Mass Law Blog

Boston Bar Association Interview/Profile

The Boston Bar Association has done a nice interview and profile of me on its blog, “Tipping the Scales.”

Lee Gesmer is a founder and partner of Gesmer Updegrove LLP, a Boston-based firm formed in 1986 that focuses on the representation of technology companies and emerging businesses. Lee’s practice focuses on litigation in the areas of business and intellectual property law. He is a former Council member and former Co-Chair of the BBA Intellectual Property Section, as well as the Computer and Internet Law and Business Litigation Committees.

1. What inspired you to take the leap and start your own firm?

My father owned his own business, and I worked for him summers in my teens. He taught me how important it is to work for yourself. He really believed America was the land of opportunity for people willing to take the risk of starting their own businesses. He embedded that idea in me at an impressionable age. When I graduated from law school, my plan was to work for a couple of good firms and get enough experience that I could start my own firm.

Continue reading . . ..

Mass Moca Loses to Büchel Under VARA

Nice post title, eh?  Mass MoCA is the Massachusetts Museum of Contemporary Art Foundation a contemporary art museum in North Adams, MA.  Christoph Büchell is a Swiss “installation artist.”  Think very large, very avant-garde.  The New York Times describes his work “dense, fraught creations, which compress masses of material and objects into historically charged labyrinthine environments through which viewers walk, climb and crawl.”   Wow.  Sounds just right for good old, left-leaning western Mass.  Not.

VARA is the Visual Artists Rights Act, a section of the U.S. Copyright Statute that gives grants artists “moral rights.”   For example, part of the law provides that the author of a “visual work” has –

the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation

The First Circuit held that the Museum violated this right when, after installation of a work that called for, among other things, according to the Times, “a burnt-out fuselage of a 737 airliner” it displayed the work without the artist’s consent.   That is, the artist stormed off after artistic differences with the museum, and  museum prepared to present the work, entitled “Training Ground for Democracy,” like or not.  Büchel sued under VARA, lost in U.S. District Court, but prevailed in the First Circuit, which is (I suppose) more sympathetic to moral rights than U.S. District Court Judge Ponsor had been. (more…)

Judge Young, Bulger/Flemmi and "The Government – Our Government"

U.S. Federal District Court Judge William Young has issued a lengthy decision, awarding $2.7 million in damages to the estates of three people murdered by James J. Bulger, Stephen J.

Flemmi, and their associates.  Judge Young describes the story as “harrowing,” which may be an understatement.

The key defendant in this case is the U.S. Government, which will foot the bill if the decision survives appeal.

Here are some quotes, pulled from the opinion, which is linked in all of its gory detail at the bottom of this post.  Judge Young:inst

Despite years of legal wrangling and an extensive factual
record, at its core this is a very simple case. Federal Bureau
of Investigation (“FBI”) agents actively protected a group of
murderers from apprehension and prosecution in order to use them as informants against La Cosa Nostra. The agents did this over a span of nearly twenty years, despite being on notice that their informants were killers and would, and indeed did, continue to murder. . . .

The FBI’s relationship with Flemmi dates back to 1964, when FBI agent H. Paul Rico opened Flemmi as an informant. Bulger was opened as an informant in 1971. Their recruitment as informants was not an accident. The FBI had made the prosecution of organized crime and La Cosa Nostra its top priority.  To that end, J. Edgar Hoover himself inaugurated the Top Echelon Criminal Informant Program on June 21, 1961. Top echelon informants were defined as those “that would be able to provide high-level information on a major scale.”  Both Flemmi and Bulger were designated as top echelon informants.

[The first victim, Louis Litif, murdered by Bulger, April 1980].

As to the manner of Litif’s murder, the statement to the FBI of the deceased Brian Halloran, establishes that Litif was lured to the Triple O bar where Bulger and an associate ambushed him. The autopsy report as well as expert testimony show that Litif was stabbed dozens of times with an ice-pick-like implement before he was shot in the back of the neck.  Certain of the puncture wounds perforated Litif’s liver, a wound thought to cause exquisite agony.

[The second victim, Debra Davis, Flemmi’s girlfriend of 10 years, September 1981]. (more…)

The Boston Area Technology Sector is a Lot Like Silicon Valley/Santa Clara County …. Not.

