Goals for Discovery in Litigation

Formulating a discovery plan is necessary for effectively conducting litigation.
The discovery process (essentially, gathering evidence) is usually the most critical and costly part of litigation. Failure to make a good plan can easily set a case up for excess costs, wastes of time, and evidentiary disasters.

Detailed discovery planning increases the likelihood of ending the litigation on the best terms feasible. If you have solid evidence to counter a major point of your litigation opponent, then you may seriously expect to persuade the opponent to concede that point.

Merely just going through the motions and hoping to pull off a miraculous presentation at trial should be parts of a Hollywood script but not a part of your litigation strategy, which involves a real case pursued with your real dollars.

While making your discovery plan, assess whether you have a chance at settling the case at an early point. If that is the case, it probably is better to allocate funds to sweetening the settlement offer instead of spending the same funds on protracted discovery.

If early settlement seems unlikely, discovery may serve to “discover” a basis to bring the case to early settlement or an early dismissal.

Discovery results can be essential for winning motions for summary judgment, motions in limine, or other motions to narrow the issues in dispute for trial.

Infringement Analysis – 21 Defenses to a Patent Infringement Suit

Infringement Analysis: 21 Defenses to a Patent Infringement Lawsuit

Copyright 2000-2011. Frederic M. Douglas, fdouglas@cox.net. All Rights Reserved.

Determining whether a patent is infringed should entail the same process that a court would use. Generally, a court would make findings on validity, infringement, and enforceability. Below is a list of twenty-one specific defenses to patent infringement claims:

(1) Expired Patent,

(2) Noninfringement under 35 USC § 271,

(3) Anticipation by prior art under 35 USC § 102 (a), (b), (d), (e), or (g) (Subsection (g) repealed with America Invents Act),

(4) Obvious over prior art under 35 USC § 103,

(5) Double patenting,

(6) Improper inventorship under 35 USC § 102 (f),

(7) Improper scope of claims under 35 USC § 112,

(8) Fraud,

(9) Antitrust violation,

(10) Plaintiff does not own the patent (standing),

(11) License to the patent,

(12) Abandonment under 35 USC § 102 (c),

(13) Misuse,

(14) Laches,

(15) Intervening Rights,

(16) Lack of utility under 35 USC § 101,

(17) Inoperable invention under 35 USC § 112,

(18) Not statutory subject matter under 35 USC § 101,

(19) Foreign filing after non-publication request.

(20) Dis-joinder (Multiple defendants with no joint infringement).

(21) Prior commercial use – 35 U.S.C. Section 273.

I identified the above 21 defenses to patent infringement.

Note: Best Mode repealed by America Invents Act.

Do you know of any others?  Did I get any wrong?  Let me know

Patent Infringement: 19 Defenses to a Patent Lawsuit

Check out this video for the 19 defenses to patent infringement.

http://www.avvo.com/legal-guides/ugc/19-defenses-to-patent-infringement

Copyrighting Your Songs

Watch this video for information on copyrighting your songs.

http://youtu.be/WLJdMFEQeHg

Infringement Analysis: 19 Defenses to a Patent Infringement

Infringement Analysis: 19 Defenses to a Patent Infringement Lawsuit

Copyright 2000-2010. Frederic M. Douglas, fdouglas@cox.net. All Rights Reserved.

Determining whether a patent is infringed should entail the same process that a court would use. Generally, a court would make findings on validity, infringement, and enforceability. Below is a list of nineteen specific defenses to patent infringement claims:

(1) Expired Patent,

(2) Noninfringement under 35 USC § 271,

(3) Anticipation by prior art under 35 USC § 102 (a), (b), (d), (e), or (g),

(4) Obvious over prior art under 35 USC § 103,

(5) Double patenting,

(6) Improper inventorship under 35 USC § 102 (f),

(7) Improper scope of claims under 35 USC § 112,

(8) Fraud,

(9) Antitrust violation,

(10) Plaintiff does not own the patent,

(11) License to the patent,

(12) Abandonment under 35 USC § 102 (c),

(13) Misuse,

(14) Laches,

(15) Intervening Rights,

(16) Lack of utility under 35 USC § 101,

(17) Inoperable invention under 35 USC § 112,

(18) Not statutory subject matter under 35 USC § 101,

(19) Foreign filing after non-publication request.

I identified the above 19 defenses to patent infringement.

Do you know of any others?  Did I get any wrong?  Let me know

Responding to Interrogatories in Federal Litigation

© 2011 Frederic M. Douglas.   All Rights Reserved.

When responding to interrogatories propounded in federal litigation, take care to comply with federal rules, local rules, and good practices.  Another concern should always be responding well to further your position. 

Responses should be served on time.  Failure to serve objections in a timely manner can cause waiver of all objections.  You may elect to submit documents in lieu of responses if appropriate, as provided in Federal Rule of Civil Procedure 33(d).  Several litigants choose this option as a tactic believed to make responding easier.  Another idea is that such a document dump helps to frustrate the opponent.  However, the rules require that the documents responsive to the interrogatory be specified in detail to enable the opponent to locate and identify the responsive material.  If one follows the rules, there is not much ability to frustrate the opponent or make responding to the interrogatory less burdensome.

The maximum number of interrogatories propounded by a party is 25.  Often, a party forgets the limit and propounds more than 25 interrogatories in one set or cumulatively.  In such situations, responders often respond to only the first 25 interrogatories and then refuse to respond to the remained.  Some responders will even successfully refuse to respond to any interrogatories in a set that surpasses 25, even if the 26^th interrogatory is not the first interrogatory in the instant set.

Take care to scrutinize the interrogatory and your response for typographical errors.  If the interrogatory is unintelligible, contradictory, or non-sensical, you may sufficiently respond to the interrogatory as provided.  As interrogatory responses may be held against a party, it would be unfortunate to find out at trial that a typographical error binds the party in the midst of trial.

Parties have an obligation to seasonably update interrogatory responses.  Avoid forgetting to update responses as you may be prevented at trial from bringing forth evidence that could have been responsive to the interrogatory but you failed to update the relevant response.  Additionally, you may even need the information updated as evidence to prove your case at trial.  Review interrogatory responses periodically to identify which responses should be updated and which responses are likely to need to be updated soon.  Frequently refer to your proof rubric and jury instructions to determine when you are missing needed evidence that should be disclosed.  

Frederic M. Douglas is an intellectual property attorney based in Irvine, California with clients all over the world.

fdouglas@cox.net

freddouglas.wordpress.com

Ring Back Tones in Songwriter Agreements

© 2011 Frederic M. Douglas.   All Rights Reserved.

A songwriting agreement often provides for a share of royalties that may vary depending on the category of use.  These categories include foreign rights, movie rights, mechanical licenses, public performances, synchronization licenses, print rights, and other categories.  Most agreements between a publisher and a songwriter contain a catch-all paragraph for a miscellaneous category in which the publisher and the songwriter share in the royalties on a 50:50 basis.  Take care to understand that a royalty amount and a royalty share may depend on how the use of the music is categorized.

Ring tones are the sounds that alert you when someone is calling you.  Ring back tones are sounds that are played to you when you are calling someone else’s telephone.

Photo by Red Morris

The ambiguity for ring tones and ring back tones lies in the fact that they can fit in the mechanical license category, the foreign license (if tone used outside U.S.), the public performance category, and the miscellaneous category.

For clarity, one should ensure that the songwriting agreement expressly state the royalty share between publisher and songwriter for ring tones and ring back tones.  Otherwise, your share may become the lesser of the possible categories stated in a boilerplate agreement.

Frederic M. Douglas is an intellectual property attorney based in Irvine, California with clients all over the world.

fdouglas@cox.net

freddouglas.wordpress.com

How to Mess Up Getting Music Samples Cleared

 

© 2011 Frederic M. Douglas.   All Rights Reserved.

               

Samples have been used in recorded music for a long time.  For example, the Beatles’ 1967 “I Am The Walrus” recording used a BBC radio program in its mix.  Unfortunately, most people are clueless about copyright law and sampling.  Errors are costly and it is usually cheaper to ask first.   Here are some ways to mess up using music samples and costing yourself more money than you can afford.

Getting just one clearance for a sample

The music that you want to use is protected by two copyrights.  One copyright for the performance (what was recorded) and the other copyright is for the musical composition (the song, in no matter what form).  The performance copyright will usually be owned by the record company (a long time ago, there were these profitable companies that sold music) that initially issued the recording.  The copyright for the composition is usually owner by the song’s author or, more likely, the publisher (this often is a company that cannot hum a tune, but they sure can make money with the tune).  So just because you got clearance from the owner of the song, you still need clearance from the owner of the recording.  Things get even more complicated when the publishing is owned by more than one company.  Then you have to strike a deal that pleases everyone.

Re-record your own sample

Maybe you don’t want to be bothered with getting clearance for a sample.  You just want to put out a song and be done with it.  So you think, “I can play by ear.  I can easily figure out how they made that riff.  Look, I learned how to slap the bass like this.  That is all they are doing.”  Not so fast.  You might be creating a new recording (performance) but you are still probably using a copyrighted song.   You cannot just bang the tune out on a different instrument, in a different style, while standing on your head. 

You can play the tune yourself or hire someone to do that (there are companies specializing in that area) to avoid paying royalties on the recording, but you still will need to get clearance for the song.  If you infringe the copyrighted song, you get to pay lawyers to fight off the publishers.

Change the speed of the recording or add some effects

No dice.  This would be a “derivative work.”  You derived your recording from the original recording.  If you could just speed up or slow down a song to avoid infringing copyrights, then we would hear nothing but Chipmunk songs on the radio as stations would prefer to not pay for the songs that they play.  Re-mixing an original work does not help you.  You are still using the recording and the song.  Again, if that was allowed, then the radio stations would play only re-mixes.

Only use a very small sample

People repeat things that they don’t know to be true, but sound good.  So people love to rattle off some ideas that you can use a certain maximum number of bars of a song or recording or a certain number of notes.  Well, if you believe that, go rob a bank and tell them that you only want to rob a very small amount of money.

Piggy-backing off of someone else’s sample clearance

        You might hear a song everywhere, such as on the radio, TV, movies, shopping malls, and elsewhere.  Just because everyone is using it, it doesn’t mean that they didn’t get a clearance or that you don’t need a clearance. Yes, if you speed on the street in a pack of other speeders, the cop can ticket only you.  You will lose if your defense is “But everyone else was speeding faster than me.”  Yes, it is not fair.  However, life is not fair and as soon as you figure that out, you will be more at peace.  A sample clearance clears the person permitted to use the sample.  If you do not have a piece of paper clearing your use, you are not cleared, no matter if the clearance was given to your band mate, your friend, your neighbor, or anyone else.  In one recent example, Rianna got permission to sample Michael Jackson’s “Wanna Be Startin’ Something’” tune which chants, “mama-say mama-sa ma-ma-coo-sa.”  However, MJ got that chant from a sample of another person’s recording, a Cameroonian musician named Manu Dibango.  So when Rianna thought that she was all cleared when getting clearance for the MJ song, she found out through Manu Dibango’s lawsuit that she still needed to deal with him, as MJ’s song included a derivative sample (allegedly). 

Wait, there’s good news

        Now that you know what not to do, turn around and make your music without getting in trouble so long as you take care of your business.  Between 70% to 80% of requests for sample use are granted.  Just ask.  Nicely.  Before you issue the music. And be prepared to sign a check.

Frederic M. Douglas is an intellectual property attorney based in Irvine, California with clients all over the world.

fdouglas@cox.net

freddouglas.wordpress.com

Start Your Music Group With a Pre-Incorporation Agreement

© 2011 Frederic M. Douglas.   All Rights Reserved.

People often want to form a band or other musical group to get gigs, record music, and basically, make money in exchanging for plunking on instruments and looking cool.  However, you need to make sure that the problems do not cause the money to become funny and keep the group happy and willing to stay together for everyone’s benefit.

Groups fall apart for various reasons, ranging from problems with finances, loyalty, and petty jealousies.  While drama can be unavoidable, having a strong agreement, in writing, can help to provide clarity on management and financial issues.  A musical group should start with drawing up documents to form a corporation, limited liability company, or other organization to limit personal liability and use tax advantages not available to individuals and partnerships. 

But what if your group members are tentative, in transition, or just plain old unsure if they want to associate together in the music business? For example, California usually charges $800 per year for corporations before making their first dime of income.  Do not just move forward without getting something in writing.  Otherwise you will probably never get the group members to later commit themselves in writing to form the official corporation.  Then you will have unclear where you stand as to songs written by group members, performances recorded, concert earnings, merchandise revenue, and many other issues.  For example, do you want one guy leaving and using the group’s name and songs with another group?

If you do not have the time or ability to form a group corporation, consider drawing up a pre-incorporation agreement.  Such an agreement might also be useful when thinking of paying fees and taxes for incorporation charged by state governments  

A pre-incorporation agreement can serve to record the member’s intent to incorporate and a basic understanding of how the corporation will operate once formed.  Some may consider the pre-incorporation agreement to be a waste of time, seeing as the same terms will be in the actual corporate documents anyway.  However, the pre-incorporation agreement may help to protect everyone’s interests during the transition period before corporate formation.  Also, as a practical matter, any negotiation over the terms of the pre-incorporation agreement can reveal problems that prompt people to exit before going through the hassle and expense of forming the corporation. 

One rampant issue is who gets credit for authoring the group’s music.  If group members cannot agree on how songwriting credit (and consequently, royalties) is allotted, they are not likely to agree after the opus becomes a hit.

        Get it in writing first, unless you like paying lawyers money to attempt to correct your mistakes.

Frederic M. Douglas is an intellectual property attorney based in Irvine, California with clients all over the world.

fdouglas@cox.net

freddouglas.wordpress.com

Differences Between “Trade Name” and “Trademark”

© F. M. Douglas 2010.   All Rights Reserved.

“Trade Name” is also called a “Fictitious Business Name (FBN)” or “Doing Business As (DBA)”

A “trade name” is a name an owner uses to identify his/her business while a “trademark” is used to identify a good or service a business provides. Another distinct difference is that “trade names” are not registered at the state or federal level, but are registered with local government, primarily in the county in which a business operates.  If a trade name meets the criteria of a trademark or service mark, however, it also might be eligible for registration as such.

If your business’s name is in any way different from the name shown to the public, then the local authorities (city or county) require you to register your FBN so that the public knows the name of the company managing the business.

For example, if ACME Corporation opens a store called, “Larry’s Store”, then the ACME Corporation files a fictitious business name statement indicating to the public that “Larry’s Store” is owned by the ACME Corporation.  In another example, if Joe Brown owns a business called, “Speedy Printers,” then Joe Brown (individual) files an FBN statement with the county showing that “Speedy Printers” is owned by the individual Joe Brown.  The local authorities do not allow a company to maintain a lawsuit if the company has not filed an FBN statement if one is needed.  The FBN statement is just a statement, it does not provide any trademark rights, but just complies with the state statute for “fictitious names.”

Trademark

The trademark is something that identifies the source of products and services.  It may be one or more words, artwork, a sound, or practically anything that differentiates a product or service from other companies.  For example, the well-known Nike swoosh trademark, or the McDonald’s golden arches.   The FBN may be registered as a trademark with the Trademark Office, to stop other companies from using the same name.  However, the county FBN statement does not provide any enforceable rights to stop others from using the same name.  If one company wants to sue another company over a trademark, getting an award of money damages is more likely if the trademark is registered with the Trademark Office.  Filing a FBN provides no trademark rights.

Frederic M. Douglas (fdouglas@cox.net) is a solo practitioner specializing in patent litigation.

freddouglas.wordpress.com