wasserman, comden, casselman & esensten legal examiner newsletter - may 2010

May 2010 Vol.I, Issue No.1

Wasserman, Comden, Casselman & Esensten, LLP • 5567 Reseda Blvd., #330 • Tarzana, CA 91357 • 818.705.6800!

LEGAL EXAMINER

STEPPING INTO THE FUTUREWCC&E Enters Its 5th Decade With A Brand New Look

Page 5

Wa s s e r m a n , C o m d e n , C a s s e l m a n & E s e n s t e n , L L P

Workers’ Comp Insurance: They Err, You PayPage 4

Doing Business OnlineIs Your Company Leaving Itself Open to

Attack in Other States and Countries?Page 6

To GUI, Or Not to GUI?Patent Expert Reid Dammann examines legal protections for g raphical user interfaces within business websites.Page 2



Reid Dammann ([email protected]) is an attorney at WCC&E’s Tarzana Office who specializes in patent, trademark and copyright law. Mr. Dammann received his Juris Doctorate degree from the Santa Clara University School of Law, in Santa Clara, California. He completed his undergraduate work at the University of California at San Diego, where he received his B.S. Degree in Biochemistry and Cellular Biology, with a minor in Organic Chemistry.

Patent No. D.599,372 - Google.com

On September 1, 2009, the United States Patent

and Trademark Office ("USPTO") issued a

patent to Google, Inc. that covers an "ornamental

design for a graphical user interface ("GUI") for

a display screen of a communications terminal."

The patented GUI is shown above.

While GUIs and website interfaces are generally

viewed as protectable under copyright law, the

patent granted to Google exemplifies how different

forms of intellectual property protection can be

afforded to a singular interface, weaving a

blanket of overlapping protections.

PROTECTING ELECTRONIC INTERFACES ...

Without patent, copyright and trademark protection, companies like Microsoft might not have incentive to develop innovative competing products like bing.com.

The GUI (graphical user interface) pictured to the right is the subject of

what the United States Trademark and Patent Office (the “USPTO”) calls a

“Design Patent.” Unlike conventional “utility” patents that protect an article of

manufacture or technological advances, design patents protect the visual

ornamental characteristics embodied in, or applied to, that article. A design is

manifested in appearance; in the case of an automobile, a utility patent may

apply to the engine, while a design patent may relate to the configuration or

shape of its hood, the designs painted on that hood, or both.

Generally speaking, a copyright differs from a design patent in its

application to “non-utilitarian” articles - those that exist for their appearance,

not for their usefulness. In cases where the aesthetic features of an object cannot

be separated from its utility, a design patent will protect ornamental features with

and without utility, while copyright protection will only apply to the latter. This

area of overlap between copyright and patent law allows the author/inventor to

secure the protections of both statutory schemes. In the example to the right,

the object is considered utilitarian (as are most search engine websites), due to its

use of algorithms. However, the ornamental interface can exist apart from the

utilitarian features of the website itself, allowing both forms of protection.

Unlike patents and copyrights, trademarks and service marks are words,

phrases, symbols or designs (or combinations thereof) that identify and

distinguish a source of products or services. Trademark protection can

encompass both types of protection, and can extend to a product’s design,

packaging, color, or other trade dress unique to the goods or services at issue.

“Google®” is a trademark that has been registered in connection with the

utilitarian features of the interface itself. The trademark applies to “software for

searching, compiling, indexing and organizing information on computer

networks…."

The Google.com case study shows how patent, copyright and trademark law all

play vital roles in the protection of the unique aspects of one's website. The

example illustrates the intellectual property overlap that exists throughout

instrumentalities such as a websites, which are commonly used by businesses of all

shapes and sizes. As such, it becomes imperative in any intellectual property

strategy to consider all forms of protection. ¯

Google Search I'm Feeling Lucky

Advanced Search Language Tools

Advertising Programs - Business Solutions - About Google

©2009 - Privacy



Design PatentsThe term of a design patent is 14

years. During the life of a design or utility patent, the holder may sue others to

preclude them from making, using, or selling a product that closely resembles the patented product. At minimum, the holder of a design patent who succeeds in a

lawsuit filed against an infringer may also recover a reasonable royalty and up to three times his or her actual damage for

any willful infringement of the protected design.

