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Technology Law Source

Mapping the evolving legal landscape

Lack of reasonable efforts to maintain secrecy of trade secrets can undermine otherwise compelling claim of misappropriation

Posted in Intellectual Property, Privacy

If you believe that a former employee may have taken your trade secrets on his way out the door and you are considering court action to rectify the situation, it is important to have compelling evidence of the misappropriation. But as we discuss in this post, even with compelling evidence of misappropriation, the plaintiff’s failure to have taken “reasonable efforts” to maintain the secrecy of trade secret information may defeat the misappropriation claim.

Let’s review the following set of facts as an example:

An employee has left your company to work for a direct competitor. At that direct competitor, he does the same job he did while working for you. At his new company, he is attempting to contact some of your customers. When he left your company, he did not return his company-issued laptop or iPad. A forensic examination of those devices reveals that after he received a letter from you demanding the return of them, he opened 20 files that you contend contain highly confidential and proprietary information. That same analysis demonstrates that he connected more than 20 flash drives to the laptop after his employment was terminated. Indeed, on the day he returned the computer to you he connected six flash drives to it. He also emailed to his new colleagues a high-level competitive analysis of your company. Continue Reading

gTLD weekly update: .nyc is ready for salida del sol, are you?

Posted in gTLDs, Intellectual Property, Trademarks

The sun sets on several new gTLDs

The Sunrise period has ended, or will by Monday, for the new gTLDs listed below.


Sunrise Opens

Sunrise Closes

















































After Sunrise, gTLDs enter a Landrush period — when individuals seeking second-level domains within a new gTLD can pay for pre-registration — before they become available to the general public. (Read more about Landrush in last week’s gTLD post.) If any of these gTLDs are of interest to your brands or business, now is the time to take action. Continue Reading

District court gives the FTC the go-ahead in Wyndham data security enforcement suit

Posted in Data Breach Notification, Information Technology

A decision from the U.S. District Court for the District of New Jersey last week affirmed the Federal Trade Commission’s assertion of authority to prosecute data security breaches under Section 5 of the Federal Trade Commission Act. The FTC has increasingly used its authority under Section 5, which makes it unlawful to engage in “unfair methods of competition … and unfair or deceptive acts or practices,” to regulate data security. Two companies, Wyndham Worldwide Corp. and LabMD Inc., have publicly challenged the FTC’s authority over their data security policies (and subsequent lapses). We posted in December about LabMD’s challenge, which remains pending before the FTC. The District of New Jersey, however, has rejected Wyndham’s challenge.

In June 2012, the FTC filed a complaint against Wyndham, alleging that Wyndham used unfair and deceptive practices by failing “to maintain reasonable and appropriate data security for consumers’ sensitive personal data,” which, in turn, exposed customers’ personal and credit card information to hackers in three system attacks between 2008 and 2011, resulting in fraudulent charges to consumers’ accounts totaling $10.6 million.

Wyndham moved to dismiss the complaint, arguing, among other things, that the FTC’s unfairness authority does not extend to data security because: Continue Reading

Hashtag promotions could spell #trouble with FTC Endorsement Guides

Posted in Privacy, Social Media

The Federal Trade Commission’s Division of Advertising Practices has recently finalized its investigation into Cole Haan’s “Wandering Shoe” contest wherein contestants could enter the contest by creating Pinterest boards titled “Wandering Sole” and including five shoe images from Cole Haan’s Wander Sole Pinterest Board as well as five images of contestants’ “favorite places to wander.” Contestants also were instructed to use #WanderingSole in each pin description. The contestant with the most creative entry would, under the contest rules, be awarded a $1,000 shopping spree from Cole Haan.

In its investigation closing letter, the FTC stated that it believes “that participants’ pins featuring Cole Haan products were endorsements of the Cole Haan products, and the fact that the pins were incentivized by the opportunity to win a $1,000 spree would not reasonably be expected by consumers who saw the pins.” The FTC also stated that “Cole Haan did not instruct contestants to label their pins and Pinterest boards to make it clear that they had pinned Cole Haan products as part of a contest” and that the #WanderingSole hashtag did not adequately communicate “the financial incentive—a material connection—between contestants and Cole Haan.” Continue Reading

Tech companies can’t escape antitrust liability for agreeing not to solicit competitors’ employees

Posted in Information Technology

Our colleagues at Employer Law Report have been following a case that considers antitrust issues as they relate to competition among high-tech employers. In re High-Tech Employee Antitrust Litigation will now proceed to trial. The case is an excellent reminder to businesses across industries. Though companies may be able to enter into agreements with their employees restricting their ability to compete, entering into agreements with competitors in an attempt to reach the same result may violate antitrust laws. Read more

Another sunrise, another new beginning. New gTLDs delegated and set to launch; are you ready?

