Washington, D.C. – U.S. News & World Report and Best Lawyers, for the 10th consecutive year, collaboratively announce the release of the “Best Law Firms” rankings. This is the second time in less than two years that the Kim & Lahey Law Firm has been recognized for this honor.
by Kim, Lahey & Killough Law FirmKim & Lahey Law Firm Named to “Best Law Firms” List 2020
Firms included in the 2020 Edition of U.S. News – Best Lawyers “Best Law Firms” are recognized for professional excellence with consistently impressive ratings from clients and peers. To be eligible for a ranking, a firm must first have a lawyer recognized in The Best Lawyers in America©, which recognizes the top 5% of private practicing lawyers in the United States. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise.
“Choosing the right law firm can be a vital decision,” said Tim Smart, executive editor at U.S. News & World Report. “The rankings draw on U.S. News’ 35 years of experience evaluating complex institutions to help individuals and companies alike make the best decisions.”
The 2020 rankings are based on the highest number of participating firms and client votes received on record. Almost 16,000 lawyers provided more than 1,229,000 law firm assessments, and more than 12,000 clients participated providing 107,000 evaluations.
“For the 2020 ‘Best Law Firms’ publication, the evaluation process has remained just as rigorous and discerning as it did when we first started ten years ago.” says Phil Greer, CEO of Best Lawyers. “This year we reviewed 14,931 law firms throughout the United States – across 75 national practice areas – and a total of 2,106 firms received a national law firm ranking. We are proud that the ‘Best Law Firms’ rankings continue to act as an indicator of excellence throughout the legal industry.”
by Kim, Lahey & Killough Law FirmUsing A.I. to Slash Shipping Costs | 2019 Supply Chain Innovation Award Winner
You’ve heard of SEO. How about SCO? It stands for Shipping Cost Optimization, a patent pending method of using artificial intelligence to slash shipping costs. This homegrown innovation, called IntelliPack, has thrust local entrepreneur, John Peck, CEO, President, & Co-Founder of FastFetch Corporation into the national spotlight.
Peck joined Katie Neau, RCI Supervisor of Snap-on Tools at the Council of Supply Chain Management Professionals’ (CSCMP) EDGE 2019 Conference on September 18, 2019, in Anaheim, California, for their presentation about “Using Artificial Intelligence to Slash Shipping Costs.” They beat out Silicon Valley giant Intel Corporation, as the winners of the 2019 Supply Chain Innovation Award (SCIA) .
Snap-on Tools is saving 11% annually on total shipping costs at its distribution center in Crystal Lake, IL. The initiative employs artificial intelligence to minimize wasted space in shipping cartons as well as new logistical processes to cut corrugated material costs by 20%, dunnage costs by 27% and packing labor costs by 30%. Peck says companies like Snap-on Tools often save an average of $18,000 per month on small parcel carrier shipping costs using his patent pending packing process.
It took Peck about six months to develop the new method. He says, “You have to be able to calculate the best box size for shipping an unpredictable collection of items of given sizes in less than a second. When someone orders online, that one order may have eight to 10 things in it. Each comes in different shapes and sizes and there are more than 100 boxes to choose from. Using the right size box is important.”
Doug Kim represents FastFetch. He says, “Because it’s our job to help with intellectual property protection, we get to see these inventions very early on. It’s exciting to see our clients be successful, to see an idea go from conception to commercialization.”
Peck’s method of using A.I. to slash shipping costs can virtually figure out how to place the items in the best sized box. “It’s going to make e-commerce affordable,” says Peck. “Consumers want free shipping, but someone has to pay for it. Our method ensures there is minimal wasted space. Smaller boxes means more packages can fit in each shipment. Instead of needing multiple trips, using multiple trucks or airplanes, now more can fit into each trip and that will help shipping companies become more efficient too.”
Congratulations to the entire FastFetch team! Watch the video below to see SCO in action.
by Kim, Lahey & Killough Law FirmKim & Lahey Continues to Expand
As business becomes more sophisticated, more of you are reaching out for answers to complex questions, seeking advice on how to handle cutting-edge problems. Taking care of business in this digital age is less intimidating with a multifaceted, dedicated legal team by your side.
