intellectual property Tag

by Kim, Lahey & Killough Law Firm

Alternative Legal Service Providers

Should They Be “Alternative?”

by Doug Kim

This article appeared the January 2024 issue of SC Lawyer magazine. Reprinted with permission of the South Carolina Bar. 

For the past several years, the legal profession has been searching for ways to respond to staffing shortages, increased complexity in legal matters, and clients’ demand for cost control and faster response times. The use of Alternative Legal Service Providers (ALSPs) has been one way to meet these challenges. Failing to understand, explore and, when applicable, properly incorporate ALSPs into your legal practice will unnecessarily diminish the value you can provide to clients and companies. This is especially true when the ALSP leverages modern technology for document review and signature, e-discovery and analysis, litigation support, and regulatory and compliance projects. The introduction of artificial intelligence (AI) makes the decision to adopt or ignore ALSP even more timely and relevant to the modern law practice.

ALSPs can be very beneficial when properly implemented, as they provide non-traditional ways, even revolutionary ways, to provide legal services. There is also no question that the industry is growing. An online article by Thomson Reuters in January of 2023 stated that the ALSPs comprise a $20.6 billion portion of the legal market. The article noted that the rapidly increased use of ALSPs is causing a blurring between law firms, legal departments, and technology companies. The offerings for alternative legal services come in many forms: online legal platforms, virtual law firms, and artificial intelligence technologies that can be used for document review and even document drafting. As client demands increase, ALSPs can help firms and companies meet this demand by providing non-traditional and even disruptive solutions. We have all seen the change in the legal industry, especially post COVID, where digital transformation was increased, remote working became the norm, physical documents were the exception, and access to information dramatically increased. Proper use of alternative legal services can assist the law firm or company transition into the digital era.

One simple example is the shift to e-signature. While the algorithm that was generally used to create the first e-signatures was created in 1977, it was not until the Electronic Signatures in Global and National Commerce (ESIGN) Act of 2000 that these signatures were allowed to be legally binding and therefore an option for law firms. E-signatures are also consistent with the move to the paperless office. E-signatures offer fewer signing errors, improved security, increased response time, client convenience, and lower costs. However, adopting e-signatures comes with requirements such as having the client accept doing business electronically, allowing a wet signature option, showing a clear intent to sign, and receiving a copy of the completed, signed document. The point is that even with something as simple as e-signatures, there are practical, operational, and regulatory requirements that must be met to implement this alternative to the traditional signature. ALSPs cannot just be adopted blindly.

ALSPs can also be thought of as “legal outsourcing”, which is the practice of law firms or corporations engaging with third parties that provide legal support. Domestically, this is outsourcing and internationally it is offshoring. In the early 2000s, tasks that were assigned to these third parties included document review, legal research and writing, drafting of pleadings and briefs, and patent services. For example, companies offered to draft patent applications for substantially less than the domestic attorney fees by using offshored authors. These third parties offered substantially reduced costs, improved turnaround and increased resources to those law firms and companies that sought their services. However, this practice was not without risk.

In 2008, the United States Patent and Trademark Office (USPTO) recognized that this offshoring was occurring and issued a notice which stated, “The USPTO has become aware that a number of law firms or service provider companies located in foreign countries are sending solicitations to U.S. registered patent practitioners offering their services in connection with the preparation of patent applications to be filed in the United States.” The USPTO “reminded” inventors and patent attorneys that “the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.” The risk was that using these ALSPs may cause a violation of the Export Administration Regulations governing exports of dual-use commodities, software, and technology, including technical data.

The lesson here is that while there can be substantial cost savings with an ALSP, a strategy should be put in place to properly manage the ALSP, project, information, data, and regulations.

One lesson can be learned from a now infamous proceeding before the USPTO involving ALSPs Abtach Ltd., 360 Digital Marketing LLC, and RetroCube LLC. These ALSPs purported to assist trademark filers with the federal trademark application process. On November 3, 2021, the USPTO issued a show cause order stating that it had reason to believe that these and related companies were violating the USPTO’s rules of practice, engaging in the unauthorized practice of law, and providing false, fictitious, or fraudulent information in thousands of trademark submissions to the USPTO. Among the violations, the USPTO alleged that the companies failed to follow the rule that all documents submitted to the USPTO in a trademark matter must be personally signed by the named signatory. When the companies did not adequately respond to the USPTO’s show cause order, the USPTO imposed sanctions on the companies, including a bar on further communication with the USPTO, permanent deactivation of their USPTO accounts, and disallowance of any future accounts.  However, this was not the worst of it. The order terminated “all trademark application proceedings involving submissions by Respondents or filed through a USPTO.gov account registered to, associated with, or controlled by Respondents,” leaving thousands of applicants with paid for, but cancelled trademark applications. Several South Carolina applicants were caught in this proceeding. Since federal trademark rights can begin from the filing date, this caused substantial legal damages to thousands of entities. In this case, the use of these ALSPs resulted in substantially more harm than any saving could overcome. The use of an ALSP without the guidance of a practicing trademark attorney was very damaging indeed.

