jump to navigation

M&A Video Clip – Post-Closing Indemnifications: Common Issues in M&A Transactions 11/23/2015

Posted by Morse, Barnes-Brown Pendleton in Corporate, M&A, New Resources.
Tags: ,
add a comment

In the ninth video of MBBP’s M&A Clip Series, M&A attorney Mary Beth Kerrigan describes post-closing indemnifications in M&A transactions.

M&A Clips Video #9 - Post-Closing Indemnifications in Purchase Agreements

Changes to Canadian Trademark Law 11/17/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources.
Tags: , , , ,
add a comment

On June 19, 2014, Bill C-31, Canada’s Economic Action Plan 2014 Act, No. 1, received Royal Assent. The Bill contains a large series of amendments to Canada’s Trade-marks Act and will allow Canada to (among other things) accede to three key international treaties: (1) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol); (2) the Singapore Treaty on the Law of Trademarks (the Singapore Treaty); and (3) the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice Agreement).

The new regime is expected to come into force by late 2016 or early 2017. Those already owning or considering registration of a Canadian trademark should be aware of these new changes to Canadian trademark law. Read the full article here.

For more information on trademark matters, please contact Callie Pioli, Thomas Dunn or Sean Detweiler.

M&A Video Clip – Representations & Warranties: Common Issues in M&A Transactions 11/16/2015

Posted by Morse, Barnes-Brown Pendleton in M&A, New Resources.
Tags: , , ,
add a comment

In the eighth video of MBBP’s M&A Clip Series, M&A attorney Mary Beth Kerrigan talks about representations and warranties in M&A transactions.



M&A Video Clip – Earn-outs: Common Issues in M&A Transactions 11/09/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, M&A, New Resources.
Tags: ,
add a comment

In the seventh video of MBBP’s M&A Clip Series, M&A attorney Joe Marrow discusses earn-outs.


The Contours of Copyright #2: Can You Copyright Yoga Poses? 11/06/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Intellectual Property.
Tags: ,
add a comment

Attorney Howard ZaharoffBy Howard Zaharoff

Section 102 of the Copyright Act tells us that “choreographic works” – i.e., dances – are protected by copyright. So if you’re Alvin Ailey or Saroj Khan, the copyright police will protect you if someone copies or publicly performs your original choreography.

But what if you’re Beto Perez, who created Zumba; or Arnold Schwarzenegger (governor, actor, bodybuilder), who developed his own workout routines; or Bikram Choudhury (yoga guru and plaintiff), who in 1979 published a book describing his “Sequence,” 26 asanas and two breathing exercises performed for 90 minutes in a room heated to 105 °F? Does copyright protect original workouts or yoga sequences?

Probably not. At least according to the 9th Circuit in the recent case, Bikram’s Yoga College v. Evolation Yoga.

Discussion: Bikram Choudhury, self-proclaimed “Yogi to the stars,” was important in popularizing yoga in the U.S. He claimed he developed his Sequence after many years of research and verification, and he touted its many health and fitness benefits. But when two students who attended his 3-month teacher training started their own studio, offering a “hot yoga” class very similar to his Sequence, he sued for infringement.

The district court ruled that the Sequence was a “collection of facts and ideas” not entitled to copyright protection. Choudhury appealed and the Circuit Court upheld the lower court’s finding.

The Court first reasoned that the Sequence is “an idea, process or system designed to improve health” (Choudhury himself described his Sequence as a “system” or “method” designed to “systematically work every part of the body”). Since Section 102 of the Copyright Act is clear that copyright does not protect any idea, process or system, the Court easily concluded that the Sequence was an unprotectable idea or system. Put differently: “Choudhury thus attempts to secure copyright protection for a healing art,” an obvious no-no.

Nor does the grace and beauty embodied in the Sequence matter, since many processes can be beautiful –a surgeon’s movements, a baker’s kneading – without being copyrightable. In other words, “beauty is not a basis for copyright protection.”

The Court similarly dispensed with Choudhury’s argument that, even if individual yoga poses cannot be copyrighted, the original sequence of poses he developed is copyrightable as a “compilation,” that is, a work formed by “the collection and assembling of preexisting materials.” Not so, said the Court: because Choudhury himself claimed that “the medical and functional considerations at the heart of the Sequence compel the very selection and arrangement of poses and breathing exercises,” the entire Sequence, no less than the individual poses, is itself a process and “therefore ineligible for copyright protection.”