The costs of obtaining design patent

protection are more expensive than obtaining similar protections for other f o r m s o f i n t e l l e c t u a l p r o p e r t y. Independent market research studies reveal

that the cost for drafting and filing a design patent application ranges from $2,000 to $3,000. If not immediately granted by the

USPTO, a lengthy approval process may result, adding to the holder’s initial investment. Once obtained, a design

patent requires maintenance fees throughout its 14-year lifetime, adding close to $3,500 over the course of the term.

More often than not, however, the

costs associated with procuring design patent protection are offset by the patent’s prohibitory effect. For example, if a

website is truly innovative and worth protecting, greater market traction can be gained from this form of protection over all

others. The distinction between copyright and design patent law provides the design patent holder with a greater berth of enforcement options in litigation, allowing

the preclusion of websites that are not just identical, but similar to the "ordinary observer."

Copyrights A copyrighted work extends for the

life of the author, plus 70 years after the author's death. If the work is one of corporate authorship, the copyright will

expire 95 years from publication or 120 years from creation, whichever comes first.

The downside of an unregistered

copyright can be absolutely horrifying. First, United States copyright registration is a prerequisite for bringing a copyright

infringement lawsuit. Second, and perhaps most important, a registered copyright owner is eligible to receive statutory damages, legal costs, and attorneys' fees

from a potential copyright infringer if the registration was filed in a "timely manner," whereas the holder of an unregistered

copyright is unable to avail him or herself of the same remedies. In some cases, statutory damages may be as high as

$150,000 per violation.In contras t , an owner o f an

unregistered work may only recover actual damages; in many cases, these amounts are

either too difficult or costly to prove. Coupled with the inability to obtain attorneys' fees and costs, those with less

economic resources may be prevented from seeking Court intervention to protect their unregistered copyrights, given the high cost

associated with intellectual property infringement lawsuits.

The filing fee for a copyright application is a mere $35.00. As such,

copyright protection is the least costly form of intellectual property protection; simply stated, a $35.00 investment can produce

exponential results. And, unless you are omniscient, the ability to forecast infringement activity is next to impossible,

making copyright protection absolutely essential in any intellectual property arsenal.

TrademarksGenerally speaking, trademark laws

provide the longest-lasting form of

intellectual property protection. There is

no set duration placed on the protection of

a particular mark. Rather, a trademark

can last as long as the mark is in use and

maintenance fees are paid to the USPTO.

The costs involved in procuring a

trademark fall in the midrange of those

associated with other forms of intellectual

property protection. As in patent law, if

the trademark is rejected by the USPTO,

the process can prove lengthy and costs

may increase. While procuring a

trademark can be more expensive than

procuring design patents, such is rarely the

case. As would be expected, maintenance

fees are also imposed by the USPTO, and

they continue for the life of the trademark.

In trademark law, infringement occurs

when another mark is used with goods

and/or services and creates a likelihood of

confusion concerning the origin of those

goods or services. In the case of the

Google® registration, the holder may

assert his protections against not only those

who use the term Google, but against those

who may use variations of the term as well.

While the duration of a copyright

registration is much longer than that of

patent protection, trademark protection

lasts as long as the holder uses and

maintains the mark. With no set term of

life, the trademark is the longest form of

intellectual property protection and is

therefore very valuable.

...THE COST AND BENEFIT TO YOUBy Reid E. Dammann, Esq.



Whether your business employs 50 clerical workers or 500 construction specialists, you are undoubtedly familiar with the budgetary constraints and administrative nightmares that go hand-in-hand with workers’ compensation insurance. What many businesses fail to realize, however, is that their annual cost of doing business can be drastically reduced by shifting their focus to the conduct of their insurance carriers and, more specifically, the adjusters responsible for the day-to-day handling of their claims.

Generally speaking, the state requires all insurers to raise o r l ower the worke r s ’ compensation insurance p r e m i u m s c h a r g e d t o California businesses based upon their history of safety. Every year, California’s Workers’ Compensation Insurance Rating Bureau (WCIRB) examines employer and insurer records to determine the amounts paid to employees, the amounts paid towards workers compensation claims made by those employees, and the amounts held in reserve by the insurance carrier as in estimation of what will need to be paid on each claim in the future. A three-year history for each employer is then utilized by the WCIRB to generate their Experience Modification Factors (Ex Mods) in the form of a percentage. That percentage conveys how safe an employer has been when compared to the statewide workers’ compensation claim average for those performing the same type of work - anything below 100% evidences a history of claim expense below average, and vice-versa. If an Ex Mod exceeds 120%, fines and penalties may be issued by the State, who considers the employer “unsafe.”

