February 2023 DBA Headnotes

HEADNOTES

HEADNOTES

Hartline Barger Celebrates 30 Years of Giving

BY MICHELLE ALDEN

As the new year gets underway, steadfast DVAP supporter Hartline Barger LLP has stepped up once again with a donation of $30,500—the largest contribution to this year’s Equal Access to Justice Campaign to date! The firm has a long history of supporting pro bono in Dallas through the Campaign. Including this gift, the firm has donated more than $215,875 to legal aid since 2007.

Three decades ago, seven lawyers left a big city law firm and set out on their own. Their goal was to create a firm full of sharp and talented lawyers willing to take on any case, with a commitment to established principles. As a veteran, C. Vernon Hartline, Jr. lived by seven core values: Loyalty, Duty, Respect, Selfless Service, Honor, Integrity, and Courage. For nearly 30 years, Hartline Barger has remained loyal to these tenets, which is why it supports programs, like DVAP, that foster the same values.

“’With justice for all’ is a phrase we repeat every time we say the pledge of allegiance. Securing equal access to justice is a cause that was close to the heart of Vernon Hartline, and remains a cause that this firm continues

to support. The right to justice is a basic right belonging to all. It is at the foundation of our system of government,” said Richard Crews, Managing Partner.

Hartline Barger focuses on general civil litigation defense and trials. The firm’s services are wide-ranging. They focus on product liability litigation, personal injury defense, commercial litigation, construction litigation, and labor & employment litigation, among other areas.

“While it is a privilege for us to practice law, we do not believe it should be a privilege to have access to quality legal representation. Unfortunately, this is a reality for much of society. The fact that we represent successful businesses makes it all the more important that we give back to those who lack such financial wherewithal,” said Jeffrey Patterson, partner in Dallas.

Access to legal services continues to be fundamentally important as people face dire economic straits. DVAP continues its weekly virtual intake clinics every Thursday, along with in-person and virtual Veterans Clinics, and in-person clinics in South Dallas and West Dallas. One recent applicant, “Connie,” came to DVAP seeking help. She had two old criminal charges on her record, which posed an obstacle to obtaining employment. The charges were eligible for expunction. Dedicated volunteer attorney David Green accepted the case and worked on it even while he was deployed in the Middle East as a Judge Advocate General (JAG). David completed the case remotely, and Connie was able to move forward with her job search, making all the difference in her future prospects.

The justice gap in Dallas County is daunting. In a country based on justice for all and access to our court system, over 25 percent of Dallas County residents live near the poverty level, and 42 percent have slim hope of being able to afford an attorney. With annual poverty incomes of $34,687 for a family of four, justice is a luxury for low- and moderateincome families.

As Michelle Sheppard, Chief Operating Officer, stated, “We are well acquainted with the impact that DVAP has on the underrepresented in North Texas; its efforts towards mitigating the staggering justice gap are unparalleled. We know our contribution helps put resources into the right hands.”

DVAP is a joint pro bono program of the DBA and Legal Aid of NorthWest Texas. The program is the only one of its kind in Texas and brings together the volunteer resources of a major metropolitan bar association with the legal aid expertise of the largest and oldest civil legal aid program in North Texas. For more information, or to donate, visit www.dallas volunteerattorneyprogram.org.

Michelle Alden is the Director of the Dallas Volunteer Attorney Program. She can be reached at aldenm@lanwt.org.

Best Contract Provisions When Hiring App/Software Developers

BY LEIZA DOLGHIH

In 2011, Marc Andreessen, a co-founder of Netscape, famously wrote that “software is eating the world.” What he meant, of course, was that software was going to disrupt traditional industries. He was right. While companies continue to offer traditional goods and services, many business models now rely on the use of applications and software programs to accommodate consumer access to those goods and services. These platforms also allow companies to gather and analyze consumer behavior data. Airlines, coffee shops, gyms, and myriad other companies have been rolling out their own applications to better connect with consumers. Companies often have to hire outside developers to create custom applications or software programs. In the last few years, lawsuits involving allegations of trade secret theft and intellectual property theft between companies and their hired developers have been on the rise. In some cases, companies have claimed that their developers took confidential information they learned while developing an application and used it to create a competing business, or shared it with competitors. In other cases, developers accused companies of taking the developers’ software and re-creating it in-

house in order to avoid paying the developers’ royalties or fees.

This article goes over five best contract provisions for those companies that are considering hiring outside developers or software engineers to create a custom application or software for them.

Confidentiality

A mutual confidentiality clause that states that a receiving party agrees not to disclose or use the confidential information belonging to the disclosing party is absolutely necessary if the parties intend to exchange confidential information, such as the business processes of the hiring company or the work processes of the developer company. Moreover, the confidentiality clause needs to specifically state that the receiving party must ensure that any of its employees who work on the company’s project must also sign a confidentiality agreement.

Non-Competition/Moonlighting

A company should ensure that the developers working for it are not simultaneously working for a competitor or engaging in “side hustles” that may take their focus away from

the project. In addition to spelling out these restrictions in writing, the company should also include a clear timetable for phases of the project and competition deadlines.

Intellectual Property Ownership

The software developed as a result of the project is the property of the customer, and the contract should clearly state that. In particular, companies should make sure to include the following provisions in their agreements: (1) that the source code belongs to the company, which means the company can use or modify it in any way it sees fit; (2) if the project is terminated mid-way, the company owns whatever code has been completed so far; (3) that any materials created during the development, such as wireframes, designs, or plans, are to be destroyed; and (4) that employees of the developer company also sign agreements by which they assign all of their intellectual property rights in the project to the hiring company.

Dispute Resolution Process

This clause is often addressed by the parties as an afterthought. However, it becomes very important if a conflict arises. Therefore,

the parties should negotiate up front whether they will resolve their disputes in court (and if so, where) or via arbitration; whether they will waive the right to a jury trial; and, whether they will waive any defenses to the venue clause.

Acceptance Testing

The software development process is not linear, and a company hiring an outside developer should make sure that it has an internal or an external expert who can determine how acceptance testing will be implemented. Acceptance testing is a quality assurance (QA) process that determines to what degree an application meets the end users’ approval. Depending on the organization, acceptance testing might take the form of beta testing, application testing, field testing, or end-user testing. While not all details of acceptance testing can be described in the contract, the general framework and the deadlines associated with such testing should be clearly set out in the contract in order to avoid disputes over whether the software was completed on a timely basis.

C.Vernon Hartline, Jr.

BLACK HISTORY MONTH

February is Black History Month. For articles and information on Black History Month, visit rb.gy/ kte9d0. To find out more about J.L. Turner Legal Association, visit www.jltla.org. For more on the DBA’s Diversity Initiatives, log on to www.dallasbar.org.

the Fifth Circuit and Texas Supreme Court,” Beth Itkin and LaDawn Nandrasy. (MCLE 1.00)*

Harrell Professionalism Committee. Virtual only

SATURDAY, FEBRUARY 11

6:30 p.m. Inaugural of DBA President Cheryl Camin Murray

Tickets available online at www.dallasbar.org.

MONDAY, FEBRUARY 13

Noon Real Property Law Section “Preparing To Challenge Texas Property Taxes in 2023,” John Brusniak and Stephen Brusniak. (MCLE 1.00)*

Peer Assistance Committee. Virtual only

TUESDAY, FEBRUARY 14

Noon Business Litigation Section Topic Not Yet Available

Immigration Law Section Topic Not Yet Available

Mergers & Acquisitions Section

WEDNESDAY,

8 11:00

WEDNESDAY,

Intellectual Property Law Section/USTPO “Dallas RO AI/ET Partnership Event.” (MCLE 3.50)* Noon Bankruptcy & Commercial Law Section

“Best Practices for Mediating Bankruptcy Matters,”

Hon. Harlin Hale, Judith Ross, and Frances Smith. (MCLE 1.00)*

Bench Bar Conference Committee. In person only

Public Forum Committee. Virtual Only

Summer Law Intern Program Committee. In person only

4:00 p.m. LegalLine E-Clinic. Volunteers needed. Contact mmejia@dallasbar.org.

THURSDAY, FEBRUARY 9

Noon Alternative Dispute Resolution Section Topic Not Yet Available

Legal History Discussion Group “Sidelights on the 1925 All-Woman Texas Supreme Court,” Jeffrey Dunn. (MCLE 1.00)* In person only

CLE Committee. Virtual Only

Publications Committee. Virtual only

FRIDAY, FEBRUARY 10

Noon Government Law Section Topic Not Yet Available

Trial Skills Section “Arbitration from A(AA) to Z(oom): What to Expect

When You Are Arbitrating,” Rob Velevis and Angela Zambrano. (MCLE 1.00)*

“Common Issues with Post-SPAC Combination Companies,” Stancell Haigwood. (MCLE 1.00)* Virtual only

Courthouse Committee Virtual only

Home Project Committee

Legal Ethics Committee. Virtual Only

WEDNESDAY, FEBRUARY 15

Noon Wednesday

THURSDAY, FEBRUARY 23

Noon Criminal Law Section “Expunctions and Non-Disclosures,” Jennifer Balido. (MCLE 1.00)*

Environmental Law Section Topic Not Yet Available

Intellectual Property Law Section “In Search of Unicorns: The Quest for Ideal Jurors in IP Cases,” Leon Carter, Casey Griffith, Gary Sorden, Jennifer Truelove, and moderator Joe Cleveland. (MCLE 1.00)* Virtual only

Minority Participation Committee. Virtual only

3:30 p.m. Judicial Investitures Hon. LaDeitra Adkins,

THURSDAY, FEBRUARY 16

Noon Appellate Law Section “How to Write Winning Briefs That Catch the Justices’ Attention,” Hon. Bill Whitehill. (Ethics 1.00)* In person only

FRIDAY, FEBRUARY 17 No DBA Events Scheduled

MONDAY, FEBRUARY 20 Noon Labor & Employment Law Section “Handling Difficult Terminations,” Hillary Kramer Lynch and Bob Storer. (MCLE 1.00, Ethics 0.50)*

TUESDAY, FEBRUARY

interviewed by Kelly Vickers and Maeghan Whitehead. (Ethics 1.00)* Virtual only Probate, Trusts & Estates Law Section “Using Declaratory Judgment to Solve Probate Quandries,” Shaun Rainey. (MCLE 1.00)* In person only

On January 6, the DBA hosted the Judicial Investitures of three new judges (left to right): Hon. Dianne Kathryn Jones, Hon. Maria Aceves, DBA President Cheryl Camin Murray, Hon. Veretta Frazier, and Senator Royce West.

President’s Column Predictions for 2023

BY CHERYL CAMIN MURRAY

I hope your 2023 is off to a great start. As we begin a new year, I have pulled out my crystal ball to see what will come in the next 11 months. Here are my predictions for the upcoming year.

Prediction #1: Working from Home and Office Challenges

There will continue to be struggles in balancing perspectives on the working from office or home debate. Not all offices or companies have these challenges. Many lawyers have found what works best for their teams. However, this year, as we settle into the new normal for COVID, the larger firms and organizations may more strongly encourage people to work in the office, but allow their employees the flexibility of working at home one, two, or three days per week.

I predict that more firms will recommend or require their attorneys to work in the office on specific days of the week, as opposed to a flexible schedule. They may provide breakfast and/or lunch on certain days to encourage strong office attendance and boost morale. In addition, more meetings will be scheduled in person to increase the headcount.

The good news is that there are no rules, and each firm can pick the work arrangements that best fit its culture and employee preferences. How office hours are structured will have an impact on your organization’s culture and the retention of talent.

Prediction #2: Hiring and Retention Struggles

Speaking of retention, the next prediction is that in 2023 there will continue to be challenges in hiring talent. However, I believe there will be a gradual weakening of an employee dominated market, and the employers may have more leverage this year compared to the prior two years. Attorneys, in particular those in their 20s and 30s, will continue to prefer flexibility in their schedules and where they work. Although, I believe as more people return to the office, on a regular basis, legal professionals of all ages will see the advantages of having some in-person interactions.

Firms will continue to work aggressively on hiring lateral attorneys, as well as law students. However, the summer associate classes in the future may be a little smaller, and the number of attorneys leaving their firms this year will not be as statistically high as what took place during the Great Resignation. Diversity, equity, and inclusion will continue to be a priority in the workplace.

In order for firms and legal departments to retain their talent, especially diverse professionals, they will need to show their lawyers that they are investing in their professional careers and in them as people.

I encourage these organizations, if they have not already done so, to develop programming, leadership academies, and resources to help their lawyers learn the skills to provide the best quality legal advice, generate business, reduce burnout, and feel fulfilled. This may seem like a tall order,

Headnotes

but the Dallas Bar Association can make this easy because it is already providing programs and events that cover these topics. Please keep your eye out for future programs in 2023 that will help you and your colleagues. (You know I could not write a Headnotes article without including a couple of promotional plugs for the DBA.)

Prediction #3: Competing for Clients

With the slowing of the economy, companies will be tightening their belts and watching their budgets closely. There will be more scrutiny on legal bills and a renewed focus on ways to decrease legal spending. I believe more firms will promote and develop alternative billing arrangements that are tailored to fit the needs of their clients. Corporate legal departments will continue to evaluate their legal advisors based on expertise, quality, and cost.

I had the opportunity to serve as General Counsel for a corporation with over 5,700 employees. I learned that the attorneys who were experts in their fields, business savvy, extremely responsive, and resourceful in making my professional life easier were the most indispensable. Ultimately, I believe the relationship between the attorney and the client will continue to be of the upmost importance. However, if you can help your clients to get to the best legal solutions in the most efficient manner, you will be unstoppable from a competitive standpoint. By the way, the DBA has a number of programs designed to help sharpen your client development tools and learn how to best address the needs of inhouse counsel. (I promise, this is my last DBA plug, well at least in this article.)

Prediction #4: Updating Technology

This year many firms and companies will look into new technology solutions to allow them to operate more efficiently and generate more revenue. Firms will likely evaluate whether or not their document management systems need an update or consider resources for improving their client invoicing and vendor payment processes. In addition, the use of artificial intelligence in document and diligence reviews, as well as contract analysis, may be considered by legal departments and firms. However, the risks versus the rewards will need to be evaluated when involving a nonlicensed party in the realm of legal services.

Prediction #5: Billing and Collecting

This will be a big surprise, but I predict there will be continued emphasis on billing and collecting as much as possible for those in private practice. Of course, in-house attorneys, as well as lawyers who are paid on a contingency fee basis, will have incentives to keep their legal budgets lean and save costs. You may feel like you are on a hamster wheel as another year begins with the renewed stress of generating revenue and saving costs for your organization. However, please remember to give your team members and yourself kudos for the hard work performed in 2022. You all deserve it. We will see if there are any clouds in my crystal ball, but I clearly wish you continued success in 2023 and for years to come!

The DBA’s purpose is to serve and support the legal profession in Dallas and to promote good relations among lawyers, the judiciary, and the community.

OFFICERS President: Cheryl Camin Murray

President-Elect: Bill Mateja

First Vice President: Vicki D. Blanton

Second Vice President: Jonathan Childers

Secretary-Treasurer: Kandace Walter Immediate Past President: Krisi Kastl

Directors: Katie Anderson, Alison Ashmore (President, Dallas Women Lawyers Association), Lauren Black, Callie Butcher (President, Dallas LGBT Bar Association), Rob Cañas, Stephanie G. Culpepper (Vice Chair), Rocio Garcia Espinoza, Hilda Galvan, Carla Verena Green (President, Dallas Hispanic Bar Association), Amber Hamilton Gregg (President, J.L. Turner Legal Association), Hon. Martin Hoffman, Nicole Muñoz Huschka (President, Dallas Association of Young Lawyers), Andy Jones, Jennifer King, Derek Mergele-Rust, Hon. Audrey Moorehead, Timothy Newman, Hon. Erin Nowell, Sarah Rogers (Chair), Janet Landry Smith (President, Dallas Asian American Bar Association), and Drew Spaniol

Advisory Directors: Stephanie Almeter (PresidentElect, Dallas Women Lawyers Association), Kristine Cruz (President-Elect, Dallas Asian American Bar Association), Trerod Hall (President-Elect, J.L. Turner Legal Association), Haleigh Jones (President-Elect, Dallas Association of Young Lawyers), Edward Loya Jr. (President-Elect, Dallas Hispanic Bar Association), and Elissa Wev (President-Elect, Dallas LGBT Bar Association)

Delegates, American Bar Association: Rhonda Hunter, Mark Sales

Directors, State Bar of Texas: Chad Baruch, Mary Scott, Paul Stafford, Robert Tobey, Aaron Tobin

HEADNOTES

Executive Director/Executive Editor: Alicia Hernandez

Communications/Media Director & Headnotes Editor: Jessica D. Smith

In the News: Judi Smalling

Display Advertising: Annette Planey, Jessica Smith

PUBLICATIONS COMMITTEE

Co-Chairs: Elisaveta (Leiza) Dolghih and Ted Huffman

Co-Vice-Chairs: Gracen Daniel and John Koetter

DBA & DBF STAFF

Executive Director: Alicia Hernandez

Accounting Assistant: Jessie Smith

Communications/Media Director: Jessica D. Smith

Controller: Sherri Evans

Events Director: Rhonda Thornton

Executive Assistant: Elizabeth Hayden

Executive Director, DBF: Elizabeth Philipp

LRS Director: Biridiana Avina

LRS Interviewer: Giovanna Alvarado

LRS Program Assistant: Marcela Mejia

Legal Education Coordinator: Viridiana Rodriguez

Director of Marketing: Mary Ellen Johnson

Membership Director: Shawna Bush

Publications Coordinator: Judi Smalling

Receptionist/CLE Coordinator: Araceli Rodriguez

Staff Assistant: Yedenia Hinojos

Texas High School Mock Trial & Law Related

Education Director: Melissa Garcia

DALLAS VOLUNTEER ATTORNEY PROGRAM

Director: Michelle Alden

Managing Attorney: Holly Griffin

Mentor Attorneys: Kristen Salas, Katherine Saldana

Paralegals: Whitney Breheny, Miriam Caporal, Tina Douglas, Carolyn Johnson, Suzanne Matthews, Andrew Musquiz, Alicia Perkins, Lorena Santillan

Program Assistant: Laci Payton

Community Engagement Coordinator: Marísela Martin

Secretary: Charnese Garrett

Copyright Dallas Bar Association 2023. All rights reserved. No reproduction of any portion of this publication is allowed without written permission from publisher.

Tuesday, February 28 | Noon - 1:00 PM

MCLE: 1.00 Ethics

Hosted virtually on Zoom. Register at Dallasbar.org.

Regina

Headnotes serves the membership of the DBA and, as such, editorial submissions from members are welcome. The Executive Editor, Editor, and Publications Committee reserve the right to select editorial content to be published. Please submit article text via e-mail to jsmith@dallasbar.org

(Communications Director) at least 45 days in advance of publication. Feature articles should be no longer than 800 words. DISCLAIMER: All legal content appearing in Headnotes is for informational and educational purposes and is not intended as legal advice. Opinions expressed in articles are not necessarily those of the Dallas Bar Association.

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Regina Montoya

T. Montoya, PLLC

Interviewed by Kelly Vickers, Kimberly-Clark Corporation and Maeghan Whitehead, Kilpatrick Townsend & Stockton LLP

Sponsored by

DBA Board Elects Chair and Vice Chair

At its January Organizational Meeting, the Dallas Bar Association Board of Directors elected Sarah Rogers Chair of the Board and Stephanie Gause Culpepper Vice-Chair of the Board for 2023.

Ms. Rogers is a graduate of SMU Dedman School of Law. She is an experienced litigation attorney at Thompson, Coe, Cousins & Irons, LLP, where her practice focuses on dram shop, automobile/trucking accidents, premises liability, and products liability cases. She is an active leader in the local community, having served as the President of the Dallas Association of Young Lawyers in 2013 and as the Secretary of the Texas Young Lawyers Association in 2011. Most recently, she served as the Dallas Women Lawyers Association’s President in 2019,

and currently serves as a member of Attorneys Serving the Community. She is the Board Advisor to the Bylaws Committee and the Mergers & Acquisitions Section.

Ms. Culpepper is a graduate of The University of Texas School of Law. She serves as the Senior Director, Senior Managing Counsel at Lument. She has

been on the DBA Board of Directors for eight years and is a past president of both the Dallas Association of Young Lawyers and the Dallas Women Lawyers Association. In addition, she is Secretary of the Dallas Women Lawyers Association Foundation, Chair of the Dallas Bar Foundation Fellows, and is a board member of the Texas General Counsel Forum She is the Board Advisor to the Summer Law Intern Program Committee and the Employee Benefits & Executive Compensation Law Section.

The Board appointed Justice Erin Nowell, of the Fifth District Court of Appeals, to serve a judicial at-large position. A graduate of Wake Forest University and the University of Texas School of Law, Justice Nowell is Board Advisor to the Bench Bar Conference Committee and the Appellate Law Section.

Filling a one-year At-Large Direc-tor position is Hilda Galvan, of Jones Day Ms. Galvan is a graduate of The University of Texas Law School and is a nationally recognized trial law-yer who has represented technology companies in intellectual property litigation in courts across the country for more than 25 years. She is Board

Advisor to the Pro Bono Activities Committee and Business Litigation Section.

Derek Mergele-Rust , Founding Partner of DebnamRust, was appointed as an At-Large Director and will serve a two-year term. He is a graduate of Texas Tech School of Law and is currently Board Advisor to the Texas High School Mock Trial Committee and Securities Section.

The 2023 board also includes: President Cheryl Camin Murray ; President- Bill Mateja ; First Vice President Vicki Blanton ; Second Vice President Jonathan Childers ; SecretaryTreasurer Kandace Walter ; Immediate Past President Krisi Kastl ; Directors Katie Anderson , Alison Ashmore , Chad Baruch , Lauren Black , Callie Butcher , Rob Cañas , Stephanie Culpepper , Rocio Garcia Espinoza , Carla Verena Green , Amber Hamilton

Gregg , Hon. Martin Hoffman , Nicole

Mu ñ oz Huschka , Andy Jones , Jennifer King , Hon. Audrey Moorehead , Timothy Newman , Janet Landry Smith , and Drew Spaniol ; ABA Delegates Rhonda Hunter and Mark Sales ; and State Bar Directors: Chad Baruch , Mary Scott , Paul Stafford , Aaron Tobin , and Robert Tobey HN

Sarah Rogers Stephanie Gause CulpepperHon. Erin Nowell Hilda Galvan Derek Mergele-Rust

& Technology Law

Using a Competitor’s Trademarks as Search-Engine Keywords

BY CASEY GRIFFITH AND DALLAS FLICK

Search-based advertising can be a valuable marketing tool for law firms. Because many consumers search for legal representation on Google, law firms often use searchengine keyword services, such as Google AdWords, to publicize their services. Examples include phrases such as “personal injury attorney” or “truck accident lawyer” that cause preferred advertisements to appear in the search results.

This method of search-engine advertising has a drawback—your competitor may bid on your trademarks as keyword advertisements to redirect consumer attention away from your business. A business, for example, called “ABC Widgets” could bid on the trademark “XYZ Widgets” so that customers search for “XYZ Widgets” and see advertisements for “ABC Widgets.” If ABC’s advertisement is generic and does not identify

its source, customers may be confused and purchase from ABC instead of XYZ—even if the customers were not originally looking for ABC. While many consider this healthy competition, some contend it is trademark infringement.

Consider the scenario of a law firm bidding on a competitor’s trademarks as keyword advertisements. This led to litigation filed by Jim Adler, the “Texas Hammer,” which was at issue in the Fifth Circuit’s 2021 decision in Jim Adler P.C. v. McNeil Consultants, L.L.C., 10 F.4th 422 (5th Cir. 2021).

Jim Adler advertises via his trademarks, including JIM ADLER, THE HAMMER, and THE TEXAS HAMMER (the “Adler Marks”). McNeil operates a referral service that refers personal injury cases to lawyers with whom McNeil has a referral agreement. McNeil uses search-engine advertising and bid on Adler Marks as keywords; if a consumer searched for Adler Marks, McNeil’s

advertisements appeared near the top of the resulting search.

McNeil’s advertisements did not specify any lawyer or law firm and used generic terms that could apply to any personal injury firm. Adler alleged McNeil’s advertising caused consumers to believe they were interacting with Adler’s advertisements. McNeil’s AdWord campaign also deployed “click-tocall” advertisements—if someone searched on their phone and clicked McNeil’s advertisement, the ad would place a call directly to McNeil’s call center. McNeil’s representatives used generic greetings to convince customers they were speaking with an Adler representative long enough to have them retain a McNeil-referred lawyer. The result, according to Adler, was a likelihood of confusion that risked unfair competition for Adler’s potential customers.

Adler sued McNeil for trademark infringement under the federal Lanham Act, which required Adler to sufficiently allege: (1) it possessed legally protectable trademarks, and (2) McNeil’s use of the trademarks created a likelihood of consumer confusion. Adler alleged McNeil’s advertisements caused “initial interest confusion”— confusion that creates initial interest in a competitor’s product, even if the confusion is dispelled before a sale occurs. McNeil moved to dismiss Adler’s complaint for failure to state a claim, which the district court granted.

The Adler case was the first time the Fifth Circuit analyzed initial interest confusion in the context of search-engine advertising. The Fifth Circuit reversed the district court and held Adler sufficiently stated a claim for infringement because McNeil: (1) used the Adler Marks as keyword advertisements, and (2) deployed generic advertisements and a

misleading call center to confuse consumers who were searching for Adler.

Adler’s allegations of McNeil’s generic advertisement scheme were essential to the court’s decision. The court noted that allegations that a competitor uses a trademark as a keyword advertisement are not alone sufficient to plead an infringement claim. A claimant must allege something more about how the infringer’s use of the trademarks creates consumer confusion, rather than merely distraction.

In Adler, McNeil’s advertising scheme had the “something more”—Adler alleged McNeil’s advertisements and call center tactics were confusing because they did not identify their affiliation, were generic, and were designed to convince consumers they were affiliated with Adler. Because the pleadings went beyond the mere purchase of trademarks as keywords, the court held Adler sufficiently alleged McNeil’s use of the Adler Marks stated a claim for trademark infringement.

While Google permits bidding on competitors’ trademarks, Adler potentially supports infringement claims against advertisers that dip their toes in competitor waters. Law firms should not be dissuaded from using search-based advertising to keep their advertisements at the top of search results, but they should always be mindful of avoiding the “something more” discussed in Adler. A best practice may be to use advertisements that clearly identify the law firm, its services, and its affiliated attorneys. Or, of course, firms can take the “safe” approach and avoid bidding on competitor trademarks altogether. HN

Casey Griffith is a Partner at Griffith Barbee PLLC. He can be reached at casey.griffith@griffithbarbee.com. Dallas Flick is an Associate at the firm and can be reached at dallas.flick@griffithbarbee.com.

Property/Science & Technology Law

USPTO Ushers in the Last Round of Changes Under the TMA

BY DAVID DIAMOND

This past December, the U.S. Patent & Trademark Office (USPTO) implemented the latest changes to trademark practice pursuant to the Trademark Modernization Act of 2020 (TMA). As one of the most substantial trademark legislation since the Lanham Act, the TMA introduces significant changes to trademark practice, including a rebuttable presumption of irreparable harm in trademark litigation, new proceedings for cancelling trademark registrations for nonuse, and shortened response times to USPTO office actions during a trademark prosecution.

Irreparable Harm Presumption

To resolve a circuit split over whether irreparable harm can be presumed for injunctive relief in trademark claims, the TMA codifies a rebuttable presumption of irreparable harm that applies (i) upon the finding of a Lanham Act violation in

the case of a permanent injunction, or (ii) upon the finding of a likelihood of success on the merits for a Lanham Act violation in the case of a preliminary injunction or temporary restraining order.

Nonuse Proceedings

The TMA also introduces new proceedings for cancelling a trademark registration due to failure to use the mark in commerce: ex parte reexamination and ex parte and inter partes expungement.

Reexamination determines whether a registered mark was used in commerce for particular goods or services included in the registration as of the filing date of applications under Section 1(a) of the Lanham Act (i.e., “use-based” applications) or the later of the filing date of an amendment to allege use or the expiration of time for filing a statement of use for applications under Section 1(b) of the Lanham Act (i.e., “intent-to-use” applications). Only trademark registrations issued under Section 1 of the Lanham Act

DBA/DAYL Moms in Law

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Join Moms in Law for lunch

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are eligible for reexamination, and only until the fifth anniversary of registration.

Expungement determines whether a registered mark has ever been used in commerce for particular goods or services included in the registration. Any registered mark is eligible for ex parte or inter partes expungement after its third anniversary of registration until December 27, 2023, after which time a registered trademark is eligible for ex parte expungement only between the third and tenth anniversaries of registration. Reexamination and expungement proceedings may be instituted ex parte by the USPTO on its own initiative or by third party petition, and expungement claims may also be instituted through an inter partes cancellation proceeding before the Trademark Trial and Appeal Board.

The TMA requires petitions for ex parte reexamination or expungement to identify the registration being challenged, identify each good or service in the registration being challenged, include verified statements setting forth the elements of the reasonable investigation conducted by the petitioner to establish nonuse by the relevant date, any supporting facts and evidence, and a fee. The TMA also includes an estoppel provision that exempts challenged goods and services of a registration from subsequent reexamination and expungement proceedings under certain conditions. The USPTO implemented regulations for these proceedings in December 2021, which, among other things, set the petition fee at $400 per class of goods or services challenged, imposed no standing threshold for petitioners, and allowed threemonth response periods for registrants to rebut challenges, extendable by one month. The USPTO’s procedures for these new proceedings can be found in Part 2 of Chapter

37 of the Code of Federal Regulations and Section 1716 of the USPTO’s Trademark Manual of Examining Procedure.

Office Action Response Periods

Prior to the TMA, response periods to USPTO office actions were uniformly six months. The TMA allows the USPTO to shorten the response period to as little time as 60 days, provided that the response periods be extendable if the USPTO chooses to shorten.

In November 2021, the USPTO issued its regulations for this TMA provision, under which response periods to office actions issued for applications filed under Section 1 or Section 44 of the Lanham Act (i.e., the majority of applications filed by U.S. applicants) are shortened to three months, extendable for an additional three months. Notably, response periods for office actions issued for applications filed under Section 66 of the Lanham Act (i.e., Madrid Protocol applications) remain unchanged at six months. The USPTO implemented the shortened response periods for pre-registration office actions on December 3, 2022. Shortened response periods for post-registration office actions will go into effect on October 7, 2023.

Seasoned trademark practitioners are likely well aware of the changes ushered in by the TMA, but those who only infrequently intersect with trademark law would do well to review the TMA and the USPTO’s related regulations next time a trademark matter arises, since the landscape now looks different than in years past. HN

David Diamond is a member of Richard Law Group, Inc. He can be reached at david@richardlawgroup.com

Fitzpatrick ✯ Jim Jacks

Bob Smith ✯ Mike Uhl ✯ Ritch Roberts

Left to right: Jim Mitchell, Andy Payne, Todd Ramsey

MLK Day Celebrated at the Arts District Mansion

On January 16, DBA President Cheryl Camin Murray presented the MLK, Jr. Justice Award to this year’s recipient Hon. Royal Furgeson. Also at the luncheon, DISD student Zihair Douglas gave his award-winning MLK Jr. Oratory Competition speech, which is hosted annually by Foley & Lardner. A special thank you to Kandace Walter and Jervonne Newsome for performing “Lift Every Voice and Sing.”

Stephanie Almeter, McCathern, PLLC

Marina Amendola, The Toro Company

Katie Anderson, Clark Hill

Alison Ashmore, Dykema

Alexier Barbour, The Law Office of Alexier Barbour, PLLC

Vicki Blanton, AT&T

Adrian Bower, Bower PLLC

Hance Burrow, Law Offices of Hance W. Burrow

Sarah Carmichael

Leslie Chaggaris, Reese Marketos LLP

Ye-Whei Peter Chen, Chen Dotson, PLLC

Christopher Cornell, Cutler-Smith, P.C.

D. Paul Dalton, Dalton Law, PLLC

Gracen Daniel Griffith Barbee PLLC

Peter D’Apice, Stutzman, Bromberg, Esserman & Plifka, P.C.

Gianna Della Sera, UNT Dallas College of Law - Students

Melanie Finch, The Law Office of Melanie Finch PLLC

Dallas Flick, Griffith Barbee PLLC

Kathleen Fones, Dallas City Attorney’s Office

Dawn Fowler, Dawn E. Fowler, P.C.

Kathryn Gameros, Atwood Gameros LLP

Cassandra Garcia Hernandez, Hernandez Law Group, P.C.

Tisha Ghormley, Texas Department of Transportation

Staci Glenn, Renwick & Associates, P.C.

Sally Helppie, Waddell Serafino Geary Rechner Jenevein, P.C.

Alicia Hernandez, Dallas Bar Association

Sara Hewitt, Hewitt & Hewitt, P.C.

John Holden, Jackson Walker L.L.P.

Jewelle Huggins, United States Securities & Exchange Commission

Susan Jennings, Erhard & Jennings, P.C.

Krisi Kastl, Kastl Law, P.C.

Barbara Kennedy, Clark Hill

Jonathan LaMendola, Cobb Martinez Woodward PLLC

DEI CLE Challenge

to the following DBA members who completed the 2022

Christine Larkin

Lisa Levin Edwards, Attorney at Law

Koi Lomas, McKesson Corporation

Ashley MacNamara, Clark Hill

Barbara Malin, Jackson Walker L.L.P.

William Mateja, Sheppard Mullin Richter & Hampton LLP

Rosanne Mills, Federal Deposit Insurance Corp

Joy Moonan

Cheryl Camin Murray, Katten Muchin Rosenman LLP

Angella Myers, Kaufman Dolowich & Voluck, LLP

Cynthia Ohlenforst, K&L Gates LLP

Kuruvilla Oommen, City of Irving City Attorney’s Office

Nina Orendain, Akin, Gump, Strauss, Hauer & Feld, L.L.P.

Cortney Parker, Dallas County District Attorneys Office

Monica Piñon, Texas Department of Insurance

Kimberly Ratcliff, DeHay & Elliston, L.L.P.

Matthew Rittmayer, The Blum Firm, P.C.

Christine Robinson, Baylor University School of Law

John Roper, Law Office of John Roper, PLLC

Theresa Searles, Theresa J. Searles, P.C.

Sasha Singh, The Law Office of Ray R. Singh

Consuelo Tankersley, Dallas City Attorney’s Office

Robert Thetford, Attorney at Law

Melissa Thrailkill, Law Offices of Brandy Wingate Voss, PLLC

Nicole Walker, Hedrick Kring Bailey PLLC

Donna Webber Wilkinson, Ameriflex

Henry Wehrmann, Farrow-Gillespie Heath Wilmoth, LLP

Ellen Williamson, Ellen Williamson Law, PC

Jordan Woody, Carter Arnett PLLC

Growth, Legal Services, and History-Making Women

The Dallas Bar Association began the 1930s with a period of growth, not only in membership, but also in outreach to the Dallas community. The DBA began Saturday morning legal clinics for Dallasites, as well as radio broadcasts on the Dallas radio station WRR. The broadcast topics ranged from legal information for the general public to financial relief topics for lawyers. As WRR was the only radio station in Dallas at the time, the programs had broad reach.

The 1930s also saw the DBA publishing two books—History of Dallas Lawyers was published in 1934, and the DBA created Dallas Bar Speaks in 1936, which consisted of a bound compilation of the speeches made at regular meetings. The book would be published for 20 years, ending in 1956.

In 1937, the DBA established its first office—a 15-foot cubicle under the stairs of the Old Red Courthouse. The Bar offices would stay in this location for 23 years.

During the 1930s, organized crime began to enter the cash advance business, after high-rate lending was criminalized by the Uniform Small Loan Law. In Dallas alone, there were 53 loan shark offices. In 1938, the DBA established an Anti-Usury Committee to attack the issue of loan sharks in Dallas.

In 1939, the DBA hit an impressive

In 1961, President John F. Kennedy appointed her to the federal bench in the Northern District of Texas. Two years later, on November 22, 1963, she was called upon to administer the oath of office to Lyndon B. Johnson after the assassination of President John F. Kennedy.

The Dallas Bar Foundation currently has a scholarship in her name that was established in 1981 to increase the diversity of the legal community in Dallas.

Another history-making female attorney in the 1950s was Louise Raggio, who, in 1955, became the first female prosecutor in the Dallas District Attorney’s office. She would go on to spearhead the drafting and passage of the Texas Marital Property Act of 1967. In addition, she was the first woman ever elected to be a director of the State Bar of Texas and a trustee of the Texas Bar Foundation.

members. And on November 20, 1947 the Dallas Bar Association was incorporated—the state’s first Bar Association to incorporate! The Charter read: “The purpose for which this Corporation is formed is for the protection and advancement of the professional interests of persons licensed to practice law, the advancement of cordial intercourse among lawyers, and the improvement of the relations between the Bench and Bar and the Public…”.

1,000

Looking Back on the DBA

Notable events going on throughout the state and nation included Sarah T. Hughes making history to became the state’s first female District Judge. In 1935, she accepted an appointment as a state judge from Governor James Allred for the 14th District Court in Dallas, allowing her to preside over trials in which women were not yet allowed to sit as jurors. Judge Hughes was re-elected and remained at that post until 1960.

The DBA ended the 1950s having established both the Lawyer Referral Service and the Dallas Legal Aid Society. Both of these programs still exist today in some form and have grown exponentially, not only to provide legal services to the community, but also to help Dallas residents living in poverty receive free legal services. HN

The story and timeline continue in each issue of Headnotes this year. Look for part three in the March issue.

Sarah T. Hughes became the state’s first female District Judge in Dallas in 1935.

Focus Intellectual Property/Science & Technology Law

Crime & Sacrifice: Criminal Liability for Concealing Data Breaches

BY CHARLES HOSCH, KATE MORRIS, AND RUSS PEARLMAN

In what may be a first, Uber Technology Inc.’s (Uber) former Chief Security Officer (CSO), Joseph Sullivan, was recently convicted of criminal obstruction of a Federal Trade Commission (FTC) investigation and misprision of felony (knowing of a felony yet taking active steps to conceal it), in connection with an attempted coverup of a 2016 data security breach. Was CSO Sullivan a villain, as the Department of Justice (DOJ) and the federal jury concluded he was, or was he merely a scapegoat?

Prior to Sullivan being hired, Uber was already under investigation by the FTC for a data breach that had occurred in 2014. Just 10 days after testifying to the FTC around that breach, hackers informed him that they had breached Uber anew. Uber’s staff quickly confirmed the fact of a new 2016 breach (ultimately impacting 57 million customers).

However, Sullivan did not report the new breach to the FTC. According to the DOJ’s press release after his conviction, Sullivan instead told his staff that news of the breach must not be disclosed. He also had the hackers sign a non-disclosure agreement, which falsely recited that they did not obtain any personal information; ignored warnings from his staff; paid the hackers $100,000 in bitcoin for their silence; and covered up that payment as a customary “bounty” for the hackers’ supposed “help” in finding a “bug” in Uber’s systems. Meanwhile, Sullivan continued to assist in the FTC investigation, never mentioning the 2016 breach, and instead took affirmative steps to conceal it. When

he learned the hackers’ actual names in the following year, he caused them to execute new non-disclosure agreements under their real names, reaffirming their agreement to keep quiet.

It appears that Uber’s then-CEO and one or more of Uber’s lawyers may have learned about the 2016 breach about a month after Sullivan did, though the DOJ took pains to establish that Sullivan had never mentioned it to the Uber lawyers who were handling the FTC investigation. In any event, despite the pending FTC investigation, no Uber official took action. It was not until late in 2017 that Uber disclosed the 2016 breach to the FTC. That report came after a new CEO took office, ordered a new internal investigation of the 2016 breach, and discovered that Sullivan had also lied to him and had deleted the paragraph from a report prepared by one of Sullivan’s staff describing the large quantity of user data that had been compromised.

The whole affair is an object lesson in faulty corporate governance, with plenty of blame to go around for crimes that are not specific to cybersecurity. On his way to sentencing, Sullivan may feel like the “fall guy,” considering what other senior officials may have known.

Regardless, what lessons can be drawn? We think there are at least four:

Strong, determined corporate governance is at least as necessary as technical safeguards Data security regulations exist across every state, the U.S. government, industry sectors, and many foreign governments. Reasonable cybersecurity and prompt disclosure of breaches are now baseline requirements. Many authorities require more than that, and the

trend is toward more prescriptive requirements. The SEC, for example, is moving to enhance and standardize its cybersecurity risk management, governance, and reporting rules. It has proposed rules regarding, among other things, the disclosure of a company’s policies and procedures for identifying and managing cybersecurity risks. The proposed regulations require cybersecurity governance, including the board of directors’ oversight role. The SEC is also contemplating management’s role, and relevant expertise, in assessing and managing cybersecurity risks and implementing related policies, procedures, and strategies.

Insist on a culture of security Chief Information Security Officers must have the active, energetic support of their companies’ cybersecurity and privacy programs. Officers should champion those programs to build a workforce culture that values cybersecurity and transparency, engages aggressively in training and data protection, and encourages “reporting up” on issues involving cybersecurity. It is important to have accurate and complete documented communications with the CEO and the board of directors

about cybersecurity risks, priorities, and resources. Officers need to understand their companies’ risks and needs without hyperbole and exaggeration to avoid surprises and, ideally, formulate a cybersecurity plan that can endure successive CISOs.

Prioritize vigilance and active response, not only up to the levels required for regulatory compliance, but, if necessary, beyond what is minimally required to stay within industry norms. Incident response plans should be scrupulously followed, and involve all interested parties, including outside counsel and the board, if appropriate.

And with guidance from counsel, remember Norman Augustine’s timeless advice for responding to corporate crises, from his famous 1995 article in the Harvard Business Review on “Managing the Crisis You Tried to Prevent”: Tell the truth and tell it fast HN

Charles Hosch and Kate Morris are Co-Founding Members of Hosch & Morris, and Russ Pearlman is Of Counsel and serves as the Chief Technology Officer of the firm. They can be reached at charles@hoschmorris.com, kate@hoschmorris.com, and russ@ hoschmorris.com, respectively.

2022 DBA President Recognized

On behalf of the Board, Sarah Rogers (right), Chair of the Board, presented Krisi Kastl, DBA’s 2022 President, with an oil painting by Texas artist Jerral Derryberry. Mr. Derryberry’s work is currently represented and sold in fine art galleries and national exhibitions. More of his work can be seen at www.jerralderryberry.com.

Real Appeals of Virtual Civil Trials

BY EMILY MISKEL

After the earliest stages of the pandemic passed, civil litigation seemed to adapt to Zoom hearings and bench trials. Appellate opinions now frequently note that trials occurred by Zoom, but the issues on appeal generally do not relate to problems with the virtual nature of the trial. This article highlights some recent appellate opinions relating to issues arising in virtual trials.

Procedural Due Process Concerns

Must Be Raised in the Trial Court

The appellant claimed that her procedural due process rights were violated when she was required to attend a bench trial remotely by Zoom instead of in person. The appellate court held that the complaint was not preserved in the trial court, and cannot be raised for the first time on appeal. In re A.B ., No. 06-21-00114-CV (Tex. App.— Texarkana Apr. 8, 2022) (mem. op.).

Party Accidentally Excluded from Zoom During Trial . A parental rights termination trial took place in a 4-day bench trial over Zoom. The mother moved for a mistrial at the beginning of day 3, because she had been inad -

vertently placed in a waiting room and excluded from day 2. The court implemented remedial measures: providing her the reporter’s record and allowing her an opportunity to recall the two witnesses who testified. The appellate court examined the mother’s participation in the rest of the trial and concluded that nothing indicated the trial court’s remedial measures had not cured the error. In re D.R.P ., No. 04-21-00112-CV (Tex. App—San Antonio Oct. 6, 2021) (mem. op.).

Evidence Viewed on Zoom but Not Admitted Can Still be Evidence

At a Zoom temporary injunction hearing, the plaintiff did not put on live testimony. He submitted exhibits and audio recordings in advance, stated they should be considered part of the record, but did not formally admit or play them during the hearing. The trial court granted an injunction and the defendants appealed, contending no evidence supported it. The appellate court affirmed, holding that, although the trial court did not use “magic words” admitting the exhibits into evidence, the exhibits were discussed without objection, and the trial court’s order stated it was based on this

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MARTIN MERRITT

--Brad Jackson/ Commercial Litigator, Dallas

• Healthcare Trials/Hearings

Analysis of Illegal “kickback” contracts

• Enforceability of 15.50 Non-Competes

Insurance “Clawbacks”

• FBI, OIG, CMS Investigations

Medical License Revocations

Martin Merritt

Chair, DBA Health Law (2021)

Ex. Dir. Texas Health Lawyers Association

Martin@MartinMerritt.com

Dir. (214) 952.1279

Martin Merritt is your co-counsel in healthcare litigation cases. If one side has an experienced health lawyer in their firm and you do not, you can level the playing field by associating Martin Merritt as co-counsel.

You keep the client. Hourly and flat monthly rates available. Martin can try the case, prepare and argue hearings, or simply serve as health law analyst. You stay in control of the case and keep the client.

Experienced. Over 30 years, in Texas and nationally, Martin Merritt litigates cases against the FBI, DEA, OIG, CMS, AUSA, TMB, Tex. OAG, Tex. Med. Bd, Pharm. Bd., TXDSHS, Civil False Claims Act Subpoenas and lawsuits, civil investigative demands, arbitration, criminal and other administrative actions. He has a proven track record applying this knowledge to win victories for business litigators.

(D Mag. Best 2018, 2020, 2022)

evidence. Kazi v. Sohail , No. 05-2000789-CV (Tex. App.—Dallas Oct. 28, 2021) (mem. op.).

In a similar appeal of a temporary injunction, a party asked the court to make its exhibits part of the record and take judicial notice of them.

The defendants appealed the injunction, objecting that the court improperly took judicial notice of facts. The appellate court held that even if the trial court did not formally state that the exhibits were admitted, it viewed the exhibits on Zoom and no one objected. G.L. Logistics Co., LLC v. Flores , No. 04-21-00125-CV (Tex. App.—San Antonio Aug. 31, 2021) (mem. op.).

Counsel Wanted Zoom, Appealed Trial Court Requirement of In-Person Appearance . An attorney objected to the court holding a pre-trial hearing in person and moved to appear by Zoom. The trial court denied the request, and the appellate court did not find reversible error. Tyson v. Freeman , No. 04-21-00351-CV (Tex. App.— San Antonio Jun. 29, 2022).

Just Because the Court Is on Zoom, Doesn’t Mean It’s a Hearing

An off-the-record, non-evidentiary, ex parte hearing held on a Sunday by Zoom with virtually no notice to the other party does not satisfy the requirement of a “hearing” required by statute. In re Mach , No. 13-22-00126-CV (Tex. App.—Corpus Christi-Edinburg May 3, 2022) (mem. op.).

Parties Responsible for Obtaining Remote Appearance Instructions

Before Trial . The respondent was personally served with notice of a final trial by Zoom. The notice ordered the respondent to contact the court at least 24 hours in advance for instructions on how to appear by Zoom. The notice also referenced the court’s website which listed the instructions. The respondent’s attorney contacted the court the day before the hearing to ask for Zoom instructions. The court sent the instructions to the attorney’s email address on file. Neither the attorney nor the respondent appeared for the hearing. When the judge called as a courtesy, the attorney explained that he had not received the instructions, they were sent to an old email address, and he had a vacation letter on file.

The court proceeded with a default trial. On appeal, the default judgment was affirmed. The appellate court held that it was incumbent on the respondent or his attorney to follow up with the court when they did not receive instructions, or to appear in person to explain. The court also held that TRCP 21a’s requirement of 3 days’ notice for a hearing does not apply to the court’s procedural instructions. Richardson v. Earle , No. 01-20-00630CV (Tex. App.—Houston [1st Dist.] Dec. 14, 2021) (mem op.). HN

Emily Miskel is the judge of the 470th District Court. She can be reached at emily@emilymiskel.com.

Health Law and Healthcare Litigation

“I highly recommend Martin As Co-Counsel in Healthcare Litigation Cases.”

& Technology Law

Protecting Trademark Rights in Virtual Spaces

BY TIMOTHY G. ACKERMANN

Real-world trademark owners are already fighting over violations of their rights in virtual reality. The federal trademark registration system can help protect those rights.

One risk is businesses selling branded digital representations of products (virtual goods) in a virtual space (e.g. the metaverse) when the owner of that brand sells similar real-world products bearing that same brand. This is why companies such as Johnson & Johnson and Nike have filed U.S. trademark applications to protect their rights (NEOSPORIN for virtual antibiotics and NIKE and the Swoosh for virtual goods such as footwear).

Another concern is businesses selling non-fungible tokens (NFTs) based on such real-world products. (Such NFTs are code pointing to the location of, and authenticating, a digital image.) One example is the METABIRKIN NFT using digital images mimicking—according to Hermès—realworld BIRKIN-branded bags. Hermès has sued claiming infringement. Nike has a similar suit against StockX for NFTs concerning its NIKE trademark.

A challenge for Hermès—as in nearly

all trademark claims—is the need to prove it owns rights in a trademark and that the use of the other trademark is likely to cause confusion with the first trademark. Hermès will naturally argue a digital image resembling its product is related enough, in light of its wellknown BIRKIN brand.

But confusion is easier to show when the respective goods or services are similar. Showing the differences between the respective goods (between the trademark owner’s tangible goods and the competing business’s virtual goods/NFTs) thus can be a hurdle. But trademark owners can narrow that gap.

A trademark owner could enter that virtual market by using its existing trademark on virtual goods (or with NFTs). As an example, Muhammad Ali Enterprises sells MUHAMMAD ALI-branded virtual footwear and clothing. But not all companies would want to enter the NFT market. Nor must the goods be identical to show confusion is likely.