The final – and, as discussed below, least satisfying – part of the Court’s holding is that the Sequence cannot be protected as a “choreographic work.” The Court acknowledged that this term isn’t defined in the Copyright Act (though the legislative history makes clear that the term excludes “social dance steps and simple routines”). But that doesn’t matter, says the Court: “The Sequence is not copyrightable as a choreographic work for the same reason that it is not copyrightable as a compilation: it is an idea, process, or system to which copyright protection” may not extend.

The Court also noted that daily life consists of “many routinized physical movements, from brushing one’s teeth to pushing a lawnmower,” which could be characterized as forms of dance (by whom, the Court does not say). Only the idea/expression dichotomy prevents people from obtaining “monopoly rights over these functional physical sequences.” So at least in the 9thCircuit, arrangements of physical movements with a functional purpose, such as improving one’s health or fitness, no matter how aesthetic or beautiful, are merely unprotectable ideas or processes and therefore cannot be claimed as anyone’s copyright.

An Interlude for Copyright Aficionados: The Court’s final argument – that compilations of physical movements that “serve basic functional purposes” are unprotectable ideas/processes and not protectable choreography – begs the question. It’s cheating for a court to simply declare that a sequence of physical movements that functions as a means to health and fitness is thereby an uncopyrightable process without explaining why other sequenced movements that have similar fitness benefits are copyrightable choreography (which is surely true of the athletic choreographic routines of Alvin Ailey and Pilobulus).

Is it the functional purpose (or effect) of Choudhury’s sequence of poses – i.e., that despite their grace and beauty, they are particularly conducive to fitness – which makes the Sequence an uncopyrightable process? Why? Rarely does the functionality of a work completely deprive it of copyright. Even the designers of “useful articles” can claim copyright in any “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects.” If functionality were a copyright killer, architecture and software would have no protection.

Indeed, why not treat physical movements like architecture and software? Just as copyright law provides no protection for “individual standard features” of architectural works, or for standard routines and features of software applications, can’t we conclude that, although individual poses (or short sequences of poses) that are included in the Sequence and that are unoriginal, standard, or highly effective for fitness cannot be monopolized by copyright, the original overall selection and order of the poses can be deemed sufficiently original and aesthetic to qualify as copyrightable choreography?

In short, nothing in the Court’s opinion explains why the entire 28-step Sequence was ruled an unprotectable idea and no aspect or feature of these graceful movements could be deemed choreographic and copyrightable. This is not to say the Court is wrong. Rather, right or wrong, the Court failed to articulate any principles that distinguish movements constituting “a healing art” from movements constituting athletic dance.

Conclusion: Despite its unfortunate failure to provide a principled distinction between copyrightable choreography and uncopyrightable workouts, it remains undeniable that, in the 9th Circuit at least, there is no copyright protection for sequences of yoga poses intended to improve health and fitness, no matter how graceful or beautiful they may be.

Still, given the gaping hole left by this decision, and the popularity of fitness and yoga, it’s hard to imagine that the issue of copyrightable choreography won’t reappear soon. Or, as Arnold Schwarzenegger (as actor, not bodybuilder) might say: “I’ll be back.”

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

Massachusetts Data Protection Regulations 11/03/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Internet and E-Commerce, Privacy and Data Security.
Tags: ,
add a comment

As a reminder, Massachusetts has enacted stringent data protection regulations (the Massachusetts Standards for the Protection of Personal Information of Residents of the Commonwealth, 201 C.M.R. 17.00 et seq. (the “data protection regulations”) and data disposal legislation (Mass. Gen. Laws ch. 93I) (the “disposal law”).

These laws likely apply to your business to the extent that you collect information (either from your own employees or in connection with providing goods/services) that falls within the meaning of “personal information” under the data protection regulations.  Although the definition of “personal information” under the data protection regulations is relatively narrow (a Massachusetts resident’s first name and last name or first initial and last name in combination with any one or more of the following data elements that relate to such resident: (a) Social Security number; (b) driver’s license number or state-issued identification card number; or (c) financial account number, or credit or debit card number, with or without any required security code, access code, personal identification number or password, that would permit access to a resident’s financial account), the data protection regulations impose high minimum standards for protecting such information.  (The definition of “personal information” under the disposal law includes the same information as that in the data protection regulations’ definition, except that the disposal law’s definition also includes a Massachusetts resident’s first name and last name or first initial and last name in combination with a biometric indicator.)