When considering an ALSP, there is always the issue of unauthorized practice of law, as shown in the USPTO proceeding. South Carolina has addressed one business model of an ALSP (Legal Zoom) in a 2012 proceeding and found that “Legal Zoom’s business practices, as reflected in the Settlement Agreement and the Affidavit of Edward Hartman, do not constitute the practice of law.” Nevertheless, each use and implementation is different, and this is an area where the specific ALSP in use will determine the outcome.

Practical and ethical considerations require lawyers and firms to properly investigate and implement ALSPs consistent with the profession’s ethical obligations. Comment 8 to Rule 1.1 of the Rules of Professional Conduct states that a lawyer, to comply with the requirement of competency, should “keep abreast of changes in the law and its practice, including a reasonable understanding of the benefits and risks associated with technology the lawyer uses to provide services to clients or to store or transmit information related to the representation of a client.” Rule 1.4 requires transparent communication so clients can make informed decisions regarding representation. Rule 1.6(a) states, “A lawyer shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation….” Rule 1.6(c) states, “A lawyer shall make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client.” When using an ALSP, even for normal tasks such as document review, e-discovery and data rooms, the law firm has several obligations under the application of Rules 1.1, 1.4 and 1.6. Consider an ALSP that provides e-discovery and document review. First, the lawyer has an obligation to understand the services and operations of the ALSP in sufficient detail to ensure that any information shared remains confidential (Rules 1.1 and 1.6). Second, the lawyer has an obligation to communicate and inform the client that the ALSP is being used and what information is being shared (Rule 1.4). Third, the lawyer has an obligation to stay abreast of the changes in services and operations of the ALSP in the event circumstance’s change. For example, SLPA that are technology-based companies can be subject to mergers, acquisitions, and reorganizations that can impact the ALSP operations. On August 29, 2023, the “legal technology” company Reveal published a press release stating that it acquired two other e-discovery companies, Logikcull and IPRO. Reveal provides the legal industry with tools for document review and other services. The acquisition resulted in over 4,000 customers and employees in more than two dozen countries. Logikcull, initially a United States company, now has its span globally. In the event that a law firm or client used Logikcull for a legal hold, extra steps now have to be taken to be compliant with the International Traffic in Arms Regulations (ITAR), because ITAR covered technical information cannot be transmitted without certain permissions and only to certain counties. Failing to understand the services and operations of the ALSPs of this transaction can result in not only ethical violations, but regulatory ones as well. The example of violating ITAR is the risk that the Rules of Professional Conduct are designed to prevent.

The use of technology, and investigating ALSPs, is not complete without a discussion of artificial intelligence. The risks associated with use of AI can create significant negative impacts on the client so that its use falls under this rule.

First, when we discuss AI, we should classify the type of AI that is being used. Generally, there are three types: analytical, predictive, and generative.

Analytical AI is generally directed to analyzing and interpreting data to provide insights, patterns, and meaningful information. An ALSP using analytical AI may be the easiest to implement since it can streamline document review, reduce errors, and improve efficiency. This is especially true when using AI to scan documents for key terms and flag issues for an attorney to review. Understanding the ALSP using analytical AI (and informing the client) can quickly lead to savings and improved accuracy.

Predictive AI seeks to forecast or predict future events or outcomes based on historical data and patterns. This use may be the riskiest for some firms because of the presence of bias in the very AI model itself, the large quantity of data required, the uncertainty of specific outcomes and assumptions made in the learning model about the subject matter. For example, one AI application, when presented with a potential juror name, searches public data related to the prospective juror, correlates the data with known patterns of human behavior, and provides a detailed profile of the person’s personality type and a summary of their views and biases. This application seeks to provide insight into the juror according to its AI model so that attorneys can use this information to predict biases in a potential juror. However, since AI has to be “taught” how to think, the AI may only be providing an appearance of usefulness, include bias and discrimination concerns, and even may violate the constitutional mandate not to use gender or race when selecting juries. Since the actual operation of the AI model is constantly changing and unknown, there is substantial risk with AI for this predictive application.

