WHAT IS A RETAINER AGREEMENT?

A retainer agreement is a legal contract between a law firm (or attorney) and the client by which the client agrees to hire the law firm for particular legal services.  The retainer agreement provides a detailed description of the parties to the agreement, the scope of legal services to be performed, the rules and manner in which those services will be performed, and a recitation of the agreed-upon fee arrangement between the parties.  Generally speaking, the law firm will require the client to review the agreement, sign the agreement if there are no changes to be made, and return the executed agreement along with a retainer fee (or deposit) to the law firm before any legal services are performed on a particular matter.

Authored by: Scott A. Meyer and John Sokatch

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Chalker Flores, LLP provides business, corporate, litigation and intellectual property legal services to individuals, inventors, entrepreneurs, start-ups, spin-offs, universities, research institutes, and small to large public and private companies and businesses.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact us 214-445-4040 or info@chalkerflores.com.  Please follow us on Twitter at @chalkerflores.

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Rep. Paul Seeks Assistance from United Nations in Acquiring RonPaul.com from Loyal Supporters

In a seemingly ironic series of events, former U.S. Congressman and three-time presidential candidate, Rep. Ron Paul, has turned to, of all places, the United Nations, an international organization repeatedly criticized by Rep. Paul throughout his political campaigns, for assistance in acquiring the domain name rights of two websites bearing his own namesake: <RonPaul.com> and <RonPaul.org>.  Even more surprising may be the fact that the Respondents in this case appear to be ardent grassroots supporters of Rep. Paul who initially created the websites during Rep. Paul’s 2008 presidential campaign.

The World Intellectual Property Organization (“WIPO”), one of the seventeen specialized agencies of the United Nations, permits trademark owners to file complaints against domain-name registrants for purposes of obtaining relief or resolving disputes in matters concerning the registration and ownership of domain names.  For example, oftentimes, the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) procedures will be used to combat cybersquatting or situations where an individual will register a domain name with the bad faith intent to profiteer from the goodwill associated with another’s trademark by selling the rights to the mark owner at an inflated price.

On February 7, 2013, Rep. Paul filed his complaint against several unknown Respondents generally alleging in accordance with UDRP requirements that:

1)      The domain names are identical or confusingly similar to Ron Paul’s RON PAUL trademark;

2)      The registrants have no rights or legitimate interests in the domain names; and

3)      The registrants have registered and are using the domain names in “bad faith.”

The complaint further requests that the two domain names be transferred to Rep. Paul without any form of compensation to the current registrants.

While the complaint fails to allege any federal registrations of the RON PAUL mark, Rep. Paul’s complaint, instead, claims common-law rights to the RON PAUL mark by virtue of its use in the United States and in association with Rep. Paul’s “books, articles, public appearances, and political commentary.”  Even though UDRP procedures do not require successful claimants to obtain federal registrations of their marks, such evidence can be helpful in establishing the complainant’s ownership of the mark.  Notably, a search on the Trademark Electronic Search System (“TESS”) reveals that the rights to a RON PAUL mark once held by the Ron Paul Consulting Company were abandoned in November of 2009 due to a failure to file a Statement of Use of the mark.

Additionally, the complaint alleges a lack of any evidence that the Respondents have actually used the two domain names “in connection with a bona fide offering of goods and services,” that the Respondents only registered the two domain names for the purposes of “selling them to [Rep. Paul] for more than [Respondents’] out-of-pocket costs,” and that “the domain names are being used to sell Ron Paul merchandise by third party vendors which competes directly with [Rep. Paul].”

Many reports indicate that the domain owners initially made an offer to sell the domain name <RonPaul.com> to Rep. Paul prior to his filing of the complaint for $848,000.  The owners subsequently reduced their offer to only $250,000 and were even willing to throw in the rights to <RonPaul.org>.

To date, it does not appear that the Respondents have answered the Complaint or made any further efforts to settle or resolve the matter outside of the UDRP process.

Authored by: Scott A. Meyer and John Sokatch, March 9, 2013.

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Chalker Flores, LLP provides business, corporate, litigation and intellectual property legal services to individuals, inventors, entrepreneurs, start-ups, spin-offs, universities, research institutes, and small to large public and private companies and businesses.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact us 214-445-4040 or info@chalkerflores.com.  Please follow us on Twitter at @chalkerflores.

