Dallas Bar Association HEADNOTES · 2015-05-07 · HEADNOTES Dallas Bar Association Inside November 2010 Volume 34 Number 11 Focus Intellectual Property Law 5 IP Due Diligence in

HEADNOTESDallas Bar Association

HEADNOTES

Inside

Focus Intellectual Property LawNovember 2010 Volume 34 Number 11

5 IP Due Diligence in Mergers & Acquisitions

8 DBA Salutes Veterans

11 Intellectual Property in Corporate Transactions

13 Trademark Basics for Small Businesses—Common Pitfalls

Your client wants to look at confidential information from a prospective business partner or acquisition target and has been asked to sign a nondisclosure agreement. Before you sign and receive any confidential information, why should you consider using a “residuals clause” and other measures to protect your client?

Background: The Risk of ContaminationThe review of another company’s secrets may contami-

nate your client’s reviewing employees and inhibit its abil-ity to use them on future assignments. That may impact

your plans to move into markets where the disclosing party also intends to operate.

Here’s why. In trade secret and employment law, courts have permitted claims where former employers have used the doctrines of “misappropriation by memory” and of “inevita-ble disclosure” to seek injunctive relief against an employee who had gone to work for a competitor. The most promi-nent recent lawsuit advancing this theory was reported this month in the September 7 The New York Times. Report-ing on HP’s California lawsuit against its former CEO Mark Hurd, the Times said that “[t]he suit accused Mr. Hurd of violating his severance agreement to protect HP’s confiden-tial information by taking a job as co-president of Oracle,

an HP rival and partner.” In these cases the claimants allege that the former employee has necessarily retained trade secrets in memory and that the former employee cannot help but employ that information in his or her new position with the competitor.

The same concepts logically apply to the situation where a receiving company returns or destroys the confidential infor-mation in tangible, written form, but then uses its same employ-ees who reviewed that information in competition against the disclosing company. The disclosing party may claim that by using these employees in a competitive activity, the receiving

by Jonathan K. hustis

Focus Intellectual Property Law

Using a Residuals Clause In a Nondisclosure Agreement

Sean M. Whyte, an associate at Jones Day, was presented the Dallas Volunteer Attorney Program (DVAP) Pro Bono Lawyer of the Year Award at the annual awards reception October 28.

Mr. Whyte donated more than 700 hours to the Dallas Volunteer Attorney Program during a 12-month period.

A 2004 graduate of The University of Texas at Austin Law School, Mr. Whyte practices general civil litigation and has assisted in the defense of clients in toxic tort, intellectual property and securities cases in state and federal courts. He also has significant class action experience, hav-ing participated in the defense of several class actions in federal courts throughout the country. Before joining Jones Day, Mr. Whyte completed all of the course require-ments for a doctoral degree in philosophy and taught at several small colleges in Michigan and Ohio.

In 2009, Mr. Whyte served as Jones Day’s second attorney to participate in the Lend-A-Lawyer program, which is a unique program in which a firm com-mits to pay one associate attorney’s nor-mal salary and benefits while that attor-ney works in-house for the Dallas Vol-unteer Attorney Program. He worked on matters including contract disputes, divorces, SAPCRs, consumer matters and landlord/tenant disputes.

According to coworkers at DVAP, Mr. Whyte was always willing to step up and help out, particularly in cases with dead-lines quickly approaching where they would have had extreme difficulty finding another pro bono lawyer willing to accept the case. He even took one of the pro bono consumer cases all the way through

a jury trial in Justice Court in 2009, work-ing under severe time pressure.

As part of the Lend-A-Lawyer program, Mr. Whyte said he “enjoyed being able to level the playing field for people who were previously pro se in cases where the oppo-nent had counsel. [Pro bono work] is a great opportunity to grow as a lawyer.”

Mr. Whyte is one of the founding mem-bers of the Jones Day Dallas Associate Pro Bono Committee. This committee has partnered with sev-eral of the pro bono service providers in Dallas, including the Dallas Volunteer Attorney Program

and Legal Aid of NorthWest Texas, to help staff emergency pro bono cases with Jones Day partners and associates.

“In addition to being a fine lawyer and committed to pro bono, Sean is a delightful person who has been an excel-lent ambassador for Jones Day, DVAP and pro bono overall,” said DBA Presi-dent Ike Vanden Eykel.

Mr. Whyte has helped staff legal clin-ics and has assisted in the representation of DVAP clients, as well as Jones Day pro bono clients, since he began practic-ing law in 2004. He has also participated in numerous DVAP clinics, including South Dallas, East Dallas, Garland and the Wills Clinic. HN

For more information about DVAP or pro bono opportuni-ties, visit www.dallasvolunteerattorneyprogram.org or con-tact Alicia Hernandez at [email protected]. Jes-sica D. Smith is the DBA’s Communications/Media Director. She can be reached at [email protected].

by Jessica D. smith

Pro Bono Lawyer of the Year:Sean M. Whyte, Jones Day

The Dallas Volunteer Attorney Program (DVAP) presented the Dallas Office of Haynes and Boone LLP with the Pro Bono Law Firm of the Year Award at the annual awards reception October 28.

Each year, DVAP, a joint project of the Dal-las Bar Association and Legal Aid of Northwest Texas, honors the lawyers, judges and other legal professionals who donate pro bono services. This year, the award for Pro Bono Law Firm of the Year was given to the Dallas Office of Haynes and Boone. Haynes and Boone has made a firm-wide commitment to pro-viding pro bono services not only here in Dallas, but also nationwide, proving their motto of “serving the com-mon good where we live and practice” to be a real-ity. Serving the local Dallas community, as well as oth-ers, is not a new concept at Haynes and Boone as their Pro Bono/Public Service Committee was formed nearly 20 years ago.

In 2010, Haynes and Boone donated nearly 1,500 hours of pro bono services to DVAP cli-ents, and numerous partners and associates in the firm’s Dallas office participated in the pro-gram by staffing clients or taking cases. Haynes and Boone partner Jonathan Wilson said that “providing pro bono services to our community and those in need is something very important to us here at Haynes and Boone.” Mr. Wilson added that “providing pro bono legal services is encouraged at all levels throughout Haynes and Boone and is something we are honored to do.”

At Haynes and Boone, each attorney is encouraged to aspire to at least 50 hours of pro bono legal service per year, reporting them in the same fashion as they report billable hours. Obtaining 17,500 pro bono hours annually is a testament to the commitment that Haynes and

Boone has made to providing pro bono services. Pro Bono matters undertaken by Haynes and Boone have been as diverse as society’s needs and consist of: helping abused and neglected children, death penalty cases, assisting indigent clients with matters involving family violence, landlord tenant litigation, estate matters, seek-ers of political asylum who face violence or death if they return to their home countries, and assisting with the diverse legal needs of many fine charitable causes and shelters. Haynes and Boone is also a very active participant in the East Clinic where they routinely screen candi-

dates for pro bono services, provide legal guidance and accept pro bono cases as needed.

Haynes and Boone recently paired up with the in-house legal depart-ment at American Airlines to support DVAP and to increase and enhance pro bono services in Dallas.

After conducting an in-house training session, Haynes and Boone enlisted more than 30 vol-unteer attorneys and accepted 17 cases.

In addition to Haynes and Boone’s pro bono work with DVAP, the firm is also involved in other pro bono activities throughout Dallas, including Camp Fire U.S.A., Goodwill Indus-tries of Dallas, Human Rights Initiative of North Texas, Justice for Children, Kids in Need of Defense, National Center for Missing and Exploited Children, Promise House, State Bar of Texas Access to Justice Commission and Vol-unteer Legal Services of Central Texas.

DVAP congratulates Haynes and Boone as the 2010 Pro Bono Firm of the Year and thanks each and every one of its attorneys for their ser-vice and commitment to providing these pro bono services. HN

Rob Ramage is a Member of the Dallas Office of Dykema Gossett. He can be reached at [email protected].

by Rob Ramage

Haynes and Boone: Pro Bono Firm of the Year

Sean M. Whyte

continueD on page 12

MONDAY, NOVEMBER 1Noon Tax Section “International Tax Primer,” Willie Hornberger. (MCLE 1.00)*

Peer Assistance Committee

TUESDAY, NOVEMBER 2Noon Corporate Counsel Section “Ripped from the Headlines: The Story Behind the Corporate Fraud Headlines,” Susan Hartman and Susan Markel. (MCLE 1.00)*

Tort and Insurance Section “Recent Insurance Cases at the Fifth Circuit,” Hon. Catharina Haynes. (MCLE 1.00)*

Mentoring Committee

Morris Harrell Professionalism Committee “Texas Disciplinary Rules of Professional Conduct,” Linda Eads. (Ethics 1.00)*

WEDNESDAY, NOVEMBER 3Noon “Capital Punishment on Trial: Furman v. Georgia and the Death Penalty in Modern America,” Dr. David M. Oshinsky. Sponsored by the Appellate Law Section, Criminal Law Section, CLE Committee, and Legal History Discussion Group, The J.L. Turner Legal Association, and The Department of History of the University of Texas at Austin. (MCLE 1.00)*

Employee Benefits/Executive Compensation Section “DOL/EBSA Dallas Region Update,” Susan Hensley. (MCLE 1.00)*

Solo & Small Firm Section “Future of Estate Planning in Uncertain Times,” Joe Chenoweth and Lynn Smith. (MCLE 1.00)*

Dallas Hispanic Bar Association “The Emerging Hispanic Workforce—From I-90s to English Only Rules and Beyond,” Fred Gaona, Jamie Ramon, Gail Salcido and Maricela Siewczynski. (MCLE 1.00)*

Legal Ethics Committee Public Forum Committee

5 p.m. Bankruptcy & Commercial Law Section “Fiduciary Duties – In and Around Bankruptcy,” Ian E. Roberts and Joseph J. Wielebinksi. (MCLE 1.00)*

THURSDAY, NOVEMBER 4Noon Construction Law Section “The Impact of Recent Insurance Coverage Decisions on the Construction Industry,” Lee Shidlofsky. (MCLE 1.00)* Lawyer Referral Service Committee

Family Law Section Board

St. Thomas More Society

DAYL CLE Committee

FRIDAY, NOVEMBER 5Noon Friday Clinic – Belo “Top 10 Cocktail Party Topics,” Cass Callaway, Liza Farrow-Gillespie, Hon. Dennise Garcia and Jennifer M. Trulock. (MCLE 1.00)* 3:30 p.m. DBA Annual Meeting

MONDAY, NOVEMBER 811:30 a.m. Federalist Society

Noon Alternative Dispute Resolution Section “Dealing with Egomaniacs, Jerks and Subterfuge in Mediations,” Hesha Abrams. (MCLE 1.00)* Real Property Law Section “Acquisitions and Dispositions of Non-Performing and Sub-Performing Mortgage Loans,” William T. Cavanaugh, Jr. (MCLE 1.00)*

TUESDAY, NOVEMBER 9 Noon Business Litigation Section “The Personal Injury Lawyer Handling Commercial Litigation,” Frank Branson. (MCLE 1.00)*

Mergers & Acquisitions Section “Panel Discussion on Developments in Distressed

Mergers & Acquisitions.” (MCLE 1.00)* DAYL Equal Access to Justice Committee

DVAP New Lawyer Luncheon. For more information, contact Chris Reed-Brown at [email protected].

4 p.m. Senior Lawyers Committee

6 p.m. Home Project Committee

WEDNESDAY, NOVEMBER 107:45 a.m. Dallas Area Real Estate Lawyers Discussion Group

Noon Family Law Section “Understanding the Diagnosis and Treatment of Addiction” and “Helpful Ideas on How to Interact with Clients who Have Personality Disorders,” Chris Jones and Mary Sanger. (MCLE 1.00)*

Sports & Entertainment Section “Legal Aspects of Purchasing a Major League Baseball Club out of Bankruptcy,” Chuck Greenberg. (MCLE 1.00)*

CLE Committee 4 p.m. Antitrust & Trade Regulation Section “Federal Trade Commission Update,” Commissioner Edith Ramirez. (MCLE 1.00)*

House Committee

5:15 p.m. LegalLine—Volunteers welcome. Second floor Belo.

THURSDAY, NOVEMBER 1111:45 a.m. DAYL Barristers for Babies

Noon Collaborative Law Section “Ethical Implications of the Use of Cooperative Law,” Norma L. Trusch, Esq. (MCLE 1.00, Ethics 0.50)*

Admissions and Membership Committee Publications Committee Dallas Asian American Bar Association Christian Lawyers Fellowship

6 p.m. J.L. Turner Legal Association

FRIDAY, NOVEMBER 12Noon Friday Clinic – North Dallas* “The Best Defense Is A Strong Offense: Navigating Patent Litigation,” Kacy Miller and Tonya Gray. (MCLE 1.00)

Trial Skills Section “Ethical Issues in Discovery: What You Do or Don’t Do In Discovery Can Hurt You At Trial,” Kirby Drake. (MCLE 1.00)

MONDAY, NOVEMBER 15Noon Labor & Employment Law Section “Cyber Issues in Employment Law: How Internet, Email and Technological Advances are Creating Workplace Headaches,” Mike Birrer and Angelina LaPenotiere. (MCLE 1.00)*

TUESDAY, NOVEMBER 168:30 a.m. Justice in Education Symposium, speakers include Dr. Michael Hinojosa, Hon. Teresa Guerra Snelson and more. Registration $35, includes lunch. RSVP to [email protected]

Noon Government Law Section “Three Secrets to Effective Witness Presentation,” Asst. U.S. Attorney Shane Read. (MCLE 1.00)*

International Law Section Topic Not Yet Available

Community Involvement Committee

Entertainment Committee

Law in the Schools and Community Committee

DAYL Animal Welfare Committee

DAYL Elder Law Committee

WEDNESDAY, NOVEMBER 17Noon Energy Law Section “Online County Filings and Court Records,” Robert J. Stack. (MCLE 1.00)*

Health Law Section “Chapter 74’s Unanswered Questions,” Charles Josef Blanchard.” (MCLE 1.00)*

Law Day Committee

Pro Bono Activities Committee

Municipal Justice Bar Association

Non-Profit Law Study Group 5:15 p.m. LegalLine—Volunteers welcome. Second floor Belo.

THURSDAY, NOVEMBER 18Noon Appellate Law Section “The Law Governing Jury Selection,” Hon. Jim Jordan. (MCLE 1.00)*

Minority Participation Committee

Dallas Gay and Lesbian Bar Association

Christian Legal Society

UPL Subcommittee

3:30 p.m. DBA Board of Directors

5:30 p.m. DBA New Member Reception. Honoring our New DBA Members and Newly Licensed Attorneys. For more information, contact Kim Watson at [email protected]. or (214) 220-7414.

FRIDAY, NOVEMBER 198 a.m. Juvenile Justice Committee, “Off the Beaten Path: Engaging Parents, Children And Families in CPS Cases,” 8 a.m. -4:30 p.m. Numerous topics and speakers. For more information, contact [email protected]. (MCLE 6.25, Ethics 1.00)* Tort and Insurance Practice Section “Trial Practice Essentials: Tools You Need to Win Your Case,” (MCLE 5.25, including .5 Ethics)*

11:45 a.m. J. Reuben Clark Society

Noon Friday Clinic – Belo Topic Not Yet Available

MONDAY, NOVEMBER 22Noon Securities Section “Get Ready—Shareholder Proxy Access is Here,” C. Alex Frutos and Kevin Jones. (MCLE 1.00)*

Computer Law Section Topic Not Yet Available

Criminal Justice Committee

TUESDAY, NOVEMBER 23Noon Probate, Trusts & Estates Section “Multiple Party Representation Ethics,” Bill Elliott. (Ethics 1.00)*

Courthouse Committee

American Immigration Lawyers Association

6 p.m. Dallas Hispanic Bar Association

WEDNESDAY, NOVEMBER 24Noon Juvenile Justice Committee

THURSDAY, NOVEMBER 25DBA Offices Closed for Thanksgiving Holiday

FRIDAY, NOVEMBER 26DBA Offices Closed for Thanksgiving Holiday

MONDAY, NOVEMBER 29Noon No DBA Meetings Scheduled

TUESDAY, NOVEMBER 30Noon No DBA Meetings Scheduled

2 Headnotes l Dal las Bar Assoc ia t ion November 2010

If special arrangements are required for a person with disabilities to attend a particular seminar, please contact Cathy Maher at 214/220-7401 as soon as possible and no later than two business days before the seminar. All Continuing Legal Education Programs Co-Sponsored by the DALLAS BAR FOUNDATION.

*For confirmation of State Bar of Texas MCLE approval, please call Teddi Rivas at the DBA office at 214/220-7447.**For information on the location of this month’s North Dallas Friday Clinic, contact [email protected].

Calendar November Events Visit www.dallasbar.org for updates on Friday Clinics and other CLEs.

FRIDAY CLINICSNOVEMBER 5 – BeloNoon “Top 10 Cocktail Party Topics,” Cass Callaway, Liza Farrow-Gillespie, Hon. Dennise Garcia and Jennifer M. Trulock. (MCLE 1.00)*

NOVEMBER 12 – North Dallas**Noon “The Best Defense Is A Strong Offense: Navigating Patent Litigation,” Tonya Gray and Kacy Miller.

(MCLE 1.00)*. RSVP to [email protected]. At Two Lincoln Centre, 5420 Lyndon B. Johnson Frwy., Suite 240 Dallas, Texas 75240. Parking is available in the Visitor’s Lot located in front of the en-trance to Two and Three Lincoln Centre. There are several delis within the building. Food is allowed inside the Conference Center. Thank you to our sponsor, Griffith Nixon Davison, P.C

NOVEMBER 19 – Belo Noon Topic Not Yet Available

DBA Justice in Education SymposiumTuesday, November 16~ 8:30 a.m. to 1:30 p.m. ~ Belo Mansion

Speakers include DISD Supt. Dr. Michael Hinojosa, Susan Hoff, Rene Martinez and various panels.The Jack Lowe Sr. Award for Community Leadership will be presented to

Charles “C.J.” Johnson during the luncheon. Registration $35, includes lunch. Contact Alicia Hernandez

at (214) 220-7499 or [email protected]

District Attorney Forum Held at Belo

The DBA Public Forum Committee hosted a District Attorney Forum for the two candidates for Dallas County DA: Craig Watkins and Danny Clancy. The event was moderated by KXAS-TV report Ken Kalthoff (back, center). Other participants of the event included panelists (front row, left to right) Russell Wilson II, Sandy Grayson and Laura Benitez-Geisler; and Cheryl Camin, Committee Co-Chair. (Back row, left to right) Aaron Tobin, Committee Vice Chair; Mr. Kalthoff; Vincent Ansiaux, Committee member; and Philip Kingston, Committee Co-Chair.

November 2010 Dal las Bar Assoc ia t ion l Headnotes 3

Goranson, Bain, Larsen, Greenwald, Maultsby & Murphy, PLLCDallas 214.373.7676 Plano 214.473.9696 :: gbfamilylaw.com

As 2010 begins to wind down, I feel compelled to highlight sev-eral more important members of TEAM DBA that don’t always get the recognition they deserve, especially when you consider how important they are to our overall success. As with any team you assemble, it takes the consistent work and execution of all members of the team to be able to achieve the best possible result from your efforts. TEAM DBA is no exception to that principle.

Dallas Lawyers AuxiliaryThis organization has been a part of TEAM DBA for many

decades. Some people are aware that the festive look of our Belo Mansion during the holidays is due to the hard work and precision of this group. They annually turn our headquarters into a holiday destination and our thanks go out to them for this effort. They also sponsor the annual Justinian Award and banquet, which is one of the most successful events at the Belo Mansion each year.

Since 1987, the Dallas Lawyers Auxiliary has also distributed a booklet, Now You Are 18, to high school seniors in Dallas County. In October these booklets were again delivered to requesting high schools and others such as judges with teens under their supervision, rehab organizations and citizenship classes. The booklet covers subjects such as marriage, making contracts, jury service, drinking and driving, apartment leasing and military service. Schools may disseminate this information in government classes or in home-rooms and libraries. The Dallas Lawyers Auxil-iary piloted this program originally, and it is now available in 239 counties in Texas. A copy of this great piece of literature can be obtained by con-tacting Marianne Gwinn, DLA Third Vice Presi-dent, at (214) 528-7144 or [email protected].

As a quiet partner in the success of the DBA, we salute the Dallas Lawyers Auxiliary. Your support of TEAM DBA continues to be extremely important and much appreciated.

Our Sister Bar Associations When Team DBA takes the field, it does so with the support

of several important and significant bar associations who work as integral members of our organization. As a result of this partner-ship, the Dallas Bar Association has been able to strengthen its team with expanded participation of the membership of each of these organizations.

The Dallas Association of Young Lawyers (DAYL) is an active Sister Bar which is ably run this year by its President Jennifer Edgeworth and its President-Elect Penny Brobst Blackwell. Many of the leaders of the DBA have come up through the ranks of DAYL over the years and we are very proud of our association with this vital and active group.

The Dallas Hispanic Bar Association (DHBA) is one of our proud Sister Bar Associations which contributes to our success every year. Its President for 2010 is Jose Ortiz and the President-Elect is Hon. Teresa Guerra Snelson. The DHBA has many fine programs that benefit our DBA and our community in general. We rely on this group and are grateful for their support.

The Dallas Asian American Bar Association (DAABA) is a proud member of Team DBA. Its President this year is Hope Shimabuku and its President-Elect is Eunice Kim Nakamura. DAABA continues to sponsor many excellent programs and they are always ready to step up on behalf of the DBA.

Rounding out the All-Star group of Sister Bar Associations is J. L. Turner Legal Association. Founded in 1952, J.L. Turner has been an integral part of TEAM DBA for many years. Our past and current leadership in the DBA comes from the ranks of this proud organization. The 2010 President is Karen McCloud and

the President-Elect is Eric Blue.With our Sister Bar Associations working with us as active

partners, the strength of our association is significantly increased and we are more able to provide the much needed services we offer to our members and our great city.

Finance CommitteeThis standing committee made up of members of the DBA Board

of Directors, as well as DBA staff member Sherri Evans, is often over-looked in its contributions to the success of the Dallas Bar. This com-mittee is chaired by DBA Board Vice-Chair Brad Weber for 2010 and it has responsibility for the financial integrity of the DBA from its budget, audit procedures and follow-up, monitoring and responsi-bility of our investments, as well as many other financial matters that face an organization of our size. We are fortunate to have the contin-ued support of Sherri Evans as our controller and we appreciate her important contribution to the work of this committee.

House Committee There is not a bar association in the entire

country that does not envy the Dallas Bar in many ways, not the least of which is the spectac-ular headquarters complex of the Belo Mansion and the Pavilion. That we are fortunate to have this incredible headquarters is a direct tribute to the many members and law firms in Dallas who contributed to their purchase and refurbishment. What is shocking is that few people know what goes into the maintenance and continued excel-lence of our property. Much credit goes to the House Committee which is ably chaired this year by Rob Roby with the able assistance of John Goren, Jim Klancnik, Bill Dowdy and Nick

LaBranche. The work of this committee cannot be overstated and is too often overlooked. We are

eternally grateful for their daily contribution to TEAM DBA!

The 2010 DBA Board of DirectorsWhatever TEAM DBA accomplishes in 2010, it is directly due

to the tireless efforts of its many committees and sections and those people look directly to our Board of Directors for leadership and hard work. I have been proud to be able to serve with such a distinguished Board. Our Chair for 2010, Scott McElhaney, has led with distinc-tion and has been backed up by our Vice-Chair Brad Weber. In addi-tion to these members, the Executive Committee is rounded out by President-Elect Barry Sorrels, First Vice-President Paul Stafford, Second Vice-President Sally Crawford, Immediate Past-President Christina Melton Crain and Secretary/Treasurer Wesley Young. In addition to the distinguished members of the Board, we have been blessed by a legendary group of directors to the State Bar of Texas in Talmage Boston, Christina Melton Crain, Beverly Godbey, Timo-thy Mountz, Rob Roby, Mark Sales and Frank Stevenson, and to the ABA Delegates, Justice Douglas Lang, Kim Askew and Rhonda Hunter. Credit for our success goes to our board for a great 2010.

Dallas Bar FoundationSince its creation, the Dallas Bar Foundation has been a vital link

to the continued success of the Dallas Bar Association. This valued member of TEAM DBA is chaired for 2010 by Mark Shank and we owe a steady and regular thank you to the membership and leader-ship of the DBF. In addition to being the owner of the Belo Mansion and Pavilion, the DBF funds many worthwhile projects of the Dallas Bar, as well as many other undertakings in our community. We are very proud of our association with the DBF.

We have many to thank for the success of TEAM DBA for 2010. It has been a pleasure to highlight just a few of the people and groups who have made valuable contributions to our success this year. HN

More Hidden Treasures by iKe vanDen eyKel

President's Column HeadnotesPublished by:

DALLAS BAR ASSOCIATION

2101 Ross AvenueDallas, Texas 75201

Phone: (214) 220-7400Fax: (214) 220-7465

Website: www.dallasbar.orgEstablished 1873

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.

OFFICERSPresident: Ike Vanden EykelPresident-Elect: Barry SorrelsFirst Vice President: Paul K. StaffordSecond Vice President: Sally CrawfordSecretary-Treasurer: Wesley YoungImmediate Past President: Christina Melton Crain

Directors: Scott M. McElhaney (Chair), Brad C. Weber (Vice Chair), Jerry C. Alexander, Hon. Jane J. Boyle (At Large), Wm. Frank Carroll, E. Leon Carter, Rob Crain, Jen-nifer Edgeworth (President, Dallas Association of Young Lawyers), Laura Benitez Geisler, Michael K. Hurst, Hon. Marty Lowy, Michele Wong Krause, Karen McCloud (President, J.L. Turner Legal Association), Jose Ortiz (Presi-dent, Dallas Hispanic Bar Association), Mary Scott, Hope Shimabuku (President, Dallas Asian American Bar Associa-tion), Scott P. Stolley (At Large), Diane M. Sumoski and Debra K. Thomas.

Advisory Directors: Penny Brobst Blackwell (President-Elect, Dallas Association of Young Lawyers), Eric Blue (President-Elect, J.L. Turner Legal Association), Eunice Kim Nakamura (President-Elect, Dallas Asian American Bar Association) and Hon. Teresa Guerra Snelson (President-Elect, Dallas Hispanic Bar Association).

Delegates, American Bar Association: Rhonda Hunter, Hon. Douglas S. Lang

Directors, State Bar of Texas: Talmage Boston, Christina Melton Crain, Beverly Bell Godbey, Robert R. Roby, Frank E. Stevenson, II

HEADNOTESExecutive Director/Executive Editor: Catharine M. MaherCommunications / Media Director & Headnotes Editor: Jessica D. SmithCalendar: Kathryn Zack In the News: Judi SmallingArt Director: Thomas PhillipsAdvertising: Karla Howes

PUBLICATIONS COMMITTEECo-Chairs: Vincent J. Allen, Timothy G. Ackermann and Suzanne Raggio WesterheimVice-Chairs: Lea N. Clinton and Paul R. ClevengerMembers: H. Joseph Acosta, Natalie Arbaugh, Wesley J. Bai-ley, Heather J. Barbieri, Vance L. Beagles, Eric Blue, Barbara Boudreaux, Quentin Brogdon, Lance E. Caughfield, Chris-tina Melton Crain, Pat Driscoll, Dawn E. Fowler, Floyd R. Hartley Jr., John Thomas Hayes, Paul W. Herring, Mary Louise Hopson, Victor Johnson, Arshil A. Kabani, Mike Keliher, Jamie McKey, Elizabeth Jo McShan, Thomas L. Mighell, Mitchell S. Milby, Clay Miller, Jennifer Mitchell, Hon. Jim Moseley, Sonia Navia, Heather Bailey New, Jenna Page, Kirk L. Pittard, Irina B. Plumlee, Robert D. Ramage, Andrew Baxter Ryan, Gregory W. Sampson, Steven D. San-felippo, Barry Sorrels, Paul K. Stafford, Scott B. Stahl, Amy E. Stewart, Sherry L. Talton, Debra K. Thomas, Ike Vanden Eykel, Peter S. Vogel, Thomas Williams, Courtney Willis, Elizabeth A. Wilson and Sarah Q. Wirskye.

DBA & DBF STAFFExecutive Director: Catharine M. MaherAccounting Assistant: Shawna BushCommunications / Media Director: Jessica D. SmithController: Sherri EvansDirector of Community Services:Alicia HernandezEvents Coordinator: Rhonda ThorntonExecutive Assistant: Michelle DildaExecutive Director, DBF: Elizabeth PhilippLRS Program Assistant: Biridiana AvinaLRS Interviewer: Marcela MejiaLaw-Related Education & ProgramsCoordinator: Amy E. SmithMembership Coordinator: Kimberley WatsonProjects & Communications Assistant: Kathryn ZackPublications Assistant: Judi SmallingReceptionist/Staff Assistant: Teddi Rivas

DALLAS VOLUNTEER ATTORNEY PROGRAMDirector: Alicia HernandezManaging Attorney: Michelle AldenVolunteer Recruiter: Chris Reed-BrownParalegals: Whitney Breheny, Lakeshia McMillan, Andrew Musquiz, Jigna Gosal, Tina DouglasData Entry/Office Support: Patsy Quinn

Copyright Dallas Bar Association 2010. All rights reserved. No reproduc-tion of any portion of this publication is allowed without written permis-sion from publisher.

Headnotes serves the membership of the DBA and, as such, editorial sub-missions 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 [email protected] (Communications Director) at least 45 days in advance of publication. Feature articles should be no longer than 750 words. DISCLAIMER: All legal content appearing in Headnotes is for informational and educational purposes and is not intended as legal advice. Opinions expressed in arti-cles are not necessarily those of the Dallas Bar Association.

All advertising shall be placed in Dallas Bar Association Headnotes at the Dallas Bar Association’s sole discretion.

Headnotes (ISSN 1057-0144) is published monthly by the Dallas Bar Association, 2101 Ross Ave., Dallas, TX 75201. Non-member subscrip-tion rate is $30 per year. Single copy price is $2.50, including handling. Periodicals postage paid at Dallas, Texas 75260. POSTMASTER: Send address changes to Headnotes, 2101 Ross Ave., Dallas, TX 75201.


Scott McElhaney, Chair, called the September 16 meeting to order and wel-comed and introduced guests, including the members of the Dallas Bar Foundation Board of Trustees who were in attendance for the annual joint meeting of the boards.

Justice Lang and Kim Askew gave an update on the recent meeting of the ABA House of Delegates. As Ms. Askew will be serving as a Delegate for the ABA’s Litiga-tion Section; Rhonda Hunter will fill her unexpired term.

Lee Baldwin, chair of the LRS Commit-tee, gave a report on the committee explain-ing that revenues have increased this year. She thanked the LRS staff for their efforts.

Mr. McElhaney then called on the Dal-las Bar Foundation Chair, Mark Shank, to report on the Foundation. Mr. Shank gave a background report on the DBF and then Mr.

Roby gave a brief report on a new fundrais-ing effort. Rey Rodriguez reported on the Collins Clerkship Program saying that it has funded summer clerkships in the amount of $400,000 since its inception in 1989. Tim Mountz, Chair of the DBF Grants Commit-tee, gave a report on the Planned Giving Program and the Grants Committee.

Jerry Alexander, Chair of the Equal Access to Justice Campaign, thanked Andy Payne and Jim Mitchell, of Payne Mitch-ell Law Group L.L.P., for their donation of $25,000. He announced that they are a lead donor to the Campaign. He also announced that DBA President Ike Vanden Eykel’s law firm of Koons, Fuller, Vanden Eykel & Robertson, P.C., is the largest donor, com-mitting $30,000 to the Campaign.

There being no further business, the meeting was adjourned. HN

Board of Directors RoundupNorth Texas Food Bank Service Saturday

Your Help is Needed!Saturday, November 13

The North Texas Food Bank(4500 S. Cockrell Hill Rd., Dallas)

The DBA Community Involvement Committee has committed 20 volunteers to help sort and

box donated items from 9 a.m. to noon. Sign up to volunteer by contacting Kim Ratcliff at

[email protected].


As the economy slowly recovers, merger and acquisition (M&A) activ-ity is expected to increase. With the revival of M&A activity, many com-panies and their lawyers have become, or soon will be, immersed in “due dili-gence” investigations of assets and lia-bilities to assess the merits and risks of a given transaction.

These days, the most important group of assets of a target company is often its intellectual property (IP), which includes patents, trademarks, trade dress, copyrights, trade secrets, domain names and other proprietary information and materials. As such, IP due diligence has become a vital com-ponent of a pre-M&A investigation.

Why IP Due Diligence?Failure to include all IP assets in a

due diligence investigation can have a significant impact on the true value of the acquisition.

For an acquiring company, IP due diligence is crucial. Otherwise, the acquiring company cannot correctly value the target and might significantly overpay for the assets it acquires. Even worse, the acquiring company could be purchasing an IP infringement lawsuit.

Perhaps the greatest cautionary tale supporting the use of IP due diligence is a 1998 purchase by Volkswagen, AG. Volkswagen bid and paid $795 mil-

lion for Rolls-Royce Motor Cars Ltd., but soon discovered that the “Rolls-Royce” trademarks were not part of the deal. Rolls-Royce PLC had gone into receivership in the 1970s and, although Rolls-Royce Motor Cars, Ltd. was sold at that time, the “Rolls-Royce” trade-mark was retained by Rolls-Royce PLC. At the end of the day, Volkswagen had spent $795 million for a luxury car company, but could not use the Rolls-Royce brand.

IP due diligence should also be conducted by the target company in preparation for the negotiation of the terms of the deal. For the target com-pany, IP due diligence allows it to bet-ter ascertain the value of its IP assets, and, therefore, overall worth. It also permits the target company to clean house and ensure that all registrations, licenses and assignments are current, properly-executed and recorded.

Develop an IP Asset Inventory

Before the parties can properly value the IP Assets of the target company, they must compile a full and accurate inventory of all IP assets: an “IP Asset Inventory.”

Much information regarding pend-ing and registered patents, trademarks, copyrights and domains can be gleaned from publicly available sources such as the U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office, as well as foreign registries

and databases. In addition to registra-tion and ownership information, these sources often contain details regarding the IP assets such as prosecution his-tory and chain of title.

Additionally, the acquiring com-pany must also evaluate the target com-pany’s non-public IP assets, lest it base decisions on only a partial IP Asset Inventory. Of course, prior to releasing such information, the target company should require the parties to enter into a non-disclosure agreement (NDA) to protect its proprietary IP assets.

The non-public portion of the IP Asset Inventory may include:

Non-published patent applications •and related materials such as pat-entability or prior art searches; Unfiled or unregistered trademarks •and related materials such as clear-ance searches; Trade secrets and confidential busi-•ness information; Licenses and assignments relating •to the IP assets; and Letters and other communica-•tions relating to litigation, claims of infringement, title disputes, or other adverse action related to the IP assets.

Conducting the IP Due Diligence Investigation

After obtaining the information described above, the acquiring com-

pany can more fully evaluate the risks and benefits associated with the pro-posed transaction. Although each situ-ation is unique, an IP Asset Inventory evaluation should involve the follow-ing steps:

Step 1: Review the IP Asset Inven-•tory to determine the target com-pany’s rights with respect to each of those IP assets (e.g., owner, co-owner, licensee). Step 2: Review any active litiga-•tion, settlements, coexistence/con-sent agreements, assignments, and any other agreements affecting the target company’s rights in the IP assets. Step 3: Ensure that the IP is •enforceable, and that registrations are current. Step 4: Assess the value of the IP. •Analyze the value of the IP as it relates to current production and future expansion of the business.Only after reviewing all of the target

company’s IP Asset Inventory can the parties to an M&A transaction accu-rately value the transaction. Therefore, IP due diligence should be an integral part of any pre-M&A investigation to determine the value of IP assets, as well any potential liabilities. HN

Jim Chester is a partner at Klemchuk Kubasta LLP. Roxana Sullivan and Sita Desai are associates at the firm. They can be reached at [email protected], [email protected] and [email protected], respectively.

by Jim chesteR, Roxana sullivan, anD sita Desai


IP Due Diligence in Mergers & Acquisitions

Capital Punishment on Trial: Furman v. Georgia and the

Death Penalty in Modern AmericaWednesday, November 3, Noon, Belo Mansion

Speaker: Dr. David M. Oshinsky, professor of history and winner of the 2006 Pulitzer Prize in History

MCLE 1.00

Presented by the J.L. Turner Legal Association and the Dept. of History of the University of Texas at Austin

Sponsored by the DBA Appellate and Criminal Law Sections, CLE Committee and Legal History Discussion Group.

Wine Cork Pull Fundraiser for DVAPWe need your tax-deductible donations!

The DBA will hold its 2nd Annual Wine Cork Pull at the Inaugural Dinner-Dance honoring incoming

President Barry Sorrels and we need your donations.

What’s needed? A selection of all types and values of wine (750ml bottles)

When do you need it? By Friday, Dec. 3

Who do I send it to? Rhonda Thornton at the DBA.E-mail [email protected] or call (214) 220-7403.

Sustaining Membersof the Dallas Bar Association

The DBA sincerely appreciates the support of its Sustaining Members whose financial contributions enhance the

preservation of the historic Belo Mansion.

David Carlock,of Carlock & Gormley, LLP

Sawnie A. McEntire,of Beirne, Maynard & Parsons, L.L.P.

Mike McKool Jr.,of McKool Smith P.C.

Tahira Khan Merrittof Martin Merritt

Nancy Arnole Nasher,of NorthPark Development Company

Jenna Page

Michael L. Riddle,of Middleberg, Riddle & Gianna

Scott R. Seideman,of The Seideman Law Firm

Peter S. Vogel,of Gardere Wynne Sewell LLP


•2010 Pro Bono Awards•

Lawyer of the YearSean Whyte, Jones Day

Hartman Judicial Pro Bono Service Award

Hon. Jim Jordan, 160th District Court

Outstanding New Pro Bono Lawyer

Vynessa Nemunaitis, Fullbright & Jaworski, L.L.P.

Pro Bono Coordinator of the Year Marjorie Powell

Outstanding Clinic Attorney Volunteers

West Dallas Clinic Thomas A. Wheeler III

Garland Clinic William “Bill” Milne, Attorney at

Law

South Dallas Clinic Elizabeth Upchurch

East Dallas Clinic Fred Gross

Pro Bono Court Reporter of the Year

Wynne Pauly

Outstanding Court PersonnelCatherine Nicholson

Outstanding Support VolunteerKathy Cleveland

Outstanding Sole PractitionerMarsha Hunter,

Law Office of Marsha L. Hunter

Lois Bacon Special Services AwardFullbright & Jaworski, L.L.P.

Pro Bono Appreciation AwardIke Vanden Eykel, Koons, Fuller, Vanden Eykel & Robertson, P.C.

Outstanding Outreach Clinic Attorney Ceaser Espinoza

Many bloggers are violating copy-rights, trademarks or trade secrets without understanding how intel-lectual property (IP) can be properly used, or avoided altogether. With just a little thought and work, bloggers can avoid embarrassing or costly infringe-ment claims. In 2009 the Federal Trade Commission (FTC) issued guidelines that require bloggers to disclose pro-motional blogs for which the bloggers receive some benefits. This article will discuss IP laws and the FTC guidelines relating to blogging.

TrademarksIn simple terms trademarks “protect

words, names, symbols, sounds or col-ors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods.” In the U.S., trademarks can be of three varieties—common law, state or federal. However, the most impor-tant trademark for bloggers is fed-eral, which includes registration with the U.S. Patent & Trademark Office (USPTO –uspto.gov).

Many bloggers think nothing of adding trademarks and logos on blogs without getting permission. But blog-gers should think twice. For instance, Google has guidelines for third-party use of Google Brand Features (www.

google.com/permissions/guidelines.html), including logos and trademarks. In order to use a Google trademark or logo, bloggers must get express permis-sion and then comply with a specific set of terms and conditions.

Similarly, Facebook restricts the use of trademarks and logos without writ-ten permission (www.facebook.com/terms.php?ref=pf), and the list goes on.

Using a trademark on the Inter-net is very simple, but may be diffi-cult to police since there are billions of Internet users who might be infring-ing trademarks. The trademark owner must be vigilant to protect their trade-marks or they run the risk of losing the marks.

CopyrightsUnder the 1976 Copyright Act, the

author owns a copyright in a work at the moment it is created and there is no requirement to file a registration at the Copyright Office (copyright.gov) or even mark the work (© or Copyright, author and the year created). Under the U.S. Constitution, the author has a monopoly on making copies.

Most readers know that there is a “fair use” for copyrights when used for educational and/or non-profit purposes, but if a blogger copies one phrase out of a 1,000-word article, the

line gets very blurry about whether it is an infringement or fair use. Many blog-gers give credit for such quotes and are probably not in big trouble. However, copying a complete work into a blog is different, and under the Google and Facebook terms of service the blogger would need to get specific permission to use the work.

Bloggers who include photos and videos from other sources run into a different law known as the Digital Millennium Copyright Act (DMCA - copyright.gov/legislation/pl105-304.pdf). The DMCA is the law that is used by copyright owners to get YouTube to take down infringing videos under the DMCA’s safe harbor provisions.

However, if a blogger includes a video that is infringing someone’s copyrighted work, the blogger may not be protected from an infringement claim if they fail to take down the video under the DMCA. So if a blogger includes videos, even from YouTube, they run the risk of not being protected by the DMCA and being an infringer if the video is later taken down under the DMCA.

Trade SecretsGenerally, a trade secret is some-

thing that gives one business an advan-tage over others, but in order to be a secret there are specific guidelines that must be followed. Written confidenti-

ality agreements are generally required between the blogger and the owner of the trade secrets to prevent disclosure under trade secret law. There is no fed-eral trade secret law, but 46 states (not including Texas) have adopted the Uniform Trade Secrets Act (UTSA-www.law.upenn.edu/bll/archives/ulc/fnact99/1980s/utsa85.htm). Even some of those 46 states, however, continue to use common law on certain aspects.

As an example, a blogger who has agreed to maintain certain information as a trade secret would clearly violate the trade secrecy by posting that infor-mation on a blog.

FTC DisclosuresIn December 2009, the FTC estab-

lished its final rules about endorsements and testimonials, which now require that bloggers disclose that they receive products and services about which they may be blogging (Guides Concerning the Use of Endorsements and Testi-monials in Advertising: ftc.gov/os/2009/10/091005endorsementguidesfnnotice.pdf). So if a blogger is given a free iPhone or subscription to a service, for example, the blogger must disclose these facts in the blog. HN

Peter Vogel is a trial partner at Gardere Wynne Sewell LLP, an Adjunct Professor at SMU on the Law of eCommerce, and a former President of the DBA. He blogs at VogelITlaw-Blog.com and can be reached at [email protected].

by peteR s. vogel


IP Issues for Bloggers

Justinian Award Nominations Due SoonThe 29th Annual Justinian Award will be presented in April 2011

at the Belo Mansion. The Dallas Lawyers Auxiliary is seeking nominations for this prestigious award which is given annually to a member of the Dallas Bar Association who has dedicated his or her career to volunteer service through civic, educational, health, wel-fare or philanthropic endeavors in the Dallas community.

The recipient will be chosen by a panel of distinguished non-law-yer community leaders. Attorneys serving in public office or candi-dates for public office are not eligible.

Please consider nominating one of the many outstanding attorneys in the community for the Justinian Award. Past recipients include lawyers from large and small firms, solo practitioners and corporate attorneys.

Nominations must be submitted in writing no later than January 10, 2011, to Carolyn Raney, 2413 Grandview Drive, Richardson, TX 75080, or by e-mail at [email protected]. Nominations forms online at www.dallaslawyersauxiliary.org/justinian.html.

Law Firm of the Year Haynes and Boone, LLP

2009 Outstanding Clinic Sponsor Hunton & Williams, LLP

Gold Award for Pro Bono ServiceAmerican AirlinesPatton Boggs, LLPBaker Botts, L.L.P.

Jones Day

Silver Award for Pro Bono ServiceCozen O’Conner

Weil Gotshal & Manges, LLPAkin Gump Strauss Hauer & Feld LLP

Locke Lord Bissell Liddell, LLP

Bronze Award for Pro Bono ServiceDLA Piper LLP

Andrews Kurth LLPJackson Walker L.L.P.

Thompson & Knight LLP

LAWYER & JUDICIAL AWARDS

LAW FIRM AWARDS

Driven by ever-increasing costs for computer infrastructure and the resources necessary to manage it, com-panies have begun using hosted ser-vices and solutions available through the Internet for their required IT needs. Commonly referred to as “cloud com-puting,” these service models provide infrastructure, software or platforms via the Internet, rather than through more traditional on-site hardware and soft-ware installation and support.

Recent technological developments have spurred somewhat of a “perfect storm” for the growth of cloud service providers (CSPs). Larger (yet more cost-effective) communications band-width and ever-increasing microproces-sor speeds and storage capabilities have spawned the growth of server virtualiza-tion (i.e. the ability to host a number of simulated computer environments, or “virtual machines,” on a single hardware platform) in high-security data centers. But clients and lawyers weighing this option must address the evolving legal risks inherent in this model, and may need to consider taking an umbrella before stepping “outside.”

In engaging any CSP, better scalabil-ity, management and technology costs must be weighed against the risks inher-ent in placing data, and the means for accessing and storing it, outside a cli-ent’s (or lawyer’s) direct control, and, in many cases, jurisdiction. Unlike a tra-ditional outsourcing relationship, cloud computing can geographically disperse client data over multiple computing platforms that trigger security and pri-

vacy concerns. Under the European Union Data Pro-

tection Directive, for example, trans-bor-der data flow of private information of EU customers to the United States is prohib-ited unless the same level of protection is afforded such EU residents in the United States as they would get in the EU or “adequate assurances” are made by satisfy-ing the “safe harbor” framework provided by the Directive. If the data spans mul-tiple countries, how can a client properly address such compliance issues?

Domestically, statutory protec-tions for data (such as HIPAA and the HITECH Act for “personal health infor-mation”) must also be addressed. As cloud services are governed by contrac-tual terms that may or may not be nego-tiable, jurisdiction/venue, indemnifi-cation and liability provisions become crucial. Litigation holds and e-discovery are even more problematic. Once a liti-gation hold is initiated, CSPs may need to deal with third-party providers to pre-serve or access applicable data. This pro-cess can introduce delay or, even worse, cause spoliation of evidence.

Intellectual property rights protec-tions in the cloud service model are far more nuanced. For example, U.S. law dic-tates that a copyright vests in an author of an original work when such work is fixed in a tangible medium of expres-sion. Where such works are created and saved by a foreign-national contractor on behalf of a domestic client, using a platform that resides on servers outside the United States, whether U.S. law or the laws of the contractor’s nationality of locality apply depend upon a multi-tude of factors that may affect the rights

available to the client. Further, trade secret information

stored in the cloud may be subject to loopholes that permit unauthorized third-party disclosure. For instance, in Sherman & Co. v. Salton Maxim Housewares, Inc., 94 F.Supp.2d 817 (E.D. Mich. 2000), the court held that the federal Stored Communications Act only prohibits the disclosure of stored communications where the disclosing party provides an “electronic communi-cation service,” and a person who does not provide such a service “can disclose or use with impunity the contents of an electronic communication unlawfully obtained from storage.”

These issues multiply for law firms seeking to “virtualize” computer infra-structure, given the attendant ethical considerations. As of the time of this writing, both New Jersey and Nevada have issued ethics opinions allowing for the use of CSPs for storage of client files so long as a reasonable standard of care is exercised, with others likely to follow suit. N.J. Sup. Ct. Advisory Comm. On Professional Ethics, Opinion 701 (2006);

Nev. State Bar Standing Commission on Ethics and Prof. Responsibility, Formal Opinion 33 (2006). And another state has a proposed opinion. North Carolina Proposed 2010 Formal Ethics Opinion 7, “Subscribing to Software as a Service While Fulfilling the Duties of Confiden-tiality and Preservation of Client Prop-erty” (April 15, 2010). Without ques-tion, a lawyer’s duty to maintain the confidentiality and security of client data does not disappear in the “cloud.”

From remotely-hosted productivity services such as Google Docs and Zoho to full-scale infrastructure platforms like Amazon’s EC2, remarkable capabil-ity and options have become available for clients (and law firms) to offload IT infrastructure to offsite vendors. Unfor-tunately, the outlook is only partly sunny—a storm of legal issues is brewing for cloud services that reflects anything but clear skies. HN

Tom Kulik is a partner at Scheef & Stone, L.L.P. and chairman of the firm’s Intellectual Property Practice Group. His blog on intellectual property law topics can be found at www.legalintangibles.com.


by tom KuliK


Stormy Weather: Forecasting the Legal Issues in Cloud Computing

DBA Annual MeetingNominations for DBA directors and officers will be made at the Annual Meeting on Friday, November 5, at 4 p.m.

(A reception begins at 3:30 p.m.). Six director and four officer positions are elected annually.

Within seven days following the Annual Meeting, all DBA resident members with an e-mail address on file with the DBA will be sent an online ballot. If you wish to vote online, please make sure the DBA has your e-mail address by visiting the DBA website

at www.dallasbar.org, or call Kim Watson at (214) 220-7414 before 5 p.m. on Thursday, November 3, 2010.

Please update your spam software to allow the e-mail ballot to enter you inbox from [email protected].

If you receive an online ballot but wish to vote by hard copy, please contact Cathy Maher at (214) 220-7401 to request that a paper ballot be mailed to you. Only those resident members without an

e-mail address on file with the DBA will be mailed a hardy copy of the ballot.

Ten years ago the DBA began the process of seriously exploring how to expand our Belo facility to meet the needs of our rapidly growing member-ship. As part of that process, we would ask our members what they perceived our greatest needs to be and the response was typically singular, PARKING. With very limited land available, the only solution to satisfy that unanimous request was to construct our under-ground parking garage, which was com-pleted in 2003 at a cost of $4,700,000—or $19,000 PER SPACE!!!

We were also aware that there would be significant costs associated with the safe, clean and efficient operation of the garage once it was completed. As a result, the decision was made to have a minimal parking fee for our members of $3 per visit, regardless of how long the member would be at the facility. Over the last seven years that fee has never been raised, but our expenses and costs of operation have increased signifi-cantly. As just one example, all of us who pay an electric bill each month are painfully aware that the cost of electric-

ity has almost doubled in the last seven years. What most people never focus on is that an underground, 100,000-square foot garage, with three elevators, high-wattage security lighting and a sophis-ticated exhaust system, takes a lot of power to operate. Last year, the garage electric bill alone was $75,000—that’s $300 per space annually, compared to $40,000 or $160 per space seven years ago!

As a result, the time has come for us to face this reality and adjust our parking rates accordingly in order to maintain the level of security and qual-ity service we all expect from the Belo facility. Starting January 1, 2011, our member parking rate will adjust to $4 per visit. However, if you are really attached to that $3 rate, we will be sell-ing $30 parking coupon books good for 10 visits throughout 2011.

Thanks for your understanding as we all continue to keep the Belo Man-sion and Pavilion at the gem quality we, and the Dallas community, have and will continue to enjoy for decades to come.

New Parking Rate in Belo Garage

Dallas Bar AssociationANNUAL MARDI GRAS FALL PARTY

Honoring our New DBA Members and Newly Licensed Attorneys

Thursday, November 18, 2010 5:30pm - 8:00pm

The Belo Mansion, 2101 Ross Avenue, Dallas, TX 75201

Business or Business Casual Attire

For sponsorship or event information please contact:Kim Watson, Membership Coordinator

[email protected] or (214) 220-7414


The Veterans Legal Clinic is a monthly pro bono legal clinic that is held at the Dal-las Veterans Administration (VA) Medical Center. The clinic is generally held on the first Friday of each month from 1:30 to 4:00 p.m. and has been in operation since Decem-ber 2009. Veterans call the VA Social Ser-vices office to make appointments, which are limited to 40 each month to allow for a certain number of veterans who come to the clinic without appointments. The legal clinic is available to veterans and active duty servicemen and servicewomen, as well as to spouses of veterans and active duty military.

The Dallas Volunteer Attorney Pro-gram (DVAP) has been a co-sponsor of the Veterans Legal Clinic since its inception. Accordingly, the Veterans Legal Clinic operates much like other area legal clin-ics operated by DVAP. Veterans are inter-viewed by attorneys at the Veterans Legal Clinic regardless of their legal issue or income eligibility and attorneys will visit the hospital rooms of those veterans who are physically unable to attend the clinic.

Common legal issues encountered at the Veterans Legal Clinic involve family law, probate, wills, landlord/tenant disputes, tax,

employment, criminal law, bankruptcy and immigration law. Sometimes the veteran sim-ply needs advice that the attorney can pro-vide during the clinic. More often, however, the veteran requires further legal assistance. Veterans’ cases generated from the clinic are placed through DVAP, clinic sponsors and the ever-growing “Veterans Network.”

In addition to legal issues, the veterans often have issues with their VA benefits. The Texas Veterans Commission typi-cally has a Veterans’ Counselor on staff at the clinic to assist the veterans with ben-efits issues, and they do a fantastic job. If the benefits issue involves an appeal of a benefits decision, however, the veteran most likely will require legal representa-tion. We are currently developing a list of attorneys who can handle such cases, and Dallas is fortunate that Hunton & Williams LLP is both experienced in han-dling benefits cases and is committed to serving the needs of our veterans.

Thanks in large part to SBOT Presi-dent Terry Tottenham’s efforts in estab-lishing and promoting the Texas Lawyers for Texas Veterans initiative, which devel-ops and assists pro bono legal clinics for veterans throughout the state, countless veterans have received pro bono legal rep-

resentation. Members of the Dallas Bar Association have selflessly answered the call and are already devoting substantial time and resources to this cause. However, the legal needs of our veteran population are great and far too many of our veterans cannot afford, or do not otherwise have access to, the legal services they need.

Since the first Veterans Legal Clinic was held in December 2009, it has been staffed primarily by lawyers and administrative staff from Fulbright & Jaworski L.L.P. and Gar-dere Wynne Sewell LLP. The entire DBA has now joined the cause and various firms, companies and legal organizations have committed to sponsor the monthly clinics, including the Senior Lawyers of the Dal-las Bar Association, American Airlines, Inc., Haynes and Boone, LLP, Akin Gump Strauss Hauer & Feld LLP, and the Busi-ness Litigation Section of the Dallas Bar Association. Additionally, countless firm,

solo and in-house attorneys have joined the Veterans Network, helped staff the Veter-ans Legal Clinic and handled veterans cases on a pro bono basis. We are especially grate-ful for Pro Bono Activities Committee Co-Chair Christina McCracken for her relent-less efforts to get the entire legal community involved in the Veterans Legal Clinic.

If you are interested in joining the Veterans Network, sponsoring a Veter-ans Legal Clinic, or otherwise working to assist our veterans with their legal needs, please contact us. Help us to ensure that these brave protectors of our legal system have full access to it. HN

Mike Regitz is a Program Coordinator of the Veterans Legal Clinic and an associate in the Intellectual Property Section of Fulbright & Jawor-ski L.L.P. He can be reached at [email protected]. Dan Scott is a Program Coordinator of the Veterans Legal Clinic and an associate in the Bankruptcy and Business Reorganization Section of Gardere Wynne Sewell LLP. He can be reached at [email protected].

by michael Regitz anD Dan scott

The Veterans Legal Clinic – Helping to Serve Those Who Served

DBA SAluteS Our VeterAnS

Volunteer Now!Veterans Free Legal Advice ClinicFirst Friday of Each Month from 1:30 to 3:30 p.m.Friday, November 5 | Friday, December 3

at the VA North Texas Health Care System (4500 South Lancaster Road, Dallas, TX 75216)For more information, contact DVAP at (214) 742-5768

or www.dallasvolunteerattorneyprogram.org.

Numerous attorneys, legal personnel and DVAP employees volunteered at the monthly the DBA Veterans Legal Clinic. However, the clinic is always in need of additional volunteers.


Thank you, for your service!

Chuck Aris, a partner in the firm of Byrne, Carde-nas, & Aris LLP, practices a bit of everything—busi-ness litigation, insurance defense and plaintiff ’s work. As Mr. Aris says, “It’s interesting work.” But more interesting is that Mr. Aris is a Colonel in the Texas Army National Guard, and on September 24, he deployed for a one-year assignment in Iraq.

Mr. Aris attended Texas A&M University on an ROTC scholarship and married his Bonfire Buddy at the start of his active duty stint in the Army. After active duty, he joined the National Guard because, “I had active duty experience, so I thought I could help make the Guard better. And I enjoy the service part of it. It’s just a different way to help people feel good.”

This is Mr. Aris’ third trip overseas since Septem-ber 11, 2001. He serves in the 36th Infantry Division, which includes 8,000 soldiers. His unit will be in charge of Southern Iraq for the next year. For those attorneys who might complain about billables, consider this: during the next year, Mr. Aris will work 18 hours a day, seven days a week and will sleep in a shared-hous-ing unit smaller than most conference rooms. He will return home only once, for just two weeks.

“The hardest thing is that you miss part of your kids’ lives,” said Mr. Aris. And for the modern law-yer, the lack of communication is devastating. “You can’t imagine how out of touch you are,” he added. “There is no cell phone coverage. They jam every-thing because of IED’s and our secure Internet runs at a snail’s pace.” During an 18-month deployment to Kosovo, he was so cut-off that his daughter temporar-ily stopped talking to him. But Kate is now seven and his son, Matthew, is 11, so both children understand that daddy leaves to help keep the world safe.

For all of us, Mr. Aris suggests one surefire way to help our soldiers: thank them for their service. He and his fellow soldiers love returning home to peo-ple greeting them with cheers and waving American flags.

“It makes you feel like everybody appreciates you, which makes the hardship a lot easier to han-dle.” HN

Andy Ryan is an associate at Diamond McCarthy LLP, and is a member of the DBA Publications Committee. He can be reached at [email protected].

by anDy Ryan

Chuck Aris—Army National Guard Colonel

The articles below highlight just a few of our DBA members who are serving our country. If you know of a DBA member who is also a military member, please let us know by e-mailing [email protected]. Thank you for your service!

United States Air Force Air Commando officer attached to the Special Forces, three-time Vietnam tour veteran, paratrooper, professional chef, cookbook author, certified personal trainer, community college instructor…and oh yes, attorney at law. What do these all have in common? Mr. Luther Jones, solo practioner and 1971 graduate of UC Hastings College of the Law.

Mr. Jones grew up an “Army brat” and knew that his future would be one of service to oth-ers. “It has never been impor-tant to me to see a competitive advantage, either in a career or wealth, over anyone else,” he said. “I knew that to serve my country was my first obligation.”

In 1964, he voluntarily enlisted in the USAF Air Commandos—now known as “Spe-cial Ops”—and was sent to Laos/Thailand on his first Viet-nam tour of duty because, “[I] could not hide behind books or a desk. I wanted to go where history was being made.”

Once that tour was complete, he was sent back for two more tours in Vietnam. Mr. Jones says he didn’t actually plan his last tour, but was asked by Gen. Abrams, Commander of the U.S. Forces in Vietnam, to stay on for one more tour, and so he did. “I was proud to serve with the Special Forces ad proud of my silver wings as a paratrooper,” said Mr. Jones.

He is extremely proud of his service during the Vietnam Conflict and feels that, “It’s about time to honor those who served in Vietnam.”

After his service in Vietnam, he returned to the U.S. and went to law school. He then spent 15 years with the Army & Air Force Exchange Services as Chief of Labor Litigation and then another 15 years practicing labor and employ-ment law, also serving a short while as Assistant Disciplinary Counsel for the SBOT Ethics Committee.

He says that his years of service in the military helped in his transition to the practice of law. “I learned not to let fear defeat you,” he said, “and I guess it made me immune to intimidation in my trial practice.”

After his many years as an attorney, Mr. Jones decided to try something new, so he signed up for cooking school, became a professional chef and authored a cookbook entitled “Le Chef’s Fitness Foods”(www.blurb.com). He also became a certified personal trainer and teaches the class “Healthy Lifestyle for Seniors” at Brookhaven Community College and the VA Medical Center.

Now at age 70, Mr. Jones still runs marathons and volunteers at various organizations, including sitting on the DBA Veter-ans’ Assistance Subcommittee. Not one to sit around, he states, “Just because I’m retired, doesn’t mean I’m tired.” HN

by Jessica smith

Luther Jones—Air Force, 1st Air Commando Wing, Officer

A third generation officer in the United States military, Captain Ernst “Mitch” Martzen was born in Manila in the Philippine Islands and raised in California. Capt. Mar-tzen was a member of the Reserve Officer Training Corps at Baylor University, receiving a double major in Political Science and Environmental Studies before graduating with distinction from the University of Oklahoma College of Law. He joined the Air Force as a commis-sioned officer in the Judge Advocate General’s Corps after becoming licensed to practice law in Texas, a decision made in large part because of his family’s long tradition of military service.

While practicing as an Assistant Staff Judge Advocate on Barksdale Air Force Base in Louisiana, Capt. Martzen received experience in many legal fields since his gradua-tion from law school in 2006. Capt. Martzen represented the Air Force successfully before the Louisiana Conserva-tion Commission, headed the base legal clinic where he counseled service members and their families “on any issue that walked through the door,” advised the base hospital on regulatory and compliance issues and drafted hundreds of wills for service members. As a prosecutor, he tried nine court martials for offenses, including drug use and firearm assaults.

In addition to his responsibilities as an Assistant Staff Judge Advocate, in 2008 Capt. Martzen was appointed a Special Assistant U.S. Attorney, prosecuting more than 50 state and federal misdemeanor offenses against military personnel and civilians for criminal activity on the Barks-dale Air Force Base.

In 2009, Capt. Martzen took the position of Area Defense Counsel, defending service members in criminal matters, nonjudicial punishments for petty offenses, and adverse personnel actions. For his work, Capt. Martzen has repeatedly been honored by his superiors as one of the top attorneys on the Barksdale staff.

Capt. Martzen looks forward to permanently joining the Dallas legal community after transitioning to the Air Force Reserve later this year. While he is as yet undecided about practicing criminal defense as a solo or joining an established civil litigation firm, the Dallas Bar Association can count itself fortunate to have this accomplished attor-ney among its ranks. HN

Hugh Fuller is an associate attorney handling civil and commercial litigation matters at Looper, Reed & McGraw, P.C. He can be reached at [email protected].

by hugh a. FulleR

Mitch Martzen— Air Force Captain


DBA Bench Bar ConferenceAt Horseshoe Bay


Intellectual property rights are some of the most valuable assets any company has. IP rights are present from inception to sale of a company or product and are in virtually every transaction and agreement in between. Yet these rights are often the most overlooked and underrated aspect of representing clients for many attorneys. This article will provide a brief overview of IP basics and highlight when and why IP issues should take center stage instead of a playing supporting role.

IP OverviewCopyrights protect “original works of

authorship” that are “fixed in any tangible medium of expression,” such as: literary and musical works; pictorial, graphic and sculp-tural works; computer software; motion pictures and other audiovisual works; sound recordings; and architectural works.

Trademarks and Service Marks include any word, name, symbol, or device, or any combination of these, used, or intended to be used, in commerce to identify and dis-tinguish the goods or services of one entity from those sold or provided by others, and to indicate the source of the goods or ser-vices. Trademarks can include trade names, logos, domain names, 800 numbers, adver-

tising slogans, jingles, store designs and trade dress, such as product configurations, color and packaging.

Trade Secrets generally include any information that derives independent economic value from not being generally known or reasonably ascertainable, and is the subject of reasonable efforts to main-tain its secrecy.

Patents can be granted to anyone who “invents or discovers any new and useful process, machine, manufacture, or com-position of matter, or any new and use-ful improvement thereof.” Patents confer the right “to exclude others from mak-ing, using, offering for sale, or selling” the invention in or “importing” the invention into the United States for a limited time in exchange for public disclosure of the inven-tion when the patent is granted.

Company/Product Name Selection

Coined, arbitrary, fanciful or suggestive marks are preferable to descriptive (pro-tectable with acquired distinctiveness) or generic (not protectable) terms.

Before an entity uses/registers a name for its operations or products perform a com-prehensive search to determine whether a third party is using the same or similar

name for the same/similar goods/services. At the very least, perform a quick “knock-out” availability search:

Check for entity names and state trade-•mark registrations with Secretary of State Offices where business will be done.Search the federal U.S. trademark data-•base, available at www.uspto.gov.Perform a Google search to determine •whether third parties have common law rights to the name.Perform a “WHOIS” search at •www.internic.net to determine whether domain names are available (as clients often want a corresponding web presence).

Ownership/Transfer of IP RightsUnless an employee is performing

services within the scope of his employ-ment (work-for-hire), it is best (and often required) to have a signed, written agree-ment transferring to your client the rights in IP created by an individual, independent contractor or entity.

Entity names and ownership of IP change for various reasons, and it is impor-tant that the title to IP is correct to avoid future issues. Draft and file assignments/name changes with the Copyright Office, USPTO and Secretary of State Offices.

IP Audits and Due Diligence Review

Performing an IP audit/due diligence review to determine IP assets your client (or a business being acquired) has is impor-tant for operation and valuation of a busi-ness, especially in buy/sell transactions. An audit should include:

Name/description of IP (mark, title of •

copyright or patent).Subject of IP (goods/services, copy-•righted material, description of patent).Status of IP (application/registration •number(s), intent-to-use/actual use, renewed, not protected, litigation or other issues).When/how the IP has been used (dates •of first use/publication, where/how used/published, U.S./international use).Chain of title (who owns the IP, have •all transfers been recorded, any gaps).

Key IP Issues in Agreements and Licenses

Look for • IP ownership and confiden-tiality provisions, noting the follow-ing terms: work-made-for-hire, assign, transfer, convey, license, rights, title, interest, exploit, own, goodwill, exclu-sive, non-exclusive.Determine who has ownership of/rights •granted in any IP in agreements with vendors, manufacturers and licensees. Verify that quality-control rights/pro-cedures, provisions for dealing with returned goods, overruns, etc. that contain or utilize your client’s IP are in place.Compile a list of IP encumbrances •(license restrictions, security inter-ests). Note what IP is affected (mark, goods/services), any limitations on transfer/assignment rights, geo-graphic limitations, and termination/renewal dates. HN

Danica L. Mathes, of counsel with Bell Nunnally & Martin LLP, handles intellectual property, new media and entertainment mat-ters. She is a member of the Intellectual Property Law and Sports & Entertainment Law Sections of the DBA. She can be reached at [email protected].

by Danica mathes


Intellectual Property in Corporate Transactions

DVAP’s FinestJodie Michalski

Jodie Michalski is an associate with Jones Day, specializing in labor and employment law. Along with assisting at the South Dallas Clinic, she has completed several no-children, no-property divorces, adoptions and custody cases. Of these DVAP cases, the most rewarding included a recent custody case, which was referred to Jones Day on an emergency basis. The custody case involved two girls, ages 8 and 16. Their father was murdered in the spring of 2008, they lost their mother to cancer a few months later, and then, in August of 2009, their maternal grandmother was killed in a car accident. Throughout these tragedies, the girls’ aunt (their

mother’s sister and the DVAP client) had been their rock; at only 28 years old, she quit her job and put her life on hold to take care of her nieces. She even helped to re-estab-lish the girls’ relationship with their paternal grandparents, whom they had not seen regularly since their parents’ separation several years earlier. In January 2010, the girls’ paternal grandparents sued for custody. Jones Day attorneys Jeff Orkin, Angie Boliver and Jodie helped the aunt retain custody of the girls. Jodie and her colleagues were able to work out an arrangement that was satisfactory to all parties and allowed the girls and their aunt to move on with their lives. Jodie describes the cases she has taken through DVAP as among the most rewarding of her legal career. Jodie states, “I feel privileged to have had the opportunity to work on these cases and to serve the interests of such deserving clients.” Thank you for all you do, Jodie!

Pro Bono: It’s Like Billable Hours for Your Soul.To volunteer or make a donation, call 214/748-1234, x2243.

A joint legal aid program of the Dallas Bar Association and Legal Aid of NorthWest Texas(formerly Legal Services of North Texas).


party inevitably uses or discloses confiden-tial information and violates the nondis-closure agreement. The impact on the receiving party is that, in potentially com-petitive situations, it may no longer freely deploy its employees without increasing its risk of a claim.

Nondisclosure agreements typically prohibit both (1) disclosure and (2) use of a disclosing party’s confidential infor-mation. Among other considerations, counsel of the company receiving con-fidential information should look at the following:

1. Is the information to be received capable of competitive use by the receiv-ing company?

2. Will the information be reviewed by receiving company’s personnel who might later work for the receiving com-pany in the disclosing company’s market field?

Where the receiving company is relatively small or for other reasons can-not segregate the received information from key employees that may become involved in competitive endeavors, there are risks involved in receiving the confidential information.

Use of the Residuals ClauseA residuals clause creates an excep-

tion to the prohibitions against use and disclosure. It permits the subsequent use of “residual” information--information that is retained by the unaided memory of employees who had access to it. The disclosing company frequently resists the inclusion of a residuals clause, because it fears the consequences of any use or disclosure whatsoever. Also, it may fear that the residuals clause will create an unintended loophole for later massive use or disclosure.

To counter this fear, additional qual-

ifying terms may be appropriate. One might be a requirement that the dis-closing company not be identified as the source of the residual information in any use or disclosure by the disclosing party. Another might be to specify a range or field of permitted use for residual infor-mation, and that any disclosures of residual, confidential information will be limited to those that are inherent in the permitted use. Another common qualification to a residuals clause is that the permission to use or disclose, as an exception to the confidentiality obliga-tion, does not extend to create a license to duly-issued patents or valid copy-rights of the disclosing party.

Other ToolsIn addition to the residuals clause,

you may want to discuss other possible workarounds with your client. One is to use “information walls” to segregate your client’s reviewing team from anyone who might later be involved in fields competitive with the discloser. Your cli-ent could also hire third party evaluators to review the information to determine whether reviewing the information is worth the risk of further examination by key employees.

Finally, the HP lawsuit against its for-mer CEO illustrates that there is a great deal of heat and emotion surrounding the use of confidential information in a competitive marketplace. Advise your client accordingly. Residuals clauses can be tricky to draft and negotiate. But even a residuals clause does not eliminate later claims of misuse or disclosure in a competitive environment. HN

Jonathan K. Hustis is an attorney with Phillips & Reiter PLLC in Dallas. His general counsel practice includes businesses in telecommunications, information technology and software. He can be reached at [email protected].

Residuals ClausecontinueD FRom page 1

While most firms encourage pro bono work, two firms have gone the extra mile. Jones Day and Weil, Gotshal & Manges LLP have both made a commitment to the Dallas community by annually pro-viding an associate attorney to work

full time in-house for three months a year for the DBA’s Dallas Volunteer Attorney Program (DVAP)—a program designed to provide legal ser-vices to low-income families. The firms pay the associates’ salaries and benefits while they are on

loan to DVAP, and DVAP and the Dal-las community get the benefit of their legal expertise.

Weil launched the Lend-A-Lawyer program in 2005, the first program of its kind in Dallas. Jones Day joined the program in 2008, and has been staffing it along with Weil ever since. Together, the firms jointly provide staffing to DVAP for six months of the year with the long-term goal of finding other firms or attorneys to provide staffing for the remaining six.

