Maintaining Your Safe Harbor Under the DMCA

The Digital Millennium Copyright Act (“DMCA”) provides safe harbors from copyright infringement liability for online service providers. In order to qualify for safe harbor protection, certain kinds of service providers—for example, those that allow users to post or store material on their systems, and search engines, directories, and other information location tools— must designate an agent to receive notifications of claimed copyright infringement. To designate an agent, a service provider must do two things: (1) make certain contact information for the agent available to the public on its website; and (2) provide the same information to the Copyright Office, which maintains a centralized online directory of designated agent contact information for public use. The service provider must also ensure that this information is up to date.

For an example as to how to (1) make contact information for the agent that you designate to receive notifications of claimed copyright infringement available to the public on your website, see the following:

Notice for making claims of infringement.-Written notification must be submitted to the following Designated Agent:

Name of Agent Designated to Receive Notification of Claimed Infringement:

Eric S. Wachspress

Full Address of Designated Agent to Which Notification Should be Sent:

Eric Wachspress


417 S. Jefferson St., #304

Chicago, Illinois 60607 USA

Telephone: 773.934.5855

Facsimile: 312.583.1083

In addition, if you allow third-parties to post their content on your website and server which content may contain material that they do not have frights in, i.e., the right to publish said material on your site, you should have a “REPEAT INFRINGER POLICY” and post that Policy on your website as well. See the following for an example of such a Policy:


We will terminate access to our website to repeat copyright infringers.

As set forth here, you may not post any content (a song, a story, an article, a drawing, a photograph, etc.) owned by someone else in a manner that violates another’s copyright. When you do so, the copyright owner(s) of that content may notify us that you don’t have their permission to post their content on the site, and have violated their copyright. If we get repeated notices that you have posted others’ copyrighted content on our site without permission, we may terminate your access to our site.

We have a system for keeping track of repeat violators of copyright, and determining when to terminate your access to our website:

Generally, when content is removed that you posted because the copyright owner of that content sent us a complete legal request to do so, we will have a record of that request.

If we receive repeated requests to take down content that you have posted on our site due to an alleged copyright violation, your access to our site will be terminated. However, if you submit a counter-notification in response to the copyright owner’s notice within two weeks after receiving a Notice of Infringement or that counter-notice is not answered by the copyright owner or the copyright owner retracts his or her notice [or if the dispute leads to legal proceedings that result in a court finding that you have not infringed the owner’s copyright], we will not take any action against you for violation of copyright or rescind any action that we have taken unless and until the content is found to be infringing.

In December 2016, the Office introduced an online registration system and electronically generated directory to replace the Office’s old paper-based system and directory. Accordingly, the Office no longer accepts paper designations. To designate an agent, a service provider must register with and use the Office’s online system. All relevant sites should be registered with the Copyright Office, i.e., all sites that allow users to post materials thereon!

Transition period: Any service provider that has designated an agent with the Office prior to December 1, 2016, in order to maintain an active designation with the Office, must submit a new designation electronically using the online registration system by December 31, 2017. Any designation not made through the online registration system will expire and become invalid after December 31, 2017. Until then, the Copyright Office will maintain two directories of designated agents: the directory consisting of paper designations made pursuant to the Office’s prior interim regulations which were in effect between November 3, 1998 and November 30, 2016 (the “old directory”), and the directory consisting of designations made electronically through the online registration system (the “new directory”). During the transition period, a compliant designation in either the old directory or the new directory will satisfy the service provider’s obligation under section 512(c)(2) to designate an agent with the Copyright Office. During the transition period, to search for a service provider’s most up-to-date designation, begin by using the new directory. The old directory should only be consulted if a service provider has not yet designated an agent in the new directory.


You Must Designate An Agent with the Copyright Office Electronically As Provided Above & On Your Website As Well.

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Tomorrowland is the name of a money-losing 2015 science-fiction adventure film starring George Clooney, the final episode of the fourth season of Mad Men in which Don Draper takes his children and his Secretary, Megan, on a vacation to Southern California and, most famously, is one of the themed lands at Disney’s theme parks. The original Disneyland Tomorrowland built in 1955 gave visitors a view of the National Interstate System that was to be built in the future and in 1957 the Monsanto House of the Future was opened, a plastic house with four wings cantilevered from a central plinth featuring conveniences such as picture phones and television remote controls, and it introduced many people to their first microwave oven.

And today’s Tomorrowland…I opened the Wall Street Journal a couple of weeks ago to see two articles facing each other on the front page of the Technology Section. On the left side was an article describing how China was replacing workers with robots with small motor skills and on the right side was an article describing Ford Motor Company’s push into building autonomous cars.

As an example of robots with small motor skills, Butchery, was long considered the sort of skill that machines would struggle to develop, because of the need for careful hand-eye co-ordination and the manipulation of non-uniform slabs of meat. But robots cut the fat off meat much more efficiently than humans, thanks to the use of cheaper and more responsive sensors. “It’s becoming economically feasible to use machines to do this because you save another 3 or 4 per cent of the meat — and that’s worth a lot on a production line, where you can move quickly.” See Or see this article from last May 25th in the BBC, “Apple and Samsung supplier Foxconn has reportedly replaced 60,000 factory workers with robots.” See

As for lawyers, a 2005 study compared a human review team against an automated document assessment system to search for relevant documents to respond to discovery in litigation. While the humans identified only 51% of relevant documents, the automated system identified more than 95%. Back then, a senior attorney had to be involved in training the system. The senior attorney would have to review and code hundreds or thousands of random documents until the system stabilized. Today, however, through a process known as “continuous active learning,” the review team can simply begin reviewing documents and the system will continuously learn from coding calls and improve its results. See A big part of the training of first-year lawyers in large law firms was once pouring through boxes of corporate documents, learning their client’s or the Defendant’s business, as well as evidentiary concepts such as relevancy as they learned what documents to pull and what not to pull. Now those first-year associates largely watch as automation has taken over that part of their job.