We want to understand your business so that we can assist in legal strategies that align with your business goals. We want to solve problems before they occur and knowing your business helps us better identify and avoid risks. Bringing real-world business experience, our attorneys can better assist you in meeting those business goals, including our newest member, Jason Rosen. He joins our team with over 15 years’ experience as an attorney and securities and financial services professional.
Whether you’re a startup or a major manufacturer, Jason will help us better serve your legal needs associated with day-to-day operations, vendors, customers, employees, independent contractors, business transactions and sales, as well as founder, owner and management disputes and issues.
He moves to Greenville, South Carolina, after living in Florida, where he is also a licensed attorney. Additionally, Jason is credentialed in California, New York, South Carolina and soon to be North Carolina.
Please join us in welcoming Jason Rosen, along with his wife and daughter, to the Kim & Lahey family!
Learn more about Jason and how he can help meet your business legal needs.
by Kim, Lahey & Killough Law FirmIncrease in Software License Disputes Expected to Continue in 2019
In our practice we are seeing an increase in software license disputes between software vendors and users. It seems that the main reason for the increase in disputes is the change in technology, which has changed the way in which software is created, distributed and used. This problem is aggravated by either current license agreements not being updated to reflect these changes or by vendors making license terms more onerous for users.
Technology is creating a need to modify and update license agreements.
The technological changes that are at the root of this increase in disputes include the rapid increase in cloud computing and virtualization of software. License agreements that were user based, seat based or even enterprise based do not fit well with the cloud/virtualization model. In response, software vendors are seeking to identify the actual number of user or copies by exercising their audit rights which users typically try to resist, thus creating tension between the vendor and the user. When creating, distributing or using software, it is wise to focus on the licensing model being used as well as how it fits into the existing IT system. As more and more software moves to the cloud and license agreements are not updated, we can expect to see license disputes increase.
Vendors are changing their licensing terms.
For example, Java, one of the most widely adopted programming languages (Indeed reported in 2016 that it was the second most sought after skill for programming) had its license changed so that Oracle JDK is free to individuals for use, development, testing, prototyping and demonstrations, but now requires a commercial license to avoid the GPLv2+CE license. The GLPv2 license requires that all the source code be made public, which completely removes any ability to prevent others from using your source – an outcome not very popular with most software vendors seeking to license their software.
We are also seeing license terms being used aggressively where some vendors are seeking to make up for lost revenues caused by the open source model. Software developers, that charge for their time, turn to open source for efficiencies that can increase profits and allow savings to be passed to customers. However, some of the open source licensing is being modified without the user’s knowledge, creating significant legal and financial issues.
For example, some software licenses have clauses along the lines of “[Vendor] expressly reserves the right to modify the Terms of Service at any time in its sole discretion by including such alteration and/or modification in these Terms of Service, along with a notice of the effective date of such modified Terms of Service.” The issue is that the individual in an organization that approves licenses is typically not the user that would encounter the “modified Term of Services.” So terms change without the company’s knowledge. In one case, we saw the license go from free to thousands of dollars per user. The user simply would not have used the software in the first place, had it known of this change and is now in the process of removing the software from its product.
The Recent Supreme Court may increase Software copyright disputes.
In March, the Supreme Court clarified that to bring a copyright infringement case, the copyright holder must have the copyright registration in hand. This changed the rule in many areas of the country that allowed for the copyright holder to simply have an application on file. If software vendors begin to apply for and secure copyrights upon the creation of software (as they should), they will be entitled to attorney fees and statutory damages (recovery up to $150K per infringement without proving actual damages). Under the old rule, where only the application in file was needed, the ability to recover attorney fees and statutory damages we largely lost. Knowing that the recovery of attorney fees and statutory damages are available, vendors may not be likely to use copyright infringement to more aggressively enforce their licensees or even instigate litigation.
What’s next? Prevention!
- Review the policies within your organization as to how software is used and downloaded. For example, can anyone download software and click “I Agree” and bind the company to the licenses?
- Review the existing license agreement and amendment, renegotiate or even cancel as appropriate. We are even seeing software vendors elect to use the laws of other countries to benefit for more advantageous legal structure than those in the US. For example, because Canada can allow for the modification of the license with only notice to the user, some vendors are electing to use Canadian law (localization). In 1984, Louisiana enacted the Software License Enforcement Act (SLEA) which, among other terms, state that a software license agreement can ONLY be enforced if: (a) the user can clearly read a software license notice on the software packaging; (b) the software license notice indicates that by opening the package or using the software the end user accepts the terms of the enclosed license agreement and (c) the notice states that the software may be returned if the end user does not accept the license agreement. Note how this law does not fit cloud-virtualization very well.
- At the software design stage for customer software, understand the open source used, third party software used, third party licenses needed, and the effect of the rest of the IT system already in place. For example, does the custom project legally allow for cloud-virtualization? Does the software architecture need seat licenses, enterprise, cloud, or some other license structure?
- Work with an experienced attorney that understands software, software licensing and the trends in this area.
- Act early, users can typically have a better position in negotiating when the potential issues are identified pre-dispute and can resolve the potential dispute with the vendor. Vendors can better service users when the business and legal relationship is clearly understood, and unauthorized use is avoided.
If you have any questions regarding this article, contact Doug Kim, 864-973-6699, doug@kimandlahey.com or Cherish Benton, cherish@kimandlahey.com.
Doug Kim, a Physics major from Davidson College, began his professional career as a computer programmer and software engineer. His intellectual property career began in 1998, when he combined his business experience with his legal education and was involved with enforcing a client’s patent against multiple infringers. Since then, Doug has created a well-rounded IP practice that provides legal solutions and strategies tailored to each client from multinational corporations to start-ups. Doug provides his clients with strategies to protect inventions (patents), brands (trademarks), websites, software, apps, music, photos, and websites (copyright, licenses and Internet law), and trade secret (the “secret sauce”).
These materials have been prepared for informational purposes only and are not legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Internet subscribers and online readers should not act upon this information without seeking professional counsel.
by Kim, Lahey & Killough Law FirmWatch Kanga Compete on Shark Tank
Teddy Giard, Logan LeMance and Austin Maxwell set to pitch their product, the Kase Mate, on the Sunday, April 7, episode of “Shark Tank.”
Like many young people, Logan LaMance had a decision to make his freshman year in college. He could continue focusing on freedom and fun or get serious and shoot for the stars. He chose the latter and it paid off. This Sunday, Logan and his partners at Kanga, LLC, will appear on Shark Tank. Their pitch? Kanga’s Kase Mate is described as a “koozie for a case of beer.” Their marketing slogan is, “Kooler than a cooler and keeps drinks cold for up to 7 hours without ice.” You get the point, but how did they get to this point?
Logan was born and raised in Pickens, SC. He started taking classes at Clemson during fall 2014. Logan says it was the end of that first semester when he realized he needed a change in direction. The following semester he was part of an internship program lead by Young Entrepreneurs Across America, that teaches students how to start and run a business. It was a house painting business called Student Painters, LLC.
Logan worked harder over the next two years than he ever had before in his life. He put in between 30 – 40 hours per week on school work and every other waking moment was spent on his business. Logan said it was a tough place to be, both mentally and physically taxing, but he was driven and had a dream. He says, “The thing I am the proudest of is not that I brought the biggest business or made the most money, but that I fought through it, never quit and learned a lot of valuable lessons along the way.”
That’s when he caught the bug. After running a grueling, yet successful painting business with other students for two years, he was sick and tired of paint brushes, but he knew he wanted to be an entrepreneur. During the spring of 2017, Logan took an entrepreneur class that would change his life. The class project was to create a solution for a problem that people face. Logan says finding a good idea wasn’t easy.
Then came football season. Logan and his friends were on their way to tailgate. They stopped to grab a couple 12-packs on the way. They all had coolers back at their apartments, but they didn’t want the hassle of carrying a heavy, clunky cooler a mile from home to the tailgate and back, which meant they ended up drinking warm beer before long. Logan thought to himself, “Why are we drinking warm beer? That’s a problem.” He had to find the solution next.
Logan says he saw someone take a cold beer out of a cooler and put it into a koozie and that’s when it hit him. Logan wondered, “Why don’t we have the same thing for the whole case? We got it from the fridge (what made it cold), why don’t we have something to put it in to keep it cold for the whole time we’re actually going to enjoy it?”
That’s how Kanga was born. He pitched the idea to his class and convinced them it was bigger than a class project. They created a prototype and worked with mentors through the Spiro Institute to take their idea and turn it into a business.
Doug Kim, Kanga’s intellectual property attorney of the Kim and Lahey Law Firm, says, “I met the owners of Kanga, LLC through my work with the Clemson Venture Program and was immediately impressed with their inventions, marketing acumen and business decisions. To see these business owners accomplish so much while also attending college, should be inspiring for everyone.”
Kanga started with a short run of 100 units to test the market and see if people would actually buy it, and they did. From there, Kanga won a first-place prize of $8,000 at Clemson’s “The Pitch Smackdown,” which Logan describes as a mini shark tank where they also picked up their first investor.
Fast forward to when Kanga had a successful Kickstarter campaign in 2018, and now, as they’re only two days away from appearing on the real Shark Tank on ABC. Logan says, “If we can do it with a koozie for a case of beer, image what other ideas can do.”
The Shark Tank episode airs at 10pm EST, Sunday, April 7.
This article is for informational purposes only. Any result achieved for one client does not necessarily indicate that similar results can be achieved for any other client. Kim and Lahey Law Firm, LLC has designated Douglas W. Kim as the person to contact for information regarding this article. He may be contacted at 864-973-6688 or at doug@kimandlahey.com.
by Kim, Lahey & Killough Law FirmDoug Kim Selected to 2019 SC Super Lawyers List
Douglas Kim, Partner, Kim and Lahey Law Firm, LLC
Douglas Kim, a longtime intellectual property attorney in the Upstate area, has been selected to the 2019 South Carolina Super Lawyers list. Each year, no more than five percent of the lawyers in the state are selected by the research team at Super Lawyers to receive this honor.
Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. The result is a credible, comprehensive and diverse listing of exceptional attorneys.
Based in Greenville, South Carolina, Doug started his own law firm in March of 2018. Soon after, he partnered with longtime friend and colleague, Seann Lahey, in what is now the Kim and Lahey Law Firm, LLC. They assist clients, both domestically and internationally, who are looking to safeguard innovative ideas or inventions, secure their brand’s identity, or otherwise need to protect their business interests. They take a client-centric approach toward understanding a client’s needs in order to create customized legal solutions involving patents, trademarks, copyrights, trade secrets, enforcement, licensing, contracts, privacy policies, and website terms and conditions.
Doug also serves as the Chair of the South Carolina Bar Intellectual Property and Innovation Committee.
The Super Lawyers lists are published nationwide in Super Lawyers Magazines and in leading city and regional magazines and newspapers across the country. Super Lawyers Magazines also feature editorial profiles of attorneys who embody excellence in the practice of law. For more information about Super Lawyers, visit SuperLawyers.com.
by Kim, Lahey & Killough Law FirmSupreme Court Rules That A Copyright Registration Is Mandatory For Enforcement
Computer Programmers, Architects, Web Developers, Authors, Photographers, Musicians, Artists and others must now file for and receive a copyright registration before enforcing their rights in court. In Fourth Estate Public Benefit Corporation v. Wall-Street.com (a dispute about website content), the Supreme Court unanimously ruled on Monday that copyright owners must wait for a registration before pursuing infringement claims in court. This decision overturns the law that applies to the Fourth Circuit (Maryland, North and South Carolina, Virginia and West Virginia) making it a requirement to have the registration prior to filing a copyright complaint. Before this ruling, copyright litigation could be started when the copyright application was filed as long as the copyright registration was received before trial. This is no longer the case so that this author recommends that copyrights applications be filed upon the creation of the work.
The Supreme Court acknowledges that registration processing times have increased from weeks to months (currently about six months) and noted that “administrative lag” did not convince the Court to allow cases without registration. Filing early (within three months of publication) allows the copyright holder to seek attorney fees and statutory damages. If you have not filed for copyright protection, all is not lost as there are strategies that can be used to preserve your rights.
by Kim, Lahey & Killough Law FirmTrademark Issues for Start-Up Companies
Getting Started the Right Way
Forbes lists failing to secure trademark rights as a top 10 legal mistake of small businesses.[i] Failing to properly check or secure trademark rights has led to a rise in litigation in South Carolina. [ii] Learning some trademark basics can help companies avoid early mistakes, develop a strong mark and enforceable mark, while increasing the value of your trademark asset.
Q: Why do a trademark search?
Trademark searches are an effective way for businesses to evaluate the registrability and strength of a mark, as well as help avoid trademark infringement issues. A federal trademark search discovers pending applications or existing registrations and helps you determine whether any are “confusingly similar” to your trademark. This type of search is by far the most important for startups, new ventures, and middle-market companies.
“A knowledgeable and trustworthy trademark attorney can provide you with a legal opinion that can outline the risks associated with using and registering your trademark.”[iii]
Understanding Trademarks
Q: What is a trademark or service mark?
Trademarks are property rights directed to protecting a word, name, phrase, or symbol that identifies a source of goods and distinguishes the source of goods from those of a competitor. A service mark is primarily different in that it identifies and distinguishes the source of a service rather than a product.
Q: What does a trademark protect?
Trademark rights can be used to prevent others from using a mark likely to create confusion among customers.
Q: What makes for a strong trademark?
Descriptive and generic terms that merely describe the services, goods, or component should be avoided as potentially ineligible for trademark protection, while suggestive and fanciful terms make for preferred trademarks. The more unique, the stronger the mark is likely to be.
Q: How long does a trademark last?
Trademark rights can last indefinitely so long as the mark is continuously being used in association with specific goods and/or services and appropriate steps are taken to police the mark against infringement.
Establishing Trademark Rights
Trademark rights are established through the use of a mark, not from registration. Even if the mark is not registered, the owner can establish substantial common law trademark rights in the geographic area in which the mark is being used. Business owners can enhance and extend their trademark protection with federal trademark registrations in appropriate cases. Federal trademark registration provides various legal advantages for protection, enforcement and damages in the event of infringement.
Understanding Trademark Limitations
Without a federal registration, trademark rights are only in the market area where you can show that you are using the mark. This means that other companies outside your market area can also use your mark on the same or similar goods, even when you adopted the mark first in your area.
Conflicts arise when markets begin to overlap. Legal action may then be required to determine who is entitled to the trademark rights in a given area. Federal registration can help companies better position themselves in litigation to determine who has superior rights when companies are expanding their markets.
KEYS to Reducing Risk
Perform a federal trademark search.
Understand the relationship with trademarks and your business.
Understand any geographic limitations with trademark rights.
Select a strong mark.
Consult with an experienced trademark attorney.
[i] https://www.forbes.com/sites/aileron/2014/07/02/top-10-legal-mistakes-small-businesses-make/#438ed9c2242f
[ii] https://upstatebusinessjournal.com/2017-shows-south-carolina-businesses-experience-upward-trend-trademark-litigation/
[iii] Id.
by Kim, Lahey & Killough Law FirmRecent US Supreme Court Ruling Is A Warning To File Patent Applications Early, Else Lose Your Rights.
On January 22, 2019, a unanimous decision by the U.S. Supreme Court held that under the Leahy–Smith America Invents Act (AIA), a “secret sale” of an invention can cause the inventor to lose patent rights. The AIA includes a section that prohibits patent protection for inventions that were “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”. Before this case, the question was whether the addition of the phrased “or otherwise available to the public” means only public activity prohibits patent protection. The Supreme Court clarified this holding that this section extends to private sales, even when the invention itself is not disclosed.
In 2001, Helsinn Healthcare S. A. (Helsinn), a Swiss company, entered into a license agreement and a supply and distribution agreement with a marketing partner, MGIPharma, Inc. (MGI) to assist with marketing and distributing the drugs in the United States. Both agreements included dosage information and required the marketing partner to keep confidential any proprietary information received from Helsinn under the agreements. In a joint press release, the two companies announced the existence of the agreement, but did not disclose the details of the invention (e.g. dosage information). MGI also reported the agreements in its Form 8–K filing with the Securities and Exchange Commission. Neither the press release or the 8-K included specific details of the invention so that the invention itself remained undisclosed. Helsinn filed a provisional patent application two years later. Ultimately, a patent issued based from the provisional application and Helsinn sued Teva Pharmaceutical Industries, Ltd., and Teva Pharmaceuticals USA, Inc. (Teva) for patent infringement under this patent.
At the trial level, the District Court determined that the “on sale” provision did not apply and stated that under the AIA, an invention is not “on sale” unless the sale or offer in question made the claimed invention available to the public. Because the companies’ public disclosure of the agreements between Helsinn and MGI did not disclose the details of the invention, the invention was not “on sale” before the critical date. The Federal Circuit reversed. It concluded that disclosing the existence of the sale even when the details of the invention were not disclosed this activity falls within the AIA’s on-sale bar. Because the sale between Helsinn and MGI was publicly disclosed, it held that the on-sale bar applied.
The Supreme Court agreed with the Federal Circuit and held that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can prohibit patent protection and invalid any issued patent not based on a untimely filed patent application.
This case support one of the public policies of the AIA in that is certainly encourages the early filing of patent applications. This case should encourage inventors to work closely with patent counsel to avoid any potential loss of rights down the road. If patent rights are of interested, filing a timely patent application is a must.
Doug Kim is the founder of Douglas Kim Law Firm, LLC, an intellectual property focused law firm that works with clients to understand their needs and customize legal solutions that best achieve their goals and budgets. We treat our clients’ challenges as our own, making their business our business. Doug can be reached at 864-616-9095 and doug@dougkim.com.
by Kim, Lahey & Killough Law FirmUpstate Attorney Douglas Kim Recognized by The Best Lawyers in America as the 2019 “Lawyer of The Year” for Patent Law in Greenville, SC
Greenville, S.C. — August 15, 2018—Doug Kim, a longtime intellectual property attorney in the Upstate area, has been recognized by The Best Lawyers in America as the 2019 Lawyer of the Year for Patent Law in Greenville, SC. Best Lawyers is the oldest and most respected peer review publication in the legal profession. The Lawyer of the Year is awarded to an individual attorney with the highest overall peer-feedback for a specific practice area and geographic region. Only one attorney is recognized as the “Lawyer of the Year” for each specialty and location.
This is the fourth time Doug has been recognized by this well-known, peer-reviewed organization for providing legal counsel to companies and individuals whose products or services are technical in nature. “I am honored to have been selected for the Lawyer of the Year designation especially since this is a peer review award.” says Doug.
Based in Greenville, South Carolina, the Kim and Lahey Law Firm, LLC, which was founded by Doug and Seann Lahey in March of 2018, assists clients with legal services including intellectual property protection both domestically and internationally. Working with clients to understand their business, their needs and customize legal solutions that best achieve their goals and budgets, Doug’s practice focuses on client-centric strategies involving patents, trademarks, copyrights, trade secrets, enforcement, licensing, contracts, privacy policies, and website terms and conditions.
Additionally, Doug has recently been notified by the South Carolina Board of Governors that he will be the Chair of the South Carolina Bar Intellectual Property and Innovation Committee. “Through organizations like the SC Bar IP and Innovation Committee, I hope to help other attorneys and clients increase their awareness of the importance of a good IP strategy and build relationships that help the profession and clients navigate the increasingly complete legal landscape.”
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