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The holiday gifting season is upon us. As any parent of young children knows, it seems that each year brings with it the must-have toy of the season, as with the hoverboard craze of a few years ago, or the Tickle Me Elmo mania that gripped the country back in 1996. In this age of mobile phones and third-party selling on platforms on Amazon, it is not hard to imagine that a phenomenon like Tickle Me Elmo would be hypercharged in the current environment, even as online shopping would provide less fodder for newscasts hoping to run video of hysterical parents storming the doors of the local Target at some ungodly hour on Black Friday. While I can’t claim to know what the hit toy or toys of 2019 will be, I can certainly bet with confidence that at least some of them will be imported from countries such as China. Along with a host of counterfeit or “replica” items that may not be exact copies but are perhaps good enough to pass muster with an overtired 4-year old at a busy Christmas or Hanukkah party. Until they get teased for having a “weird” one when they show the knockoff to a friend.

As is the case with all profitable items, the brand owners importing this season’s hot toys have an interest in policing infringing or counterfeit goods using whatever tools they have at their disposal. Due to the compressed nature of the holiday shopping season, however, traditional legal avenues like lawsuits or letter-writing campaigns are not promising in terms of delivering results that can help keep an original brand owner as the only source of the hit item. Especially in this age of overnight knockoffs and online direct-to-customer express ordering and shipping.

In short, brand owners looking to maximize their profits from a short-lived hit item (as well as brand owners who sell perennially popular items year-round) have an interest in getting more immediate results when they attempt to enforce their intellectual property rights. Particularly where the prime sell-through life of the product will have passed in the amount of time it would take just to get to an initial conference in a filed lawsuit, for example.

Complicating matters for brand owners is that much of the manufacturing of infringing and counterfeit items originates overseas. In some cases, third-party sellers from overseas try and sell those products directly to U.S. consumers through online platforms such as Amazon. In those situations, brand owners are reliant on Amazon’s existing mechanisms to help stem the tide of infringing products. As I have written previously, Amazon’s processes are pretty favorable for brand owners when it comes to taking down products listings for (blatant) trademark or copyright infringement, whereas trying to enlist Amazon’s help enforcing a utility patent can be a more quixotic experience. At the same time, we have had success for clients that own design patents in having infringing listings taken down quickly by Amazon, if only because design patent infringement analysis is (wrongly) considered relatively simple. Just compare and if it looks the same, there is infringement. (In fact, determining design patent infringement is a much more involved process, as has been noted by leading authorities like Sarah Burstein, who I have had the pleasure of interviewing on these pages. More on that below.)

For design patent owners, having the ability to easily police infringing goods on Amazon and other online marketplaces is great. But trying to enlist the help of Customs and Border Protection (CBP) to stop design-patent infringing goods from being imported has long proven a stiffer challenge. In fact, the only existing way to do so is to obtain an ITC exclusion order, an expensive and arduous legal process that is simply incompatible with stopping the fast-moving infringement that plagues hit holiday-toy makers.

Recently, however, a number of senators have introduced the Counterfeit Goods Seizure Act of 2019, which aims to empower CBP to police design patent infringement by allowing CBP to stop imports of infringing products without the need for an ITC exclusion order. In effect, just like CBP personnel can stop importation of a product that infringes on a trademark or copyright, so would they be able to likewise determine whether a product infringes a design patent and stop importation of that product. For brand owners that own both trademarks and design patents around hit products, this legislation, if passed, would be a boon, freeing them from the need to first undergo an expensive legal proceeding to enlist CBP help. It would also help squeeze out bad actors who get around CBP’s existing IP policing mechanisms by importing products without the counterfeit (or trademark infringing) labels, only to attach them in the U.S. post-Customs release. Considering the benefits to IP owners, it is not a surprise to see a coalition of brands (e.g., Nike — which has struggled in the ITC in the past) and IP-owner organizations such as the IPO supporting the bill.

While empowering CBP to enforce design patents may seem like an excellent way to help stem the tide of counterfeit products into the U.S., it does not come without risk. Great care would be needed to avoid gaming of the system by design patent owners, in terms of having CBP adjudicate infringement against competitors without the legal protections afforded by an ITC or District Court case. Similarly, determining design patent infringement is not as simple as it may seem, particularly with the ever-changing legal developments that are rife within every IP field. That said, perhaps there are ways to pilot some kind of CBP-based design patent enforcement mechanism that will balance out the due process risks with the important goal of stopping counterfeit and infringing products from harming U.S. IP owners. We can hope that Congress will look carefully at how design patent infringement determinations are made both in court and in private fora like Amazon for guidance on how best to involve CBP in a similar endeavor. Ultimately, we can hope that legislative process yields a positive result on this issue. If only because hit toys deserve secure borders, so that no kid is disappointed with a cheap knockoff.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

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Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

You had to know that no judge was was going to be happy that a litigant appearing in their court was getting internet-famous for the insults he hurled at opposing counsel.

For the maybe two people in the legal world that somehow missed the exploits of Christopher Hook, a plaintiffs’ lawyer in California, let me catch you up. Hook is squaring off against a legal team at Sheppard Mullin, led by partner Peter Klee, in an insurance dispute over about $200,000. But Hook’s bold language in settlement negotiations made him an Above the Law star. Hook’s bon mots include “eat a bowl of dicks,” “let the long dick of the law f*ck [your client],” “cumstain,” and  “limp dick mother f*cker.” From Klee’s declaration in support of a motion for sanctions:

Now that we’ve got that fun refresher done, we can focus on the latest development. Yesterday there was a hearing in the case, and U.S. District Judge Otis Wright II of the Central District of California told Hook bluntly, “You just trashed your profession.” He went on to demand Hook resign from the profession, as reported by Law.com:

Wright, a former deputy sheriff in Los Angeles County and a U.S. Marine Corps veteran, told Hook he had acted “like a gangster.”

“Tell you what, slick, this profession does not need you,” the judge said. “I am going to do what I can to remove you from this profession.”

He then asked Hook to resign.

“I will not do that,” Hook responded, prompting Wright to interject.

“Shut up,” the judge said. “I want you to resign from this profession.”

Judge Wright also took issue with Hook’s assertion that his emails were protected by the First Amendment and the litigation privilege:

“You honestly believe the First Amendment extends to anything?” Wright replied. “You did go to law school, right?”

As you might imagine, Wright ordered Hook to pay fees and costs:

At the end of the hearing, the judge told Sheppard Mullin’s lawyers to submit the fees and costs they want from Hook. Hook said he would agree to pay them.

“You’re going to pay for this,” the judge told Hook. “You’re going to write a check. That’s just the first thing. This is not going to be over.”

As he left the courtroom, Hook reportedly apologized for his actions, but it just might be too little too late.

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Kathryn Rubino is a Senior Editor at Above the Law, and host of The Jabot podcast. AtL tipsters are the best, so please connect with her. Feel free to email her with any tips, questions, or comments and follow her on Twitter (@Kathryn1).

Unlike most other “Western style” democracies, the United States has recognized that government, and its officials, should be denied the power to make “principled distinctions” on matters of “taste and style.” Even what might be called vulgar or indecent expression is, nevertheless, presumptively protected from government interference by our First Amendment to the Constitution. Perhaps because “absolutism is what freedom of speech actually makes impossible,” the law also recognizes exceptions to the presumptive protection in specific contexts, circumstances, and, perhaps most importantly, in certain U.S. Supreme Court-defined categories.

One rather obvious example where government has reasonable subject restrictions, such as with sexually explicit material, is in public schools. However, even in the public school context viewpoint restrictions remain presumptively unconstitutional. Another rather obvious area where government has regulatory power over sexually explicit expression is within broadcast media, but relatively recent cases have suggested government cannot utilize this regulatory power with vaguely broad standards.

A historically unprotected, Court-defined category of speech is the obscene. The obscenity category is based on a theory of harm regarding morality and secondary effects. Current obscenity law applies the standard established in Miller v. California that tests:

“(1) whether the average person applying contemporary community standards would find the work, taken as a whole, appeals to the prurient interest; (2) whether the work depicts or describes, in a patently offensive way, sexual conduct specifically defined by the applicable state law; and (3) whether the work, taken as a whole, lacks serious literary, artistic, political or scientific value.”

Recently, the U.S. Supreme Court denied extending obscenity categorical restrictions for minors to include violent material. In fact, in an opinion written by the late Justice Antonin Scalia, the Court denied that state legislatures could strip First Amendment protection based on a finding that “certain speech is too harmful to be tolerated.” All that seems to matter is whether speech fits into already recognized categories, and the Court seems highly resistant to expanding such categories any further.

This obscenity jurisprudence could make the more recent push by conservatives to wholesale ban pornography appear constitutionally bleak. In fact, the Court has already recognized pornography or what the Court defines as “material distinguished or characterized by an emphasis on matter depicting, describing or relating to ‘Specified Sexual Activities or Specified Anatomical Areas” as presumptively protected material when it comes to adults. The response by conservatives to the challenges presented by more recent jurisprudence, is to question whether “a persuasive originalist argument that the First Amendment protects hard-core porn” exists. As it just so happens, I was recently successful in publishing just such an argument.

The starting point from an originalist perspective of free speech to me begins with the Sedition Act of 1798. The Sedition Act passed by Congress and signed by President John Adams made it a crime to publish or speak out against the government of the United States, the Congress, or the president, “with the intent to bring them into contempt or disrepute.” Because debate over the passage of the Sedition Act in Congress pitted nearly every Founder against one another, it provides a useful understanding over the original intent behind the free speech guarantee.

The disagreement over the meaning of free speech during the Sedition Act debate was dictated by each political side’s vision of the role of the new government and faith in the citizenry at large. Many on the Federalist side, including John Adams and Alexander Hamilton, believed government must be superior to the people, and government censure against the effects of expression was necessary to maintain such superiority. In opposition to the Federalists, including James Madison and Thomas Jefferson, were those who believed government was, in all ways, subservient to the will of the people, who, consequently, must possess the inherent right to speak without the threat of government interference. It is important to emphasize the dispute over the issues debated by Madison and the Federalists remains largely unsettled. However, I do not have to take a side in order to extract fundamental, originalist principles from the struggle over the Sedition Acts.

As my Article puts it [citations omitted]:

“Regardless of whether one finds the Federalist or Madison’s more Info-Libertarian interpretation more convincing, two principles emerge from the Sedition Acts debate that apply to free speech legal doctrine. First, it has long been common knowledge to scholars that all forms of speech maintain some level of guaranteed protection from prior restraint. Secondly, as the next section will demonstrate, any restriction that seeks to censor speech because of the danger it imposes to society must include an evidence-based test of the link between the speech and the danger asserted. The reason only these two principles survive with any certainty, is that they were the only premises both sides of the debate generally agreed on.”

The next section then goes into detail regarding how the Federalists and Republicans amended the Sedition Act to include an evidence-based procedural standard required to demonstrate harmful effect in order to ensure a measured degree of constitutional fairness.

This evidence-based standard, even during the period of the Founding when our fears regarding human expression were far greater, nevertheless resulted in limiting Sedition Act cases to extremely rare, but highly publicized trials — trials that a substantial amount of evidence suggests were based on political considerations rather than cases of actual immediate danger. Even obscenity cases during the nineteenth century were relatively rare events and became even rarer the more our understanding about human behavior increased. And if one were to apply an evidence-based standard to the claimed linkage between porn and certain dangers today, the evidence, and therefore the originalist argument, is entirely stacked against you.

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For years, the biggest investment banks have told Saudi Crown Prince Mohammed bin Salman that his oil company, Saudi Aramco, was not worth as much as he thought, which is to say $2 billion. No matter how many times he cancelled what would have been the biggest IPO in history in a fit of pique or how many people he threw into the world’s ritziest jail or how many (perhaps because of?) journalists he had killed and dismembered, there was no way, no how that this thing was worth $2 billion.

Saudi Aramco, the world’s biggest oil company, ended trading on Monday with a market value of over $2 trillion, a worth that had eluded it when it took its shares public…. In four trading days, strong demand, mostly from Saudi retail and corporate investors, pushed the shares above the prince’s goal.

With hotter temperatures recorded in the Zambezi Valley, northern Zimbabwe, the flies that carry sleeping sickness to humans and nagana to animals are projected to move to higher, cooler areas, where there are more farmers and cattle.

Scientists have had to find a new cheap and effective solution to stop them.

A fly’s-eye-view

For years, they’ve used a sort of bovine scarecrow made of insecticide-treated black or blue fabric stretched between a frame with a small bottle of artificial cow scent used to attract the flies.

To the eye of a tsetse fly, it’s a stationary cow. And the flies, which feed on the blood of animals, receive a lethal dose of insecticide when they land on the fabric.

But now the scientists have discovered that using violet polyester material on the targets is more effective at attracting the tsetse flies, even without artificial cow scent. Polyester has also been found to be more durable, and to hold insecticide better.

“We calculated how a fly’s photoreceptors would respond to a variety of coloured fabrics to establish the attractive properties of different colours from a ‘fly’s-eye’ view,” said study leader Roger Santer, a zoologist at the Institute of Biological, Environmental and Rural Sciences at Aberystwyth University in Britain.

“We then deliberately engineered a polyester fabric to be more attractive to the flies, based upon those principles, and tested its effectiveness against savannah tsetse flies.” The findings were published on 12 December in the journal PLOS Neglected Tropical Diseases.

‘Important step forward’

The researchers found that violet polyester attracted 50 percent more female tsetse flies than black cotton or blue polyester used on traditional targets. Santer and his team called it a scientific breakthrough that could improve the lives of people across Africa.

The field tests were done at Rekomitjie Research Station in the Zambezi Valley.

RFI met veteran Zimbabwean tsetse researcher and one of the co-authors of the study, Glyn Vale in his book-lined study in Harare.

“Admittedly, it [violet fabric] is only 50 percent better. But what that means is that you can reduce by a third the number of targets you’ve got to deploy,” he said. “Economically, it’s an important step forward.”

The cheapest way to combat tsetse flies is to treat cattle with insecticide. But for that to be effective against incursions of the fly, at least three or four large cattle per square kilometre need to be present at all times, explained Vale.

That doesn’t allow for cows wandering or being herded away. Hence the need for fixed targets.

It’s hoped that the violet colour will be equally effective in trapping other members of the tsetse fly family, including riverine flies that live in countries further to the north and spread most human forms of trypanosomiasis – the other name for sleeping sickness.

Millions at risk

Tsetse flies are found in an estimated 10 million square kilometres in sub-Saharan Africa. Not only do they put millions of people at risk of the disease they kill large numbers of cattle, a key source of wealth.

In 2018, a team of researchers that included Vale published a study using data from Rekomitjie Research Station that appeared to show a correlation between the decline in tsetse fly numbers there over the previous 27 years, and a rise in mean daily temperatures.

The presumption is that the tsetse flies could move out of the valley if climate change makes higher areas more suitable.

“The trouble is that in the cooler areas is where there is a lot of farming and cattle,” explained Vale. “Then of course you want to be sure that you’ve got the cheapest, most economical, most practical means of dealing with this.”

Judging by the success of this latest research, purple cows may be the answer.

* Harvey Weinstein is trying to delay a civil lawsuit because he is suffering from back injuries. [New York Post]

* Coca-Cola is looking for a new general counsel. They should make candidates take the “Pepsi Challenge.” [Corporate Counsel]

* A partner at Duane Morris has been suspended from practice for inflating bills and billing for work that was actually completed by associates. [The American Lawyer]

* A Louisiana woman has been charged with pretending to be a lawyer and stealing millions from an individual with developmental disabilities. [New Orleans City Business]

* Arrests have been made in connection with an incident where anti-semitic graffiti was found at Yale Law School. [Yale News]

* A lawsuit alleges that a police officer tried to ask out a woman he was taking to jail. The back of a police cruiser is not an appropriate place to find love. [Charlotte Observer]

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Jordan Rothman is a partner of The Rothman Law Firm, a full-service New York and New Jersey law firm. He is also the founder of Student Debt Diaries, a website discussing how he paid off his student loans. You can reach Jordan through email at jordan@rothmanlawyer.com.

Findings from the 12th Annual Law Department Operations Survey – Webinar

Findings from the 12th Annual Law Department Operations Survey – Webinar

BLICKSTEIN GROUP & ABOVE THE LAW

According to the State Bar of California, which law school had the smallest percentage of graduates pass the July 2019 administration of California bar exam?

Hint: Only 11 percent of first time test takers passed the bar, and 15 percent of all test takers from this law school passed.

See the answer on the next page.

Everyone likes a good bonus announcement, but what we really love is a bonus announcement that goes over the top of the market scale. Cue the good folks at litigation powerhouse, Susman Godfrey.

Susman has a history giving out massive bonuses. 2019 has brought another year of big bonuses at the firm. But they didn’t just repeat the big bonuses from last year, they actually added to them.

So, enough talking, here are the big numbers:

More than 20 percent of Susman Godfrey associates will have total compensation of at least $500,000 for 2019. For purposes of comparison of Susman Godfrey’s bonuses to those of law firms that base bonuses on law school graduation year, here are the median bonuses for Susman Godfrey associates by graduation year:

• 2011 or earlier: $235,000
• 2012: $200,000
• 2013: $180,000
• 2014: $160,000
• 2015: $130,000
• 2016: $120,000
• 2017: $115,000

For the sake of comparison, the standard market bonus for the Class of 2017 is $25,000, meaning Susman is giving associates $90,000 more. That’s a pretty nice payday.

You can read the full announcement on the next page.

Remember — we can’t do this without you, dear readers! We depend on your tips to stay on top of important bonus updates, so when your firm matches, please text us (646-820-8477) or email us (subject line: “[Firm Name] Matches”). Please include the memo if available. You can take a photo of the memo and send it via text or email if you don’t want to forward the original PDF or Word file.

And if you’d like to sign up for ATL’s Bonus Alerts (which is the alert list we also use for all salary announcements), please scroll down and enter your email address in the box below this post. If you previously signed up for the bonus alerts, you don’t need to do anything. You’ll receive an email notification within minutes of each bonus announcement that we publish. Thanks for your help!

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Kathryn Rubino is a Senior Editor at Above the Law, and host of The Jabot podcast. AtL tipsters are the best, so please connect with her. Feel free to email her with any tips, questions, or comments and follow her on Twitter (@Kathryn1).

It’s that holiday time of year again!  For those celebrating the holiday season (which I hope is most of you), it’s not just a time for gathering family and friends to celebrate the season – it’s also a time to exchange gifts as well.  Unfortunately, the season brings with it a fair amount concern over counterfeit products.  By 2022, the International Trademark Association projects that the total estimated value of counterfeit goods (including pirated goods and digital piracy) be around $1.90–$2.81 trillion.  Now that’s a lot of coal in stockings.  Fortunately, there are a number of considerations worth noting to bolster a company’s trademark policing during the holidays – things to do that will operate as a springboard to policing products in the New Year.

It’s no surprise that this time of year poses policing challenges due to the retail focus for the holidays (at least in the United States).  As I have written before here, counterfeiting cost US companies over $600 billion in 2016 and exceeded $1 trillion (yes…that’s trillion) in 2017.  Since 2018 likely marked the first holiday season with $1 trillion+ in sales, these numbers are only increasing.  The thing is, the loss imposed by the sales of counterfeit goods is not just in the fraudulent sales – from bogus warranty (and product liability) claims to reputational damage (especially in this age of online reviews), the impact on a brand can be substantial.  As a result, companies should incorporate a strategy for handling counterfeits that works together with its trademark policing policies.

It is important to note that counterfeiting of products and trademark infringement are related but somewhat different concepts – both hurt a company, but do so in different ways.  I wrote about these differences in a previous article, but they are worth reiterating here.  First, trademark counterfeiting most commonly occurs where a third-party knowingly and intentionally places the identical mark on its own goods and fraudulently sells such goods as the genuine article (referred to as “passing off’ or “palming off” the counterfeit goods as the real thing).  Such cases involve a distinct intent to deceive.    Infringement, on the other hand, deals with confusing similarity between trademarks, for which there may be no intent to deceive and/or defraud.  Remember: trademark counterfeiting is a type of trademark infringement, but not all trademark infringement equates to counterfeiting.

The concepts are different, they remain interrelated.  When properly designed and applied in practice, a decent trademark policing strategy helps address potential counterfeit sales.  How? Although such policies must be tailored to specific brands by their very nature, there are some common considerations that are part of a foundation to such strategies that should be present in any trademark policing strategy.  Here are 3 of them:

1.    Ensure Your Trademarks Reflect Your Use. This consideration may seem so obvious that it is not worth mentioning here.  That perception would be wrong – you would be stunned how many times I have been presented trademark portfolios to protect, only to find that trademark usage over time has deviated from what the client believes is actually protected.  Sometimes the issue is a change in usage that does not properly reflect the mark(s) as registered, sometimes it is an interruption of use for a period of time, or even a minor change to the mark that actually constitutes a material alteration that changes the commercial impression.  Each of these problems affect the company’s ability to maintain (let alone assert) its trademark rights. The point here is that a company can never — ever— take its trademark portfolio for granted.  The last thing your company (or client) needs is to seek to take action against a third party infringer or distributor of counterfeit products and realize that its rights are not what they seem.

2     Ensure the Policy Reflects an Overall a Litigation Strategy.   Think sending a cease & desist letter to a potential infringer without being ready to follow-up should the recipient ignore the warning is OK?  It’s not.  This is a simple example, but the point here is that policing trademarks is one part finding offending uses, and another part understanding what to do about them.  This should always be addressed by asking a seminal question:  What goal is your company (or client) seeking should it engage in litigation involving such infringement or counterfeits?  The answer to this question is essential to tailoring the trademark policing strategy to that answer.  More importantly, the answer is likely not one to be set in stone (and shouldn’t be) – just as a company grows and changes over time, so may the answer to that question.  Be mindful of these dynamics and ensure that the trademark policing strategy can adapt over time.  The holidays are as good a time as any to revisit what has been working over the prior year, and what should be revisited for the new one.

3     Ensure the Policy Addresses Both Traditional and Online Sales.  Nowadays, brand usage extends well into the digital world.  Enhanced by social media and interactive online components of online sales (such as online ratings and reviews), trademark policing strategies must go beyond addressing specific instances of infringement or counterfeit sales and account for different online platforms.  Infringing trademark usage on a platform such as eBay may not (and does not) have the same mechanisms for brand owners to address infringement and sales of counterfeit goods.  Moreover, the platform’s terms and policies may be revised, requiring revisions to the trademark policing strategy. Each platform reasonably likely to present potential infringing uses or sales of counterfeit goods should be considered and familiarity with reporting mechanisms established and included as part of the policing strategy.  This consideration may seem daunting, but in practice is not as difficult as it seems and is a necessary element to any effective trademark policing strategy.

These are just some of the considerations, but I am sure you get the point.  When it comes to a trademark policing strategy, ensure your company (or client) is operating from a solid foundation that can adapt over time. Although you can’t prevent all instances of trademark infringement or counterfeiting, adhering to the foregoing will help your company (or client) sing “auld lang syne” to the ghosts of infringement and counterfeit past. Now that is something worth toasting to for the New Year. Merry Christmas and Happy New Year to All!

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Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.