And call centers;  the call-centre explosion has been a colossal boon for Filipinos who speak good English. With so many employers to choose from, they can demand gyms, cafés and computer-games rooms, as well as higher pay. Experienced workers can often find managerial jobs. And though the night shift is hard, it is far better than being a maid in Saudi Arabia. Much of the call-handling and data-processing work sent overseas is basic and repetitive, says Pat Geary of Blue Prism, a British technology firm. When somebody challenges a gas-meter reading or asks to move an old phone number to a new SIM card, many databases must be updated, often by tediously cutting and pasting from one to another. Such routine tasks can often be done better by a machine. Blue Prism makes software “robots” that carry out such repetitive tasks just as a person would do them, without requiring a change to underlying IT systems—but much faster and more cheaply. The firm has contracts with more than 100 outfits. Increasingly, Western companies prod customers to get in touch via e-mail or online chat. Software robots can often handle these inquiries. The cleverest systems, such as the one Celaton, another British firm, has built for Virgin Trains, refer the most complex questions to human operators and learn from the responses. The longer they run, the better they get. Software is also making call-centre workers more efficient. It can quickly retrieve and display customer data on their screens, reducing the need to transfer callers to other departments. Software robots are only going to become faster, cleverer and cheaper. Sarah Burnett of Everest, a research firm, predicts that the most basic jobs will vanish as a result. Call-centre workers will still be needed, not for repetitive tasks, but to coax customers into buying other products and services. That is a harder job, demanding better language skills. So automation might mean fewer jobs, or at least less growth, in India and the Philippines, but more jobs in America and Europe. See

And truck drivers; there are 3.5 million truck drivers in America. Autonomous trucks will obviously replace drivers, an estimated 3.5 million of them, but they will make the business that cater to drivers obsolete, too. Those 3.5 million truck drivers driving all over the country stop regularly to eat, drink, rest, and sleep. Entire businesses have been built around serving their wants and needs. Think restaurants and motels as just two examples. So now we’re talking about millions more whose employment depends on the employment of truck drivers. But we still can’t even stop there. Those working in these restaurants and motels along truck-driving routes are also consumers within their own local economies. Think about what a server spends her paycheck and tips on in her own community, and what a motel maid spends from her earnings into the same community. That spending creates other paychecks in turn. So now we’re not only talking about millions more who depend on those who depend on truck drivers, but we’re also talking about entire small town communities full of people who depend on all of the above in more rural areas. With any amount of reduced consumer spending, these local economies will shrink. See Otto, a San Francisco start-up is developing autonomous big rigs and is looking for 1,000 truckers to volunteer to have self-driving kits installed on their cabs, at no cost, to help fine-tune the technology. See and there is even a proposal for an autonomous vehicle corridor from Mexico to Canada. See Last April 7th six convoys of self-driving trucks traveled from as far away as Sweden and Southern Germany to the Dutch port of Rotterdam utilizing “Truck platooning.” “Truck platooning” involves two or three trucks that autonomously drive in convoy and are connected via wireless, with the leading truck determining route and speed. The advantage of truck platooning was that you had trucks driving at a consistent speed, which would help traffic flow on heavily congested roads in Europe. See

And, as for the self-driving car, “In the future, you’ll simply reach for your smartphone or another connected device and call for a self-driving car whenever you need it. Rather than spending 90 percent or more of their time parked, cars will see much higher utilization rates. That change alone would unleash a real-estate revolution in cities. Vast stretches of space now earmarked for parking would become available for other uses. To be sure, self-driving cars would still need to be stored somewhere when not in use, but there would be no need for random egress; the cars could be packed end-to-end. If you call for a car, and there isn’t already one on the road close to your location, you’ll simply get the next vehicle in line…. If the sharing model does prevail, higher utilization for each car would, of course, mean fewer vehicles relative to the population. Environmentalists and urban planners would likely be overjoyed; automobile manufacturers not so much. Beyond the prospect of fewer cars per capita, there could also be a significant threat to luxury automotive brands. If you don’t own the car and will use it for only a single trip, you have little reason to care what make or model it is. Cars could cease to be status items, and the automobile market might well become commoditized.” See On August 18th Bloomberg reported, “Starting later this month, Uber will allow customers in downtown Pittsburgh to summon self-driving cars from their phones, crossing an important milestone that no automotive or technology company has yet achieved.” See

What does this have to do with intellectual property? Intellectual property may include inventions, innovations, improvements, developments, methods, designs, trademarks, service marks, trade dress, logos, slogans, trade names, Internet domain names, patents, copyrightable works, mask works, trade secrets and confidential business information (including ideas, research and development, know-how, formulas, compositions, products, manufacturing and production processes and techniques, technical data, designs, drawings, specifications, customer, provider, vendor and supplier lists, pricing, cost and benefit information, and business and marketing plans and proposals), as well as computer software (including source code, executable code, data, databases, and related documentation). Included in these listed ingredients are those which make robots, discovery software and autonomous vehicles run. And as we as a country have shown, from IBM’s glory days to the present day of Facebook, Snapchat, Google, Instagram and What’sApp, we are very good at creating those ingredients and mixing those ingredients into a brew.