Copyright Violation Alert Process for Internet Subscribers

In December of 1999, several record companies filed a complaint for contributory and vicarious copyright infringement against, Napster, Inc., for illegal activities perpetuated by Napster’s online Peer-to-Peer (“P2P”) filing-sharing network program.  Since the filing of that lawsuit, the Recording Industry Association of America (“RIAA”) reports that music sales in the United States have dropped nearly 53%, due in large part to illegal downloads of copyrighted works on these P2P programs.

In response to this ongoing problem, the Center for Copyright Information (“CCI”), a collaborative partnership between U.S. content creators in the music and movie industries and various Internet Service Providers (“ISPs”), has promulgated a new system, the Copyright Alert System (“CAS”), that it hopes will be implemented by U.S. ISPs to curtail future instances of online infringement.  CCI reports that this system will be similar to credit card fraud alerts whereby the ISPs will send letters and educational information to those individuals suspected of illegally downloading copyrighted material through the use of the ISP networks.

By way of example, CCI’s website provides the following proposed system in response to a notification from a copyright owner of alleged infringing activities by an ISP subscriber:

  • First Alert: ISP will send an online alert to the subscriber, such as an email, which notifies the subscriber of possible misuse or involvement with infringing activities.  The email will also provide educational information to avoid future infringement and legal means to obtain copyrighted materials.
  • Second Alert: ISP will send a similar notification to that of the First Alert, reinforcing protective measures and alternative means to legally obtain material.
  • Third Alert: ISP will send similar notification to the two previous instances, but will also require subscriber to confirm, through pop-up notice or landing page, receipt of this notification.
  • Fourth Alert: ISP will send similar notification to the Third Alert, again requiring confirmation of receipt.
  • Fifth Alert: ISP will take steps outlined in its published policies and alerts to stop further infringement by the subscriber, including reduction of Internet speeds, redirection to a landing page until the subscriber contacts the ISP to discuss alleged infringement, or any other measure necessary to stop further infringement.
  • Sixth Alert: ISP will implement similar procedures to those taken with Fifth Alert, but CCI believes it would be unlikely for anyone to get to this point after receiving multiple notifications.

In addition to the above system, an ISP subscriber could request an independent review by the American Arbitration Association (“AAA”) if he or she believes the infringing activities were not of his or her own doing.  Likewise, CAS would not require any ISP to terminate the subscriber’s account, including other services such as telephone, email, security or health services.

While the extent to which the CAS procedures and similar measures will actually curb online infringing activities remains unknown, such efforts by those partnered with CCI will likely prove to be an important step in mitigating the instances of future illegal downloads and ultimately protect the innovative spirit of those availing themselves of U.S. copyright laws.

Center for Copyright Information, Copyright Alert System (CAS), http://www.copyrightinformation.org/alerts (last visited November 16, 2012).

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Chalker Flores, LLP provides intellectual property, business, corporate and litigation legal services of the highest quality.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.  Clients include individual inventors, start-ups, spin-offs, major national universities, research institutes and medium to large corporations.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact Scott Meyer at smeyer@chalkerflores.com or 214-866-0001.  Please follow us on Twitter at @chalkerflores.

Induced Infringement in Patent Cases after Akamai and McKesson

The Federal Circuit recently issued its opinion in Akamai Technologies, Inc., et al v. Limelight Networks, Inc. (Appeal from the U.S. District Court for the District of Massachusetts) and McKesson Technolgies, Inc. v. Epic Systems Corporation (Appeal from the U.S. District Court for the Northern District of Georgia).  The Court ruled that aA party will now be liable for induced infringement if: (1) the party knows about the patent; (2) the party either (a) performs some of the steps of a patented method and induces another party to perform the remaining steps, or (b) induces another party to perform of all the steps of the patented method; and (3) all steps are performed by the combination of the party and the induced party (from 2(a)) or all steps are performed by the induced party (from 2(b)).  In other words, the fact that multiple parties are required to infringe a patented method is no longer a defense if there is knowledge of the patent and inducement.

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Chalker Flores, LLP provides intellectual property, business, corporate and litigation legal services of the highest quality.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.  Clients include individual inventors, start-ups, spin-offs, major national universities, research institutes and medium to large corporations.  If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact Tom Jacks at tjacks@chalkerflores.com or 214-866-0001.

Important Rule Changes for Eastern District of Texas

On February 27, 2012, the United States District Court in the Eastern District of Texas announced the amendment of their local rules.  The rule changes are to be effective after a reasonable period for notice and comment.

