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Emerging Technologies and the Law. Forms and Analysis

  • Book

  • 2430 Pages
  • November 2022
  • Region: United States
  • ALM Media, LLC
  • ID: 3511090

The future has arrived ahead of schedule! Content publishers, entertainment and media companies, communications companies, and computer hardware and software companies are combining to create products that are revolutionizing business and private lives. Law firms and businesses must be prepared to react quickly or risk being left behind.

That's where Emerging Technologies and the Law: Forms and Analysis comes in. This comprehensive guide addresses the many legal issues presented by complex cross-technology transactions. It features 100 ready-to-use forms available online that eliminate guesswork and lead you through every critical step in structuring different kinds of agreements. You'll find clear explanations of: the technological and legal issues involved; an overview of patent law as it applies to emerging technologies; checklists of important factors to consider before beginning a complex cross-technology transaction; and more.

Book #00626; looseleaf, two volumes, 2,024 pages; originally published in 1994, completely revised edition published in 2002, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-107-1

Table of Contents


Chapter 1: The Constant Evolution of Information Technology
§ 1.01 Introduction
§ 1.02 Media Formats and Underlying Technologies
[1] Generally; Data Compression
[2] Still Image Formats
[3] Audio Formats
[4] Video Formats
[5] Streaming File Formats
[6] E-Books and Other Text-Viewing Formats
[7] Digital Rights Management Systems
[a] Watermarking
[b] Fingerprinting
[c] Audio Scrambler
[d] Content Identification Technologies
[e] Other Emerging DRM Technologies
§ 1.03 Emerging Consumer Technologies and Products
[1] Data Storage
[a] CD-R and CD-RW
[b] DVD
[c] Memory Cards
[d] Holographic Storage
[2] Handheld Computing Devices
[a] Text Messaging
[b] Mobile Applications
[3] Global Positioning System and Other Locational Technologies
[a] Underlying Technology
[b] Applications
[i] Geolocation
[ii] E911 (“Enhanced 911”)
[iii] Law Enforcement
[iv] Radio Frequency Identification (RFID) Tags
[v] Related Technologies
[4] Emerging Television Technologies
[a] DTV and HDTV
[b] Interactive Television
[c] 3D Television
[d] Digital Video Recorders
[e] Streaming TV Programming Using a Device Connected to the Internet
[f] Streaming Internet Content and Other Programming Using a TV
[5] Games
[a] Console Based
[b] Massive Multiplayer Online Role-Playing Games
[c] Social Network Games
[6] Virtual Property
[7] Software Bots and Related Agents
[8] Other Emerging Technologies
[a] Virtual Reality Systems
[b] Smart Appliances
[c] Biometrics
[d] Satellite Radio
[e] HD Radio
[f] Building Information Management
[g] Wayback Machine
[h] Print-on-Demand Publishing
[i] Digital Modeling
[j] Digital Currency
[k] Autonomous Cars
[l] Unmanned Aerial Vehicles
§ 1.04 Technologies for Accessing Data Services
[1] The Internet and the World Wide Web
[a] Generally
[b] Regulation of Internet Traffic, Tiered Pricing and Net Neutrality
[2] Communication Using TCP/IP
[a] Historical Uses of TCP/IP
[i] E-Mail—ASCII Only
[ii] Newsgroups and Usenet; Mailing Lists
[iii] Gopher
[iv] Telnet
[b] Common Uses of and Tools for TCP/IP
[i] E-Mail—Content Rich
[ii] Hypertext Markup Language (HTML)
[iii] Hypertext Transfer Protocol (HTTP)
[iv] File Transfer Protocol (FTP)
[v] Internet Messaging Protocols (IM)
[vi] Java/JavaScript/ActiveX
[vii] Rich Content Systems
[viii] Streaming
[ix] Virtual Reality Modeling Language (VRML)
[x] Search Engines and Internet Directories
[xi] Intranets
[A] Firewalls
[B] Asynchronous Transfer Mode (ATM)
[C] Virtual Private Network (VPN)
[xii] Extensible Markup Language (XML)
[xiii] Peer-to-Peer (P2P) Systems
[c] Emerging Uses of and Tools for TCP/IP
[i] Next Generation Instant Messaging
[A] Instant Messaging Push Content
[B] Instant Messaging Bots
[ii] Internet Telephony and Videoconferencing
[iii] Gigabit Ethernet
[iv] Electronic Numbering (ENUM)
[vi] RSS Technology
[vii] Podcasting
[viii] Blogs
[ix] Social Networks
[d] Web Services
[i] Limitations of the Web Server/Web Browser Model
[ii] Web Services Model
[iii] Web Services Standards
[iv] Uses for Web Services
[3] Technology for Connecting to the Internet
[a] Dial-Up Access; Internet Service Providers and Online Services
[b] Broadband Access to the Internet
[i] Dedicated Access Lines
[A] T1 and T3
[ii] Cable Broadband
[iii] BPL
[iv] Satellite Broadband
[c] Wireless Data Access Technology
[i] Generally
[ii] Cellular Communications
[A] Cellular Access Technologies and Systems
[B] 1G, 2G, 2.5G, 3G, and 4G Wireless
[iii] Wireless Application Protocol (WAP)
[iv] Device Networking
[A] Bluetooth
[B] HomeRF
[C] Ultrawideband
[D] Wireless Fidelity (Wi-Fi)
[E] WiMax
[v] Wireless Instant Messaging
§ 1.05 The Content-Oriented Emerging Technology Application
[1] Content
[2] Drivers
[3] The Platform
[a] Computer Hardware
[b] Operating Systems
[c] Devices
[d] Middleware
§ 1.06 The Development Project
[1] Project Participants
[a] The Publisher/Producer
[b] The Right Holder
[c] The Developer
[2] Development Structures
[a] Work Made for Hire
[b] Joint Venture
[3] Insurance
[4] The Role of Unions and Guilds in Application/Product Production
[a] The Screen Actors Guild
[b] The Writers Guild of America
[5] Project Planning Checklist

