TLI7b

2005 Georgia Law Update: 

2005 Georgia Law Update By Gaines P. Carter – ARRIS International Robert T. Neufeld – King & Spalding, LLP

Electronic Discovery: 

Electronic Discovery Significance Increasing amount of electronic data Duties to preserve Recent Case Law Proposed Revisions to Federal Rules of Civil Procedure

Electronic Discovery: 

Electronic Discovery FRCP 26(b)(2) – proportionality requirement Traditional presumption that responding party bears the costs of production

Electronic Discovery: 

Electronic Discovery Background (4 Different Frameworks) Cost / benefit analysis Marginal utility test Rowe factors Zubulake I factors

Electronic Discovery: 

Electronic Discovery Zubulake I Factors: Request tailored to relevant information Availability from other sources Cost of production v. amount in controversy Cost of production v. parties’ resources Parties’ abilities/ incentives to control costs Importance of issues at stake in case Benefits of obtaining information

Electronic Discovery: 

Electronic Discovery New Case Law - Hagemeyer P seeking email and backup tapes P wanted D to search backup tapes C selected Zubulake test C focused on proportionality Hagemeyer North America, Inc. v. Gateway Data Sciences Corp., 222 F.R.D. 594 (E.D. Wis. 2004).

Electronic Discovery: 

Electronic Discovery New Case Law – Wiginton P seeking email backup tapes C chooses Zubulake test, but adds factor – importance of discovery in resolving the litigation Factors favor cost shifting, but in view of presumption against responding party - P – 75%; D – 25% Wiginton v. CB Richard Ellis, Inc., 2004 WL 1895122 (N.D. Ill. 2004)

Electronic Discovery: 

Electronic Discovery New Case Law – Toshiba Costs to recover email on backup tapes estimated at $200K to $1.9M Applying CA fee shifting statute (§ 2031) C of App reversed trial court’s decision to deny cost shifting – requesting party must pay reasonable expenses Toshiba America Electronic Components, Inc. v. Superior Court, 21 Cal. Rptr. 3d 532 (Ct. App. 2004)

Electronic Discovery: 

Electronic Discovery New Case Law – Zubulake V D breached duty to preserve D delayed production and destroyed email C awarded: Adverse inference instruction at trial Costs for re-deposing witnesses Costs in bringing the motion Zubulake v. UBS Warburg LLC, 2004 WL 1620866 (S.D.N.Y. 2004)

Electronic Discovery: 

Electronic Discovery Trends Courts consider variety of factors Courts more willing to shift costs when discovery includes electronic records Sharing costs encourages efficiency

Electronic Discovery: 

Electronic Discovery Proposed Revisions to FRCP FRCP 16 and 26 – requires parties to address electronic records early on FRCP 33 – answers to interrogatories should include review of electronic records FRCP 37 – “safe harbor” from sanctions for records destroyed in routine operation

Trademarks: 

Trademarks Parties were arguing over the use of the phrase "future airline pilots" within a career counseling business. Mark was clearly descriptive in nature and had not acquired any secondary meaning that would have entitled it to protection under UDTPA.

Trademarks: 

Trademarks The Court stated that under the Georgia Uniform Deceptive Trade Practices Act, Ga. Code Ann. § 10-1-370 et seq., does not require a party seeking relief thereunder to have registered the relevant trade or service mark or name. But registration of a trademark or service mark is a prerequisite for relief under other sections of the Georgia Code

Eligibility for Trade Secret Protection: 

Eligibility for Trade Secret Protection P was in the business of manufacturing and selling industrial boiler cleaning systems. This case arose out of the acts of a former employee of Diamond going to work for Bergman Threw the book at him: conversion, missappropriation, Computer Fraud & Abuse Act, Georgia Trade Secrets Act. The Injunction was denied. the court reasoned that none were eligible for trade secret protection because their identities were either stamped on the part by the manufacturer or available in documentation provided to customers. Additionally the plaintiff took no steps to maintain the confidentiality of the components at issue.

Trade Secrets – Standing to Appeal: 

Trade Secrets – Standing to Appeal Original defendant (Kevin Colon ) was a former employee of WebMethods. WebMethods received a TRO against Kevin Colon and showed that the TS were passed onto other BEA employees BEA was a non-party to the original suit. The Georgia Court of Appeals held that BEA had standing to bring the appeal, even though not a party, because it had been specifically enjoined by the trial court.

Misappropriation of Trade Secrets : 

Misappropriation of Trade Secrets D left Volvo for a competitor and took a customer list The evidence at trial showed that computer access at VSC was not password protected, was easy to use, and was used by many employees from time to time. Further, employees were not made to sign confidentiality agreements and were not otherwise informed that the customer list was confidential. VSC took no precautions to maintain the secrecy of its customer list

Employment Agreements: 

Employment Agreements Marsh & McLennan P entered into 2 non-solicit agreements when M&S purchased his company P left M&M and became president of competitor located in GA M&M claimed P solicited employees and customers to join competitor District Court granted P a DJ finding agreements unenforceable under GA law and enjoined M&M from enforcing in GA Palmer & Cay v. Marsh & McLennan Companies, Inc., 404 F.3d 1297 (11th Cir. 2005)

Employment Agreements: 

Employment Agreements Marsh & McLennan 1st agreement sent back to trial court for determining whether business/ employment agreement 2d agreement – ancillary to employment – strict scrutiny applies Includes prohibition against unsolicited business

Employment Agreements: 

Employment Agreements Marsh & McLennan M&M attempted to conform by promising not to enforce certain provisions C rejected attempted self-reformation of invalid provisions

Employment Agreements: 

Employment Agreements Marsh & McLennan Ct of Appeals draws distinction: Injunction - limited to GA DJ of unenforceability – nationwide - b/c under federal common law, the enforcing federal court should apply law of rendering state

Domain Names: 

Domain Names The court affirmed the lower court’s holding that the non-commercial use of a trademark as a domain name of a website that deals with consumer commentary is not infringement. However, on the cybersquatting claim, the court reasoned that since there is not a commercial clause in the Anti-Cybersquatting Consumer Protection Act (ACPA), the fact that the website had a non-commercial use should not automatically mean that summary judgment could be granted against the plaintiff.