Starting with Local Rule CV-5, the court made some important changes related to electronic filing, including the following:

  • A waiver of service in a civil matter is now exempt from the requirement of electronic filing under Local Rule CV-5.
  • CV-5(a)(2) regarding registration for electronic filing, has been updated to allow the court more freedom in handling bad email addresses.  The court is no longer going to deal with “bounce-back” email notifications.  The Rule adds, “Documents sent from the court will be deemed delivered if sent to the last known e-mail address given to the court.”  Subsection (i) of this rule was deleted in light of an attorney’s responsibility to maintain their own email account information and because of the time court staff was spending on chasing down good email addresses.  It will be imperative for attorney’s and their staff to update email addresses with the Eastern District.
  •  Under Rule CV-5(a)(4), filers are now allowed to attach files up to fifteen megabytes in size.  This does not change the page requirements of motions and responses however.  The Court further comments that the increase in megabyte size is not encouragement for filers to go overboard with unnecessary attachments.
  •  Still under Rule CV-5, subsection (c), the court adds (c)(1) entitled Letter Briefs.  Letter Briefs that are ordered to be filed by the court must contain a certificate of service and must be served on all counsel of record.  All response and reply dates shall be calculated from the date of service pursuant to Fed. R. Civ. P. 6 and Local Rule CV-6.  This rule clarifies any confusion regarding procedural requirements related to a Letter Brief.
  •  Rule CV-7, Motions Practice, is clarified to expressly state that motions must be accompanied by a “separate” proposed order.  Of course, orders are to be in searchable and editable PDF format for the Judge’s signature, but must not be part of the motion.  This language was changed to mirror Rule CR-47(b), and clarifying further that any proposed order should be filed as an attachment to the motion.  Filing an order as a separate document clutters the docket.
  •  Although many courts require a certificate of conference on any motion filed, the Eastern District of Texas is updating this rule.  CV-7(i) is updated by eliminating subjection (8), the need to have a certificate of conference on “any motion captioned as ‘joint,’ ‘agreed,’ or ‘unopposed.’”  However, they are adding the requirement for a certificate of conference on any writ of garnishment.
  • Local Rule CV-26 is changed to clarify the fact that there is a designated hotline “duty” judge each month regarding discovery.
  • Procedures for a contested bill of costs were changed in Rule CV-54(b) giving the parties the options to:  (i) file a joint motion identifying the areas of agreement and disagreement to be resolved by the court, or (ii) file a motion requesting costs that indicates the areas of agreement and disagreement to be resolved by the court.
  • Local Rule CV-72 (a)-(c) relating to the powers of the Magistrate Judges was rearranged to add current text appearing in Appendix B instead of deferring to Appendix B.  In addition, CV-72(b) regarding motions for reconsideration of a non-dispositive motion adds that any party may respond to a motion for reconsideration within seven (7) days after being served with a copy of the motion.  The addition of the response time closes a gap left in Fed. R. Civ. P. 72 which does not include a deadline in which to respond.  In addition, the court adds a new subsection as follows: (d) “Special Master Reports—28 U.S.C. § 636(b)(2). Any party may seek review of, or action on, a special master report filed by a magistrate judge in accordance with the provisions of Fed. R. Civ. P. 53(3).”
  • Appendix B to the Local Rules of Court for the Assignment of Duties to United States Magistrate Judges of the Eastern District of Texas was recrafted.  The initial Rules 4(A)-(C) were all deleted as they dealt with reconsideration of non-dispositive matters and added into Local Rule CV-72.
  • Local Rule CV-83(b) regarding transferred or remanded cases adds a sentence stating that there is no waiting period for Multi-District Litigation transfers as there are with other transfers or remands.  Therefore, the twenty day waiting period does not apply in MDL cases.
  • Last and most importantly for patent infringement matters, the working group who have proposed the changes for the Eastern District add an Appendix P, a Model Order Regarding E-Discovery to streamline the production of Electronically Stored Information (“ESI”).  Instead of contemplating a separate rule, they wanted to allow for a more flexible plan of action for E-discovery in patent cases.  The order outlines the document image format and requirements of producing text-searchable documents, native files, voicemail and mobile devices, and the requirement of backup restoration.  The order further includes language relating to only the request for email production, which is separate from ESI.  The Model Order avers a proposed timeline for parties to seek email discovery in phases pertinent to a patent infringement matter.  It further requires the requester to specifically identify potential email custodians and why it is believed that the custodian is significant in the matter.  Production requests and depositions to identify potential custodians will be limited by this order, as well as search terms and the time frame for email production.  The order does allow for the parties to limit the discovery requests without leave of court.

The Judges of the U.S. District Court of the Eastern District have approved the changes by General Order 12-6.  Details can be found at the Court’s website under “Court Announcements” at http://www.txed.uscourts.gov/