Among other requirements, the data protection regulations require the adoption of a written information security program (WISP) including certain minimum administrative, technical, and physical safeguards – among which are to oversee third-party service providers and adhere to specific computer system security requirements.  The disposal law sets forth minimum standards for the proper disposal of records (including paper documents and non-paper media) containing personal information.

To assist in the compliance process with respect to the data protection regulations, the Massachusetts Office of Consumer Affairs and Business Regulation has created a compliance checklist, as well as a guide for small businesses entitled “A Small Business Guide: Formulating A Comprehensive Written Information Security Program.”

If you would like help in preparing a WISP or addressing other compliance issues, please contact MBBP Attorney Faith Kasparian.

M&A Video Clip – Working Capital Adjustment: Common Issues in M&A Transactions 11/03/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, New Resources, Corporate, M&A.
Tags: , , ,
add a comment

In the sixth video of MBBP’s M&A Clip Series, M&A attorney Scott Bleier explains why working capital is a vital piece of the M&A transaction.

M&A Clips Video #6 Common Issues in M&A Transactions- Working Capital Adjustment

The Sweetest Trademark Cases of 2015 10/30/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Legal Developments, New Resources.
Tags: ,
add a comment

By Callie L. Pioli

In 2015 the U.S. Patent & Trademark Office (“USPTO”) received hundreds of thousands of trademark applications. While the USPTO did not face a scary number of cases in the candy and sweets industry, the ones that did appear addressed some very creative issues. As we prepare for this year’s Halloween and brace ourselves for the accompanying sugar-highs, we took a moment to trick-or-treat for the sweetest trademark cases of the year.

In re Kabushiki Kaisha Lawson

LawsonThe Japanese mega-brand Lawson filed with the USPTO to extend trademark protection covering its Uchi Café Sweets product line, currently registered in Japan. Lawson is a well-known operator of 便利店, “convenience stores” whose product lines epitomize the trend of cute, or kawaii, designs and objects common in Japanese culture and gaining popularity in the U.S. as well. Unfortunately for Lawson, UCHI had already been registered in the U.S. by Austin, Texas’s Uchi, a Japanese restaurant. Because of the similarity of the goods at hand, the USPTO declared that there is a likelihood of confusion among consumers as to the source of the confections, and accordingly denied registration.

In re Kristin Harris

GlutenIt is estimated that 1 of every 133 Americans suffers from Celiac disease; more still suffer from gluten-intolerance or gluten allergies. A great many delicious treats contain gluten-based sweeteners, such as barley malt, to sweeten the products (pure cocoa is devastatingly bitter.) Further, the tools and machinery used to harvest and process cocoa beans are often the same tools used to harvest and process wheat and other grains, creating cross-contamination issues for those with allergies. In response, entrepreneur KristAnn’s online store caters to those who are afflicted with Celiac disease, and offers shoppers the opportunity to purchase apparel and confections under the CELIABRATE (a combination of “celiac” and “celebrate”) brand. The issue that concerned USPTO was the use requirement. As trademarks are granted based on a mark’s use in commerce, a specimen demonstrating such use has to be submitted to the USPTO office during the registration process. In the specimen demonstrating use, KristAnn combined its mark with other phrases such as “Celiabrate Life,” “Celiabrate Love” and “Celiabrate Bliss.” The Examining Attorney felt that such combinations were inconsistent with the CELIABRATE mark for which KristAnn initially sought protection. Fortunately for KristAnn, the Trademark Trials & Appeals Board (“TTAB”) disagreed with the Examining Attorney based on the mark’s use with the variety of additional terms, as well as the mark’s independent significance. With the TTAB’s reversal of the Examining Attorney’s position, the mark will move on through the registration process and KristAnn may quite soon have another reason to Celiabrate!