But what does that brew mean to society? Neither of our candidates for President are addressing how we are going to live in Tomorrowland, a land that, as the above examples note, is visible just above the horizon. They talk about climate change, medical care, war and peace but what happens to our automobile industry when the personal car disappears, to our rural economy when truck drivers disappear and their vehicles just roll on past the small towns of America, when even skilled factory jobs are replaced by robots and skilled professional jobs, like lawyers, are reduced by the introduction of labor-saving software? How much new infrastructure will be required when cars and trucks utilizing such features as adaptive cruise control and “truck platooning” as described above allow vehicles to use less roadway? And if less infrastructure is required, what will happen to those construction jobs?

Sure, we may still need humans as caregivers for the aged, to shovel asphalt onto roads and to pick fruits and vegetables, for a while at least, but how many people desire those jobs? And McDonald’s. See

So, in my mind, this is the big unanswered question for both our politicians and our policy makers, “How do we manage a future where, on the planet, in Tomorrowland, there will be more people than there will be work for those people to do?” and “What will those people’s lives be like?”

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Check out

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(Note that these aren’t all-inclusive!)

1. Do a search to confirm that no one has beaten you to your technology.

Do a thorough search of the Internet to see if anyone else out there is providing the services or goods that you intend to provide using the method or channel of trade that you intend to use. In some fields there can be multiple successful players and through your research you may determine if yours is a field where that can happen. Your search may also disclose the amounts of capital that have been invested in your potential competitors. While that is no guarantee of success for them, if significant monies were invested in your competition, that would suggest the amount of resources that you may need to successfully compete. Often, there can be more than one business in a particular field but generally one will turn out to be the market leader. For example, there can be an Uber and a Lyft but if the market leader builds widespread brand recognition, no matter how good #2 is, it may never be more than second best. See, if patentable subject matter is involved, you should check with a patent lawyer to determine if you can bring your product to market without fearing the possibility of an infringement claim. See for a basic summary of patent law. See also for a place where you can begin your patent search. Again, I recommend that you retain a professional, i.e., a patent lawyer, if you are developing patentable subject matter to make sure that you are clear of potential infringements.

2. Do a trademark search before selecting a domain name as domain rights are often determined based on ownership of a registered trademark.

I assume that you will want to use the same name for your product or services that you are choosing as your domain name and, therefore, you will need to ascertain if that name is available for your use. Also, note that in a domain name dispute, if the complainant owns a trademark registration, then it generally satisfies the threshold requirement of having trademark rights. If a complainant registers a domain name before it acquires trademark rights in that name it may be difficult to prove that that same domain name was registered in bad faith by the respondent under the Uniform Domain Name Dispute Resolution Policy. See Under that Policy, a complainant challenging a domain name must describe the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the complainant has rights. Again, I recommend that you seek out a professional, i.e., a trademark attorney, to conduct that search as that individual should be able to advise you as to what potential marks are stronger than others and, therefore, will be easier to enforce as well as are available for your use.

3. Register your trademark (ITU) and domain name simultaneously.

While you can get a domain name almost instantaneously, obtaining a trademark registration in the U.S. usually takes over a year and you will need to be offering your services over the Internet or shipping product in interstate commerce to do so. So, as soon as you have selected a name, get your trademark application on file with the United States Patent and Trademark Office. Note that you can file based on your intent-to-use that mark on products or services in the future.

4. Identify protectable IP (the kernel) of what you got, what gives your product protectable value and protect it using trade secret, copyright or patent law.

Sometimes, what is most valuable about your product may not be what you’re selling to your purchaser. For example, it may be the underlying computer code used to deliver your goods or services or to manage the applicable transaction.

5. Move fast or die!

Make sure that you have a market for your product and get it out there, in people’s faces quickly. The world is a fast-moving competitive place. If you determine that there is a market out there for your product or service, and that there is demand for it….this is important!… demand, no customers, be sure that someone else will figure this out too and if they get their product or service to market six months before you do, all your investment and efforts may go down the toilet as you may find that that other business has already acquired your customer base. Therefore, you better move quickly, make sure that your intellectual property is protectable and protected, and race your product to the finish line.

6. Don’t be sloppy.
As you race to the finish line, unless you are doing everything yourself, make sure the people that are working for you are aware that what they are working on is a trade secret, make sure that they sign non-disclosure and non-compete agreements, make them feel wanted, make them feel part of a team, and compensate them well. An unhappy employee, consultant or contractor will take your idea to someone else who will make them feel wanted, part of a team or better compensated and that someone else will then be where you are presently without having made the investment that you have and, therefore, be in a position to reach the finish line before you.

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Z-Burger Case Shows Value of Trademark Protection

It also demonstrates the value of having a written, executed partnership agreement.

Also, note here that Mr. Tabibian federally registered the Z-BURGER trademarks in his own name. While this may have won him the first round in his battle to own those trademarks, placing the goodwill of a hamburger chain in one’s own personal name may not be such a great idea. See

For the Z-Burger case, see the October 28th piece from the New York Times at

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Theft of Intellectual Property

Yesterday President Barack Obama and President Xi Jinping of China announced that they had reached a common understanding to combat “cyber-enabled theft of intellectual property” As stated in the New York Times report of that “understanding,” the two leaders had agreed that “neither country’s government will conduct or knowingly support cyber-enabled theft of intellectual property, including trade secrets or other confidential business information, with the intent of providing competitive advantages to companies or commercial sectors.”