Chapter 2: Rights Acquisition
§ 2.01 Introduction
§ 2.02 Future Technologies
[1] Technologies Existing at the Time of the License
[2] Technologies Not Existing at the Time of the Grant
§ 2.03 Drafting the License Agreement
[1] Identification of Licensed Properties
[2] The Grant
[a] Rights Being Conveyed
[b] Scope of Use and Competing Interests
[c] Known and Unknown Future Technologies
[d] Future Technologies for Distribution
[e] Future Technologies for Exhibition
[3] Reservation of Rights
[4] Best Efforts Promotion
[5] Reversion Provisions
[6] Approvals
[7] Representations and Warranties
[8] Disclaimer of Warranties
[9] Indemnification/Defense Against Third Party Claims
[10] Ownership of Proprietary Rights
[11] Infringement by Third Parties
[12] Confidentiality
[13] Term
[14] Termination Provisions
[15] Payment Provisions
[16] Assignments and Subcontracting
[17] Rights of First Refusal and Last Negotiation
[18] Limitation of Liability
[19] Trademark Provisions
§ 2.04 The Review of Existing License Agreements
[1] The Rights
[2] Future Technologies
[3] General Terms
§ 2.05 Form: Literary Work License Agreement
§ 2.06 Form: Illustration License Agreement
§ 2.07 Form: Video License Agreement
§ 2.08 Form: Synchronization and Public Performance License
§ 2.09 Form: Photograph License Agreement
§ 2.10 Form: Cartoonist License and Merchandising Agreement
§ 2.11 Form: Celebrity License Agreement
§ 2.12 Form: Celebrity Promotion License Agreement
§ 2.13 Form: Art Work License Agreement
§ 2.14 Form: Narration Services and License Agreement
§ 2.15 Form: Graphics License Agreement
§ 2.16 Form: Option License Agreement for a Literary Work License
§ 2.17 Form: Trademark License Agreement
§ 2.18 Form: Trademark License Agreement for Use in the Educational Market
§ 2.19 Form: Licensor Oriented Content License Agreement for CD-ROMs
§ 2.20 Form: Clearinghouse Oriented Content License Agreement
§ 2.21 Form: Single Track Music License
§ 2.22 Form: Producer-Manager-Talent Agreement: Name and Likeness Release for Use in Product
§ 2.23 Form: Subject Matter Content License Agreement
§ 2.24 Form: Content License Agreement for Digital Product
§ 2.25 Form: Ring Tone License Agreement
§ 2.26 Form: Employee Certificate of Authorship
§ 2.27 Form: Content License between a magazine publisher and a Web site publisher
§ 2.28 Form: Audiovisual Streaming/Downloading License Agreement
§ 2.29 Form: Licensee Oriented Audiovisual Streaming Agreement Short Form
§ 2.30 Audiovisual Program License Agreement
§ 2.31 Form: Exclusive Personal Management Agreement