Each insurance company must utilize their insured’s Ex Mod when quoting annual insurance premiums by multiplying the final premium amount by the employer’s Ex Mod for the year in question. As a result, any employer with an artificially inflated Ex Mod - even if it is below 100% - stands to lose thousands of dollars in wrongfully increased premium charges.

Most employers blame their own employees for a jump in premium from one year to the next. They cry fraud, cite eyewitness testimony of co-workers who confirm the claim is invalid, and turn to their insurance company for assistance. However, countless cases have been filed in California against insurance companies and third party adjusters of every shape and size in which employer/insureds allege that their premiums were inflated not by claimants, but by the overworked, underpaid and undertrained adjusters who were delegated responsibility

to make sure their claims w e r e b e i n g h a n d l e d appropriately.

Even more troubling is the conduct of certain insurers who, when asked by their i n s u re d s f o r c o p i e s o f workers’ compensation claim files so that those employers can determine for themselves

whether certain claims were overpaid or over-reserved, either refuse to grant access to those records at all, offer overly-redacted documents of little import, or provide the adjuster’s own self-serving “summary” of events, leaving the insured without recourse.

Fortunately, however, there are steps that can be taken by the employer who refuses to sit idly by as their insurance premiums continue to increase. Independent experts - many of them former claims adjusters themselves - may be hired to audit suspect claims or to oversee adjuster conduct on an ongoing basis. Of course, if the insurance company is unwilling to abide by laws mandating employer access to claim records or adjuster adherence to minimum industry guidelines, one may commence legal proceedings and, if successful, recover their attorneys fees, in full. Attorneys at WCC&E have a wide range of experience in this area and may be contacted for more information on these solutions … and others.

“Even more troubling is the conduct of certain insurers who… refuse to grant access to

[claim files], offer overly-redacted documents of little import, or provide the adjuster’s own self-serving ‘summary’ of events, leaving the

insured without recourse.”

INSURERS ERR, EMPLOYERS PAY

Michael Kline ([email protected]) is a senior associate in WCC&E’s business litigation department. He represents individuals and businesses involved in real estate, intellectual property, contract, employment, corporate and complex business disputes, in both the trial and appellate contexts.

By Michael G. Kline, Esq.

mailto:[email protected]




Robert Esensten’s client list and track record intimidate even the most seasoned attorneys who find themselves on the other side of one of his cases. Yet after a few minutes of conversation with this partner whose firm now shares his name, any preconceived notions vanish as quickly as frivolous cases brought against his clients are dismissed. Indeed, while Robert L. Esensten may be racking up wins inside the courtroom, it is clear that “Bob” spends his time keeping his golf score down or visiting Diamond Creek Vineyards, a now-thriving winery created by his late uncle from nothing more than a raw piece of land. “My uncle’s wine holds a special meaning for our family,” Bob remarks.

It is the balance he has achieved between work and pleasure that makes his story so unique. At a very young age, Bob was inspired to follow in the footsteps of an uncle who practiced law. His professional path would take him through Southwestern University School of Law to his admission to the California Bar in 1975. Bob owned a thriving private practice in Beverly Hills for 26 years before he was recruited to join WCC&E by David Casselman just four years ago. It came as no shock to those who knew him to learn that Bob earned partnership status the following year, was elevated to equity partner in January 2008, and saw his name join the firm’s this month.

Bob’s experience is as well-founded as his character. He has overseen and maintained primary responsibility for the representation of clients in a multitude of fields, far too numerous to mention here. “I have handled every type of business case out there,” he explained. “My experience greatly helps me when I evaluate the best way to handle a case for a client.” That said, the “case” is far less important to Bob than the well-being of his clients. “As a rule, clients come first, financially and ethically – the firm’s benefits are always secondary to the client,” he noted. In fact, many of Bob’s clients have called him their counsel since the first years of his solo practice.

In testament to the work and attention he provides to the job he loves, most of his new business comes from client referrals and, even more impressively, attorneys against whom he has litigated. “I can get as much done smiling with someone as I can raising my voice, which I rarely ever do,” he explained. “I litigate with the other side’s attorney at the beginning, but I want to be their friend at the end. I have received referrals of my largest cases that way. It’s what you can achieve by being a nice guy, as long as you conduct yourself in a confident manner so that the other side respects the work you’ve done and respects you as a person.”

Successful attorneys may come and go, but there is something that transcends verdicts and settlements that sets Bob apart from his peers. It is, quite simply, the core of his character. What results is the ease that he gives to others and his confidence in court. Bob summed it up, as only he could: “There is no reason for a client to hire an attorney who makes them feel uncomfortable. I believe that everyone should be treated the same way. When someone walks through the door, I ask myself, ‘How would I want to be treated in that situation?’ I put myself in that person’s shoes and do what is right. It is that simple.”

THE PARTNER PERSPECTIVE

Each month, WCC&E makes videos of its Partner Perspective interviews available for download in podcast form. To learn more about Mr. Esensten, or to subscribe to the

Partner Perspective Podcast series, please visit http://www.wccelaw.com/podcast

By Michael G. Kline, Esq.

On March 1, 2010, the firm formerly known as Wasserman, Comden & Casselman added partner Robert Esensten to its title. In honor of his achievement, Mr. Esensten is the inagural subject of the Examiner’s monthly profile series,

The Partner Perspective.

http://www.wcclaw.com/podcast

http://www.wcclaw.com/podcast



When any company launches its website for the purpose of increasing sales and expanding its customer base beyond the confines of its brick and mortar business, that company may not realize that it is opening itself up to being sued in courts in other states and countries. In most cases, disputes are usually between local parties involving local issues. However, the Internet is dramatically changing the way companies do business, and the litigation exposure that those companies may face.

Most businesses prefer to resolve their legal disputes at the local courthouse. There are four main advantages. First, it is less expensive and easier for you and your witnesses to drive to your neighborhood courthouse, rather than traveling to a distant city. Second, you may already have local legal counsel who are familiar with your local laws and judges. Third, your business dealings already incorporate your state laws. Fourth, there is often a hometown advantage where an out of state defendant may not be perceived by a jury in the same way as someone from the local neighborhood.

In contrast, these four reasons are why your foreign customers or vendors will prefer their local laws and courts. The good news is that because it is usually more difficult and more expensive for foreign businesses to come to you, they may be compelled to settle disputes on terms that are less favorable to them.

Typically, the most important factor in deciding jurisdiction is whether the foreigner has "minimum contacts" with your state. Courts consider a variety of factors, such as whether there was a contract between the parties or whether someone furnished a harmful product or made defamatory remarks in your state. A court is going to analyze whether the Internet website constitutes an affirmative choice by the business to conduct business in a foreign state.

Some cases use a sliding scale in determining Internet jurisdiction. At one end of the scale, jurisdiction is usually found where the foreign company clearly did business in your state over the internet. At the other end of the scale, jurisdiction is usually rejected where the foreign company merely has a passive website that just makes information available to interested users. In the middle of the scale are interactive web sites where a user can exchange information with the host computer. In those cases, jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the website.

Regardless of which of these factors is used by the courts in your state, the important thing to remember is that virtually any online activity could result in your company being sued in another state

or country. As a consequence, you should, at a minimum, make sure that your insurance policies cover any internet liability.

It is recommended that in your contracts with customers or vendors, you include two provisions to limit disputes to your local area. A "choice of forum" clause states that the parties agree that any legal dispute will be decided in a specified court. A "choice of law" clause states that regardless of where the lawsuit is heard, the judge will use the law of the state that you specify.

No matter what size your business is, the widespread use of the Internet makes all businesses part of the global economy. As such, you may need to sue foreigners for not paying their bills or you may need to appear in a court in another state for selling defective goods. So, when doing business online, to help avoid being sued in other states or countries, contact an attorney to include necessary provisions in your business contracts and on your website.

DOING BUSINESS ONLINE

C a n Yo u r C o m p a n y B e S u e d I n O t h e r S t a t e s O r C o u n t r i e s ?

Partner Melissa Harnett ([email protected]) specializes in the practice areas of appellate, class action and intellectual property litigation.

Partner Mark Gottlieb ([email protected]) specializes in appellate work. He is a graduate of UCLA (B.A.-’72), Stanford University (M.A.-’74) and Southwestern School of Law (J.D.-’77)

By Melissa Harnett, Esq. & Mark Gottlieb, Esq.







PEER-TO-PEER

What is “Peer-to-Peer?”

Peer-to-Peer is WCC&E’s regular

column focusing on issues that

affect attorneys as well as

clients. In this month’s issue,

attorney Jordan Esensten

([email protected]) warns

colleagues of deceptive

discovery practices for clients on

social networking websites.

Over the past decade, social networking sites such as Facebook, MySpace, LinkedIn and Twitter have transformed electronic communication and social networking into

the cultural norm. As the popularity of social networking sites has increased, so have the risks attorneys face for ethical

violations and potential discipline.

The recent opinion Penn. Bar Ass’n

Committee on Legal Ethics & Resp., [PA Eth. Op. 2009-02 (March 2009)] reminds attorneys that they can be susceptible to

reprimand for seemingly innocent and routine social behavior. The opinion finds that

“friend requesting” a potential witness on Facebook or MySpace in order to discover information contained on that person’s website profile for use in litigation violates Pennsylvania Rule of Professional Conduct 8.4, that state’s prohibition against

“deceptive conduct.

The opinion called the communication at issue “deceptive” because it omitted a highly

material fact. The Court concluded that had the witness known that the true purpose of the “friend request” was to allow the attorney to obtain information that could be used against her in litigation, she would be unlikely to disclose the information by accepting the friend request. The Court added that even if the witness automatically allowed

access to her profile to all would-be “friends[,] [d]eception is deception,” and her unwariness would not excuse the deceit at hand.

This opinion reminds those of us in the legal profession that although the popularity of social networking sites has exploded, an attorney’s ethical obligations are paramount and extend beyond the ordinary bounds one might expect.

WCC&E LEGAL EXAMINER EDITORIAL BOARDWCC&E LEGAL EXAMINER EDITORIAL BOARDWCC&E LEGAL EXAMINER EDITORIAL BOARDWCC&E LEGAL EXAMINER EDITORIAL BOARD

Editor-In-Chief Michael Kline, Esq. [email protected] Comments/Questions?WCC&E Legal Examiner

5567 Reseda Boulevard, Suite 330Tarzana, CA 91367

(818) [email protected]

Managing Editor Reid Dammann, Esq. [email protected]

Comments/Questions?WCC&E Legal Examiner



Columns Editor Jordan Esensten, Esq. [email protected]







By Jordan S. Esensten, Esq.

F a c e b o o k : A T r a p f o r t h e U n w a r y ?









Wasserman, Comden, Casselman & Esensten LLP

Founded in 1976, Wasserman, Comden, Casselman & Esensten, L.L.P. is a leading law firm in the greater Los Angeles area, with forty attorneys and offices in Tarzana, Alhambra, and Oxnard, California. For over 32 years, the firm has established a superior reputation providing innovative solutions, responsive communication, cost-effective service, and successful results to a wide range of domestic and international clients.

WCC&E takes great pride in its history of simultaneously maintaining long-term client relationships and establishing new ones. That history was established by a collection of skilled attorneys who have remained true to the vision of the firm's partners of what the practice of law should be - the satisfaction of each client's unique needs and the aggressive pursuit to resolve complex legal issues. The firm's core practice areas include transaction, litigation and appellate work in areas such as business and corporate law, class actions, personal injury matters, public entity liability, and issues specific to clients located in the Pacific Rim. WCC&E has obtained verdicts for its clients in high-profile civil jury trials involving the litigation of these issues and others, including inverse condemnation, landslides, public works construction contracts, and complex business litigation.

WCC&E maintains the highest standard of attorneys, with many being named Super Lawyers ™ and Rising Stars,an honor given to only a small fraction of practicing attorneys. For additional information about WCC&E and its attorneys, please visit www.wccelaw.com.

Leading the firm are its four senior partners…

Steve K. Wasserman serves as general counsel to a wide variety of business, drawing on his substantial experience in finance, banking, factoring, garment and textile manufacturing, and import and export distribution. Mr. Wasserman specializes in representing clients in the apparel industry, and with international trade issues with China.

Leonard J. Comden specializes in real estate, family law, intellectual property and general business litigation. His experience includes successful representation of WCC&E clients before the United States and California Supreme Courts, Courts of Appeal, and trial courts across the country.

David B. Casselman specializes in the prosecution and defense of complex litigation matters. Amongst his many achievements, he obtained the second and tenth largest monetary verdicts in the State of California in 2001. He is currently the President of the California chapter of the American Board ofTrial Advocates.

Robert L. Esensten has served as litigation counsel for small and medium-size businesses and individuals, including pharmaceutical companies, certified public accounting firms, real estate developers, and those in the telecommunications industry. With a wealth of jury trial and arbitration successes on his resume, he is an active member of the American Board of Trial Advocates.

ABOUT WCC&E

5567 Reseda Boulevard, Suite 330Tarzana, California 91357

wasserman, comden, casselman & esensten legal examiner newsletter - may 2010

Documents

patent law

patent office

united states patent

ornamental design

n e s e n s t e n

patent expert reid dammann

copyright law

design patents