Meanwhile on that same day Apple introduced the iPhone 6S and iPhone 6S Plus and, despite Steve Jobs promise to “spend every penny of Apple’s $40 billion in the destroy Android, because it’s a stolen product,” (See on the day before in the 24 or so fake Apple stores in the Shenzhen shopping corridor unauthorized “fakes” of the new Apple phones were already available for sale, some of which are running on the Android OS.

These phones appear authentic although they are not openly displayed and some run slow and their images are fuzzy. But they’re a steal at a tenth of a price of a real iPhone. In these fake Apple stores, the logos, uniforms, display shelves and shopping bags resemble those found at a genuine Apple store and some of these stores do, in fact, offer the real thing, smuggled across the border from the U.S. and Hong Kong but those real phones are being offered at as much as double the official price as legitimate purchases must have been pre-ordered.

Is this a bad thing for Apple? Yes, the sale of inferior knock-offs tarnishes their brand and may divert purchasers from paying more for the real thing. However, maybe not as some analysts have said that these rotten Apple stores may promote brand awareness in the world’s most populous country which has a meager 22 legitimate Apple stores.

We will also have to see if President Xi Jinping keeps his promise to combat China’s theft of the West’s intellectual property. Though, making that theft easier will be Boeing’s opening of its first aircraft production facility abroad, in China, a joint venture between Boeing and the state-owned Commercial Aviation Company of China which is building a Chinese competitor to the 737. See quoting Lenin as saying, ” “the capitalists will sell us the rope we use to hang them.”


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Why you should Google your proposed new name

Or at least Google your proposed new name…..See

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“Scenes a faire” is neither the title of a French ” New Wave” film nor is it a description of French President Francois Hollande’s personal life, in which he had four children with a fellow Socialist politician, then dated a reporter for the magazine, Paris Match, who moved into the Presidential Palace with him, during which time had an affair with a French Actress. No, it is a doctrine of copyright law which holds that there are “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.” Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y.1978). Similarity of expression, whether literal or nonliteral, which necessarily results from the fact that the common idea is only capable of expression in more or less stereotyped form will preclude a finding of actionable similarity. Such stock literary devices are not protectable by copyright.

So, while a plaintiff may prove copying by showing that a defendant had access to plaintiff’s work and that the two works are substantially similar, under the above doctrine, that plaintiff may not be eligible for relief for copyright infringement if the alleged similar aspects of both works are Scenes a Faire.

The courts have been very specific in various cases in identifying what qualifies as these. In Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y.1978), the court listed a number of types of incidents that are not copyrightable in a slave story; attempted escapes, flights through the woods pursued by baying dogs, the sorrowful or happy singing of slaves …. scenes portraying sex between male slave owners and female slaves and the resentment of female slave owners … slave owners complaining about the high price of slaves ….

In a case involving the classic video game, “Asteroids,” the court wrote, “There are certain forms of expression that one must necessarily use in designing a video game in which a player fights his way through space rocks and enemy spaceships. The player must be able to rotate and move his craft. All the spaceships must be able to fire weapons which can destroy targets. The game must be easy at first and gradually get harder, so that bad players are not frustrated and good ones are challenged. Therefore, the rocks must move faster as the game progresses. In order for the game to look at all realistic, there must be more than one size of rock. Rocks cannot split into very many pieces, or else the screen would quickly become filled with rocks and the player would lose too quickly. All video games have characteristic sounds and symbols designed to increase the sensation of action. The player must be awarded points for destroying objects, based on the degree of difficulty involved. All these requirements of a video game in which the player combats space rocks and spaceships combine to dictate certain forms of expression that must appear in any version of such a game. In fact, these requirements account for most of the similarities between “Meteors” and “Asteroids.” Similarities so accounted for do not constitute copyright infringement, because they are part of plaintiff’s idea and are not protected by plaintiff’s copyright. See Atari, Inc. v. Amusement World, Inc., et al., 547 F.Supp. 222 (D. Maryland 1981).

In a case involving a film script, Muller v. Twentieth Century Fox Film Corporation, 794 F.Supp.2d 429 (S.D.N.Y. 2011), that court wrote that “certain literary or cinematographic elements are not protected even if they take the form of concrete expression, such as ‘stock’ themes or ‘scenes a faire.” Id. “Stock themes, or themes that are “commonly linked to a particular genre,” are only protected under copyright law “to the extent they are given unique…expression in an original creation.” Examples in a film or film script depicting a poor crime-ridden neighborhood would include images of drunks, prostitutes, rodents and abandoned cars, and such features, the court held were unprotectable “scenes a faire.” Muller, at 441.

As to Barbie, in a Second Circuit case, Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133 (2004) involving the copyright infringement of the “Barbie doll,” the court wrote in dictum that “Mattel’s copyright in a doll visage with an upturned nose, bow lips, and widely spaced eyes will not prevent a competitor from making dolls with upturned noses, bow lips, and widely spaced eyes, even if the competitor has taken the idea from Mattel’s example, so long as the competitor has not copied Mattel’s particularized expression. An upturned nose, bow lips, and wide eyes are the “idea” of a certain type of doll face. That idea belongs not to Mattel but to the public domain.”

And in a 2013 case, Rucker v. Harlequin Enterprises, decided by the United States District Court in Houston, that court identified numerous instances of scenes a faire, for example, “[C]onspiracies, characters with superhuman qualities, and advanced technology . . . are unoriginal and uncopyrightable stock elements of the action-adventure and science fiction film genres,” “shared characteristics of both parties’ Santa toys of a “traditional red suit and floppy cap, trimmed in white, black boots and white beard” and “nose like a cherry” are common to all Santas and not probative of copying,” and “a beautiful woman and a handsome, wealthy man fall in love, become estranged, find themselves alone together in close quarters, have a passionate reunion, rediscover their love and commitment, and begin a new life together…are familiar plot elements in the romance genre and would be scenes à faire.