Chapter 3: Product Development Agreements
§ 3.01 Introduction
§ 3.02 Deliverables
[1] Functional Design Specifications
[2] Detailed Design Specifications
[3] The Master Copies
§ 3.03 Implementation Schedule
[1] Fixed Obligation
[2] Guideline
§ 3.04 Progress Reports and Interim Approvals
§ 3.05 Payment Schedules
[1] Fixed Fees with Milestones
[a] Change Control Procedures
[2] Time and Materials Development
§ 3.06 Acceptance Tests
§ 3.07 Definition of Ownership
[1] Ownership of Software
[2] Ownership of Other Aspects of the Product
[3] Cooperation and Notices
§ 3.08 Producer Owned or Controlled Rights
§ 3.09 Third Party Rights
§ 3.10 Reservation of Rights
§ 3.11 Confidentiality
§ 3.12 Termination Provisions
§ 3.13 Rights of First Refusal and Last Negotiation
§ 3.14 Limitation of Liability
§ 3.15 Representations and Warranties
§ 3.16 Indemnification
§ 3.17 Insurance and Risk Management
[1] Product Liability Insurance
[2] Intellectual Property Risk Management
[a] Intellectual Property Compliance Programs
[b] Insurance Covering Risks to Intellectual Property
[i] Commercial General Liability Policies
[ii] Media Liability/Errors & Omissions Policies
[iii] Patent and IP Infringement Policies
[iv] Internet Insurance/Cyber-Risk Policies
[v] Policies Limited to Patent Infringement Litigation Costs
[vi] Open Source Insurance
§ 3.18 Software Licensing
[1] Scope of License
[a] Authorized Uses
[b] Use Restrictions
[2] Exclusive and Non-Exclusive Licenses
[3] Revocable Licenses
[4] Sublicensing/Third Party Usage
[5] Ownership
[6] Maintenance and Updates
[7] Source Code
[a] Bankruptcy
[b] Source Code Escrow
[8] Warranties
[a] Ownership of Intellectual Property
[b] Performance
[9] Indemnification
[10] Assignment Rights
[11] Term
[12] Modifications
[13] Confidential Information and Trade Secrets
[14] Open Source Software
[a] Introduction
[b] Open Source Software Products
[c] “Copyleft”
[d] The GNU General Public License
[e] Other Open Source and Related Licenses
[f] Infringement of Third Party Rights
[g] Other Forms of Protection
[h] Business Considerations and Risks
[15] Electronic Health Records
[a] Federal Law
[b] Cloud Computing Usage Models
§ 3.19 Website Development and Hosting Agreements
[1] Development Agreements
[a] Scope of Services
[b] Technical Considerations
[c] Promotion
[d] Transitioning Services
[e] Editorial and Artistic Control and Approval
[f] Intellectual Property and Confidential Information
[g] Development Credit
[2] Hosting
[a] Scope of Services
[b] Domain Name Registration
[c] Updates and Modifications
[d] Limitations on Alteration and Copying
[e] Performance Criteria
[f] Customer Information
[g] Termination and Transfer
[h] Hosting Services Provider Warranties
§ 3.20 Form: Letter of Intent for Development Agreement
§ 3.21 Form: Master Development Agreement
§ 3.22 Form: Royalty Based Development Agreement
§ 3.23 Form: Master Joint Development Agreement
§ 3.24 Form: Independent Consulting Agreement
§ 3.25 Form: Subcontractor Agreement
§ 3.26 Form: License and Customization Agreement
§ 3.27 Form: License and Development Agreement for Online Application with Server and Client Aspects
§ 3.28 Form: Software License Agreement (Broad)
§ 3.29 Form: Software License Agreement (Restrictive)
§ 3.30 Form: Software License Agreement for Use of Software to Create Access and Retrieval Software
§ 3.31 Form: Software License Agreement for Existing Access and Retrieval Software
§ 3.32 Form: Escrow Agreement
§ 3.33 Form: Focus Group Agreement
§ 3.34 Form: Statement of Work Template
§ 3.35 Form: Web Site Development and Services Agreement
§ 3.36 Form: Vendor Oriented User Trial Period License Agreement
§ 3.37 Form: Client Oriented Web Site Development Agreement
§ 3.38 Form: Retail Web Site Development and Services Agreement
§ 3.39 Form: Live and PreRecorded Broadcast Streaming and Hosting Agreement
§ 3.40 Form: GNU General Public License, Version 2, June 1991
§ 3.40A Form: GNU General Public License, Version 3, June 2007
§ 3.41 Form: GNU Lesser General Public License
§ 3.42 Form: Open Software License v. 2.0
§ 3.43 Form: Exclusive Age Verification Software License Agreement
§ 3.44 Form: Vendor-Oriented Web Site Hosting Agreement

Chapter 4: Product Distribution
§ 4.01 Introduction
§ 4.02 The Distribution Channels
[1] Retail Channels of Trade
[2] Direct Response Distribution
[3] Bundled Distribution
[4] Catalog Distribution
[5] OEM Distribution
[6] Internet and Wireless Direct Distribution Methods
[a] Content and Software
[i] Downloading: Shareware, Freeware, and Mobile Applications
[ii] Streaming and Broadcasting
[iii] File Sharing
[b] Services
[i] Application Services
[ii] B2B Internet Marketplaces
[A] What Is a B2B Marketplace?
[B] Legal Considerations for B2B Marketplaces
[7] Future Distribution Methods
§ 4.03 The Third Party Distribution Agreement
[1] Territory
[2] “Best Effort” Obligations
[3] Scope of Authority
[4] Producer’s Marketing Assistance
[5] Producer’s License
[6] Compensation
[a] Resellers
[b] Sales Agents
[7] Term
§ 4.04 Licensing Software to the United States Government
[1] Restricted Rights
[2] Limited Rights
[3] Unlimited Rights
[4] Government Purpose
§ 4.05 Export Regulations
[1] Rationale and Implementation of Export Regulations
[2] The Wassenaar Arrangement and the Export of Encryption Technology
§ 4.06 Product Licenses
[1] Custom or Specialty Products
[2] Shrink-Wrap Licenses
[3] Click-Wrap Agreements
[4] Browse-Wrap Agreements
§ 4.07 The Uniform Commercial Code
§ 4.08 The Uniform Computer Information Transactions Act
§ 4.09 The Magnuson-Moss Act
§ 4.10 Form: Reseller Distribution Agreement
§ 4.11 Form: Large Quantity Sales Distribution Agreement
§ 4.12 Form: Product Distribution Agreement with Optional Duplication Services
§ 4.13 Form: Producer-Favorable Distribution Agreement
§ 4.14 Form: Original Equipment Manufacture Distribution Agreement
§ 4.15 Form: Strategic Alliance Agreement
§ 4.15A Form: Interactive Distribution License Agreement
§ 4.16 Form: Publisher Oriented Product Marketing and Distribution Agreement
§ 4.17 Form: Sales Representative Agreement
§ 4.18 Form: Individual or Network Use Shrink-Wrap License Agreement
§ 4.19 Form: Product Bundling and Enhancement Agreement
§ 4.20 Form: Vendor-Friendly Customer Referral Agreement
§ 4.21 Form: Application Services Provider (ASP) Agreement
§ 4.22 Form: Clickwrap End-User Product License Agreement
§ 4.23 Form: License and Distribution Agreement (Utilizing “Push” Technology)
§ 4.24 Form: Content Provider Oriented Wireless Content License and Distribution Agreement
§ 4.25 Form: Internet Audio Distribution and Marketing Agreement
§ 4.26 Form: Content Provider Oriented Webcasting and Radio Broadcast Agreement
§ 4.27 Form: Vendor Exchange Member Agreement
§ 4.28 Form: Vendor Services Terms and Conditions of Use
§ 4.29 Form: Web-Based Services Reseller Agreement