Posted in gTLDs, Information Technology, Intellectual Property, Trademarks

New to the delegation pool

ICANN delegates new gTLDs daily, which keeps trademark owners on their toes. Since our last blog article, new gTLD delegations include:

  • .gop
  • .ryukya
  • .yokohama
  • .rest
  • .saarland
  • .consulting
  • .vodka
  • .haus
  • .cooking
  • .moe
  • .rodeo
  • .country
  • .商城(xn--czru2d) – Chinese for “mall”
  • .horse
  • .fishing
  • .vegas
  • .miami
  • .archi
  • .black
  • .ren
  • .meet
  • .sohu

The most recent additions will join the growing list of gTLDs that can begin their Sunrise periods. It is important to remember that though many gTLDs are allowing Sunrise periods to last longer than 30 days, they are required to have only a 30-day period.

gTLDs beginning Sunrise

Sunrise periods can quickly come and go — notice to the unwary. Following is a list of gTLDs set to launch and their corresponding Sunrise periods. Continue Reading

De novo review redux — Supreme Court to consider standard of appellate review of patent claim construction

Posted in Intellectual Property, Patents

In a recent blog post, we reported that a divided U.S. Court of Appeals for the Federal Circuit (CAFC) had reaffirmed that appellate review of patent claim interpretations is de novo, without any deference to the trial court even for factual matters. As we stated in that post, the 6-4 en banc decision by the CAFC in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,1 appeared to be an open invitation for the U.S. Supreme Court to take up the issue.

The Supreme Court has now accepted that invitation, albeit with a difference dance partner. On March 31, 2014, the Supreme Court granted certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., on the following issue:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires. Continue Reading

“You, you, and you: Panic. The rest of you: Come with me.” – It’s time for trademark owners to arm themselves against the dot’s new friends.

Posted in gTLDs, Information Technology, Intellectual Property, Trademarks

The Internet Corporation for Assigned Names and Numbers (ICANN) announced this week at ICANN 49 Singapore that the number of new generic top levels domains (gTLDs) that have been “delegated” — i.e., designated as ready for launch — now tops 175. Recently delegated gTLDs include:

  • .london
  •  .nyc
  • .cologne
  •  .trade
  •  . 世界 (Chinese for “world/shijie”)
  •  .bid
  • .vote
  • .reviews
  • .events
  • .democrat
  • .education
  • .coffee
  • .florist

The ICANN website shows the complete list of delegated gTLDs. As this number climbs, it becomes increasingly and even alarmingly important for trademark owners, regardless of whether they have vast or small trademark portfolios, to take action so they have the ability to receive notice and protect their registered marks in the rapidly expanding Internet.

What does delegation mean to brand owners?

Logistically, delegation means that the gTLD registry can begin the “Sunrise” period. For trademark owners however, delegation signals that the battle to quash unauthorized use of domain names has begun. Continue Reading

Key e-discovery cases in February

Posted in Electronic Discovery

In February, there again was a number of interesting spoliation decisions, including an order permitting the defendants to assert a counterclaim for spoliation based on the plaintiffs’ alleged failure to preserve relevant information, another sanctions order in multi-district products liability litigation in which the court looked closely at the breadth of litigation hold notices issued by the defendant in previous litigation, and a sanctions order finding culpable conduct based on the defendant city’s failure to have its IT policies comply with state public records laws. There also were key e-discovery decisions addressing undue burden, taxable costs, format of production, and predictive coding.


Zecotek Imaging Systems PTE Ltd. v. Sain-Gobain Ceramics & Plastics, Inc., No. 12-CV-1533 (N.D. Ohio Feb. 28, 2014). The court permitted the defendants to assert a counterclaim for spoliation under Ohio law based on the plaintiffs’ alleged failure to preserve documents and information relating to the plaintiffs’ patent infringement claims. According to the defendants, the plaintiffs failed to preserve and/or destroyed emails and other documents relating to the inventorship and ownership of the patent in suit and infringement of the patent, and these actions deprived the defendants of relevant and potentially exculpatory evidence. The court noted that while Ohio law imposes a duty on a plaintiff to preserve evidence, authority is mixed whether a plaintiff’s failure to comply with this duty can give rise to a cause of action against the plaintiff. The court concluded that under Ohio law a defendant is not per se prohibited from bringing a counterclaim for spoliation and therefore permitted the defendant to amend its answer and counterclaims. Continue Reading

Porter Wright to hold roundtable about “friend of the court” briefs

Posted in Porter Wright News

From time to time we share news about educational opportunities that may be of interest to our subscribers. Members of Porter Wright’s Appellate and Supreme Court practice will hold a roundtable April 8 to discuss the benefits of amicus advocacy before the Ohio Supreme Court.

Too often, the Ohio Supreme Court decides issues that affect an industry statewide without first hearing from the industry itself. Trade associations and companies can address this issue by filing “friend of the court” briefs. To learn more about how your organization can be part of this process, join Kathleen Trafford, Brad Hughes and Dennis Hirsch for a breakfast briefing. Using a roundtable format, they plan to cover the benefits of amicus advocacy, strategies for effective amicus advocacy and the rules governing “friend of the court” briefs.

Tuesday, April 8, 2014
7:30 a.m. – 8 a.m. — Registration and breakfast
8 a.m. – 9 a.m. — Roundtable discussion

Porter Wright
41 S. High St., 29th Floor
Columbus, OH 43215

Register online for this complimentary event.