In addition, “cliched language, phrases, and expressions conveying an idea that is typically expressed in a limited number of stereotypical fashions are not protectable in and of themselves.” See Green v. Lindsey, 885 F. Supp. 469 (S.D. N.Y. 1992.)

The Scenes a Faire doctrine can therefore be a defense to a claim of copyright infringement if the alleged copied elements are not sufficiently creative as to be protectable. And another example where federal judges act as critics.


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See the following infograph:

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E-mail Laws Around the World


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Yesterday, the Wall Street Journal had an entire section devoted to Information Security. With that in mind, I thought I’d reprint my own post from last October containing some helpful hints in that regard:

How do you, with a cell phone ensure that the images one takes on one’s phone or, any information that you input onto that phone or your computer; everything from your texts and e-mails, your vacation plans, your financial information, your sources, if you’re a journalist, or your briefs, if you’re a lawyer, stay private.

Which brings us to you and me. On August 6th of this year, Molly Wood, the technology columnist for the New York Times, reported that hundreds of millions of email addresses and other types of personal identification were found in the hands of Russian hackers. She wrote, assume that your personal information is stolen, and recommended that you change your password for sites that contain sensitive information like financial or credit card data.

Here lies the conundrum. If you log in to a typical site that holds financial or credit card data, that site will usually pose a series of security questions such as “Where did you go on your honeymoon?,” “What is the name of your dog?,” “What was the first car that you owned?,” “In what hospital were you born?,” “What was the name of your elementary school?” or “What city would you like to visit?” Now go to your Facebook profile or page. There you will likely find the name of your hometown, pictures of your dog and maybe your vacation photos. Now, let’s recall how Jennifer Lawrence’s photos were obtained; through a targeted attack on user names, passwords and security questions. Unless you grew up in New York City, a hacker could easily run through the names of the elementary schools in your hometown, if he could find your birthplace, he could easily run through the names of the hospitals there; I haven’t lived in Washington D.C. in many years and I can still identify the names of eight hospitals located there at the time that I lived there. If someone can get on your Facebook page, they could probably find out the name of your dog and from your photos what city you would like to visit. So a brute force attack could probably get through the bar posed by your security questions. As for your password, it is suggested that it not be based on dictionary words and that even a word obscured with symbols and numbers can be cracked relatively quickly. So use a password like 4J@2stiI. That’s a great idea….now try to remember it and use a different similarly designed password for Google, Twitter, Instagram, Facebook, your bank, your investment account, Uber, etc. Unless you’re an idiot savant, I doubt that you can. So Molly Wood suggests using a password manager; i.e., a site that creates a unique password for each website you visit and stores them in a database protected by a master password that you create. Here, I must disagree with Ms. Wood. Would you hand over the keys to your home to someone who knocks on your door and promises that he’ll take care of your house? I doubt it. People ensure the security of their home to either companies with a long-standing reputation for safety like ADT (They’ve been around since 1874.) or leave their keys with a trusted neighbor or relative whom they know very well. The value of your investment account or bank account or personal reputation, all of which may be accessed by someone with your password, may be much greater than that of your house. Would you leave your password with a company that may not be around in three years? Even the most innocent photo that you put in your iCloud account or Google Drive may not be so innocent if you’re pictured associating with someone about whom someone might draw the wrong inferences, for example, an attractive colleague at work or someone who is later indicted, e.g., an Illinois politician.

So, what should you do?

1.Pick a strong password with a combination of numbers and letters, capitals and small letters and punctuation marks that you can remember. Use at least eight or more characters. Don’t use the same user name/password combination for multiple websites.

2. Play with the security questions. For example, you went to Pyongyang on your honeymoon, your dog’s name is FreddyMercury, the first car that you owned was a Tucker, your were born in the Damascus Hospital for the Criminally Insane, your elementary school was the Chernobyl grammar school and the city you’d most like to visit is Mogadishu. Answers like these will be more difficult to guess than if your dog’s name was Fluffy, your first car was a Ford, you were born in St. Joseph’s Hospital and the city you’d most like to visit is Paris. Don’t everyone use these examples or the won’t work.

3. Use two-factor authentication. This works with Google. If someone tries to access your Google account on another computer, including you, Google will send a one-time code via text message to your cell phone. If you happen to be using checking your Gmail in a public library, this can be embarrassing. You then enter that code to log in. Two-factor authentication should become standard as it essentially generates a random multi-digit number that you must key in to gain entrance to a web site that resides in the cloud and if your cell phone has a “kill switch,” in the event it is stolen, and you activate that “kill switch” it becomes useless as a key to your personal records located in the cloud.

Obviously, one way to avoid these issues is not to put your personal information on the “cloud.” The problem with this is that your Gmail, Google browsing history, Facebook posts, on-line banking records, credit card statements, mobile phone calling records, tweets, Amazon purchases and buying preferences and Instagram photos are all on the cloud and, chances are, you don’t want to give up using Google, sending out e-mails, banking on-line, social networking or sending photos to your friends. Anil Somayaji, an associate professor at Carleton University in Ottawa is quoted as saying, “The thing with the cloud is when it gets compromised, it can get really compromised.” Cloud providers could go bankrupt, change their policies in a way that prevents you from accessing your data or suffer a security breach themselves. Somayaji goes on to say, while he thinks services like Microsoft, Google and Yahoo are “really good” and have good policies, “they’re just one software glitch away from blowing away all the email you’ve ever had.