Chapter 5: Copyright, Attribution and Integrity Rights and the Development of Emerging Technology Products
§ 5.01 Introduction
§ 5.02 Copyright Analysis Checklist
§ 5.03 The Rights Protected by Copyright
§ 5.04 International Protection of Intellectual Property
[1] WIPO Agreements
[2] Anti-Counterfeiting Trade Agreement
§ 5.05 European Union
[1] Copyright Harmonization Directive
[2] Database Directive
§ 5.06 Determining Whether a Work Is Copyrightable
[1] Generally
[2] The Copyrightability of Factual Compilations
[a] The Copyrightability of Compilations Before Feist
[b] The Feist Decision
[c] The Emerging Technology Implications of Feist
[3] The Copyrightability of Fonts
§ 5.07 Duration of Protection
[1] Works Created on or After January 1, 1978
[2] Works Created Before January 1, 1978
[3] The Copyright Renewal Act of 1992
[4] Copyright Restoration
§ 5.08 Copyright Notices
§ 5.09 Ownership of Copyright
[1] Works Made for Hire
[a] Works Made for Hire in the Emerging Technologies Industry
[b] Work Made for Hire and Tracing the Chain of Copyright Ownership
[2] Collective Works
[3] Joint Works
[4] Derivative Works
[5] Transfer of Copyright
[a] Transfer Under the Act of 1909
[b] Transfer Under the Copyright Act of 1976
[c] Termination of Copyright Transfers
§ 5.10 The Fair Use Doctrine
§ 5.10A Educational Use Copyright Exemption (the “TEACH Act”)
§ 5.11 Attribution and Integrity Rights
§ 5.12 Art Collections, Copyright Issues and Multimedia
§ 5.13 Identification of Copyright Owners
[1] Copyright Office Records
[2] Unions, Guilds and Collective Bargaining Associations
[3] Professional Rights Clearance Organizations
§ 5.13A Television Copyright Issues
§ 5.14 Music Copyright Issues
[1] Public Performance License
[2] Synchronization License
[3] Mechanical License
[4] Music Publishing License
§ 5.15 Copyright Registration Procedures
§ 5.16 Registration of Computer Programs and Databases Not Fixed in CD-ROM
[1] Computer Programs
[2] Databases
§ 5.17 Registration of Machine Readable Multimedia Works (Other than Computer Programs, Databases or CD-ROM Products)
[1] Pictorial or Graphic Works
[2] Audio-Visual Works
[3] Musical Compositions
[4] Sound Recordings
[5] Literary Works
§ 5.18 Registration of Multimedia Works Fixed in CD-ROM Format
§ 5.19 Registration of Certain Multimedia “Kits”
[1] Deposit Requirements
[a] Generally
[b] Authorship Fixed Only in Machine-Readable Form
[2] Registration Forms
§ 5.20 Rental of Multimedia and Other Emerging Technology Applications
§ 5.21 Copyright Infringement
[1] Direct, Contributory and Vicarious Infringement
[2] Remedies
[3] The No Electronic Theft (NET) Act
§ 5.22 Proving Infringement
[1] Prima Facie Case
[2] Direct Liability
[3] Secondary Liability
[4] Active Inducement
§ 5.23 Copyright Infringement of Computer Software
[1] Literal and Non-Literal Copying and Elements
[2] Early Approaches
[3] The Altai Test and Variations
[a] Protection of the User Interface
[b] User Interfaces and Virtual Reality
§ 5.24 Technological Methods of Preventing Infringement
[1] The Audio Home Recording Act of 1992
[2] The WIPO Treaties Act
[3] Copyright Management Information
[4] The Threat of Circumvention and the Digital Millennium Copyright Act
[5] Remedies
§ 5.25 Copyright on the Internet
[1] Introduction
[2] Copyright Infringement on the Internet
[3] Liability
[a] Electronic Bulletin Boards
[b] Individuals
[c] Internet Service Providers
[d] Website Operators
[e] Internet File-Sharing
[4] The Digital Millennium Copyright Act
[a] Routing and Intermediate Storage
[b] Network Caching
[c] Storing, Referring to, or Linking to Infringing Material
[d] Other Provisions
[e] Copyright Management Information
[f] Exemptions to Circumvention
[i] Generally
[ii] Jailbreaking
[5] The Family Entertainment and Copyright Act
[6] Sound Recordings
[7] Legal Issues Arising from Hyperlinking
[a] Types of Hyperlinks
[i] Hypertext Links
[ii] Inline Links
[iii] Framing
[b] Implications of Linking
[i] Hypertext
[ii] Inline Linking and Framing
[iii] Copyright and Trademark Concerns
[8] Search Engines and Digital Cataloging
[a] Online Library Projects
[b] Databases and Thumbnails
[c] Infringement and Fair Use
[9] Hot News Misappropriation
§ 5.26 Form: Copyright Assignment
§ 5.27 Form: Work Made for Hire—Author Contract
§ 5.28 Form: Designation of Agent to Receive Notification of Claimed Infringement

Chapter 6: Trademark Law and the Development of Emerging Technology Products
§ 6.01 Introduction
§ 6.02 Emerging Technology Trademark Checklist
§ 6.03 Overview of Trademark Law and Emerging Technology
§ 6.04 Categories
[1] Fanciful and Arbitrary Marks
[2] Suggestive Marks
[3] Descriptive Marks
[4] Generic Marks
§ 6.05 Identifying Characteristics Subject to Protection
[1] Abbreviations and Nicknames
[2] Slogans
[3] Titles
[4] Characters
[5] Celebrities
[6] Trade Dress
[a] Generally
[b] Web Site Look and Feel
[7] Internet Domain Names
[a] Domain Name System
[b] Strategies for Registering Domain Names as Trademarks
[i] Choosing a Mark
[ii] Clearing a Mark for Use
§ 6.06 Federal Trademark Registration
§ 6.07 Selecting Marks for Emerging Technology Products
[1] Descriptive vs. Suggestive Marks
[2] Conducting a Trademark Search
§ 6.08 Emerging Technology Trademark Applications
[1] Preparing an Application
[2] Prosecuting an Application
[3] Principal and Supplemental Registers
[4] Notice of Registration
§ 6.09 Trademark Related Actions
[1] Infringement Generally
[a] Strength of the Mark
[b] Similarity Between the Marks
[c] Relatedness of the Goods
[d] Evidence of Actual Confusion
[e] Sophistication of Buyers
[f] Defendant’s Intent
[g] Likelihood of Expansion
[h] Marketing Channels
[2] Contributory Trademark Infringement
[3] Unfair Competition
[a] False Advertising
[b] Reverse Passing Off
[c] Trademark Disparagement
[d] False Designation of Origin
[4] Dilution
[a] State Trademark Dilution Statutes
[b] Federal Trademark Dilution Act of 1995
[5] Causing Marks to Become Generic
§ 6.10 Proper Use of Emerging Technology Marks
§ 6.11 Trademark Protection on the Internet
[1] Domain Names and Domain Name Disputes
[a] The ICANN Domain Name Dispute Resolution Policy (UDRP)
[b] Anticybersquatting Consumer Protection Act of 1999
[2] Trademark Infringement in Website Content, Metatags, Search Terms and Search Engine Keywords
[a] Website Content
[b] Metatags, Search Terms and Uniform Resource Locators (URLs)
§ 6.12 Form: Trademark Assignment
§ 6.13 Form: Cease & Desist Letter for Trademark Infringement in Internet Domain Name
§ 6.14 Form: Settlement Agreement Providing for Transfer of Domain Name

Chapter 7: Trade Secret Law and the Development of Emerging Technology Products
§ 7.01 Introduction
§ 7.02 Trade Secret Checklist
§ 7.03 Trade Secrets and Emerging Technology
[1] Confidential Business Information
[2] Software
[3] The Entire Application
[4] Works Incorporated into the Application
§ 7.04 Overview of Trade Secret Law
§ 7.05 Mass-Marketed Emerging Technology Applications Containing Trade Secrets
§ 7.06 Misappropriation
[1] Determining Misappropriation
[2] Employee Misappropriation
[a] The Doctrine of Inevitable Disclosure
[b] Covenants Not to Compete
[3] Third Party Misappropriation
[4] Section 337 Investigations
§ 7.07 Establishing Trade Secrets in Emerging Technologies
§ 7.08 Criminal Liability
[1] State Law
[2] Economic Espionage Act of 1996
§ 7.09 Form: Evaluation Nondisclosure Letter Agreement Between Company and Potential Distributor
§ 7.10 Form: Employee Confidentiality and Assignment of Inventions Agreement
§ 7.11 Form: Exit Interview Form
§ 7.12 Form: Employee System Use Warning

Chapter 8: Patent Law and the Development of Emerging Technology Products
§ 8.01 Introduction
§ 8.02 Overview of Patent Law
[1] The Public Use and On Sale Bars
[2] Participation in Standards Setting Bodies
§ 8.03 Examples of Emerging Technology Related Patentable Subject Matter
[1] Software
[2] Data Transmission and Data Compression
[3] Television
[4] Multimedia
[5] Internet-Based and Electronic Commerce
[6] Other Technologies
[a] Biometric Technology
[b] Locational Technology
§ 8.04 Emerging Technology Patent Checklists
[1] Checklist to Minimize Likelihood of Infringement
[2] Patent Protection Checklist
§ 8.05 Patentable Subject Matter and Emerging Technology
[1] Generally
[2] The Patentability of Emerging Technology Software
[3] The Patentability of Emerging Technology Methods of Doing Business
[4] The Patentability of Emerging Technology Database Structures
[5] The Patenting of Emerging Technology: Risks of Aging Out
§ 8.06 Novelty, Nonobviousness, and Definiteness Requirements
[1] Novelty
[2] Nonobviousness
[3] Definiteness
§ 8.07 Patent Applications
[1] The Application Process
[2] Enablement and Best Mode Requirements
[3] Submission of Source Code
[4] Drafting of Claims
[5] International Patent Protection
§ 8.08 Claim Construction
§ 8.09 Patent Infringement
[1] Standards
[2] Remedies
[3] Options for Potential Infringers
[4] Infringement and Imported/Exported Software
[a] Exported Software
[b] Section 271(f)
[c] Litigation
[d] Imported Software
[5] Patent Assertion Entities
§ 8.10 Design Patents and Emerging Technology
[1] Overview
[2] Designs Displayed as Part of Content
§ 8.11 Ownership
[1] Inventorship
[2] Assignment
[3] Licensing
[4] Cross-Licensing
[5] Patent Licensing and the Development of Open Standards
§ 8.12 American Inventors Protection Act of 1999
§ 8.13 Form: Patent Assignment
§ 8.14 Form: Patent License Agreement (Exclusive)
§ 8.15 Form: Patent License Agreement (Non-Exclusive)

Chapter 9: Rights of Privacy and Publicity; Defamation
§ 9.01 Introduction
§ 9.02 Rights of Privacy and Publicity
[1] Overview
[2] Privacy and Publicity Checklist
§ 9.03 Right of Privacy
[1] Intrusion upon Seclusion
[2] Public Disclosure of Private Facts
[3] False Light
[4] Appropriation of Name or Likeness
[5] Survival and Transfer of Right of Privacy
§ 9.04 Privacy Rights and Emerging Technologies
[1] The Scope of the Personal Information Problem
[a] Locational Technologies
[b] Data Mining
[c] Surveillance and Security Technologies
[d] Internet Technology
[i] Clickstream Data
[ii] Tracking Technology
[A] Internet Cookies
[B] Flash Cookies
[C] Mobile Device IDs
[D] Web Bugs
[iii] Unauthorized Interception and Access
[iv] Voluntary Provision of Private Information
[v] Spyware
[vi] Data Security Breach Notification
[e] User-Provided Information
[i] Generally
[ii] Search Engines and Data Retention
[iii] Social Networks and Behavioral Advertising
[2] Selected Privacy Laws
[a] Privacy-Related Federal Laws in the United States
[i] Gramm-Leach-Bliley Act
[ii] Health Insurance Portability and Accountability Act of 1996 (HIPAA)
[iii] Children’s Online Privacy Protection Act (COPPA)
[iv] The Electronic Communications Privacy Act (ECPA)
[v] Fair Credit Reporting Act (FCRA)
[vi] Computer Fraud and Abuse Act (CFAA)
[vii] The Controlling the Assault of Non-Solicited Pornography and Marketing Act (CAN-SPAM)
[viii] Identity Theft Penalty Enhancement Act (ITPEA)
[ix] Telephone Consumer Protection Act (TCPA)
[x] Video Privacy Protection Act
[b] Privacy-Related State Laws in the United States
[c] Privacy-Related International Laws
[i] European Union (EU)
[ii] Data Protection Laws in Canada
[3] Constitutional Protections
[4] Electronic Banking Security
[a] Fraudulent Electronic Funds Transfers
[b] Online Banking Security Procedures
[c] Litigation
[5] Government Actions and Industry Self-Regulation
[a] World Wide Web Consortium
[b] The TRUSTe Privacy Program
[c] The DMA’s Guidelines for Direct Marketers
[d] Internet Alliance Guidelines
[e] Center for Media Education/Consumer Federation of America Guidelines
[f] Children’s Advertising Review Unit Guidelines
[g] Payment Card Industry Data Security Standards
§ 9.05 Right of Publicity
[1] Consent to Use Names or Likenesses in Content
[2] Incidental Use in Content
[3] First Amendment Protection for Emerging Technology Products
[4] Survival and Transfer of Right of Publicity
[5] Right of Publicity on the Internet
§ 9.06 Defamation
[1] Defamation Checklist
[2] Elements
[a] Statement
[b] Defamatory in Nature
[c] Reference to or Concerning the Party
[d] Falsity and Capability of Being Proven False
[e] Publication to a Third Party
[f] Injury
[g] Fault by the Person Publishing the Statement
[3] First Amendment Limitations
[a] Standards for Defamation of Private Persons
[b] Standards for Defamation of Public Figures
[c] Responsibilities of a Producer
[4] Libel and Defamation on the Internet
[a] Application of Traditional Defamation Law to Internet Communications
[b] Single Publication Rule
[c] Revealing the Identity of Anonymous Speakers
§ 9.07 Liability for Inaccurate Data
[1] Negligence
[2] Product Liability
§ 9.08 The Role of Indemnification and Insurance
§ 9.08A GPS Privacy Considerations
§ 9.09 Form: Picture and Name Release
Waiver and Release
§ 9.10 Form: Talent Contract
§ 9.11 Form: User Protected Web Site Data Collection Policy
1. Information Collected
2. Confidentiality
3. Uses of Registration Data
4. Opt-Out Right
5. User Access to Information Collected
6. Lost or Stolen Information
7. Cancellation
8. No Liability for Acts of Third Parties
9. Use of Aggregated Information
10. Updates
§ 9.12 Form: Web Site Privacy Policy
§ 9.13 Form: Sample Privacy Policy Notice Provisions Appropriate for Web Site Directed Toward Children
§ 9.14 Form: Gremm-Leach-Bliley Act Model Privacy Notice Form (with Opt-out)

