by Lee Gesmer | Oct 12, 2006 | Copyright, Trade Secrets
In Cambridge Literary Properties, Inc. v. W. Goebel Porzellanfabrik Magistrate Judith Dein issued an extensive Report and Recommendation (adopted by Judge Nancy Gertner) on issues relating to the statute of limitations as a bar to a claim of copyright infringement. The case involves facts going back as far as 1931 which involved the drawings of Berta Hummel, and is a valuable primer on the defense of statute of limitations in copyright actions.
District court Judge Gorton has issued a decision in Echomail, Inc. v. American Express denying IBM’s (a co-defendant) motion to dismiss claims of trade secret misappropriation, unfair competition and violation of M.G.L. c. 93A.
In T-Peg, Inc. v. Vermont Timber Works, Inc. the First Circuit applied the Architectural Works Copyright Protection Act for the first time in this circuit. Reversing summary judgment for the defendant and remanding for trial, the court not only recapped the legal standard for substantial similarity (the test by which infringement is judged under copyright law), but clarified its position on expert testimony in copyright cases, making clear that there is no per se rule against expert testimony, and that whether or not it is appropriate depends on the complexity of the subject matter at issue.
by Lee Gesmer | Oct 4, 2006 | Miscellaneous
Laurence H. Reece, III, was a partner at our firm for two years at the end of the 1990s. Following that, he started his own firm in 2000. Larry died of cancer in August 2004.
Larry was the “Dean of the Bar” in Massachusetts when it came to the law of trade secrets and covenants not to compete. He was a nationally recognized expert in these practice areas and a prolific author, writing seminal articles on these topics.
Life moves on, and out of concern that these articles would turn to dust on the bookshelves and in the libraries of Massachusetts attorneys, I asked Larry’s wife, Patricia Manson, for permission to publish some of Larry’s best articles on this blog. She agreed enthusiastically. While the copyrights to these articles belong to the publishers, I believe that this nonprofit, educational publication falls well within fair use. (Warning: these are lengthy PDF files).
This was, and remains, the seminal article on trade secret law in Massachusetts.
This is the counterpart to the 1986 article.
An update on noncompetition agreements.
A valuable and comprehensive guide to trade secret protection programs.
A 2003 comprehensive update to the 1991 article.
These articles remain an important and valuable resource for lawyers and judges in the state, and I hope that they will prove useful, and help keep Larry’s memory alive.
by Lee Gesmer | Oct 4, 2006 | Courts, Litigation
Lawyers know that one of the most unpredictable decisions a Superior Court judge can make involves long-arm jurisdiction – that is, whether the defendant has enough “contacts” with the state to be sued here. (For an article by the author discussing the state long-arm statute in depth, click here).
Two recent decisions illustrate this point. In Saint-Gobain Ceramics v. Happy Hewes Judge Bruce Henry ruled that there was no personal jurisdiction over Hewes, who lived in Illinois, despite the fact that Hewes had been an employee of Saint-Gobain, engaged in phone calls with Saint-Gobain in Massachusetts, had made multiple visits to Massachusetts on company business and had received paychecks from Saint-Gobain’s facility in the state. Most lawyers would tell you that this was more than enough to establish personal jurisdiction, but Judge Henry disagreed, noting that “whatever Hewes did during the unspecified number of contacts with Massachusetts was at his employer’s behest and not for his own purposes.” This line of reasoning has little basis in Massachusetts law that I’m aware of, but it persuaded Judge Henry, who dismissed the case against Happy Hewes, leaving Saint-Gobain to pursue him in Illinois.
On the other hand, in Deutch Williams v. Naturopathic Laboratories Int’l a Massachusetts law firm sued its former client for attorney’s fees. Even though the former client had no operations in Massachusetts and had never visited here in connection with the representation, Judge John Cratsley held that the client’s decision to hire the Massachusetts law firm, together with communications between the law firm and its client over a period of seven months, was enough to establish jurisdiction.
It’s hard to reconcile these two decisions on legal grounds. There’s little doubt that had the cases (but not the judges) been switched, the outcome in the two cases would have been reversed. The moral? The outcome of long-arm jurisdiction motions are hard to predict at best, but the luck of the draw (which judge you draw, that is), may have a greater impact on the outcome than the facts of the case.
by Lee Gesmer | Oct 3, 2006 | Courts, Miscellaneous
Courts. Although Allan van Gestel’s recall to the Suffolk County Business Litigation Session received moderate publicity last year, both Thayer Fremont-Smith (bio) and Hiller Zobel’s recall this year has received almost no attention at all. If these recalls were reported by Mass Lawyers Weekly, I can’t find it. Both judges are sitting in Middlesex for now.
by Lee Gesmer | Sep 28, 2006 | Minority Shareholder/Fiduciary Duty
Fiduciary Duty. As a recent case shows, the answer is: it depends.
Assume that you are the attorney for a closely-held corporation (a privately held corporation with a small number of active shareholders), and you have interacted with and provided corporate legal advice to the shareholders over the years. Even though you did not represent them personally, the shareholders placed their trust and confidence in you. A dispute then arises between one of the shareholders (who has a minority position) and the corporation. Can you represent the corporation in this dispute, or do you have a fiduciary duty to the minority shareholder that presents a conflict of interest, and precludes you from the representation?
An article by Massachusetts Bar Counsel written in 2003, Closely Held Conflicts, reviews the case law on this issue (which has developed mostly in the context of motions to disqualify counsel), and sends a clear warning that attorneys who have represented a closely held corporation most likely do owe a fiduciary duty to the shareholders.
However, a recent decision by Superior Court Judge Francis R. Fecteau draws an important distinction to keep in mind when this issue arises. In that case, Bensetler v. Data Plus, Judge Fecteau found that attorneys who represented a closely held corporation did not have a fiduciary duty to a minority shareholder with whom they had never interacted. Thus, at least according to this case, there is no per se rule on this issue, and depending on the level of interaction, there may be circumstances under which an attorney who has represented a close corporation may represent the corporation in a suit adverse to a minority shareholder.
UPDATE: Here is a link to Superior Court Judge’s Christine Roach’s Memorandum of Findings and Ruling, dated October 8, 2008, ruling for the defendants following a bench trial.
