Technology Law Section
State Bar of Georgia

The Technology Law Section  will host the Technology Law Institute on October 16 at State Bar of Georgia Headquarters. The Speaker List and Schedule is here. Stay tuned for details.

Under the terms of the Technology Law Section bylaws, the offices of chair and vice chair are filled by the immediate past vice chair and secretary respectively.

Chair for 2008-09 is Gaines Carter of ARRIS Group, Inc.

Vice Chair for 2008-09 is W. Charles Ross of the Gwinnett County Office of the District Attorney

The office of Secretary is filled by a member of the Executive Committee of the Technology Law Section. The requirements for the qualifications to run for the office are set forth in the bylaws. The Elections Committee of the Technology Law Section has reviewed the qualifications of the nominees and has verified that the following nominee is qualified to hold the office of Secretary: Ben Young of Troutman Sanders LLP.

The Committee on Volunteer Activities of the Technology Law Section seeks to provide members a collection of both community service projects and pro bono legal service opportunities.

Protection of Website: Georgia Legal Services Program (“GLSP”) and the Atlanta Legal Aid Society (“ALAS”) provide free online legal resources and information via the website, www.LegalAid-GA.org. Unfortunately, some entities have sought to misappropriate these resources and sell the information for profit. GSLP and the ALAS need assistance protecting these important resources. To assist with this matter, contact ALAS/GSLP Technology Consultant Tracey M. Roberts (troberts@glsp.org)

Technology Agreements: GLSP is also developing a plan for the wide-area networking of its twelve (12) field offices across the state, including the negotiation for (and implementation of) Internet-based case management software and its Voice over Internet Protocol (“VoIP”) services. GLSP is seeking advice and counsel on future technology plans and contracts. Also, GLSP seeks intellectual property counsel to serve as advisors to GLSP management. For more information on this opportunity, contact Mike Monahan (mike@gabar.org)

Technology Best Practices: Volunteer lawyers are needed for a legal seminar for community-based groups scheduled for early December in Atlanta. The seminar, intended for a basic-to-intermediate skills audience, will address legal issues for nonprofit managers related to Internet usage, website development and content, and e-mail and communications policies. Interested? Contact Mike Monahan (mike@gabar.org)

Technology Agreements: From time to time, area non-profits need attorneys to review equipment leases, register domain names, and assist with the registration of trademarks and related issues. The Pro Bono Partnership of Atlanta, Inc. (“PBP-Atl”) (www.pbpatl.org) was formed with a mission to make it as easy and enjoyable as possible for transactional lawyers at corporations and law firms to provide valuable pro bono services for nonprofit agencies servicing the public interest in Metropolitan Atlanta. PBP-Atl services community-based nonprofits whose primary purpose is to operate ongoing programs or activities that benefit low-income communities or that otherwise serve the public interest.

PBP-Atl is seeking assistance with an audit of the nonprofit’s website, including its Terms of Service, privacy policy, copyright and trademark use and links to other websites. For more information on these and other opportunities, please contact Executive Director Rachel Spears. (rachel.spears@pbpatl.org).

Teaching/Training/Advice: TECH CORPS Georgia, Inc.’s (“TECH CORP”) (www.techcorpsga.org) mission is to promote “Digital Inclusion” for the residents, teachers, students and entrepreneurs of Georgia’s low-income and otherwise under-served communities, and to advocate for the use of technology in promoting self-sufficiency and economic resiliency.

By Larry H. Kunin Chair, Technology Section Litigation Committee

Join the Technology Section Litigation Committee. The Litigation Committee is looking for new members. The committee serves a forum to debate technology-related litigation issues and a resource for technology litigation issues for its members. The committee meets quarterly for breakfast or lunch, and sponsors one of the Technology Section’s quarterly CLE luncheons, and provides this quarterly e-discovery update. For information please contact Larry Kunin, Morris, Manning & Martin, LLP at 404-504-7798.