So this is what I recommend. Buy a back-up hard drive or a DVD or a USB key and maintain a spare copy of your photos and important documents and e-mails. I save these documents and e-mails in .PDF format so that they are easily accessible as software versions change or in the event that I or someone else who needs access to those files in the future is using a different OS from the one that I am using now. Don’t carry the back-up with you; if at home, keep it in a locked fire-safe box and, if you are leaving town for an extended period, and you have a safe-deposit box, put it there. If the back-up is in the Office, at least keep it in a secure locked drawer, and if you can do it safely, bring it home on weekends and on vacation and follow the procedure noted above. Encrypt access to the back-up drive if possible. If you’re going on vacation or working at a Starbuck’s leave the backup disk in one of the safe locations noted above. Wait until you return home or to the office to back up your data. Also, perform a back-up every day that you use your computer. If you have a mobile phone, the principle involved is the opposite. Here, you are carrying the drive with all your personal information and it is with you all the time. Here, to protect yourself, make sure that phone has a “kill switch” and a password so no one else has access to your phone other than you. Then back up the data on your phone to the cloud using the password tips noted above.

And remember, if you travel, the border is a privacy-free zone and the government, namely the U.S. Customs and Border Protection Agency, has the right to take a look at your laptop computer, open up the folders on that computer and peer inside as it can do with your luggage. And if you travel to China, as I noted back in April of 2012, the Chinese have installed key-logging software on visitors’ laptops which renders password protection useless. In addition, Bluetooth and Wi-Fi connections can be used to remotely access computing devices, which include smartphones, tablets and laptops. That New York Times has quoted a former counterintelligence official as stating, “If a company has significant intellectual property that the Chinese and Russians are interested in, and you go over there with mobile devices, your devices will get penetrated.” Chinese hackers have been known to access computing devices’ microphones and cameras remotely. In fact, an official of McAfee, the computer security company, was quoted as stating that if any employee’s device was inspected at the Chinese border, it can never be plugged into that company’s network again.

So the bottom line is you can’t avoid the cloud, but if the information is really personal and of an intimate nature or otherwise potentially embarrassing or, for whatever reason, you are never going to want to disclose it to the world, don’t put it on Facebook or Tweet about it and lock it up outside the cloud where neither thieves nor hackers can have access to it. The celebrities who had their intimate photos hacked should have treated them as if they were the galleys to their autobiography or their diary or as Apple treats its product development plans; in the most secure manner, out of the rest of the world’s reach and not in a data center combined with the confidential information of thousands of other people and likely accessible to a 20-year old something male with a great deal of technical computer knowledge. Just ask the NSA…Edward Snowden was 29 when he walked off with their secrets.

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Failures to Communicate

There is a famous line in the 1967 film Cool Hand Luke, “What we’ve got here is failure to communicate.” Such failures shouldn’t occur in attorney/client relationships.

This issue came to my attention during a trip to another jurisdiction over the recent holidays. That jurisdiction will remain unnamed except that I will state that it does not adjoin Illinois. In conversations with relatives and a client who relocated there I heard stories of missed statutes of limitations and unreturned telephone calls. While, in the latter case, the only harm done was that a lawyer lost a prospective client, in the former case, the facts may have rose to the level of malpractice.

So here are some practice pointers regarding attorney/client communication.

When I send out documents, such as trademark registrations or other documents that have to be renewed a number of years hence, I usually advise my clients to calendar those events. Of course, I maintain a calendar and timely remind my clients when those documents have to be renewed or maintained, but those events may not occur for another decade; e.g. in the case of trademark renewals. A lot can happen in a decade; clients can relocate, attorneys may relocate, their practices may be merged or sold and so it is important that both parties keep records of those dates. Nowadays, keeping a calendar is easy…while there are numerous specialized products for attorneys to use for this; on the client side, Microsoft Outlook and Google Calendar are easily available. And if you are going to set up a reminder for a deadline, give yourself at least 30 days warning.

On the attorney side, a lawyer should get back to you within 72 hours, with reasonable exceptions, e.g. if he or she is in hospital, there is an illness or death in the family or the lawyer is climbing Mount Everest or canoeing the Boundary Waters. That may seem like a high standard but with the invention of the smartphone and tablet, it’s not an unachievable one. Now, the expectation here is not that the attorney, who is on a family vacation to Disney World, for example, will render a ten page legal opinion while sitting by the pool but the attorney can shoot out an e-mail letting the client know that he is with the family at Disney World and will get back to the client in 2-3 days when he or she returns to the office or will have an associate resolve the matter. And sometimes emergencies come up that must be handled quickly when an attorney is away. When a client receives a letter, for example, accusing it of trademark infringement, the attorney should (a) reassure the client ASAP and (b) write the other side advising it that you are out of the office and will attend to the matter as soon as you return. Similarly, if a media outlet contacts you with questions about a client, not responding promptly is likely to invite more questions about that client. And then, there are some instances when, for example, you are trying to settle a trademark infringement matter before a complaint is imminently filed against your client, when despite the best laid vacation plans, you find yourself pulling off the road frequently to e-mail responses back and forth. Sometimes substantive questions arise that can be answered relatively easily, in twenty minutes or so, so if I’m sitting in an airport lounge or in a hotel room, I find that, if at all possible, it is better practice to answer the question then rather than write that I’m on vacation and will answer the question when I return.