In re August Storck KG


Have we gone 2far in our trans4mation of letters in common words? German candy company August Storck seemed to think it could push the boundaries a little farther. August Storck, known primarily in the U.S. for their brand “Werther’s Originals,” sought protection for its latest product in the candy market: “2good”. It is 2bad however that the mark “toogood” is already registered for use by the French distribution company Triumph Snat. The TTAB issued an opinion that, while not visually identical, the two marks were phonetically identical, and as the goods sought to be protected are substantially similar (though connoisseurs of German and French chocolate may disagree), there is a high likelihood of confusion between the two marks. August Storck was just 2 L8 this time.

For the rest of our list, click hereFor more information on trademark matters, please contact Callie Pioli.

The Contours of Copyright #1: Can You Copyright Fast Foods? 10/19/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Intellectual Property.
Tags: , ,
add a comment

Attorney Howard ZaharoffBy Howard Zaharoff

As broad and creator-centric as copyright is, it doesn’t protect every creative output. For example, as a recent case confirmed – to no one’s surprise (probably not even the plaintiff’s) – copyright does not protect chicken sandwiches, nor even chicken sandwich recipes, nor even chicken sandwich names, no matter how original.

The conflict began after Noberto Colón Lorenzana, while employed by a Puerto Rican fried chicken chain, invented the “Pechu” chicken sandwich. Ultimately his employer greatly benefited from sales of the sandwich and various derivative items, but never compensated Mr. Colon for these remunerative products. Feeling he’d been cheated, Mr. Colón filed an amorphous set of trademark, fraud and (the district court generously found) copyright claims.

After ruling against Mr. Colón’s trademark claim – having never used the mark, he had no trademark rights to infringe – the court considered his assertion of copyrights in his sandwich. After quoting Section 102(a) of the Copyright Act, to the effect that copyright does not protect ideas or inventions, but only works of authorship, and remarking that the Register of Copyright specifically denies copyright to “mere listings of ingredients,” the court stated: “Neither plaintiff’s idea for the chicken sandwich recipe or the name ‘Pechu Sandwich’ is subject to copyright protection.”

To drive home its message, the court proceeded to note that neither the idea for the sandwich, nor its recipe, nor the concept of serving a chicken sandwich at a fast food restaurant, nor even the term “Pechu Sandwich,” were subject to protection by copyright (regarding the last, the court quotes several cases to the effect that copyright does not protect fragmentary words or short phrases).  In short, to the extent the plaintiff was raising a copyright claim – not clear from the proceedings – it was “dismissed with prejudice.”

The case was appealed to the First Circuit, which upheld the district court’s holdings. Regarding the copyright claim, the appeals court noted that neither the recipe nor the name fits any of the categories of eligible works and endorsed the district court’s finding that “a chicken sandwich is not eligible for copyright protection.”

So eat your hearts out, designers of designer-sandwiches and other food products … and be happy that, if you do, you’re not infringing anyone’s copyrights.

Stay tuned for more examples of what copyright does not – and does – protect.

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

M&A Video Clip – HSR Act and Timing Issues 10/05/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Corporate, M&A.
Tags: , , , ,
add a comment

In the fourth video of MBBP’s M&A Clip Series, Corporate attorney Mark Tarallo addresses HSR Act and timing issues related to closing an M&A transaction.


Did you miss last week’s topic? No problem. Check our archive.

10 Points for Reviewing Executive Employment Agreements 09/22/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Employment.
Tags: ,
add a comment

Employment Attorney Scott ConnollyAn executive’s employment agreement defines expectations regarding role, responsibilities and performance. It also establishes key contractual obligations for the executive and the employer concerning compensation and benefits, equity grants, the length or term of employment, early termination and its consequences, post-termination restrictions, and dispute resolution.

Here are 10 important considerations when reviewing an executive employment agreement.

For more information on this topic, please contact Scott J. Connolly.

M&A Video Clip: Investment Banker Engagement Letters 06/22/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Corporate, M&A.
Tags: , , , , , ,
add a comment

The second video in MBBP’s M&A Clip Series addresses the necessity of Investment Banker Engagement Letters. Corporate attorney Shannon Zollo gives a brief overview.

Catch Shannon next week discussing another common issue in M&A transactions: Cash vs. Equity


Did you miss last week’s topic? No problem. Check our archive.

Hot Off the Press: Basic Tax Issues In Choosing a Business Entity 06/18/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Taxation.
add a comment

Tax Attorney Robert FinkelHot off the press! MBBP tax attorneys Robert Finkel and Diana Española recently released an updated version of their article entitled “Basic Tax Issues In Choosing a Business Entity”. This article provides insight on numerous factors to consider when choosing to start a business as a C corporation, S corporation or LLC.