Domain Names: 

Domain Names The defendant registered a domain name that was similar to the plaintiff’s mark so that he could complain about the plaintiff (a law firm). The court rejected the defendant’s argument that since the domain names were for a non-commercial use they did not violate Anticybersquatting Consumer Protection Act . The court reasoned that the similarity between the domain names and the plaintiff’s mark confused consumers.

Domain Name: 

Domain Name plaintiff registered the domain name 4ADODGE.com and a friend register foradodge.com . Court upheld the lower court ruling granting summary judgment in favor of the plaintiff domain name foradodge.com was confusingly similar to DODGE Court also reasoned that the defendant had a bad intent to profit from his registration of the domain name

Georgia RICO Statute : 

Georgia RICO Statute Stone and Williams were in the concert promotion business P Claimed that the D conspired with his own company GA Supreme Court stated that the appropriate standard is that of a “preponderance of the evidence” not “clear and convincing” They further held that the corporation was not a "person" within the meaning of the Georgia RICO statute.

Child Online Protection Act (COPA) : 

Child Online Protection Act (COPA) ACLU, Internet content providers and others, brought an action against petitioner, the U.S. Attorney General Received a preliminary injunction against enforcement of COPA Attorney General failed to rebut the providers' contention that filtering software was a plausible, less restrictive, and available alternative to accomplish the congressional purpose.

Copyright: 

Copyright Boats.com NSM sought DJ that did not infringe Boats.com’s copyrights Accused services – Boat Rover and Valet Service – copy content from competing websites Boats.com also alleged that NSM copied “look and feel” of Boats.com Nautical Solutions Mktg., Inc. v. Boats.com, 2004 U.S.Dist. Lexis 6304 (M.D. Fla. 2004)

Copyright: 

Copyright Boats.com Boat Rover copied content included facts about boats and typical descriptive headings (e.g. “galley”, “electrical”) Momentary copying of webpage to extract facts is “fair use”

Copyright: 

Copyright Boats.com Fair Use purpose (commercial v. non-profit) nature of work amount copied in relation to whole work effect of use on market for copyrighted work Headings merge with idea – no protection

Copyright: 

Copyright Boats.com Valet Service copied pictures and descriptions – copyright in these items owned by boat sellers, not Boats.com Court rejects claim that NSM copied look and feel Websites substantially different Similarities are not protectable elements

Copyright: 

Copyright Telecom P brought antitrust claims against D for refusing to sell switchboard parts D counterclaimed for copyright infringement Telecom Technical Services Inc. v. Rolm Co., 388 F.3d 820 (11th Cir. 2004)

Copyright: 

Copyright Telecom Jury found that P illegally copied D’s software and distributed to customers C rejected P’s defense that absence of copyright notice placed software in public domain

Telecommunications : 

Telecommunications Federal Communications Commission concluded that cable companies that sell broadband Internet service (including cable modems) do not provide "telecommunications servic[e]" as the Communications Act defines that term, and hence are exempt from mandatory common-carrier regulation under Title II.

Telecommunications (cont): 

Telecommunications (cont) What cable companies providing cable modem service and telephone companies providing telephone service "offered" was Internet service and telephone service respectively Court held this interpretation is reasonable because consumers used the high-speed wire always in connection with the information-processing capabilities provided by Internet access, and the transmission was a necessary Internet access component.

Telecommunications (cont): 

Telecommunications (cont) "telecommunications service" means the offering of telecommunications for a fee directly to the public, or to such classes of users as to be effectively available directly to the public, regardless of the facilities used.

Patent Law – Willful Infringement: 

Patent Law – Willful Infringement plaintiff patent owner sued defendant importers for violation of a patent for certain disc brakes. No damages were awarded, for there were no sales of the infringing brakes. However, partial attorney fees were awarded under 35 U.S.C.S. § 285 based on the willful infringement finding.

Patent Law – Willful Infringement (cont): 

Patent Law – Willful Infringement (cont) The finding of willful infringement was vacated because elimination of the adverse inference as drawn by the district court was a material change in the totality of the circumstances. Typically, courts decline to impose adverse inferences on invocation of the attorney-client privilege. Brings patent law into alignment with rest of legal world

Patent Law – Claim Construction: 

Patent Law – Claim Construction Question before the Court was the extent to which the court should resort to and rely on a patent’s specification in seeking to ascertain the proper scope of its claims Federal Circuit held, it is entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.

Patent Law – Claim Construction: 

Patent Law – Claim Construction the Federal Circuit also noted that extrinsic evidence (i.e. dictionaries) was unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence (i.e. specification and prosecution history).

Slide39: 

Presentation will be placed on the Technology Section Web Site Contact: Gaines P. Carter Robert T. Neufeld