This year, Jones Day selected Daniel O’Brien to participate in the Lend-A-Lawyer program. Mr. O’Brien is a pat-ent-litigator at Jones Day and is a 2006 graduate of the University Of Illinois College of Law. Mr. O’Brien admits that he was a little intimidated when he went to DVAP because he knew he would be managing cases in areas outside of his expertise. But once he started working, he quickly realized that DVAP was there to help.

“The mentors at DVAP [were] extraordinarily helpful and [would] bend

over backwards to help you out,” he said. When all was said and done, Mr. O’Brien found the work “very rewarding.” When he achieved a good outcome for a cli-ent, he “instantly saw the gratification on the client’s face.” And often times the smile was a result of a simple call or letter; work did not have to be complex to be important and meaningful. By the end, he said that the Lend-A-Lawyer program allowed him to “help someone in need” while also “helping [himself] grow as a lawyer and as a person.”

When Mr. O’Brien finished his time at DVAP, Star Carter from Weil took up residency. Ms. Carter is a fifth-year cor-porate associate at Weil and a graduate of Harvard Law School. After her time with DVAP, Ms. Carter hopes to debunk the myth that pro bono work is not well suited for corporate lawyers. She found that the same skills that worked in a large

law firm corporate practice also worked in the pro bono set-ting. “Preparation is key,” she said. “Serv-ing the client is key.”

Ms. Carter says the experience yielded benefits across the board. She says that she finds herself “bet-ter in research, in

asking questions and in thinking on my feet—all of which are transferable to my practice at Weil.”

When asked what she wanted to bring back to Weil from the program other than technical skills, Ms. Carter was stated, “I want to bring back the spirit of roll up your sleeves and dig in.” HN

David W. Dummer is a senior associate in Weil’s complex commercial litigation practice. He can be reached at [email protected].

by DaviD W. DummeR

Jones Day and Weil Lend a Lawyer

Daniel O’Brien

Star Carter

Prior to registering a domain name, creating a website or Facebook page, dis-playing a mark on a product or advertis-ing services, it is imperative that small business owners understand the impor-tance of selecting the right trademark, the proper procedures for determining if the mark is available for use and the process for obtaining trademark registration. Fail-ure to take the proper steps at the begin-ning of the process can result in a trade-mark owner with prior rights forcing a name change, often at great expense to the business owner. That expense can include the cost of rebranding, potential litigation expenses and loss of goodwill.

The first step in securing protection for a trademark is selecting a registrable and protectable mark. In the United States, a generic term cannot be registered or pro-tected as a trademark. In addition, marks that are merely descriptive of a business’s goods or services offer very limited protec-tion, and are difficult to register. The trade-mark owner may, moreover, be unable to stop competitors from using the same or similar marks. The strongest marks are those which are arbitrary, i.e., Apple for computers, or fanciful, such as Xerox for copiers.

Once a mark has been selected, a trade-mark search should be performed prior to any use of the mark, including use on the Internet. A variety of cost-effective meth-ods for searching are available, and on-line records of the U.S. Patent and Trademark Office can be searched free of charge. However, such a search will provide only records of federal registrations and pend-ing applications, while failing to identify

similar but non-identical marks or com-mon law uses.

It is always advisable to order a full trademark search, which will provide information on state and federal trademark registrations and pending federal applica-tions, as well as common law uses, includ-ing business names and Internet usage. All trademark searches should be reviewed by an attorney with experience in trademark clearance.

Failure to perform an adequate trade-mark search can result in the filing of a proceeding to oppose one’s application for, or to cancel a registration of, a mark and, ultimately can result in costly litigation. Defending an opposition or cancellation proceeding can cost up to $500,000 –which does not include the cost of rebranding a product or service following an unwanted name change.

Obtaining a competent legal opinion prior to adoption of a mark can be used to establish good faith, which is one of the fac-tors considered by the courts when deter-mining liability for trademark infringement and unfair competition claims. A finding that a defendant’s actions were undertaken in bad faith or were intentionally decep-tive may give rise to a rebuttable presump-tion of consumer confusion. See George Bashe Co. v. Blue Coral, Inc., 968 F.2d 1532, 1537 (2d. Cir. 1992). Conversely, a competent legal opinion establishing good faith adoption of a mark may be used to avoid a finding of willful infringement or an exceptional case, warranting the recov-ery of treble damages or attorney’s fees, respectively, under the Lanham Act.

Once a trademark has been cleared for use, it is advisable for the owner to apply for registration of the mark. Although trademark rights in the United State are

acquired through use, registration offers certain benefits to the mark owner, includ-ing nationwide priority in the mark, the right to use the ® symbol with the mark and provision of notice to others of your ownership of the mark.

Some points to remember in preparing a trademark application include the follow-ing:

Apply for registration of the mark exactly •as it will be used. Do not include a com-pany designation, such as LLC, Inc. or LP, unless that designation will be used in the mark each and every time. The person filing the application must •be the owner of the mark or the person or entity who is entitled to use the mark in commerce. If an applicant is not such a person at the time the application is filed, the application is void.

The identification of goods and services •should be specific enough to identify the nature of the goods and services. The identification may later be narrowed, but may not be broadened.Generally, it is advisable to seek the

advice of a competent trademark lawyer as early in the process of selecting a new mark or name as practical. Although clearing and protecting a new trademark requires upfront expenditures in terms of time and money, failure to take the proper steps prior to use of the mark may result in far greater costs down the road. HN

Jennifer Scannell is an associate in the trademark and copyright group of Baker Botts LLP. She can be reached at [email protected]. Paul Russell, an associate in the litigation group of Baker Botts LLP, contributed to this article. He can be reached at [email protected].


www.dykema.com

Chicago . Dallas . Detroit . Los Angeles . Ann Arbor . Bloomfield Hills . Grand Rapids . Lansing . Lisle . Washington, D.C.

Dykema Welcomes Mark K. Sales

We are proud to welcome veteran Texas litigator Mark K. Sales to our Dallas team.Mark focuses his practice on probate litigation with an emphasis on tax and fiduciarydisputes in trust and estates matters. He also counsels clients on a variety of trial andappellate matters involving product liability, personal injury, toxic tort, energy and insurance.

As a former Dallas Bar Association President, Mark is a well-recognized figure in theTexas legal community. His arrival is the latest milestone in the growth of Dykema’sDallas office where our experience in all substantive areas of the law provide optimal,cost-effective results that can help your business grow and prosper.

For more information, contact Darrell Jordan, Office ManagingMember, at 214.462.6410.

Global Perspective.National Strength.Texas Spirit.

by JenniFeR scannell anD paul Russell


Trademark Basics for Small Businesses—Common Pitfalls

Mock Trial Competition Judges WantedThe Texas High School Mock Trial Competitions

in Jan., Feb., and Mar. 2011 are in need of attorneys to help critique.

Teams are from DISD, Region 10 and across the State.

Variety of dates available. Earn self-study CLE credit.

Sign-up online at www.dallasbar.org/thsmtc or contact Amy Smith at [email protected].


In the News NovemberFROM THE DAISMimi Coffey of the Coffey Law Firm has been selected by the American Bar Asso-ciation to serve as a delegate with the Rule of Law and Criminal Justice Delegation to South Africa in October to learn about the South African legal system.

Robert Voelker, of Munsch Hardt Kopf & Harr, P.C., spoke at the National Association of Local Housing Finance Agencies fall con-ference in New York. Mr. Voelker also spoke at the San Antonio Community Develop-ment Summit. Aaron Johnston, Jr., also with the firm spoke at the Higher Education Real Estate Lawyers Conference at Princ-eton University in New Jersey.

KUDOSLeslie DeCillis, of Thomson Reuters Corpo-ration, has been appointed Senior Counsel. Mike Massad Jr. and John Nolan, of Win-stead PC, have been elected to serve on the board of the Salesmanship Club of Dallas as president and treasurer, respectively.

Alia Derrick, of Jackson Walker L.L.P., was recently accepted to the 2010-2011 class of

the State Bar of Texas’ LeadershipSBOT Program. Heather Forrest, also of the firm, was elected to the board of trustees of the Dallas Children’s Theater.

Joseph J. Wielebinski, of Munsch Hardt Kopf & Harr, P.C., has been elected the Executive Director of FraudNet, a global network of lawyers dedicated to assisting victims of commercial fraud and corruption throughout the world.

Raymond Van Dyke, who has opened a new practice in Washington, DC, has been reappointed the Greater Washington, DC and Northern Virginia Chapter Chair of the Licensing Executive Society and Chair of the Professionalism and Ethics Committee of the AIPLA.

Justice Elizabeth Lang Miers, of the Fifth Dis-trict Court of Appeals of Texas, was elected Secretary of the Appellate Judges’ Confer-ence of the American Bar Association at the annual meeting and elected Chair-Elect of the Judicial Section of the State Bar of Texas at the Annual Judicial Conference.

Angela Neville recently won two 2010 regional awards from the American Society of Business Publication Editors for articles written in 2009 for POWER magazine: a bronze award for two “Legal & Regulatory” columns and a gold award for a case history “Lessons Learned from a Hydrogen Explo-sion.”

ON THE MOVEMatthew R. Baade has joined Stinnett Thie-baud & Remington LLP as an Associate.

Greg Sampson has joined Looper, Reed & McGraw, P.C.

Edward Fishman, Scott Jackson and Mon-ica Luebker have formed the new firm of Fishman Jackson Luebker PLLC, located at Three Galleria Tower, 13155 Noel Road, Suite 700, Dallas, TX 75240, Phone: (972) 419-5500. David Beverly has also joined the firm.

Aimee Pingenot has joined Goranson, Bain, Larsen, Greenwald, Maultsby & Murphy

PLLC as an Associate.

Robert K. Radcliff has joined Langley Wein-stein LLP as a Partner.

Bart Biggers has joined Winstead PC as a Shareholder.

Thad D. Spalding has joined The Law Offices of Marc H. Richman.

Drew N. Bagot has established the law firm of Drew N. Bagot, P.C., located at 8117 Pres-ton Road, Suite 300, Dallas, TX 75225.

Seema Tendolkar has joined Wick Phillips Gould & Martin, LLP as an Associate.

John Burkhead has joined The Law Offices of Frank L. Branson.

News items regarding current members of the Dallas Bar Association are included in Headnotes as space permits. Please send your announcements to Judi Smalling at [email protected].

During the past two months, your DBA has been highlighted in the following media:

Al Dia: CIC’s Eyes & Ears Drive

Coppell Gazette: Legalline

Dallas Business Journal: DA Candidate Forum announcement; Philbin Awards

dBusinessNews.com: Philbin Awards; CIC’s Eyes & Ears Drive; Appealing to the Public

Dallas Morning News Community Calen-dar: DA Candidate Forum announcement, CIC’s Eyes & Ears Drive; Philbin Awards

Dallas Morning News crimeblog.com: DA Candidate Forum announcement

Dallas Morning News Business Section, Bob Miller’s column print & online: Legal-line

Dallas Morning News Political column by Gromer Jeffers, Jr.: DA Candidate Forum announcement and coverage of event

Dallas Morning News trailblazersblog.com: DA Candidate Forum announcement and coverage of event

Dallas Observer: DA Candidate Forum announcement and coverage of event

Focus Daily News: DA Candidate Forum, Legalline, Frank Branson Trial Lawyer of the Year

. . . . . . DBA In the News . . . . . .

Mediator ★ Arbitrator ★ Special Judge

★ 4,000+ cases mediated

★ Full-Time Mediator since 1989

★ 90%+ settlement rate

★ 35 years of judicial experience

★ Justice retired 5th Court of Appeals

★ Chair - The Civil Collaborative Group

★ Member - The Association of Attorney-Mediators

★ Distinguished Mediator - Texas Mediator Credentialing Association

★ Panel - FINRA Dispute Resolution

★ Panel - CPR: International Institute for Conflict Prevention & Resolution

Ted M. Akin

3023 Hester Avenue Dallas, Texas 75205-3525

(214) 821-6370 www.judgeakin.com


OFFICE SPACESeven offices available for rent in our his-toric West End building. Five upstairs of-fices rent at $750 each and two downstairs offices are $650 per month each. All of-fices can rent individually or as a package. Contact Craig Miley at (214) 692-8800 or [email protected].

Northpark/Central Expwy— Law firm has “turnkey” office for sublease in Class A building for $1200. Includes use of office furniture (if needed), telephone, high-speed DSL, fax line, parking, and large conference room and kitchen. Great location with downtown and Park Cities views, excellent finish out with hard-woods in lobby, elevator exposure, and easy access to/from Central Expwy. Call (214) 292-4202.

Attorney sublease in downtown Dallas business law firm. Easy freeway access, great views and free parking. $16.75 sq ft (tracks primary lease). Inquiries to: Dallas Bar Association, Box 10-10A, 2101 Ross Avenue, Dallas, TX 75201.

SMU(Yale)/Central. Partner office and secretarial space. Beautiful 12th floor view of SMU/Park Cities. Profession-ally decorated, beautifully furnished. Overflow business. Receptionist, elegant conference room, kitchen, DSL, door signage, restaurant, bank, parking, DART. Office $1,095.00/mo., secretarial space $300.00/mo. (214) 369-9888

High-rise views at low-rise rates. Pan-oramic views from 63rd floor. Class-A downtown space close to courthouse, AV-rated law firm. Access to large conference room, library, kitchen. Secretarial, cleri-cal, reception available. Offices available with very nice secretarial stations. Nego-tiable. Call Kay (214) 761-6463.

No Rent Until Next Year! Preston Tower—3 offices with shared amenities, as low as $595/mo. (kitchen, conference room, recep-tion area, bathroom). Convenient and acces-sible. 10 minutes from courthouse. Call (214) 369-1171 or e-mail: [email protected].

Lower your rent without compromising your professional image. 4 window offices near 75 and Walnut Hill (+/-2600 feet). This office condo space is For Sale or For Lease. Highly competitive pricing. For more information, contact Kevin at (214) 269-4252

We are looking for space for 2, 30+ year lawyers and a paralegal, north of downtown Dallas, Central Expwy corridor or near, Royal or south. Prefer to share space with existing firm with conference room(s) and kitchen. Prefer space naturally or easily partitioned. Need space by March 1. Roger Claxton (214) 969-9029 or Dan McDonald (214) 754-8782 or [email protected].

POSITION AVAILABLE Well-established North Dallas Law Firm seeks a Family Law Attorney with a mini-mum of 10 years’ experience in Family Law. Please forward resume and salary require-ments to [email protected].

Assistant General Legal Counsel. A multi-national real estate and energy group is look-ing for an attorney with 20 years or more of experience in commercial litigation and bankruptcy work. This professional will help develop and review litigation strategies with outside litigators regarding complex cases handled by outside law firms, initially file and answer lawsuits that will be handled by outside law firms, and monitor the status of litigation handled by outside law firms. Most of these cases will involve real estate matters or other commercial litigation. Send your re-sume to: Dallas Bar Association, Box 11-10A, 2101 Ross Avenue, Dallas, TX 75201.

Medium size AV rated downtown Dallas law firm seeks partner-level business lawyer with varied corporate law experience. Can-didate must have some portable business. Respond to Dallas Bar Association, Box 11–10B, 2101 Ross Avenue, Dallas, TX 75201.

Well-established North Dallas Law firm seeks an experienced BILINGUAL (Span-ish/English) family law attorney with a minimum of five years’ experience. Please forward resume and salary requirements to [email protected].

Executive Director Dispute Mediation Ser-vice. Dispute Mediation Service (DMS) is a private, non-profit organization that provides accessible, high quality dispute resolution service such as mediation, conciliation, arbi-tration and training for the Dallas County. It operates under a contract with the Dallas County Commissioners Court. Visit www.dms-adr.com for more information. Oppor-tunity/Position Summary: There is currently an opportunity for the Executive Director. He/She will be accountable to a diverse Board of Directors and will lead a team of 6- 8 associates. The Executive Director will provide oversight of all operations including staff supervision, volunteer management, financial management, funding, communi-cations, and implementation of the agency’s programs. Qualifications: The most desirable candidates should have broad experience in leading, directing, and advancing the cause of a non-profit organization. An understand-ing and working knowledge of mediation, alternative dispute resolution models, the justice system and case management system is critical. Candidates should have appro-priate academic credentials, i.e. bachelor’s degree; however, an advanced degree or a JD would be a plus. A minimum of three years in managing/leading/developing a team of subordinates, working with a Board of Directors, volunteers, government officials, clients, funders, media and the public is re-quired. Forward confidential resume, along with salary history to: DMS – ED, P.O. Box 700967, Dallas, TX 75370 or [email protected] M/F/D/V/ - EEO.

Dallas area Firm seeking a lawyer with at least four years’ experience practicing family law. Medical and Dental Benefits available. Please forward salary requirements and re-sume to [email protected].

Dallas Associate Position. Established 30+ attorney firm seeking attorney with 2-4 years of judicial clerkship, civil litigation or insur-ance related experience. Primary case load will consist of insurance coverage litigation, civil appeals and preparing coverage opin-ions. Young firm with offices throughout Texas offers associates substantial responsi-bility in a congenial work environment at a competitive compensation level and good benefits. Strong research, writing, and ad-vocacy skills a must. Please forward resume and references to [email protected].

Medium sized family law firm in Dallas is seeking a 3-5 year family law attorney. Such attorney must have significant experi-ence drafting family law related pleadings, decrees, and briefs, as well as experience handling trial matters before the court. Col-laborative law training is a plus. Interested applicants must have strong oral and writ-ing skills and be comfortable working inde-pendently as well as with other attorneys. If interested and qualified please submit your resume and references via fax to the HR Department at (214) 692-8255.

Higier Allen & Lautin Is Growing! Higier Allen Lautin PC is a 25-lawyer Firm based in Addison, Texas, and an equal opportunity employer. Learn more about us here: www.higierallen.com. If you are self-motivated, team oriented, have excellent organizational and verbal communication skills, strong attention to detail, outstanding work ethic and excellent research and writing skills, then send your re-sume to [email protected]. Real Estate Associate Requirements: two years of law firm experience in commercial real estate transactions. Experience with real estate finance/lending transactions is helpful.

SERVICES Mexican Law Expert—Attorney, law profes-sor testifying since 1997 in U.S. lawsuits in-volving Mexican law issues - forum non con-veniens, Mexican claims/defenses, personal injury, moral damages, Mexican contract law. Co-author, leading treatise in field. J.D., Harvard Law. David Lopez (210) 222-9494 / [email protected].

PLACE YOUR AD HERE! For affordable classified advertising rates call Judi Smalling at: (214) 220-7452.

Classifieds November

Ensure your family coverage is tailor-made...

State Bar of TexasInsurance Trust

800.460.7248www.sbotit.com

The State Bar of Texas Insurance Trust specializes in helping all Bar Members and their Eligible Employees obtain complete insurance coverage at any point in their lives. From Health Insurance to Long Term Disability Insurance, the Trust has you covered.

Join the Dallas Lawyers Auxiliary at the following events:Belo Decorating Day

November 22, 9:00 a.m. to noonShare in the fun of decorating the Belo Mansion for the holidays.

DBA Family Holiday Party Volunteers Needed December 13, 6:00 to 8:00 p.m.

Volunteers are needed to be face painters or to apply rub-on tattoos. Absolutely no experience required.If you are interested in helping contact Lori Alexander at (214) 522-6465 or at [email protected].

To learn more about DLA, contact Joan Nye at (214) 460-1096 or at [email protected].

DBA MEMBER REMINDER:Your 2011 DBA DUES STATEMENT will be mailed to your office or home on October 15, 2010.

2011 DBA DUES must be paid by December 31, 2010 to continue receiving all your member benefits.

Thank you for your support of the Dallas Bar Association!

PROPOSED AMENDMENTS FOR THE U.S. DISTRICT COURT

Visit www.txnd.uscourts.gov to view proposed amendments to the local civil

rules for the U.S. District Court, Northern District of Texas. Unless modified after

receipt of public comment, these amendments will be effective

December 1, 2010.

The deadline for public comment is November 1, 2010.

Speak To Dallas ISD Students for ½ DayDuring the week of November 15-19, volunteers can teach up to 3 classes a day in the secondary social studies classrooms. Curriculum is available.

Deadline to sign up is November 1. For more information, contact Amy Smith at [email protected].

Take Me Out to the Ballgame

The DBA Bar None Singers performed at the Ballpark at Arlington for the September 28 Texas Rangers game. Performing were (from left to right) Leslie Holloway, Allen Griffin, Rhonda Hunter, David Indorf, John Horany and Cathy Sargent.

APPELLATE OPINIONS

T H E L A T E S T

— A V A I L A B L E D A I L YO N T E X A S L A W Y E R . C O M

Click on “Daily Case Alert” to see

the most recent case law

or click on “Appellate Court Opinions”

to search by practice area.


Happy Hour at Jimmy ChooBrought to you by the

Entertainment Committee

Thursday, November 3, 6:00 to 9:00 p.m.

Jimmy Choo at Highland Park Village(79 Highland Park Village, Dallas)

For more information, contact Rhonda Thornton

at [email protected].

What Do These Have In Common? • A lawyer fluent in Russian• A Forensic Expert• An Environmental Law specialist

All three can be found in the yellow page listings of your 2010 DBA Membership Directory and online a http://www.dallasbar.org/pictorial/guide.asp

Take advantage of the #1 Legal Resource & Expert Witness Guide in Dallas County!

Need a copy of the new directory? Contact Judi Smalling at [email protected].

In the fall of 2007, several Dallas Bar Association members organized an informal group under the association’s umbrella called the Legal History Dis-cussion Group. The assumption was that there were a number of historically minded lawyers who would be interested to come to Belo periodically to hear a pre-sentation on a topic of “legal history”—a subject matter broadly conceived as pertaining in some way to the history of law, lawyers and courts—and to discuss questions raised by such presentations, while receiving MCLE credit for doing so. Three years and 16 presentations later, the concept seems to be working.

Sometimes the group’s meetings resemble a university seminar, with attendees of 15-20, while other presenta-tions have shown a broad appeal, drawing attendances of 40-85. Topics presented have all had a strong historical perspec-tive, running from elections and post-election litigation, to Lincoln as lawyer, to Social Darwinism in the jurisprudence of Oliver Wendell Holmes, to the career of late 19th century Dallas lawyer Jerome Kearby, to the Blaine Amendments on public support for religious schools, to the law in Spanish and Mexican Texas, to property law in the earliest days of the common law, and to a famous trial in Germany about the nature of treason in the aftermath of World War II.

The group alternates presentations by law school and college history professors with those by Dallas lawyers who have nurtured their own legal-historical papers or projects. The Legal History Discussion Group has also arranged an interesting slate of legal history presentations for the months ahead.

On November 3 at noon at the Belo Mansion (in the Winstead Ballroom), the group, together with the Criminal Law and Appellate Sections, the CLE Committee and the J.L. Turner Legal Association, will present a significant lecture by Pulit-zer-Prize winner David Oshinsky, profes-sor of history at the University of Texas at Austin. Based on his just-published his-tory of the death penalty cases from Fur-

man v. Georgia in 1972 to the present, Prof. Oshinsky’s topic will be “The Future of Capital Punishment.” The lecture will be, as always, free and MCLE-accredited, and all Dallas lawyers are invited.

Then in 2011, the group will initi-ate an occasional series of legal-historical presentations on the broad topic of the legal history of the Civil War and follow-ing. Watch for notices of future programs sponsored by the Legal History Discussion Group or e-mail Josiah Daniel, the Chair at [email protected], to be added to the notification list. HN

Josiah Daniel is a partner at Vinson & Elkins, Chair of the Legal History Discussion Group, and Vice Chair of the State Bar’s His-tory Committee. He can be reached at [email protected].

by Josiah Daniels

DBA Legal History Discussion Group

Documents

Dallas Bar Association HEADNOTES · 2015-05-07 · HEADNOTES Dallas Bar Association Inside November 2010 Volume 34 Number 11 Focus Intellectual Property Law 5 IP Due Diligence in