The full article can be accessed here.

Please feel free to contact Robert and Diana directly with any questions on this topic.Tax Attorney Diana Espanola

VIDEO: Common Issues in M&A Transactions: Deal Structure 06/15/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Corporate, M&A.
Tags: , , , , ,
add a comment

Head on over to MBBP’s YouTube page and enjoy the 1st in our 2015 M&A Clips Series. Attorney Scott Bleier discusses Deal Structure and other common issues in M&A transactions, as well as practical information on how to avoid complicated, expensive and time-consuming pitfalls.

Make sure to visit the M&A Blog too. You won’t want to miss Video 2 – Investment Banker Engagement Letters!

Also – have you registered for next week’s seminar: Tax Issues in M&A Transactions? Space is filling quickly!


Employment Law Alert: Sick Time Law Update 05/19/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Employment, Immigration.
Tags: , , ,
add a comment

Recently, Massachusetts Attorney General Maura Healey has announced a transition policy under which employers who offer sufficient sick leave or paid time off to workers now have a six-month transition period in which to bring their policies into compliance with the new Massachusetts paid sick leave law. In order to qualify for this safe harbor, an employer’s policy must be in effect as of May 1, 2015, and follow guidelines provided.

To learn more about the transition policy, please see our Employment Law blog.

Employment Law Update: Proposed Sick Leave Regulations 04/30/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Employment, Public Companies, Corporate.
Tags: , ,
add a comment

As we previously advised clients, on November 4 Massachusetts voters approved a ballot measure entitling employees to earned sick leave, which goes into effect on July 1, 2015. The Massachusetts Attorney General recently issued proposed regulations on the application and enforcement of the new law.

To learn more about the MA Sick Leave Law or the proposed regulations, please visit our Employment Law blog.

Employment Tip of the Month 04/14/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Employment.
Tags: , , , , ,
add a comment

Last month’s Tip of the Month reminded employers that communicating and maintaining an overtime policy can minimize liability for unauthorized overtime hours. This month, we focus on a second way employers can protect against wage and hour liability: the inclusion of a payroll deductions policy to take advantage of the “safe harbor” protection against liability for misclassification of employees based on the failure to pay employees on a salary basis.

To read our full Tip of the Month, please visit our Massachusetts Employment Law blog.

Newest Issue of VC Spotlight Highlights 2013 & 2014 First Institutional Rounds Data 04/02/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Legal Developments, Venture Capital & Private Equity.
add a comment

Each quarter, MBBP compiles a comprehensive database of venture capital transactions that have closed within New England, New York and New Jersey. In our most recent VC Spotlight, MBBP presents the 2013 & 2014 First Institutional Rounds Deal Terms – as seen below.



Further data analysis, as well as featured articles, can be found in this quarter’s VC Spotlight Newsletter.

NLRB Says It’s Unlawful for Employers to Prohibit Defamatory or Inappropriate Comments by Employees 03/31/2015

Posted by Morse, Barnes-Brown Pendleton in New Resources, Employment, Public Companies.
Tags: , ,
add a comment

2015-01-05_8-57-41On March 18th, the National Labor Relations Board (NLRB) released some valuable guidance on language employers should and should not consider including in their employee handbooks. Given the broad reach of the recent handbook rulings, and the many policies to which these decisions may apply, all employers should review their handbooks and relevant policies for compliance with the NLRA.

Please see this month’s Employment Law Alert to learn more.

Feel free to contact any member of our Employment Law Group with any questions.

MBBP Attorneys Invited to Speak at Upcoming swissnex Boston Seminar 03/13/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, New Resources, Events.
add a comment

2015-03-12_14-28-53Next Wednesday, March 18th MBBP Attorneys Scott Bleier, Stan Chalvire, Grant Godfrey, Maura Malone and Callie L. Pioli will present to Swiss MBA students at  swissnex Boston, the consulate of Switzerland. The presentation will discuss legal perspectives on conducting business in the U.S., with focus on topics such as corporate, intellectual property, employment and immigration law.

For more information regarding this seminar, please feel free to contact Grant Godfrey directly.


Get every new post delivered to your Inbox.

Join 65 other followers

%d bloggers like this: