuffling” phrase on T-shirts and other merchandise, the plaintiffs sued, arguing that their copyright in the song included a copyright in the “hustlin’” refrain, and therefore they could prevent anyone from copying that refrain, whether in a similar song or standing alone on a garment.

The defendants disagreed, and the court sided with them. Yes, said the court, the plaintiff’s song was entitled to copyright protection. However, “copyright protection does not automatically extend to every component of a copyrighted work.” Rather, because “originality” is the sine qua non of copyright, and short phrases are common and unoriginal, the copyright in a work does not extend to individual short phrases (or, of course, single words) in the work. This doesn’t mean, the court explained, that the presence of “ordinary” phrases deprives a work of copyright protection; but it also doesn’t mean that the copyright umbrella shelters every word or phrase contained in a copyrighted work.

Or, as the court puts it: “The question presented … is not whether the lyrics of Hustlin’, as arranged in their entirety, are subject to copyright protection. The question is whether the use of a three-word phrase appearing in the musical composition, divorced from the accompanying music, modified, and subsequently printed on merchandise, constitutes an infringement of the musical composition Hustlin’. The answer, quite simply, is that it does not.”

To add insult to injury, the court also notes that the terms “hustling” and “hustlin’” were used in many earlier songs, and that the plaintiffs never asserted that the phrase “everyday I’m hustlin’” originated with them – which in itself could have killed their copyright claim (to be copyrightable, a work needn’t be novel, as in the patent sense of never before appearing anywhere, but does need to be original, in the copyright sense of having composed it oneself without copying from another). Finally, says the court, there is no substantial similarity between the original musical composition, containing the (uncopyrightable) phrase “everyday I’m hustlin’,” and the defendant’s T-shirts, containing the (uncopyrightable) phrase “everyday I’m shuffling.”  In short, none of the plaintiff’s original expression was infringed by the defendant’s apparel.

An Interlude for Copyright Aficionados: There was nothing earthshaking about this decision, though it is interesting to read the court’s sampling of many short phrases that failed to win copyright protection, including: “so high” (2 words), “get it poppin’” (3 words), “fire in the hole” (4 words – uh-oh, Henny), “most personal sort of deodorant” (5 words), and “You Got the Right One, Uh-Huh” (5 words, plus an “Uh-Huh”). So, one might conclude, a half dozen words or more are probably the minimum required for copyrightability.

Perhaps the reason this court – and no court I’m aware of – has stated a bottom line number below which copyright cannot apply is that no one can be absolutely certain that a creative author couldn’t be original in even a handful of words. Let’s cheat, make up a word, and stick it in a short phrase: “She’s my joyzilla mama.” Four words – really 3 plus a mashup – which have never appeared before (a Google search more or less confirmed this).  Can I use copyright law to prevent another person from using my original phrase in a song or on a T-shirt?

My answer is a definite “maybe.” The epigrammatist Ashley Brilliant has successfully registered – and once successfully asserted – copyrights in his epigrams, many of which are quite short (such as, “When all else fails … Eat” = 5 words). Poets and songwriters often feel that their short but creative phrasings are worthy of protection. So maybe we can’t state an absolute bottom line because we can’t guaranty that a brilliant writer or composer won’t dash our assumptions.

Conclusion. Still, it’s hard to imagine anyone successfully claiming copyright in any 2- or even 3-word (real words, not coined) phrase – if for no other reason than given the relatively small number of meaningful 2- and 3-word phrases, and the exhaustive output of English speakers, each of those short phrases would have already appeared so frequently that no one using such a phrase could convincingly assert it originated with them, or that they should have the right to keep anyone else from using it.

So, unlike Roger Bannister running a mile under 4 minutes, the possibility of someone writing a copyrightable phrase of under 4 words (probably 5, possibly 6) should stand the test of time.

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

Star Wars And Technology: May The Patent Office Be With You… 12/18/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Licensing & Strategic Alliances, New Resources.
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Today, December 18, 2015, is the official release in the U.S. of Star Wars: The Force Awakens, which is the seventh installment in the film series. The original trilogy began in 1977, and 38 years later is still going strong; a highly regarded film franchise to say the least. In part, the film series owes some of its success to the technology that “surrounds and penetrates” the movies.

Since the original trilogy, inventors have focused on creating or improving upon such Star Wars technologies as human prosthetics, solar power, robotics, lasers, rocket and missile technology, force fields, clones and genetic engineering, cybernetics, forms of levitation, and holography.

If you are thinking about trying to make something from the Star Wars universe a reality, “do…or do not. There is no try.” “You can’t stop change any more than you can stop the suns from setting.” And if you invent something, remember that it is “unwise to lower your defenses.”

Read the full article here!

MBBP Attorney to Present Upcoming myLawCLE Program 04/09/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Corporate, Events, Legal Developments, Licensing & Strategic Alliances, M&A, MBBP news, Public Companies.
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Corporate Attorney Mark TaralloOn Monday, April 13th, MBBP Attorney Mark Tarallo will be presenting myLawCLE’s “Basic LLCs 101”. The goal of the program is to provide course participants with a basic understanding of limited liability companies.

The course will discuss a wide range of information regarding limited liabilities companies, including:

  • What is an LLC?
  • Comparison of LLCs with other entities-Liability, Taxes, and Other Issues
  • Formation of the LLC
  • When to Use and Avoid the LLC
  • Drafting the Operating Agreement-Key Provisions
  • Ethical Issues in Representing the LLC

Any questions regarding this topic, please feel free to contact Attorney Mark Tarallo directly.

To register for this event, please see the myLawCLE events page.

Infringement v. Homage: Pharrell Williams, et al. v. Bridgeport Music Inc., et. al. 03/30/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, Licensing & Strategic Alliances, Publishing & Media.
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By: Callie L. Pioli

Callie L. PioliThe music industry did not get far into 2015 before delivering a blockbuster copyright case. Pharrell Williams’ and Robin Thicke’s 2013 hit Blurred Lines was in fact only 50% their hit, according to a jury verdict in mid-March that found in favor of Marvin Gaye’s children.  As co-owners of his original 1977 hit, Got to Give it Up, Gaye’s children successfully argued that Williams and Thicke had copied numerous aspects of their father’s song and had infringed the copyright in the 1977 hit. The jury accepted the Gaye family’s contention that if Got to Give It Up had been properly licensed, the family would have received royalties of 50% of the $8 million in Blurred Lines revenue. Additionally, Williams and Thicke were forced to surrender $3.4 million of their earned profits from Blurred Lines sales.

Ironically, the lawsuit was commenced by Williams and Thicke themselves, who originally sought a preemptive ruling that Blurred Lines “shared no similarities”[1] with Got to Give It Up after receiving complaints from members of the Gaye family. The Gayes, as defendants, successfully litigated a counter-claim, arguing that the songs were substantially similar and that they were owed $25 million in royalties, profits, and statutory damages. Williams and Thicke lived up to their reputations as performers while on the stand, doing their best to persuade the jury to re-interpret copyright law as excluding the “feel” or “sound”[2] of music, and taking the opportunity to sing to the jury.

While much has been made of the spotlight on Thicke’s admitted drug use in the studio, the blatantly inconsistent statements regarding exactly how much influence Gaye had on Williams and Thicke during the writing process, and the whopping total award of $7.3 million to the Gaye family, the suit also illustrated the importance of both copyright compliance and honoring fiduciary duties. Continue reading…

Any interested “ordinary observers” can listen to a direct comparison of Blurred Lines and Got to Give it Up online.

For more information on copyright law and intellectual property licensing, please contact Callie Pioli or any member of our copyright group.

[1] Complaint for Declaratory Relief at ¶ 1, Pharrell Williams, et al. v. Bridgeport Music Inc., et. al., No. 13-06004 (N.D. Cal. Aug. 15, 2013).

[2] Id. at ¶ 2.

Forging Successful Strategic Alliances for Life Sciences Companies 02/25/2015

Posted by Morse, Barnes-Brown Pendleton in Corporate, Licensing & Strategic Alliances, Life Sciences, M&A, New Resources, Public Companies.
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M0744200When entering into an exclusive licensing arrangement, the odds of success are against most companies. Typically within the first twelve months of an arrangement, 2/3 of all alliances crumble.  If these ventures are so prone to failure, what preventative measures can a company employ to ensure success?

To learn how to achieve success when entering an alliance, read John Hession’s full article.

MBBP Client Demiurge Studios Acquired by SEGA Networks 02/20/2015

Posted by Morse, Barnes-Brown Pendleton in Client News, Computer Software & Hardware, Games & Interactive Entertainment, Intellectual Property, Legal Developments, Licensing & Strategic Alliances, New Resources, Public Companies, Publishing & Media.
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2015-02-19_10-29-40MBBP Client Demiurge Studios, an independent game developer out of Cambridge, Massachusetts, has been acquired by SEGA Networks, a multinational video game developer, publisher, and hardware development company. Founded in 2002, Demiurge Studios made the transition into mobile gaming in 2008 and found success with Marvel® Puzzle Quest™, a top 100 grossing app on the App Store and top 50 grossing apps on Google Play. Previously, they worked with world-class developers like BioWare™ and Irrational Games™ on AAA console and PC games, contributing to titles such as BioshockBorderlands, and Mass Effect. Demiurge Studios will continue to make games under the Demiurge Studios name.

Morse, Barnes-Brown & Pendleton serves as counsel to Demiurge Studios, and advised it in connection with the structuring, negotiation and documentation of this transaction.

Joe Martinez was the lead corporate attorney on MBBP’s team, which also included attorneys Mike Cavaretta, Diana Española and Hillary Peterson.

To learn more, read the full press release.

Our Greatest Hits of 2014! 01/21/2015

Posted by Morse, Barnes-Brown Pendleton in Corporate, Employment, Immigration, Intellectual Property, Licensing & Strategic Alliances, M&A, MBBP news, Privacy and Data Security, Public Companies, Taxation.
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From the Top Ten Issues in M&A Transactions to the Life Cycle of an IRS Audit we’re recapping the most popular articles and blogs in 2014!

Other popular articles include:

Most popular posts from our 4 blogs:

These articles, along with our newsletters and other blogs can found here.