QualComm Update #2 – Sanctions Against Attorneys Lifted. In the last edition of this E-Discovery update, we reported the sanctions of $8,568,633.24 against QualComm and a referral of ethical violations by QualComm’s attorneys to the California Bar. The District Court has now vacated and remanded to the magistrate the sanctions against counsel. The court held that on remand, counsel would be permitted to fully defend themselves notwithstanding the attorney-client privilege.

Request for Metadata Denied. D’Onofrio v. SFX Sports Group, Inc., 2008 WL 189842 (D.D.C. Jan. 23, 2008): In this case, Plaintiff sought the production of documents in native format, including metadata. Plaintiff, however, had not initially requested the in native format as required by the new Federal Rules. Additionally, defendants argued that the new Federal Rules do not require the production of metadata absent a showing of relevance. The court agreed with the defendant and rejected plaintiff’s request.

Defendant Responsible For Cost Of Plaintiff’s Expert And Over-Exclusion Caused By Unilateral Requests To Broaden Privilege Search. Henry v. Quicken Loans, Inc., 2008 WL 474127 (E.D. Mich. Feb. 15, 2008): Following the defendant’s objection to the production of potentially privileged emails under a clawback agreement, the court resolved a motion to compel by requiring that the parties agree to search terms to be given to the plaintiffs expert to search defendant’s back-up tapes. The order required that plaintiff be responsible for the expert’s costs. After an initial search excluded fewer emails than defense counsel expected, defense counsel unilaterally instructed the expert to broaden the privilege search, resulting in additional expert costs and over-exclusion of emails. After rejecting an assertion that communications between defense counsel and the expert were unethical, the court ordered that defense counsel be responsible for the expert’s cost for the additional, broader searches.

Attorneys Negligent for Relying on Client’s Defective Search Methods, but Only Client Sanctioned. Finley v. Hartford Life and Acc. Ins. Co., 2008 WL 509084 (N.D. Cal. Feb. 22, 2008): In this disability benefits case, defendant produced certain surveillance videos, but failed to produce a specific kitchen video due to what defendant claimed was an oversight. The kitchen video, however, was ultimately produced in a supplemental production. Plaintiff filed a motion for sanctions, seeking reimbursement of depositions and expert costs that were incurred prior to the supplemental production. The court granted the motion based on the defendant’s defective search for producible materials, stating that an oversight does not excuse its production obligations. Notably, the video was not misplaced, it was located exactly where it should have been. The court, however, did not sanction the attorneys for failing to provide more detailed search instructions because plaintiff ’s request for production did not specifically request the video. In other words, counsel did not know specifically what to ask the client to search for. Nonetheless, the client when conducting a search should have located the video. As such, the court issued sanctions against the defendant in the amount of $9,000, a fraction of what was sought.

Spoliation Sanctions Rejected; Although Deleted Email was Not Reasonably Accessible, Court Holds No Duty to Search Backup Tapes. Petcou v. C.H. Robinson Worldwide, Inc., 2008 WL 542684 (N.D. Ga. Feb. 25, 2008):
Due to the manner in which the defendant’s email system was setup, deleted emails are retained for only 8 days, and when an employee is terminated all emails are deleted after 10 days. It is thus unlikely that relevant emails were still on the defendant’s system. The emails are presumably captured on backup tapes but at an expensive cost, reaching almost $80,000 to search one year of tapes. The court weighed (i) the cost against; (ii) the breadth of the plaintiffs request, complications determining which emails were relevant, and potential value given the likelihood they would be cumulative evidence. The court concluded that defendant met a showing of undue burden. The court also rejected a request for spoliation sanctions, holding that deletion of the emails was in accordance with its normal document retention plan.

Merely Alleging Undue Burden is Not Sufficient to Avoid Production. City of Seattle v. Prof’l Basketball Club, LLC, 2008 WL 539809 (W.D. Wash. Feb. 25, 2008): After finding that requested information was relevant, the court cited new Federal Rule 26(b)(2)(B) to reject a bald assertion that production would produce mountains of work. Instead, to avoid production, the producing party must specifically establish the burdensome nature of production.

Sanctions Rejected Where Computer System Did Not Retain “Sent” Emails. Clearone Communications, Inc. v. Chiang, 2008 WL 704228 (D. Utah Mar. 10, 2008): Plaintiff alleged that a defendant should be sanctioned for failure to produce a smoking gun email that was ultimately produced by another party who was a recipient of the email. The court, however, disagreed, instead finding that the defendant did not withhold the email, it simply did not have it due to the unusual fact that the subject computer system did not retain “sent” emails.

Plaintiff Permitted to Assert State Law Claim for Spoliation For Failure to Implement Litigation Hold. Ed Schmidt Pontiac-GMC Truck, Inc. v. DaimlerChrysler Motors Co., LLC, 2008 WL 668267 (N.D. Ohio Mar. 11, 2008): During discovery, plaintiff alleged that the defendant failed to implement a litigation hold, resulting in the destruction of relevant evidence. Specifically, plaintiff alleged that the defendant replaced or altered hard drives before plaintiff made forensic images designed to preserve evidence. As a result, plaintiff desired to add a claim of spoliation under Ohio state law, which recognizes such a cause of action. Finding that the plaintiff was able to allege the elements, the court permitted the amendment. The elements of spoliation under Ohio law are: (i) pending or probable litigation involving the plaintiff; (ii) knowledge on the part of the defendant that the litigation exists or is probable; (iii) willful destruction of the evidence by the defendant designed to disrupt the plaintiff’s case; (iv) disruption of the plaintiff’s case; and (v) damages proximately caused by the defendant’s actions.

Request to Produce Document in Native Format Rejected. Autotech Techs. Ltd. P’ship v. Automationdirect.com, Inc., 2008 WL 902957 (N.D. Ill. Apr. 2, 2008): Following the production of a document in .pdf and in paper format, defendant requested that the document be produced in native format so that it could see metadata. The court rejected the request, noting that the paper version of the document included a history of changes made to the document. Also, the defendant had not specified what specific metadata it sought, and did not include it in its initial requests. Notably, the court cited the Sedona Principles for the proposition that ordinarily a party need not take efforts to preserve metadata.

Attorneys Sanctioned for Obstructing Forensic Examination. Sterle v. Elizabeth Arden, Inc., 2008 WL 961216 (D. Conn. Apr. 9, 2008): In this case, the court established a protocol for the inspection of defendant’s computers by a mutual independent forensic expert. When the expert appeared at defendant’s premises, however, his access was restricted by defense counsel, thus preventing a full inspection. Plaintiff filed a motion for contempt, which was granted. The court stated that defense counsel’s conducted amounted to obstruction and ordered counsel to pay plaintiff ’s counsel the fees and costs expended in efforts to enforce the protocol, as well as the expert’s fees and costs.

Larry Kunin practices in Morris, Manning & Martin’s Litigation Department with a concentration in technology and intellectual property litigation, including trade secret, software performance, trademark and copyright litigation, as well as general commercial and reinsurance litigation. Larry received his B.A. from the University of South Florida, his M.B.A. from the University of Miami, and his J.D. from the University of Florida. He can be reached at lkunin@mmmlaw.com.

By Dennis J. Gerschick, Attorney, CPA, CFA 

 In a prior article, I noted that the first step in solving a problem is to acknowledge there is a problem. I explored why getting people to acknowledge problems is a significant hurdle. However, assuming that problems have been acknowledged, the next step should be to determine what is causing the problems. Then, you can focus on the possible solutions.

Even when problems are identified or become obvious, many people will ignore them for a variety of reasons. One, they may tell themselves the problem is not that big and it will take care of itself. Two, it is a matter of priorities; people will generally focus on the things that cause them the most pain. “The squeaky wheel gets the grease”. Three, they see problems as irritants, not proof that something is broken. Like Scarlett O’Hara, they will “deal with it tomorrow.” Unfortunately, as time goes by, little problems often becomes bigger and bigger.

In diagnosing a company, a good starting point is to have the company do an honest self-assessment. I emphasize the word honest, because I tell executives if they start lying to themselves, the game is over. A self-assessment requires a company to explore many questions including:

Many other questions need to be explored. The key point is that it is important to get people to start thinking, challenging conventional wisdom, and talking openly and honestly.

A hurdle at many companies is that employees tell their bosses what they think they want to hear, instead of what they need to hear. Office politics is often an impediment to progress. Who knows what a company’s problems are? Executives should talk regularly with the company’s customers, suppliers, and employees. Bill Gates has written that the key to business is to make it easy for customers to complain. If you make it easy for them to complain, guess what happens – they will complain! While no one enjoys listening to complaints, it is important because it educates management from the customer’s perspective and provides an opportunity to fix the problem. Will management listen? Many don’t. Henry Ford once said customers could have any color they wanted so long as it was black! Was he interested in what the customer wanted? No! He was interested in what was easy and economical for his company. His decision allowed General Motors to gain a competitive advantage because GM started offering its cars in different colors. A company should solicit input from customers. How this can be done is an important topic, but one that is too big for this article.

Employees are another great source of information that can be exploited if done correctly. Unfortunately, many companies ignore employees who speak up or worse, punish them. Companies would be well advised to create a culture that encourages employees to speak up. As one step, a company should acknowledge within the company the employee’s initiative if they identify a problem and offer a practical solution. The employee should also be rewarded, because what gets rewarded gets done.

Some companies face numerous problems and they may seem overwhelming. I suggest they make a list that includes:

Management can then confer regularly with those individual(s) to monitor their progress. The list should be usually in order of priority. That is, the biggest problem should be addressed first. In some cases, management might elect to fix smaller problems if they will not take too much time or money. If they fix some problems, they send the message throughout the company they are serious about fixing them and if progress is seen by employees, morale often improves. One good step leads to another; it is a matter of momentum.

Summary of Key Points

1. Every business has problems; it is only a matter of how big or small the problem is.
2. The world is constantly changing. What worked at one time, may not be effective at a later time. Companies must continuously adapt to changing circumstances.
3. Even when problems are identified, companies do not always fix them promptly for a number of reasons.
4. Usually, it takes time to get into trouble, and it will take time to get out of trouble. The sooner a company starts to address its problems, the easier it will be to fix them.
5. Companies help themselves by having a culture that encourages employees, customers, and suppliers to speak up and addressing the problems they see promptly.

Copyright 2008 Dennis J. Gerschick All Rights Reserved. Dennis Gerschick is the President of Gerschick Business & Investment Counsel, LLC and can be reached at dennis@gerschick.com. Dennis would appreciate your suggestions for future articles.

By Melloney Douce

On Monday December 10, 2007, the Technology Law Section, In-house Committee, hosted the Winter CLE luncheon at Alston & Bird, LLP. The CLE topic “Road Hazards on the Digital Highway: Litigation Risks Associated with Storing Personally Identifiable Information” was presented in a panel format with Katherine Bryant (Vice-President of Consumer Advocacy at ChoicePoint Inc.), James Jordan (Chief Privacy Officer at Checkfree) and David Keating (Partner in Alston & Bird LLP’s Technology Law Practice) as the speakers. The panel discussed the challenges many companies face when they collect personal information, emerging developments in e-discovery and the procedures and policies all companies should consider when they collect personal information.

We want to extend a special thanks to the panelists for their help with the program, Alston & Bird for hosting the lunch, Joanna Merrill for her help with the registration, Marisha Steward and Melloney Douce for organizing the meeting and John Hutchins for helping to promote this event.

On our web site at www.technologybar.org, you can

Check out the announcement regarding the new web site platform.

By Stephen B. Combs, Esq.

As Web Site Editor, I have been working on two major projects for the Technology Law Section. The first project was to move the web site to a new platform to accomodate new features. The second project was to offer a web-based format for our quarterly publication, the Georgia Journal of Technology.

Both projects have gone live. The web site now offers many new features, such as RSS feeds, an event calendar, and podcasts. Starting with the Spring 2008 issue, the Journal will be published in PDF- and web-based formats.  The PDF format will still be available on our Journal Archive page.  I hope you enjoy the new web format also. There may be slight editorial changes in the web version to accomodate the change in formats and to better organize the information. Certain information may be removed from the web-based Journal if such information is available in other locations on the web site.

The new changes to the web site and Jornal will allow users to comment on articles and provide feedback on events.  Initially, comments to the articles will be moderated to avoid spam. I look forward to hearing from you. If you have any suggestions, please let me know via the Contact page.

Stephen Combs is Director, Legal at HowStuffWorks, Inc., a subsidiary of Discovery Communications, LLC. Discovery is the number one nonfiction media company. Stephen was formerly an attorney at Morris, Manning & Martin, LLP in the firm’s corporate technology group. Stephen was corporate counsel at Home Depot for IT and e-commerce matters. He was the sixth employee of Monorail Computer Corporation which was recognized by Fortune magazine as one of the top 25 coolest technology companies of 1997. Steve has published numerous articles on topics such as leveraging intellectual property assets and revenue recognition. He  has a law degree from Emory University and obtained his Bachelor of Science in Finance at Florida State University. 

The Annual Meeting Lunch will be at Troutman Sanders LLP, 600 Peachtree Street, Suite 5200 on June 17 from 11:45 am - 1:15 pm. 

Topic:

“Right Coast Venture Capital — A Discussion of Trends in Common Terms for Venture Capital Deals on the East Coast, Viable Alternatives, Structure and Valuation.
 

Speakers:
Sig Mosley, President of Imlay Investments, Inc.
Alan Taetle, General Partner, Noro-Moseley Partners
Mike Siavage, Siavage Law Group
 

Catering by:  
The Varsity
 

Sponsored by:
ATDC (Advanced Technology Development Center)
and State Bar of Georgia, Technology Law Section
 

To Register:
Before June, 11, 2008, provide your name, bar number, email address, and phone number, and mail a check payable to the State Bar of Georgia to: Derrick Stanley, State Bar of Georgia, 104 Marietta St., NW, Suite 100, Atlanta, GA 30303. Fax 404.527.8717; derricks@gabar.org
 

Registration Fees:
Free to ATDC Member companies with Advanced Registration
$25 for Technology Law Section Members
$30 for non-Section Members
 

Limited Seating - Advanced Registration Required.

By Bob Neufeld
Welcome to the Spring issue of the Technology Law Section’s quarterly publication. With the publication of the Spring issue, we are approaching the Section’s Annual Meeting in June when new officers will assume the leadership role for the Section. In addition to these new officers, I too will be passing the editor’s torch to another dedicated member of the Section - Sandra Sheets Gardiner. Many of the Section members probably know or know of Sandra based on her technology-focused transactional practice at Morris Manning & Martin, LLP. Please join me in welcoming Sandra as the new editor of the Section’s Journal. I am confident she will do an outstanding job leading one of the Section’s primary offerings for its members.

With respect to the current issue, we have captured the important Section events that have taken place recently and that are scheduled to take place in the future. We also have three fine articles from some of our regular contributors. For starters, we have the first part of an insightful article from Dennis Gershick discussing how to diagnose a troubled company. As with many of Dennis’s articles, he draws on his experience in both the business world and legal world to provide constructive suggestions for advising companies, both large and small. Next, we have Larry Kunin’s E-Discovery Update which distills the salient points from recent decisions from courts around the country concerning electronic discovery disputes.

In closing, I have appreciated the opportunity to serve as the Editor of the Section’s Journal over the last three years and have particularly appreciated the work of our regular contributors whose high quality articles make the Journal possible. I am confident our Section membership will continue to work with Sandra in maintaining this excellent forum for sharing technology-related knowledge with the Section and the Bar.

Bob Neufeld is a registered patent attorney and practices intellectual property law with King & Spalding LLP. His work includes litigating intellectual property and technology disputes and securing patent rights in the U.S. and abroad on behalf of his clients. Mr. Neufeld received his B.A. and B.S. from the State University of New York at Binghamton and earned his J.D. from Fordham University School of Law. He can be reached at bneufeld@kslaw.com.

The Section Annual Meeting, on June 17, 2008. If you work with early stage technology companies, this program is not one to be missed. And in case you have been wondering about all the corny football analogies in this column, it’s because our Annual Meeting will be Co-Sponsored by Georgia Tech’s technology business incubator, the Advanced Technology Development Center (ATDC). It will feature venture capitalists – Sig Mosley of Imlay Investments and Alan Taetle of Noro-Moseley Partners – along with Mike Siavage of the Siavage Law Group. They will collectively examine trends in common terms for VC deals on the East Coast, as well as alternative terms, structure and valuation. None of this has anything to do with football, of course, but to give the event an appropriately Yellow Jacket feel, we’re hosting it at Troutman Sanders (overlooking Bobby Dodd Stadium), and it will be catered by our neighbor, the Varsity. All you can eat! Don’t pass up this chance to hear from the pros about how the VC play on the East Coast. Maybe next year’s Section theme will be “What’ll Ya’ Have?”

The Executive Committee Meeting will be on June 13, 2008 at Troutman Sanders LLP, 600 Peachtree Street, Suite 5200 at 7:30 am. Please use the Contact page to RSVP if you have not already emailed Chuck Ross.

By John P. Hutchins 

With This “Season” Almost Over, I Wonder: Whatever Happened To 2007-2008?

Wow! My year as “Coach” of the Section is almost over, and it just plain flew by.

This year, I’ve been trying to motivate you to get more involved in the Section, by reminding you that “It’s Your Section.” I have asked the question: Why aren’t you more involved? And I have tried to answer your follow-up question: Why should I be?

Many of you have responded by attending a Section-sponsored program, including a “sellout” crowd of 148 at the Technology Law Institute last Fall. Others of you have responded by moving from spectator to participant for the first time ever. Cheers for Melloney Douce, Suzannah Lipscomb and Sarah Shalf, who all joined the Executive Committee during this fiscal year. In addition, Sandra Sheets Gardiner recently agreed to join the Executive Committee and take over responsibilities as Editor of The Georgia Journal of Technology Law – our Section’s equivalent of the game-day program. She has big shoulder pads to fill, as Bob Neufeld will give up his spot on the roster after three years of faithful editorial leadership.

The Section is in good hands for 2008-2009, under the leadership of a rejuvenated Executive Committee, and guided by new Head Coach Gaines Carter, effective July 1, 2008.

It’s been a privilege serving as your Section Chair. I’ll officially hand off the pigskin to Gaines at our last event of the year.

On that note, I want to use some of my remaining playing time to specially thank Bob. As a past Editor myself, I know first-hand that there is probably no job in the Section that takes as much time as Editor of our fantastic Journal. Bob has been willing for some time to give up his snaps to another quarterback, but finding a sub as disciplined as he has been was a challenge, until Sandra enthusiastically said, “Coach, put me in!” I believe I speak for the entire Section, Bob, when I say that we want you to know how much your dedicated service has meant to us as Section members. Hip-hip Hooray! Hip-hip Hooray! Hip-hip Hooray!

Sincerely, John P. Hutchins

John Hutchins is a partner at Troutman Sanders LLP and practices in the area of intellectual property, technology and business litigation, including computer hardware and software development disputes, e-commerce and privacy issues, government procurement disputes, protection of trade secrets and confidential business information, Internet domain name disputes, technology licensing disputes, trademark and copyright infringement and restrictive covenants. He may be reached at 404.885.3460 or via e-mail at john.hutchins@troutmansanders.com.

The Georgia Journal of Technology Law is published four times per year (quarterly) by the Technology Law Section of the State Bar of Georgia, 104 Marietta Street, NW, Atlanta, GA 30303.

Opinions and conclusions expressed in articles herein are those of their authors and are not necessarily those of the Section.

Some content in the web version of the Journal has been revised from the printed version for purposes of accommodating the web format.

Copyright 2008 Technology Law Section of the State Bar of Georgia. All rights reserved.

The Executive Committee will meet April 24 at 7:30am at Troutman Sanders. Please use the Contact page to RSVP if you have not already emailed Chuck Ross.