Nevertheless, using an ALSP with predictive AI that analyzes data to predict case outcomes and legal trends, combined with a lawyer’s oversight, can be a powerful tool. Using such an ALSP with predictive AI can allow a lawyer to make informed predictions about case success, analyze settlement offers, and develop mediation, settlement, and litigation strategies. Predictive AI can be used to review case facts, prior rulings, and judge behavior, potentially allowing the lawyer to better prepare strategic decisions concerning trial tactics, negotiations, or settlements. Predictive AI has the potential to enhance or even replace the mock jury process. It is important to be aware and understand that every model, technique, and process has its limitations when implementing it.

Generative AI is used to create new content, documents or other material and typically provides newly created content according to patterns and knowledge learned from existing data. Its use can include anything from litigation documents to emails. Again, understanding the process and communicating that it is being used to the client when deploying generative AI is critical to its proper implementation. For example, in patent law, a public disclosure can start a clock running in which the inventor has to file a patent application within twelve months or risk losing the ability to seek patent protection. ChatGPT is a public forum, so using this ALSP to draft a patent application would result in a public disclosure.

Even AI models that claim to keep confidential the information that is provided (e.g., seeking to avoid public disclosure) have issues with their operations. For example, patent drafting AI software states on its website that data is sent to Amazon Web Services (AWS), is encrypted, and the patent documents are not stored except as necessary to provide the services. While this is a good first step, the privacy policy states that the company may share the information collected from you with third-party companies, such as Amazon Web Services, Google, and LinkedIn. One has to wonder how the data remains confidential with these contradictory representations. Understanding these processes and policies is important to being able to communicate to a client when such a service is used.

We also know that there have been missteps with the use of generative AI, including the now well-known fine of $5,000.00 assessed against a lawyer who used ChatGPT to write an affidavit and brief, including six case cites that proved to be nonexistent cases. While it may appear that this is a gross dereliction of duty, the attorney explained that he was unaware that ChatGPT could provide false information (e.g., hallucinations). It is difficult to reconcile this explanation with the requirements of Rule 1.1, comment [8].

When using generative AI for a client, a detailed understanding of the ALSP policies and process is critical to ensure that confidentiality is maintained.
When selecting an ALSP and implementing it in your practice, there are several key points that are needed:

• Understanding how the ALSP receives, stores, and otherwise manages the data it receives. For example, is the data stored in one location, multiple locations domestically, and/or internationally? Further, the vendors of your vendor can play a role. In one example, a vender was used for data storage and analysis for material that was ITAR controlled. However, a vendor of a vendor was not ITAR compliant creating ethical and regulatory issues.
• Understanding the ALSP’s policies such as its security policies, disclosure policies, and ability to return or destroy data is important both in operation (and what) as they provide informed consent to the client.
• Obtaining informed consent from the client can be a requirement in some, if not most, cases. As we see ALSPs continue to invest in technology, the lawyer can capitalize on these new technologies and tools, but not necessarily without the client’s permission.
• Ensuring confidentiality.
• Providing oversight so that the lawyer does not blindly rely upon the ALSP since the duty of communications, competence, and confidentiality cannot be delegated. We learned this from the case J-M Mfg. Co. v. McDermott Will & Emery where the client instigated a legal malpractice claim alleging the negligent handling of e-discovery. The client pled that its counsel’s professional duty of care was breached when its counsel failed to supervise its e-discovery vendors and contract lawyers which resulted in the inadvertent production of thousands of non-responsive, privileged documents.

Properly implemented, ALSPs can be used effectively for the benefit of the lawyer and the client, but not without investigations, precautions, and oversight. Unfortunately, there is not a single checklist for this as each ALSP has unique and ever-changing procedures, policies, and processes, especially with the introduction of AI. Nevertheless, cost savings, efficiency, speed, large data access and analysis, and future predictive services can provide the law firm with a competitive advantage without requiring the traditional “team of lawyers.” Planned, controlled and thoughtful implementation of ALSPs is the way of the future. As discovered in the Alternative Legal Services Providers 2023 Report, ALSP use is growing in large part to the ability of the ALSP to provide specialized expertise (e.g., intellectual property portfolio management) and access to technology that is not available within the firm (e.g., artificial intelligence).