Thus, another option is for the trademark owner to use the same trademark it uses for key real-world goods on other goods that would be similar in nature to potential virtual goods. Such similar goods could be,

for instance, downloadable image files containing artwork or graphics relating to the key real-world goods. Those are not NFTs or virtual goods, but there’s a good argument they are very similar.

This kind of use would create unregistered trademark rights in those goods or related services. If the marks and goods/ services were close enough, the trademark owner could prove infringement with those unregistered rights. But real-world trademark owners can also bolster their rights by protecting those trademarks under the federal trademark registration system.

In particular, a federal trademark registration is prima facie evidence of important facts concerning those trademark rights (unless registered on the “Supplemental Register”). Those facts include showing that the trademark is a valid trademark, that it is owned by that owner, and that the owner has the exclusive right to use it for the listed goods or services.

Another consideration is that unregistered trademark rights ordinarily only accrue where and when use occurs. Importantly, priority—who used the mark first and where—is critical in resolving conflicts between users. Registration thus offers another benefit: once registered, the owner can show nationwide use and priority based on its filing date (subject to prior users or filers). And that filing date may be long before actual use occurs. Businesses can file an application based on the good faith intent to use a trademark in the future, years before any use must occur for registration.

One step in getting a trademark registration is (i) describing the goods or services that the owner wishes to be protected, and (ii) identifying the “class” of those goods or

services from among the 45 available classes. The description must be tailored to the use/ intended use, but registered trademarks, pending applications, and agency statements provide guidance.

Examples for virtual goods and NFTrelated goods will fall into Class 09, and include:

• “downloadable virtual goods, namely, computer programs featuring footwear, and clothing … for use online in online virtual worlds”

• “virtual food and beverage products, namely, downloadable image files and computer programs featuring food and beverage items for use in online virtual worlds”

• “downloadable virtual goods, namely, crypto-collectibles and non-fungible tokens (NFTs)”

• “downloadable image files containing artwork authenticated by non-fungible tokens (NFTs)”

Examples for services relating to virtual goods will fall into Classes 35 (entertainment) or 41 (retail) and include:

• “entertainment services, namely, providing on-line, non-downloadable virtual footwear, and clothing … for use in virtual environments”

• “online retail services featuring virtual goods, namely, food and beverages”

Real-world trademark owners should consider extending their rights—and protection of those rights—into virtual spaces. And they can use the federal trademark registration system to help them do so. HN

Tim Ackermann has practiced trademark, patent, and copyright law at the Ackermann Law Firm since 2010, and was Co-Chair of the DBA Publications Committee from 2009-2011. He can be contacted at tim@ackermannlaw.com

A Story of Two Countries: Dennis Siaw-Lattey, US and Ghana Column Black History Month

BY KAREN ROBERTS WASHINGTON

As the government deals with Title 42, I draw your attention to immigration and our Dallas-based colleague Dennis Siaw-Lattey He is what the United States government calls a “naturalized citizen.” He lived in the United States as a legal alien for nearly 10 years before he swore allegiance to the flag and the Constitution and became a United States citizen.

He was born in Ghana, West Africa, and moved to the United States in 1995. He says that he has lived in the United States for 27 years, but Ghana will always be his home. He tried to visit home once every 2-3 years to see friends and extended family.

When he went home, his itinerary was limited to finding and enjoying the comforts of home—family, good food, good drink, and good friends. He did not seek the attractions or historical sites as tourists do…it was, after all, home.

In 2017, he along with his mother and sisters took a trip home. His sisters brought along their American husbands and children to visit Ghana for the first time. On this trip he had no choice but to engage in tourist activities, as this was his brother-in-law’s first trip to Ghana, and he and the nephews and nieces deserved to see more of the country than his usual haunts. They visited and toured just about every historical site and monument in and around the city of Accra.

Siaw-Lattey’s brother-in-law’s final excursion was to a town called Elmina. The historical site he wanted to visit was one he had resisted for years. On this occasion, he obliged and scheduled the 2-hour bus ride down the western coast of Ghana. As they approached from the highway, they could see

an impressive structure sitting on the coast.

It was a stunning structure from afar, and even more majestic as they got closer.

This was Elmina Castle. It was erected by the Portuguese in 1482. Although its stated purpose was to facilitate trade, by the 18th century, it was used for another purpose. Nearly 30,000 human beings a year captured from neighboring regions were held captive in Elmina Castle’s dungeons for months, starved and beaten, and eventually shipped from its port and sold into slavery on foreign lands—that is, if they lived through the journey.

Siaw-Lattey remembered that he followed a knowledgeable tour guide through dungeons that seemed to still hold the stench of torture and depravity. One part of the tour was especially impactful. The tour guide led them to a narrow gap with a metal gate on the exterior wall of one of the dungeons, the door of no return.

Siaw-Lattey explained that after weeks and months of captivity, people held captive in the dungeons were led out of the gate onto ships and sold as slaves in Europe and the Americas. The door of no return was barely wide enough for any human to fit through, he thought. So, he asked how men, likely of his stature, could fit through that door. “Starvation,” the guide answered.

Siaw-Lattey said, “It struck me as I stared through that gate at the waves washing against the rock pier, when I step off the plane in Ghana, my name is no longer Dennis, it is Nana Yaw Siaw-Lattey. So much was lost through those doors—nearly every person dragged through the door of no return had a name like mine and felt the same pride I do. So many lives and so many identities were lost. You see, it is a name that brings

me immense pride and strength, as well as a sense of belonging. It dawned on me: “Each of those individuals, if they did not perish on the sea, would arrive on foreign shores, sold into slavery, and their names forever changed—identities forever lost.”

The drive from Elmina back to Accra was somber. As Siaw-Lattey reflected on the tour, he thought, if it is true that history repeats itself, then we as a people—a decent people—have an obligation to ensure this chapter of history never repeats itself.

Siaw-Lattey contemplated how a society like ours can prevent a recurrence of such atrocities. He looked at the constitution of Ghana and the United States as it pertains to slavery. After all, a constitution is how societies all around the world put into place protections for its people. Article 16 of the Constitution of The Republic of Ghana States, in part, that “no person shall be held in slavery or servitude.” Both the society ravaged by slavery and the society that enjoyed its benefits codified protections against slavery in a constitution.

Asked, what is our role in all of this?

How do we as lawyers, judges, and courts play a part in preventing atrocities like this from ever happening again, Siaw-Lattey suggested: “We are the messengers, the foot soldiers, charged with doing the work of the constitution. We are charged with spreading the news of the protections offered by this great document to those who may need it most…armed with the skills and knowledge to interpret the constitution and to bring news of its protections wherever injustice may be found in our communities, in our cities, our state, and our country. If we are to do our part in preventing history from repeating itself, if we are to meet our duty to do the work of the constitution, we must challenge injustices and atrocities on any scale within our communities, within our city, within our state, and within our country with one primary message: that the protections and rights in this constitution are meant not for just some of the people, but for all of the people.” HN

Karen Washington, Attorney at Law, can be reached at karen@ robertswashington.com

DVAP’s Finest

MORGAN ARMBRUST

Morgan Armbrust is a sole practitioner

1. How did you first get involved in pro bono?

After moving to Texas, I wanted to get involved in the legal community in Dallas. I also really missed the work I did as a public defender, and working with pro bono clients helped me to acclimate to Dallas, and fill the void after no longer working in a public defender’s office.

2. Describe your most compelling pro bono case.

So far, I have really enjoyed working with a client who wants to get her name changed after 40 plus years. While it may seem silly to want to change your name in your old age, it’s a big deal for a lot of people who want to be known as their true selves. I really enjoy being a part of the process of helping this client be known by her true name.

3. Why do you do pro bono?

I recently moved from out of state and decided to open my own firm. I was a public defender in my previous hometown, and I really missed working with clients who need legal aid services. I really enjoy “helping people help themselves.” Pro bono is a great way to do that because it allows me to work alongside folks who want to change their life in some way that requires legal aid, and I get to help them do that.

4. What impact has pro bono service had on your career?

Pro bono keeps me grounded and helps me to remember why I do what I do. It keeps me tied to the community and allows me to impact more people.

5. What is the most unexpected benefit you have received from doing pro bono? This! I did not expect to be recognized for my work. Thank you!

Elmina Castle

& Technology

How COVID-19 Changed the Practice of IP Law

BY ARJUN PADMANABHAN

Spring 2023 will mark the three-year anniversary of the COVID-19 outbreak that brought the world to a halt. In those three years, millions died, billions went under lockdown, commerce ground to a halt, and thousands of businesses shuttered permanently. As the world finally returns to business as usual, the question becomes, what does the global response to the pandemic show us about what is—and is not—working with respect to intellectual property law? And how can those lessons help us prepare for whatever comes next?