Clients need to know that there are some limitations to this. If a client wants more than a few paragraphs drawn up or an infringement opinion drafted, the attorney is not going to be able to do it from the side of a road or while waiting for his or her flight to take off. However, with the cloud and a good Internet connection he or she may still be able to give the client a sample agreement to review for discussion even when on the road.

So with a little conscientiousness on the part of the lawyer and some calendaring by the lawyer (and client) there should never be a failure to communicate. And if you don’t hear from your lawyer in a couple of weeks ring him or her up. Cell phones can still make calls and a telephone message will never be routed to your spam box or buried amid the 100 emails one gets a day.

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Protecting Your I.P. While Doing Business in China

Because it may be the most cost-effective place for your business to have products manufactured with a satisfactory level of craftsmanship, you may want to do business with a Chinese supplier.

If so, here are some suggestions on how you can do so and protect your intellectual property. Note that this is not intended to be an inclusive list.

1. Be careful about digital espionage! I have previously noted instances where the Chinese have installed key-logging software on visitors’ laptops which renders password protection useless and used Bluetooth and Wi-Fi connections to remotely access smartphones, tablets and laptops. I quoted a former counterintelligence official as stating, “If a company has significant intellectual property that the Chinese and Russians are interested in, and you go over there with mobile devices, your devices will get penetrated.” I quoted an official of McAfee, the computer security company, as stating that if any employee’s device was inspected at the Chinese border, it can never be plugged into that company’s network again. If you visit China, do not bring a laptop with your business’ trade secret and confidential data on it into that country. Consider if your communications with individuals in that country identify technologies that derive their economic value from not being generally known to other persons who can obtain economic value from their disclosure or use that the Chinese government may seek to acquire them and, therefore, limit those communications regarding those technologies. Also consider purchasing a phone for use in China while you’re there that you can toss when you return to the states. See

2. Be sure to protect your intellectual property rights in the U.S. U.S. Customs and Border Protection will detain and seize imported goods which violate intellectual property rights in the United States. For this to happen, your product must be the subject of a trademark that has been registered with the U.S. Patent and Trademark Office or of a copyright that has been registered with the U.S. Copyright Office. With regard to your trademark, this poses a dilemma as you cannot obtain a trademark registration for goods in the U.S. until goods bearing that trademark have actually been shipped in interstate commerce and if you are waiting for your Chinese supplier to manufacture those goods, then you will not be able to record your trademark with U.S. Customs until after you have engaged your Chinese supplier and it has commenced shipping goods to you. However, even at that point, you should still record that registered trademark with Customs as this will prevent the importation of unauthorized product bearing your trademark into the U.S. If your goods are computer software, games, literary works, musical compositions, dolls, toys, puzzles, craft kits, posters, photographs, or figurines, you can obtain a copyright registration in the U.S. covering those goods prior to their manufacture in China and as soon as you have firmed up your relationship with a Chinese vendor you should then record that copyright registration identifying the details of that vendor with U.S. Customs and Border Protection. This will bar the importation of unauthorized products infringing your copyrighted design. The Customs recordation fee is $190.00 per trademark registration class and $190.00 per copyright registration. You can also record your unregistered trade name with U.S. Customs as long as that name has been used for at least six months to identify a manufacturer or trader. Note that words or designs used as trademarks, whether or not registered in the U.S. Patent and Trademark Office, shall not be accepted for recordation as a trade name.

3. You should consider obtaining from your prospective vendor its business registration certificate and proof of its company’s paid up capital. This will give you an idea of how substantial its operations are and whether it can meet your requirements. Note that these documents will likely be in Chinese.

4. You should register your trademarks in China. The reason for this is not that a Chinese entity could register your mark in China without actually selling product there and then allege that they own the mark there and block your shipments to the U.S.  See for an example of this. Here, you can register the English version of your mark and you can register the Chinese transliteration of your mark or your can choose a Chinese brand, i.e., a Chinese term that evokes the same commercial impression as your English brand. Here, see Sometimes, transliterating your English mark is the way to go; the Chinese characters for Tide detergent literally mean “gets rid of dirt.” On the other hand, the most common definitions of the Chinese character pronounced as “bing,” as in the name of Microsoft’s search engine, is “virus” or “disease.” Call it BI-YING and the translation means “responds without fail.”

5. You should hire a broker to handle importation of your product into the U.S. He will facilitate getting your product through Customs. You should also retain a freight forwarder who will make sure that your product gets to the U.S. port of entry. For example, a freight forwarder can combine your shipment with another container shipment coming from China to save you money. You will also need to post a surety bond with Customs to make sure that any applicable customs charges are paid when the product enters a U.S. port of entry.

6. In addition, you need to make sure that your product complies with any U.S. marking and labeling requirements as well as any relevant consumer product regulations.

7. Terms relating to, but not limited to, the respective parties’ intellectual property rights, the delivery of product, the risk of loss, freight provisions, quality control, safety, payment for defective products, pricing, specifications, confidentiality, the arbitration of disputes, product liability insurance, and working conditions Pshould be attached to your purchase order or included in a separate contract referencing your purchase orders.

8. Finally, it helps to visit China to learn about your supplier and build a relationship, particularly, before you make the final payments on your order before the goods ship out. Alternatively, you can use a purchasing agent to look after your business in China.

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Frequently, a client will come to me and say that they have come up with a name that they think is great for their business or for a product or service that they intend to offer and have gone ahead and registered the domain name. While it doesn’t cost much to register a .COM domain, I would suggest that the client has done things in reverse.