Also, AI is not without its entertainment…

Doug: Please write a closing paragraph for an article discussing alternative legal service providers

ChatGPT: In an era marked by rapidly evolving legal demands and the imperative to optimize resources, alternative legal service providers have unquestionably earned their place in the legal landscape. Their innovative approaches, cost-effectiveness, and commitment to efficiency are reshaping the way legal services are delivered and consumed. As clients and law firms alike continue to seek innovative solutions, the rise of ALSPs stands as a testament to the legal industry’s adaptability and responsiveness to change. While traditional law firms remain a cornerstone of the profession, the symbiotic relationship between traditional and alternative legal service providers is fostering a legal ecosystem that not only meets but anticipates the diverse needs of clients in our increasingly complex and dynamic world. The future of the legal industry appears to be one where the combined strengths of both models will continue to drive progress, making legal services more accessible, efficient, and effective for all.

Doug: Now, write it in the voice of a pirate.

ChatGPT: Arrr, me hearties, in this ever-changin’ legal seascape, these here alternative legal service providers be a treasure worth discoverin’! Their swashbucklin’ methods, savvy for savin’ doubloons, and their knack for speedin’ through legal waters be transformin’ the way we handle our legal affairs. As clients and law firms seek new horizons, these ALSPs be showin’ their mettle, provin’ they be a vital part o’ the legal crew. While traditional law firms be anchorin’ the profession, the partnership ‘twixt old salts and these newfangled ALSPs be creatin’ a legal realm that not only meets but anticipates the diverse needs o’ clients in this ever-twistin’ and turnin’ world. The future of the legal sea be one where both models be workin’ in tandem to chart a course towards makin’ legal services more accessible, efficient, and effective for all ye landlubbers!

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.

Endnotes

1. https://www.thomsonreuters.com/en-us/posts/legal/alsp-report-2023/ (according to the Alternative Legal Services Providers 2023 Report, published in 2023 and conducted June 1 to July
   18, 2022 by the Thomson Reuters Institute, the Center on Ethics and the Legal Profession at Georgetown Law, and the Saïd Business School at the University of Oxford.
2. 73 CFR 42781
3. Id.
4. Id (See MPEP § 140 (8th ed., Rev. 5, Aug. 2006).
5. 15 CFR Parts 730–774.
6. https://www.uspto.gov/trademarks/protect/applications-terminated-abtach-360-digital-marketing-retrocube
7. 37 C.F.R. § 2.193(a); TMEP § 611.01(b).
8. https://www.uspto.gov/trademarks/protect/applications-terminated-abtach-360-digital-marketing-retrocube
9. Case No. 2012-208067.
10. Id.
11. Rule 1.1 Comment [8].
12. Rule 1.4 Comment[5].

by Kim, Lahey & Killough Law Firm

U.S. Patent and Trademark Office releases 2022-2026 Strategic Plan

Plan sets priorities that enable the agency’s new mission and vision

WASHINGTON, DC (June 7, 2023) — The U.S. Patent and Trademark Office (USPTO) today published its 2022-2026 Strategic Plan, completing a planning process that welcomed more than 150 comments on the draft version from the public and USPTO employees.

“We are reimagining the USPTO of the future, an agency that issues, upholds, and protects robust and reliable IP rights that incentivize innovation and bring more ideas to market for and from all,” said Under Secretary of Commerce for Intellectual Property and USPTO Director Kathi Vidal. “Our 2022-2026 Strategic Plan is our path forward for continued success – we thank everyone who provided feedback throughout the planning process to make this plan ambitious, focused, and relevant.”

The new plan outlines the USPTO’s mission-focused strategic goals:
1.    Drive inclusive U.S. innovation and global competitiveness;
2.    Promote the efficient delivery of reliable intellectual property (IP) rights;
3.    Promote the protection of IP against new and persistent threats;
4.    Bring innovation to impact for the public good; and
5.    Generate impactful employee and customer experiences by maximizing agency operations.

The plan directly supports the USPTO’s new mission of driving U.S. innovation, inclusive capitalism, and global competitiveness, and its new vision of unleashing America’s potential, with multiple objectives directly linked to each of these five goals.