Chapter 10: The Internet and Data Access Networks
§ 10.01 Regulating Online Indecency
[1] Communications Decency Act of 1996 (CDA)
[a] Background
[b] Section 230
[c] Other Defenses
[i] The Good Faith Defense
[ii] The Access Provider Defense
[iii] The Good Samaritan Defense
[2] Limiting Access to Obscene and Indecent Content
[3] Transmission of Obscenity over Bulletin Boards
§ 10.02 Corporate Internet Policies
[1] Initial Procedures
[a] Security
[b] Limited Access
[c] Viruses
[2] E-Mail, Confidentiality and a Workplace Policy
[a] Generally
[b] Electronic Communication and Privacy Act (ECPA) Concerns
[c] State Law
[d] Attorney-Client Privilege
[e] E-Mail Use Policies
[3] Offensive and Obscene Communications
[4] Trade Secrets and Unsolicited Ideas
[5] Online Copyright Infringement
[6] Website Privacy Policies
[a] Generally
[b] FTC Enforcement Actions
[7] Social Media Policies
§ 10.02A The Federal Records Act, Electronic Records and E-Mail
§ 10.03 Internet and Wireless Commerce
[1] Electronic and Digital Signatures
[a] Enforceability Prior to Federal and State Legislation
[b] UETA and Other State Electronic Signatures Legislation
[c] Electronic Signatures in Global and National Commerce Act (E-Sign)
[i] Purpose and Scope
[ii] Requirement of Consumer Notice and Consent
[iii] Reasonably Demonstrating the Consumer’s Ability to Access
[iv] Effect of E-Sign’s UETA Preemption Provisions on Consent
[v] Withdrawal of Consent
[vi] Electronic Agents
[vii] Exemptions from E-Sign
[d] ABA Digital Signature Guidelines
[e] International Recognition of Electronic Signatures
[f] Security Issues
[2] Export Restrictions on Encryption
§ 10.04 Wrongful Conduct on the Internet
[1] Identity Theft
[2] Disclosure of Embarrassing or Private Information
[3] Click Fraud
[4] “Catfishing”
§ 10.05 Internet Jurisdiction
[1] Online Contract Formation
[2] Websites and Jurisdiction: Is a Website Enough?
[3] Conduct Directed Toward the Jurisdiction
[4] Jurisdiction Across National Boundaries
§ 10.06 Form: Corporate Internet Use Policy
1. Permitted Purposes
2. Permitted Users; No Privacy Expectations
3. Widget System Security
3.1. Downloading
3.2. Internet Firewall
4. Web Servers
5. Copying
6. Disseminating Information on the Internet
6.1. Accuracy of Information
6.2. Information for a Particular Viewer Group
6.3. Regulated Software
7. Governing Laws, Regulations and Policies
7.1. Laws Included
7.2. Policies and Procedures
7.3. Prohibited Activities
8. Other Matters
§ 10.07 Form: Web Linking Referral Fee Agreement
Section 1. Links to Web Retailer; Promotional Placements
Section 2. Associate Responsibilities
Section 3. Order Processing
Section 4. Fees
Section 5. Reporting and Fee Schedule
Section 6. Exclusivity
Section 7. Policies and Pricing
Section 8. Intellectual Property Rights
Section 9. Confidentiality
Section 10. Disclaimers and Limitation of Liability
Section 11. Term and Termination
Section 12. Indemnification
Section 13. General Provisions
§ 10.08 Form: Retail Internet Site Agreement
1. Participation on the Site
2. No Fulfillment Obligations
3. Merchant Listing Design
4. Fees
5. Limited Warranty
6. Limitation of Liability
7. Confidentiality
8. Proprietary Rights; Indemnification
9. Term and Termination
10. Miscellaneous
§ 10.09 Form: Web Hosting Agreement
§ 10.10 Form: Search Engine Services Agreement
§ 10.12 Form: Wireless Services Enterprise Agreement
§ 10.13 Form: Employee Internet Use Policy Statement

Chapter 11: Joint Ventures in Emerging Technologies
§ 11.01 Introduction
§ 11.02 Form of Joint Venture
[1] Introduction
[2] Corporation
[a] Introduction
[b] Regulatory and Reporting Requirements
[c] Governing Documents
[d] Creation
[e] Taxation
[f] Management
[3] Partnership
[a] Introduction
[b] Taxation
[c] Management
[d] Liability
[e] Partnership Agreement
[f] Reporting Obligations
[g] Formation Costs
[h] Term of Existence
[4] Limited Liability Company
[a] Introduction
[b] Management
[c] Operating Agreement
[d] Formation
[e] Liability
[f] Fiduciary Duty
[g] Advantages Over Other Forms
§ 11.03 Contributions
[1] Introduction
[2] Form of Contributions
[3] Intellectual Property
[4] Contractual Relationships
[5] Other Assets
§ 11.04 Intellectual Property Licensing
[1] Introduction
[2] Technology License
[a] Definition of Licensed Technology
[b] Term of Licensed Technology
[c] Scope of License
[d] Source Code
[e] Title to Technology
[f] Warranties
[g] Indemnity and Limits on Liability
[h] Delivery Schedule
[i] Maintenance
[3] Content Licensing
[a] Identification of Licensed Properties
[b] Grant of Rights
[c] Reservation of Rights and Exclusivity
[d] Approvals
[e] Representations and Warranties
[f] Disclaimer of Warranties
[g] Indemnification/Defense Against Third Party Claims
[h] Limitation of Liability
§ 11.05 Confidentiality
§ 11.06 Management and Employees
[1] Personnel
[2] Non-Solicitation of Employees
[3] Equity Options for Management and Employees
§ 11.07 Financial Provisions
§ 11.08 Services Agreements
§ 11.09 Non-Compete and Exclusivity Issues
[1] Non-Competition Agreements
[2] Exclusivity Agreements
§ 11.10 Transfers of Interest
[1] Introduction
[2] Restrictions
[a] Right of First Offer
[b] Right of First Refusal
[c] Buy/Sell
§ 11.11 Promotion
§ 11.12 Antitrust Issues
§ 11.13 Termination
§ 11.14 Form: Emerging Technology Joint Venture Checklist
§ 11.15 Form: Memorandum of Understanding for Emerging Technology Joint Venture ABC, INC.
1. Closing Date
2. Conditions of the Transaction
3. Financial Information; Books; Due Diligence
4. Confidentiality
5. Broker and Finder’s Fees
6. Publicity
7. Term Sheet
8. Termination
9. Equitable Relief
10. Expenses
11. Authorization
12. Damages
13. Governing Law
14. Entire Agreement
§ 11.16 Form: Non-Exclusive Online Affiliate Form

Chapter 12: Regulation of Emerging Technology
§ 12.01 Introduction
§ 12.02 Federal Trade Commission
[1] Introduction
[2] Antitrust
[a] Antitrust Laws
[b] Antitrust Limits on the Licensing of Intellectual Property
[i] Duty to License to Third Parties
[ii] Price Restrictions in Licensing Agreements
[iii] Exclusive Licensing and Exclusive Dealing
[iv] Cross-Licensing and Pooling Arrangements
[v] Grantbacks
[vi] Tying
[vii] Enforcement of Invalid Intellectual Property Rights
[c] Antitrust Concerns Arising from E-Commerce Collaborations
[i] Antitrust Issues in Collaborations
[ii] Collaboration Guidelines
[d] Standard Setting
[3] Protection of Consumers
§ 12.03 International Trade Commission
[1] Introduction
[2] Proceedings Under Section 337
§ 12.04 Department of Commerce
§ 12.05 Federal Communications Commission
[1] Introduction
[2] Bureaus and Offices
[a] Bureaus
[i] Media
[ii] Wireless Telecommunications
[iii] Wireline Competition
[iv] Enforcement
[b] Offices
[i] Engineering and Technology
[ii] General Counsel
[iii] Administrative Law Judges
[iv] Managing Director
[v] Legislative Affairs
[3] Regulation of Specific Emerging Technologies
[a] Television
[i] Digital Television (DTV)
[ii] V-Chip
[b] Voice-Over-Internet Protocol (VoIP)
[c] E911
[d] Spectrum Allocation
[i] Leasing
[ii] Cognitive Radio
[e] Broadband
[i] BPL
[ii] Net Neutrality

Appendix A-1: Excerpts of Relevant Sections of the U.S. Copyright Act
Appendix A-2: Excerpts of Relevant Sections from U.S. Copyright Regulations
Appendix A-3: Copyright Office Circular 7b
Appendix A-4: Copyright Office Circular 45
Appendix A-5: Copyright Office Circular 55
Appendix A-6: Copyright Office Circular 56
Appendix A-7: Copyright Office Circular 56a
Appendix A-8: Copyright Office Circular 61
Appendix A-9: Copyright Office Circular 65
Appendix A-10: Copyright Office Circular 66
Appendix B: Trademark Materials
Appendix B-1
Appendix B-2
Appendix C: Patent Materials
Appendix D: Privacy and Publicity Statutes
Appendix E: Glossary of Terminology for Emerging Technologies


Jeffrey D. Neuburger
Jeffrey D. Neuburger is a Partner in Proskauer Rose LLP, where he Co-chairs the firm's Technology Practice Group and Chairs the Firm's Technology, Media and Communications Practice Group. Mr. Neuburger is also an Adjunct Professor at Fordham University School of Law, where he teaches e-commerce law. Mr. Neuburger frequently writes and lectures on emerging technology law. He is the Chair of the New York State Bar Association's Special Committee on Cyberspace Law. Prior to practicing law, Mr. Neuburger was a systems analyst with the General Electric Company for six years.

Peter Brown
Peter Brown is the national leader of the Technology Law Practice in the New York office of Baker & Hostetler LLP. He is the immediate past Chair of the Commercial and Federal Litigation Section of the New York State Bar Association and was previously the Co-Chair of its Internet and Intellectual Property Litigation Committee. For over a decade he has served as the Chair of the Practicing Law Institutes Information Technology Institute. Mr. Browns practice includes the litigation of information technology and intellectual property issues in state and federal courts across the United States. He has also served as a mediator, arbitrator and expert witness in cases involving technology disputes. In addition, he routinely drafts and negotiates all types of transactional agreements relating the computer technology, the Internet and outsourcing.Mr. Brown served on the Board of the International Technology Law Association for over 15 years.He lectures on technology law and related litigation issues both nationally and internationally. He has been listed among the The Best Lawyers in America and as a Superlawyer in the New York Area. Formerly, he was an Adjunct Professor of Computer Law at Dartmouth College.

Richard Raysman
Richard Raysman is a partner in the New York office of Holland & Knight LLP. Mr. Raysman is co-author of the two-volume treatises Computer Law: Drafting and Negotiating Forms and Agreements;Emerging Technologies and the Law: Forms and Analysis and Intellectual Property Licensing: Forms and Analysis, all published by Law Journal Press, and co-writes a monthly column on computer law for the New York Law Journal. Mr. Raysman is past Chair of the Business Law Section, the largest section of the New York State Bar Association, and is past Chair of its Finance Committee. He also chairs Corporate Counsel's annual Law Journal IP Trademark, Copyright & Licensing Counsel Forum. Prior to practicing law, he was a systems engineer for six years with IBM Corp. Mr. Raysman concentrates his practice on Intellectual Property, including outsourcing and IP litigation, and was recently selected by Chambers as one of America's leading outsourcing lawyers. He is a member of the practical Law Company Advisory Board for Intellectual Property and Technology.