MBBP’s Sean Detweiler Presents at WIT Accelerate Bootcamp 10/14/2014

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, Licensing & Strategic Alliances, MBBP news.
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Patent Attorney Sean DetweilerLast week, MBBP patent attorney Sean Detweiler spoke at an even hosted by the Wentworth Institute of Technology Accelerate program.  The event is called Bootcamp, and it allows students to get insights about innovation and entrepreneurship, while also getting inspiration for new ideas and and how to make them real. Sean gave a presentation on intellectual property with specifics about patents, including provisional applications, what they should cover and when to think about them in the context of a start-up scenario.  The audience was very involved, and there were some great questions as well as more specific discussions on patent law issues.

For more info on patents and intellectual property, please contact Sean Detweiler

 

‘Battle of the Forms’: Can it be won? 09/18/2014

Posted by Morse, Barnes-Brown Pendleton in Licensing & Strategic Alliances, New Resources.
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By: Michael J. Cavaretta

cavaretta2Often, in transactions between customers and vendors, each party has its own “boilerplate” terms and conditions that it wants to use, which of course are often quite different than the other party’s terms – a scenario referred to as “the battle of the forms”. So how does one know which terms govern the transaction? This presentation helps to sort it out.

Originally presented on 9/17/14, MBBP IP & Licensing attorney Mike Cavaretta touches upon the following:

  • Sale of services vs. sale of goods
  • Is software a service or good?
  • Is a software license a sale of software?
  • Electronic agreements
  • Strategies

View the slides here. Questions? Contact Mike.

MBBP Attorney Stanley Chalvire to Speak at MDG Boston Forum 09/05/2014

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, Internet and E-Commerce, Licensing & Strategic Alliances, MBBP news, Medical Devices.
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chalvireMedical Development Group (MDG), an organization for professionals in the medical device industry, is hosting an upcoming forum event entitled “Intellectual Property Approaches to Safeguard Value”. MBBP IP and Licensing Attorney Stanley F. Chalvire will serve as one of the speakers of this forum event, which will generally be directed to intellectual property strategies for creating and preserving value of medical devices.

 During the forum, some topics that Stan will address include:

  • Trade Secrets and the protections they can provide
  • Distinguish Trade Secrets and Patents
  • Discuss Strategic Considerations to Maintain Trade Secrets

The event takes place at Constant Contact headquarters in Waltham, MA on Wednesday October 1st.

 To register, please visit MDG Boston 

 

OYO Sportstoys Featured on WBZ-TV 08/04/2014

Posted by Morse, Barnes-Brown Pendleton in Client News, Licensing & Strategic Alliances.
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OYO Sportstoys, Inc.MBBP client OYO Sportstoys, Inc. was recently featured on a segment of WBZ-TV discussing its factory in Acton, Massachusetts that is creating mini sports figures of famous athletes. OYO has licensing agreements with MLB, the NFL and the NHL which allows them to use the names of all players. They hope to get a deal with the NBA soon asPatrice Bergeron OYO Figure well. OYO figures are compatible with other notable building block toys like Lego, Kinex, Mega Blocks and more. Each little OYO mini-figure is customized to look like the real player and gets a little water bottle and a football, baseball or hockey stick.

Congratulations OYO!

Check out the full video here: Acton Company Doing Big Business Making Little Plastic People

COPPA Rule Amendments are in Effect as of July 1, 2013 07/11/2013

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, Licensing & Strategic Alliances.
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IP Licensing and Trademark Attorney Faith KasparianBy: Faith Kasparian

On July 1, 2013, the amendments to the regulations that implement the Children’s Online Privacy Protection Act (COPPA) went into effect.

The COPPA Rule imposes requirements on operators of websites or online services (including apps) that are directed to children under the age of 13 or that have actual knowledge that they are collecting personal information online from a child under the age of 13. Among other COPPA Rule requirements, operators must provide notice to parents and obtain verifiable parental consent before collecting, using, or disclosing personal information from children under the age of 13. The amendments constitute the first major changes to the COPPA Rule since the Rule went into effect in 2000.

There are five important changes reflected in the COPPA amendments:

  1. Expanded Definitions
  2. Modification to Notice to Parents and COPPA Privacy Policy
  3. Additional Methods for Obtaining Parental Consent
  4. Heightened Responsibilities on Operators
  5. Increased Oversight of Safe Harbor Programs

To learn more about these changes, please see the full article here.

For further information on the COPPA Rule Amendments, please contact Faith Kasparian or Mike Cavaretta.

Developing an app? Make sure you own it! 02/20/2013

Posted by Morse, Barnes-Brown Pendleton in Games & Interactive Entertainment, Intellectual Property, Licensing & Strategic Alliances.
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MBBP Attorney Mike CavarettaOn February 11th, Adobe published an article “Developing an app? Make sure you own it!” written by MBBP Licensing, Technology and IP Attorney Michael Cavaretta. Mike advises readers on precautions app developers should take in order to ensure their ownership rights are protected.

To read the full article, please visit the Adobe Developer Connection.

For more information on developing an app, feel free to contact Mike.

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