For more information on the USPTO 2022-2026 Strategic Plan, visit www.uspto.gov/StrategicPlan.

by Kim, Lahey & Killough Law Firm

ST BARTH® Prevails in Trademark Opposition Case

Charleston intellectual property attorney B.C. Killough recently prevailed in a trademark opposition case before the Trademark Trial and Appeal Board in an opinion issued in May of 2023.  The Board sustained opposition to the federal trademark registration of Poupette St Barth, which was deemed to be confusingly similar to the trademark ST BARTH®. 

Brands are important and valuable assets of companies, even though that value may not appear on a balance sheet.  Monitoring brands used by competitors is an important part of an IP portfolio strategy.  If a trademark owner believes they would be harmed by federal registration of a similar mark, they can file an opposition to the application for registration within a very limited opposition period.  Monitoring of trademark applications at the United States Patent and Trademark Office provides intellectual property attorneys the ability to timely oppose the registration of conflicting marks to protect the client’s brands and prevent consumer confusion. 

The Opposer in this case used ST BARTH to identify high-end luxury personal care products and has sold these products throughout the world since 1983.  The applicant sought to register Poupette St Barth for personal care products with the United States Patent and Trademark Office.

The Board concluded that the marks are confusingly similar and refused to register Poupette St Barth.  The Board stated that “consumers familiar with Opposer’s ST BARTH mark for perfumery, cosmetics, and other personal care products may perceive Applicant’s addition of the term POUPETTE merely as a variant or line extension of Opposer’s ST BARTH mark, with both marks indicating a single source.”  

Read the entire case opinion here.

Any results the lawyer or law firm may have achieved on behalf of clients in other matters do not necessarily indicate similar results can be obtained for other clients.

by Kim, Lahey & Killough Law Firm

Kim, Lahey & Killough 2023 SC Super Lawyers

Kim, Lahey & Killough attorneys listed in
2023 South Carolina Super Lawyers

Kim, Lahey & Killough attorneys Doug Kim, Seann Lahey, and B.C. Killough have been named in the 2023 South Carolina Super Lawyers list as top-rated intellectual property attorneys and Casey Martens has been named in the 2023 South Carolina Rising Stars list as a top-rated employment and labor attorney in the Greenville and Charleston markets.

Each year, no more than five percent of the lawyers in the state are selected by the research team at Super Lawyers to receive the honor of inclusion on the Super Lawyers list and no more than 2.5 percent of the lawyers in the state are selected to be listed as Rising Stars.

Greenville patent attorney Doug Kim, founder of Kim, Lahey & Killough, has been included in the South Carolina Super Lawyers list annually since 2017. Kim concentrates his law practice in the areas of brand protection, invention protection, licensing, contracts, company formation, Internet and domain name, data security and privacy, patents, trademarks, copyright, technology transfer, IP litigation, trade secrets, Internet & domain name pursuits, business disputes & resolutions. In addition to Super Lawyers, Doug Kim has previously been named the to the Greenville, SC Best Lawyers® list, named the Trademark Lawyer of The Year, the Best Lawyers® Patent Lawyer of The Year, an IP Star by Managing Intellectual Property magazine and a Legal Elite of the Upstate by Greenville Business Magazine.

Charleston patent attorney B.C. Killough adds his ninth year as a named attorney to the South Carolina Super Lawyers list in the area of intellectual property law. Killough’s practice areas include brand protection, invention protection, licensing, contracts, company formation, Internet and domain name, data security and privacy, patents, trademarks, copyright, technology transfer, IP litigation, trade secrets, Internet & domain name pursuits, business disputes & resolutions, commercial transactions, and mediations of intellectual property and commercial disputes.  Killough has been honored as a Senior Fellow by the Litigation Counsel of America, holds an AV preeminent rating with Martindale-Hubbell, was previously named the Best Lawyers Corporate Lawyer of the Year for the Charleston market and has been recognized by Charleston Business Magazine as a Legal Elite in the area of Intellectual Property and Innovation.

Greenville patent attorney Seann Lahey joins colleagues Doug Kim and B.C. Killough on the Super Lawyers list for their work in intellectual property matters. Seann Lahey’s intellectual property law practice regularly includes work in trademarks, copyrights, trade secrets licensing matters, and he has extensive experience dealing with international and U.S. patent prosecution. He has also been recognized by Greenville Business Magazine as a Legal Elite of the Upstate for his work in intellectual property law.

Super Lawyers South Carolina Rising Star Casey Martens practices employment and business law in both the Greenville SC and Brevard NC offices of Kim, Lahey & Killough. Her law practice focuses in the areas of business disputes and litigation, state and federal employment law, corporate formation, drafting and enforcement of contracts, business disputes involving interference with client relations, individual and business defamation, collections, and enforcement of non-compete agreements. She has also been previously recognized by Greenville Business Magazine as a Legal Elite of the Upstate.

About Super Lawyers
Super Lawyers, part of Thomson Reuters, 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.

About Kim, Lahey & Killough
With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.

by Kim, Lahey & Killough Law Firm

Hunter Freeman joins Kim, Lahey & Killough

Patent Attorney Hunter Freeman joins longtime colleagues at
Kim, Lahey & Killough

Kim, Lahey & Killough Law Firm is pleased to announce the addition of patent attorney Hunter Freeman to the firm’s Greenville, SC, office. Freeman’s law practice focuses primarily in the areas of patents, trademarks, trade secrets, contracts, licensing, copyrights, litigation and mediation.

Previously, Freeman worked with firm co-founders Doug Kim and Seann Lahey for 15 years at a large South Carolina firm. Since those early years, each has grown in knowledge, experience and emphasis on the intellectual property needs of South Carolina. Additionally, the number of tech companies in the state has grown by more than 250% during those years, and the need for legal strategies that empower businesses of all sizes to succeed has increased accordingly. “I am excited for the future as we work together to address the growing number of tech innovations born out of South Carolina,” commented Freeman. “I am eager to work alongside my friends again, and with the rest of the firm, to build, expand, develop, and advance the future of business in South Carolina and beyond.”

Freeman has experience in a myriad of industries to include medical devices, manufacturing, aerospace, software and tech, marketing, food beverage and hospitality, consumer products, startups and entrepreneurs, among others.

“As our clients’ needs continue to grow and evolve, we understand the importance of having another trusted colleague in our firm who can navigate the complex world of intellectual property protection and enforcement. With the addition of Hunter Freeman we now have five IP attorneys and are well suited to handle the growing needs of businesses and corporations across South and North Carolina,” observed Doug Kim. “And for those seeking to avoid litigation, we now have two intellectual property mediators in Hunter Freeman and Bill Killough.”

Freeman shares the client-centric philosophy of Kim, Lahey & Killough and enjoys sharing his knowledge to help strengthen and support South Carolina’s entrepreneur ecosystems. He routinely speaks at entrepreneurial workshops and his articles have been published in IP WatchDog, Intellectual Property & Technology Law Journal, South Carolina Lawyers Weekly, and UpState Business Journal. Hunter Freeman has been recognized for his work by his peers and the business community as he is listed in The Best Lawyers in America®, South Carolina Super Lawyers, and in Greenville Business Magazine, as a Legal Elite of the Upstate.

Freeman earned a Bachelor of Science in physics at Rhodes College, and his Juris Doctor from the University of South Carolina School of Law. He is admitted to practice before all state and federal courts within South Carolina Courts, as well as the United States Court of Appeals for the Fourth Circuit, and the United States Patent and Trademark Office.

With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce and leverage their intellectual property rights from the Upstate to the Lowcountry and across the globe.

by Kim, Lahey & Killough Law Firm

Patent Attorney Robert Merting joins Kim, Lahey & Killough Law Firm

Kim, Lahey & Killough Law Firm is pleased to announce the addition of Robert Merting as an attorney in the firm’s Greenville, SC, office.  Mr. Merting’s primary focus will be the firm’s intellectual property practice, corporate law, and regulatory compliance. He will also provide legal services directed to patent application preparation, contract and licenses, trademarks, non-disclosure agreements, and litigation.

A native of South Carolina, Mr. Merting worked in the research lab at Milliken and Company while attending Wofford College.  It was at Milliken and Company that he gained a deep understanding of the creation process while working in research and development, following strict corporate guidelines for developing and documenting intellectual property. “Today, I leverage the lessons from those R&D challenges while helping clients document and protect their own intellectual property. It is always a joy telling a client their patent will issue,” says Merting.

In addition to his intellectual property practice, Mr. Merting brings more than ten years of legal experience in the areas of corporate law, wills and trusts, estate planning, and firearms law.  “We welcome Robert and are delighted to have him at Kim, Lahey & Killough,” commented founding attorney Doug Kim. “Our firm has doubled in size this past year as we grow to meet the legal needs of South Carolina businesses. Robert brings a unique skillset to our firm by combining his business experience while working at a major Upstate manufacturing company, his in-house counsel experience with a Department of Defense contractor, and his private practice experience to assist us in continuing to provide excellent legal services to our clients and meet their growing needs.”

Robert Merting earned a Bachelor of Science in computer science, a Bachelor of Arts in business economics from Wofford College, and his Juris Doctor from Washington and Lee University. He is admitted to practice before all South Carolina Courts, the South Carolina Supreme Court, the United States District Court for the District of South Carolina, and the United States Patent and Trademark Office.

With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate to the Lowcountry and across the globe.

by Kim, Lahey & Killough Law Firm

Kim, Lahey & Killough attorneys recognized by Best Lawyers®

The Kim, Lahey & Killough Law Firm is pleased to announce several of its attorneys are recognized by Best Lawyers® for 2023.  

Founding member, Doug Kim, is recognized in the 29th edition of The Best Lawyers in America® in the practice areas of patent law and trademark law. He has been recognized in both areas previously as Greenville’s Trademark Lawyer of the Year, 2022, and Patent Lawyer of the Year, 2019. This is the eighth time he has been recognized by Best Lawyers. 

In our Charleston office, B.C. Killough is also listed in The Best Lawyers in America in the practice areas of patent law and trademark law, as well as corporate law and intellectual property litigation. Killough has been recognized annually in Best Lawyers since 2010 for his work in these areas. In 2015, he was listed as The Corporate Law Lawyer of the Year for the Charleston metro.  

Attorney Casey Martin is named in Best Lawyers: Ones to Watch in America™ in the practice areas of employment law for employees, employment law for managers, and employment law litigation. This recognition highlights the legal talent of lawyers who have been in practice for less than 10 years.  

The Best Lawyers in America recognizes only the top 5.3% of elite lawyers in the nation across 150 practice areas. More than 12 million evaluations were considered in this purely peer-review to identify this year’s exclusive group of Best Lawyers honorees. 

With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe. 

by Kim, Lahey & Killough Law Firm

Doug Kim named Best Lawyers® 2022 Trademark “Lawyer of The Year” in Greenville

Greenville, S.C. — August 19, 2021— A founding member of the Kim & Lahey Law Firm is named Best Lawyers® 2022 Trademark “Lawyer of The Year” in Greenville. This is the seventh time Douglas Kim has been recognized by Best Lawyers. The long-time intellectual property attorney says, “I am honored to have been selected for this ‘Lawyer of the Year’ award especially since it’s determined by peer reviews.”

The 2022 edition of The Best Lawyers in America recognizes the professional excellence of more than 66,000 lawyers in 147 practice areas.  “Lawyer of the Year” honors are awarded to only one lawyer per practice area in each region with extremely high overall feedback from their peers, making it an exceptional distinguishment. Of all the attorneys in private practice in the United States, only 5% are recognized by Best Lawyers of America.

This is the second time Doug has received this top honor. In 2019, Doug was named Best Lawyers® Patent “Lawyer of The Year” in Greenville.

Doug is an innovation enthusiast, entrepreneur and long-time business advocate who enjoys providing legal solutions and strategies tailored to each client’s goals, from start-ups to multinational corporations. Doug helps clients match their intellectual property goals with their business goals by providing legal strategies to protect inventions (patents), brands (trademarks), websites, software, apps, music, photos, and websites (copyright, licenses and Internet law), and trade secrets. Doug also chairs the South Carolina Bar Intellectual Property and Innovation Committee.

by Kim, Lahey & Killough Law Firm

Trademark Renewal Scams: A Growing Problem. Don’t be Fooled.

 Anyone who has registered or applied for a trademark knows it eventually must be renewed. Unfortunately, bad actors know this too and are trying to rip you off. According to the US Patent and Trademark Office (USPTO), trademark renewal scams are on the rise. They’re becoming so sophisticated that the USPTO has filed several trademark applications to increase protection for its own brand.

Being on a national trademark register is one of the many benefits of have a federally registered trademark. It allows others to search and find your registration. When other companies are trying to determine if a name is “available,” one of the first places they look is the USPTO database of trademark registrations and pending applications. To keep a trademark registration enforceable, it must be renewed periodically. Generally, the first renewal is five years from registration. The next one in five more years and then every 10 years after that. Unfortunately, bad actors are also looking at the public database. The USPTO says they’re seeing an increasing number of misleading solicitations and trademark filing scams.

The USPTO has also stated that it is “seeing more sophisticated enterprises entering the space” with some scams even impersonating the US Patent and Trademark Office. I know first hand. I received a fraudulent text regarding my trademark just last year. The USPTO has taken steps in the past to curb this misleading and sometimes illegal behavior, including providing scam alerts, working with law enforcement and sanctioning filers who violate the US Patent and Trademark Office rules.

On August 4, 2021, the Department of Commerce (the agency under which the USPTO sits), filed several applications for the federal registration of USPTO marks. The USPTO hopes with a federal registration, it can improve its ability to stop these scams and protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation with the USPTO. In appreciation of the potential conflict of filing an application in its own office (because the application would be examined by the USPTO) the Department of Commerce is the actual applicant.

As we see more and more activity online and with more and more access to information, we can expect these scams to continue. If you receive a notification from a party you do not know (for example, not your law firm) take caution. Some of the known violators call themselves names like:

“Patent and Trademark Office”
“Patent & Trademark Office”
“Patent and Trademark Agency”
“Patent and Trademark Bureau”
“Trademark Compliance Center”
“Trademark Compliance Office”
“Trademark Office LTD”
“United States Trademark Registration Office”

One company in Belize went so far as to attempt to register the mark PATENT & TRADEMARK AGENCY.  In response, the USPTO stated, “Registration is refused because the applied-for mark PATENT & TRADEMARK AGENCY consists of or includes matter which may falsely suggest a connection with a US government agency, specifically, the US Patent and Trademark Office.”

If you have any doubt as to the authenticity, truthfulness or honesty of any communication you receive concerning your trademark registration or application, contact an experienced trademark attorney for assistance.

by Kim, Lahey & Killough Law Firm

Kim & Lahey Attorneys Honored in 2021 Legal Elite

The Kim & Lahey Law Firm is proud to announce that our attorneys are being honored by Greenville Business Magazine as part of South Carolina’s 2021 Legal Elite. This is the second year in a row that all Kim & Lahey attorneys have made the list.

Greenville Business Magazine’s Legal Elite is the only regional awards program that allows every active attorney to nominate and vote for their peers across 26 categories. The following are the Kim & Lahey attorneys selected for inclusion, as well as the practice areas in which their work is recognized:

Douglas Kim: Intellectual Property and Innovation – Business Litigation
Seann Lahey: Intellectual Property and Innovation – Business Litigation
Jason Rosen: Tax and Estate Planning – Corporate Law, Mergers, and Acquisitions
Casey Martens: Labor and Employment

Thank you to all of our peers who voted and congratulations to all of the South Carolina attorneys who are being recognized this year.

by Kim, Lahey & Killough Law Firm

Kim & Lahey Law Firm Named to “Best Law Firms” List 2021

by Kim, Lahey & Killough Law Firm

Doug Kim Shares Legal Strategies for Entrepreneurs

The pandemic has forced many changes in the business world, from closings and layoffs for some, to successful pivots for others. One surprising outcome is the surge of new startups in America, which had increased by almost 50% for the year by October.

To celebrate this renaissance, i4Series is hosting a free online event as part of Global Entrepreneurship Week on November 19 from 11am – 12pm. Whether you’re a startup or looking to scale your business, join us to learn about software and legal strategies that put you on a path to success.

Doug Kim has been supporting the entrepreneurship community for more than 20 years, helping innovative businesses of all sizes thrive. Now, more than ever, during this time of rapid innovation and uncertainty, entrepreneurs need legal strategies that empower them to succeed, strategies like protecting inventions and your brand, protecting your work from being copied, and using contracts to safeguard your interests to name a few.

He is joined by fellow speaker, Zac Muma, a Business Solutions Specialist for Microsoft. Zac works with entrepreneurs to identify what they need in their software stack and helps them get set up. With so many apps available, it’s hard to know which ones you may need and how they work together. Whether you’re B2B, eCommerce or offer professional services, Zac will show you ways to streamline operations and get new clients.

by Kim, Lahey & Killough Law Firm

Doug Kim & Jason Rosen Selected to 2020 SC Super Lawyers® List

We’re proud to announce that Doug Kim and Jason Rosen have been selected to the 2020 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.

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 Firm

Kim & Lahey Law Firm Named to “Best Law Firms” List 2020

by Kim, Lahey & Killough Law Firm

Using 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 Firm

Increase 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!

1. 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?
2. 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.
3. 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?
4. Work with an experienced attorney that understands software, software licensing and the trends in this area.
5. 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, [email protected].

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.