If the domain name is intended to be the name of your business, prior to selecting that domain name, you should check the records of your state Secretary of State to determine if the business name is available. In Illinois the business name must be distinguishable upon the records of our Secretary of State from the corporate name or assumed corporate name of an existing Illinois corporation or a foreign corporation authorized to transact business in Illinois or the name of a limited liability company in those records, or a name that is otherwise currently registered or reserved.

In addition, if the corporate name is also intended to be used as the name of the products or services that you sell, that is, it is intended to be affixed to your product or its labeling or used in connection with marketing the services that you provide, i.e., used as a trademark, you should conduct a trademark search as well. For example, General Motors is the name of the corporation that makes Chevrolets, Cadillacs and Buicks. However, the General Motors name is not generally used as a trademark on those vehicles. On the other hand, if you fuel up one of those vehicles at a Shell gas station, Shell Oil Company is the trade name of the U.S. based subsidiary of Royal Dutch Shell, a multi-national oil and gas company with headquarters in The Hague, Netherlands, and SHELL is also Shell’s federally registered trademark for “vehicle gasoline service station services.” The purpose of conducting such a search should be to determine if that name or a confusingly similar name is the subject of either a federally registered trademark or an application to register a trademark with the United States Patent and Trademark Office, whether it is the subject of a state trademark registration or whether it is in use but not registered. If someone is using the identical or a similar mark on related goods or services, i.e., goods or services that would are customarily sold together by the same supplier or manufacturer, then that prior user or federal trademark applicant could object to your use of your proposed mark and while it may not cost much to change your domain name, it probably will cost a lot more to create a new website or take down all of your signs if your are a brick and mortar  business. In addition if it is determined as a result of your trademark search that your proposed name is available for federal registration and that name will be used in connection with the marketing of goods and services, one of the benefits of a federal trademark registration is that it is prima facie evidence of the registrant’s exclusive right to use its mark throughout the U.S.  Therefore, not only would you register your domain name at that point but I would recommend, assuming that it is available, that you go ahead and federally register it.

Note that the name may not be immoral, deceptive or scandalous, disparage a person or institution, merely describe the goods or services in connection with which it is intended to be used or be primarily geographically descriptive of the goods.

Further, the domain name should be memorable and easy to spell. While adding descriptive words that immediately evoke what you are trying to sell on your website and identify the content of your website may seem like a good idea for a domain name, if you follow-up by trying to register that domain name, you run the risk that the U.S. Patent and Trademark Office will refuse to register it, at least not until it has become so recognized in the marketplace that it loses its general descriptive context and becomes identified with you. For example, the owners of HOTEL.COM had to submit 160 pages of evidence, including videocassettes of television advertising to get a federal service mark registration for their mark. Another travel website, ORBITZ.COM, merely had to submit a three page response to deal with some technicalities with the Patent Office to receive its registration.  GOOGLE and AMAZON are examples of highly memorable domain names that are distinctive trademarks and do not describe the content present thereon.

If a .COM suffix is not available, you can show your national identity with a .us domain name; if you are in the business of presenting streaming video, for example, you can use the .tv domain extension. You also now have available the new generic top level domains. See These include such domains as .PIZZA, .BUSINESS, .RESTAURANT, .HEALTHCARE, .NYC, .LAWYER, .SOFTWARE, .DENTIST, .FITNESS, .FINANCIAL, .INVESTMENTS, .EDUCATION, .INTERNATIONAL, .SEXY and .CLOTHING among others. Remember, though, that web searchers are still used to adding a .COM to a brand name to find it on the web so it may take some non-web marketing to bring people to your site using these domains. However, if you own a pizza place or a chain of urgent care centers, it’s going to be tempting to use .PIZZA or .HEALTHCARE as part of your domain. To be successful though, say your business name is Tony’s Pizza or Spectrum Healthcare, you will need to train your potential customers and current customers to insert the dot in the right place, to type in TONYS.PIZZA or SPECTRUM.HEALTHCARE and not have them leave the dot out and look for the COM. See

Also, make it easy on your customers or potential customers. Keep things simple so that your customers can find you and type in the right name. Don’t register TONYSPIZZA2GO.COM as they will have to remember to type in the numeral as opposed to the word “to” and add “2go” to order to take-out on line. Stick to TONYSPIZZA.COM or maybe TONYSCHICAGOPIZZA.COM if you’re located in Chicago or sell Chicago-style pizza and dedicate a portion of your site to ordering pizza on-line for takeout. Remember that letters and digits from “0” to “9” are registrable as well as hyphens. Capitalization doesn’t make a difference and while hyphens are also allowed, it is very easy for people to forget to type the hyphens. Now, non-English character domain names are available as well. See

Finally, is the name easily pronounceable and not  easily confused with another domain name?  Also, even if your trademark search (See above.) finds no confusingly similar names, you should be careful to make sure that there is not a confusingly similar domain name out there. For example, make sure that a competitor is not using your same domain name with which you are using the .com suffix with a .net suffix or vice versa, or if you’re in the pizza business, with a .pizza suffix or if you’re in the porn business with a .xxx suffix.

Hopefully, your business will be successful and around for a long time. You want loyal customers. And to keep them loyal, you need a strong, distinctive easily remembered and not easily confused name; that’s going to be around for a long time…not a name that you are going to have to change because your lawyer received a cease and desist letter from a competitor or because you are losing business to the listing immediately above you when someone types your name into Google. See

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