Obstacles to Overcome

Unsurprisingly, international legal disputes and global politics complicate coordinated responses to health crises. The first year of the pandemic was characterized by a global race to develop an effective vaccine. Intellectual property disputes ran rampant as pharmaceutical manufacturers and government-funded research facilities scrambled to protect their vaccine formulas and manufacturing processes with patents and trade secrets. Many countries with established intellectual property regimes considered using compulsory licenses to force manufacturers to share technology.

Compulsory licenses are a mechanism through which governments can “step in” and practice or license a patent without the patent holder’s consent. Most countries’ patent frameworks contain systems through which the patent holder can obtain restitution for the government’s intrusion

into the patent holder’s property rights. But despite the availability of restitution, politicians and patent holders in the global north balked at the prospect of enforcing compulsory licenses. Patent holders knew that these restitution schemes could not be as profitable as the open market. And although some countries like France, Germany, and Canada enacted legislation expediting compulsory licenses, most of the world’s more economically developed countries (MEDCs) did not want to entertain the possibility of starting a process that could lead to a slippery slope of real property rights abuse.

Additionally, the MEDCs pushed for their citizens to have priority access to vaccines and therapeutics. Because they shouldered the bulk of the R&D costs, these countries wanted first access to the fruits of their efforts. On the other hand, many developing countries that lacked the resources or infrastructure to develop and produce vaccines pushed for equitable vaccine distribution among all countries. Their proposals to promote IP sharing and waive international patent agreements like the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) during the pandemic was met with fierce resistance.

Tentative Progress

Eventually, most countries and pharmaceutical manufacturers opted into agreements to share technology without the need for compulsory licenses. But these agreements were too little, too late—most were only beginning

to bear fruit two years into the pandemic. Equitable vaccine distribution networks like the International Drug Purchase Facility and COVID-19 Vaccines Access were too expensive and too underfunded to respond effectively. And vaccine intellectual property sharing frameworks like COVAX and the International COVID-IP Pledge were crippled by supply issues and a lack of intellectual property donations.

These initiatives were borne out of the panic that marked the early years of the pandemic, and have not been particularly effective. Happily, later initiatives offer promising templates for future pandemic responses. Collaborative initiatives like the Trilateral Cooperation Agreement for the COVID-19 Pandemic, the Pandemic Flu Preparedness Framework, and the Multilateral COVID-19 Task Force promote crossborder, multi-national cooperation among the world’s largest intergovernmental agencies. The exact methods vary from program to program, but all three initiatives are designed to promote global stability at the onset of a pandemic by promoting intellectual property sharing, efficiently developing treatments, rapidly and equitably distributing those treatments, and stabilizing financial institutions to support treatment production and prevent economic collapse.

A Blueprint for the Future

Although it is too early to tell how

effective the protocols developed as a result of these collaborative initiatives will be in the face of future health crises, they are a step in the right direction. These initiatives have established a dialogue and communication channel to discuss these sensitive issues.

The 2nd Global COVID-19 Summit was a direct result of this dialogue. The Summit, which occurred in May 2022, raised new financial commitments from member states and corporations that totaled over $3.2 billion. While $2.5 billion of that sum went into COVID-19 response programs, more than $712 million went towards new pandemic preparedness initiatives and a global health security fund at the World Bank.

Panic and politics may have stymied the initial response to the COVID-19 pandemic, but the world understands the threat new pandemics pose to global stability and safety. A new international treaty on pandemic prevention and preparedness is in the works and is expected within the next two years. In it, the global community hopes to evaluate the aforementioned successful and unsuccessful initiatives, and to develop a response framework for future health crises. Hopefully, by learning from the costly lessons of the COVID-19 pandemic, we can safeguard our future from threats of that magnitude. HN

Arjun Padmanabhan is an Associate at Cole Schotz P.C. and can be reached at apadmanabhan@coleschotz.com.

Focus IP/Science & Technology Law

BY ROBERT JOHNSTON AND JANÉE REEDER

At times, non-intellectual-property attorneys stumble into IP traps. This article presents some of the most likely traps for the unwary.

Trap #1: Entity Name Clearance by the Secretary of State ≠ Trademark Clearance

A common trap is when attorneys check the availability of an entity name with the Texas Secretary of State (SoS) and then believe or allow their client to believe that it is the same as doing a trademark clearance. It is not.

Under the Texas Business Organizations Code, the name of a filing entity or a registered series of a Texas LLC or the name under which a foreign filing entity registers to transact business in this state must be distinguishable in the records of the SoS from others. This includes any existing name reservation or name registration filed with the SoS. Two names are distinguishable if a comparison of the names reveals sufficient differences. The relevant portion of the Texas Administrative Code gives an example of how “Sunshine Community Development” is distinguishable from “Sunshine Community Properties”. That is not the same as clearing based on the trademark standard of likelihood of confusion. With that example, one may see the trap. The SoS might have no issue with a name, but the owner of the valuable trademark will analyze the issue under a different standard. Depending on the circumstances, a trademark clearance search should be considered. For now, just know that clearing a name with the SoS is not the same as a trademark clearance.

Trap #2: Copyright Ownership by Contractors

Under U.S. copyright law, the author owns the copyright by default. In general terms, if it is part of the author’s job responsibilities or the conditions for a work for hire are satisfied, then the company will own it. A common issue arises when a company has a freelancer do something that does not qualify for either of those. Then, the company owns the delivered product that embodies the copyright, but not the copyright itself.

As a quick example of how this trap can come up, consider a client who hires a freelancer to develop a website for the company. All is good until the client sees another website by the freelancer that looks like what was delivered to the client, and the client raises an issue with the freelancer. The freelancer responds by saying, “You own what I delivered, but I own the copyright and can use the design with other projects.” That can be avoided with a written copyright assignment included in the project contract.

Trap #3: Moving Too Quickly

For clients who come up with an

invention, you may know that you need to advise the client to get a patent attorney in due time, but the timing can be crucial. If a client starts showing the invention to consultants or potential investors without a confidentiality agreement or starts selling product or engaging in other commercial activities, the client may immediately compromise their patent rights in the United States or with respect to other countries in which the client might want protection. Do not let them move so quickly without getting a patent application filed.

At the same time, one has to be concerned now about moving too slowly to file a patent even if the invention has not been disclosed. After the law changed about 10 years ago, the first to file—by a true inventor—wins at the Patent Office. Clients need to move with deliberate speed to file and that can be tricky in the start-up phase for some.

Trap #4: Post-ProvisionalPatent-Filing Issues

Sometimes a start-up will file its own provisional patent application and the business attorney or generalist will say, “Okay we have that covered.” Yet, there are at least three issues to keep in mind. First, a non-provisional patent application must be filed within one year of the provisional patent application to take advantage of the provisional filing date. Second, any foreign applications must be filed within that same year or at least a Patent Cooperation Treaty (PCT) application. The PCT basically gives the client an option for about 30 months from the original filing to pursue national patents in member countries. These deadlines are hard. Finally, the word “provisional” is a trap itself. Many inventors think “provisional” means that “half-baked” is okay. While it is true that the provisional patent application can be informal and does not need all the aspects of a regular utility patent application, the application still must fully disclose the invention. Moreover, it needs to set things up for the non-provisional application that is to be filed later. Many inventors and their initial attorneys have fallen into some of these traps or caused great distress for the patent attorney who is eventually hired.

Trap #5: Unlicensed Images on Website

There are entire law firms that exist solely to seek settlements for copyright infringement on websites and social media. In most instances, the law firm itself or a related company will use an internet bot with a sophisticated algorithm to look for exact copies of stock photographs used on websites without rights. Attorneys need to know that just because a photograph is on the web somewhere does not mean the photograph is in the public domain. Selfstarter entrepreneurs and marketing personnel often do not know. It’s a trap. HN

Robert Johnston is a Partner at Johnston IP Law, PLLC. He can be reached at rjohnston@johnstonip.com. Janée Reeder is also with the firm and can be reached at janee@janeereeder.com.

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A Past President of the Dallas Hispanic Bar Association and respected community leader, Javi’s entire career has been dedicated to representing Plaintiffs in the civil justice system. Javi and his wife, Caelie, spend their free time keeping up with their son, Leo, who proclaims “Hulk Smash!” when his arguments are not sustained by his parents.

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