A table from Branko Gerovac’s website, Empirical Reality compares the technology areas of Massachusetts and Silicon Valley The two areas are far more alike, on the statistical level, than I had realized –

2008 Boston CSA* San Francisco CSA
Total population 7,514,759 7,354,444
Population 25 years and over 5,086,671 5,013,980
Bachelor’s degree 21.80% 24.70%
Graduate or professional degree 15.60% 16.60%
Population 16 years and over 6,047,131 5,888,844
In labor force 69.60% 67.60%
Unemployed 4.00% 4.10%
Median household income (dollars) 66,723 77,247
Mean earnings (dollars) 90,213 104,526
Per capita income (dollars) 34,324 39,069
Households 2,835,304 2,628,007
Owner-occupied housing units 64.60% 58.80%
Median home value (dollars) 345,000 656,500

(* CSA stands for “Combined Statistical Area”)

However, it’s no more accurate to say these two regions are comparable than it is to say that two 175 pound men are comparable – one may be all muscle, the other, well …..

Unfortunately, as Mr. Gerovac details in a number of other posts, Boston is far behind Silicon Valley in innovation, start-ups, and a variety of other key factors central to business development.  Mr. Gerovac quotes from an October 2009 TechCrunch article by Vivek Wadhwa, who wrote as follows (selected quotes):

Ever heard of Route 128? To my surprise, neither have any of my students at Duke or the entrepreneurs I’ve met in Silicon Valley. I’m surprised because it wasn’t so long ago that Silicon Valley was considered a poor cousin of Boston’s tech center—a cluster of technology companies located along this freeway which partially rings the city. Starting in the 1960s and on through the 1980s, Route 128 was, if anything, more closely associated with tech than Silicon Valley. Today few young technology workers even know where Route 128 is located, let alone its importance in the tech world. Silicon Valley has simply left Boston’s tech center behind.

In the 1980’s … if you were betting on one you’d have been wise to bet on Route 128 because of its longer industrial history and proximity to a large number of high quality educational institutions . . . and proximity to Bell Labs and other large corporate research centers. . . . Now, . . . Boston is a distant second nationally to Silicon Valley in technology entrepreneurship. So, what happened to Boston?

A young professor at UC-Berkeley, AnnaLee Saxenian, wrote a book in 1994 which answers this question. At a time when Boston still thought it was the powerhouse of the tech industry, Saxenian declared Boston the loser in the tech race and explained why it would only fall further behind. This book was titled Regional Advantage: Culture and Competition in Silicon Valley and Route 128. It kicked off a firestorm of criticism from the Boston elite. Saxenian also alienated friends at her alma mater, MIT.

She noted that Silicon Valley had an amazing dynamism about it. There were extensive professional networks, job hopping was the norm, information was exchanged openly, and the culture encouraged risk taking. The Silicon Valley ecosystem supported entrepreneurial experimentation and collective learning. In other words, Silicon Valley was a very open network—a giant social networking site working in analog before the concept of such a thing even existed.

This organizational mechanism was in sharp contrast to that of Route 128. Dominated by large, vertically integrated, and secretive minicomputer producers such as DEC, Wang, Prime, and Data General. Technology, skill, and know-how were trapped within the boundaries of the large corporations.

The differences were evident at many levels: venture capitalists in Silicon Valley had deep roots in local networks and were far more nimble than their east coast counterparts; educational institutions and research labs in the West partnered with local startups as well as more established firms, while those in the East worked only with the largest corporations; and the meritocratic openness of Silicon Valley made it a magnet for non-traditional talent and immigrants.

By the mid-1990s the east had missed the shift from minicomputers to personal computers as the flexible Silicon Valley ecosystem sped ahead with innovation across a diversifying range of components and systems going from chips, routers, and application software to ecommerce and search engines. Today Silicon Valley is the leading location for cleantech venture activity, an area widely considered to be the next big value creation engine for the U.S. and the world.

Boston, however, is no slouch. The Route 128 community remains the second biggest in the U.S. in terms of venture funds committed. Boston has powerful research institutions, still, and lots of very strong companies. In some areas, such as biotech, Boston may even rival Silicon Valley. But overall, its pretty clear that the Valley has not only won but is racing further ahead.

Most entrepreneurs and engineers that come to Silicon Valley, come to experience this network and to embrace the culture it has created. That’s why I came, too. Network effects don’t just work for fax machines. But then again, most of them knew that intrinsically. University guys like me need to do a bunch of surveys to figure it out. They voted with their hearts and feet.

Gerovac presents an interesting graph on his site comparing the percentage of tech company founders who established a start-up in the same state in which they received a degree.  California ranks tops at 69%, compared with 29% in Massachusetts (which is below the study average of 45%).

In our firm we’ve been talking informally about this phenomenon for years, and these posts are food for much thought.  Could it be simply that California is a lot softer on noncompete agreements than Massachusetts is?  I’ve always wondered whether it could be something as simple as the weather.

If the  Feds Oppose Him, Tennenbaum (and Nesson) Must be Right! – Joel Fights Back

If the Feds Oppose Him, Tennenbaum (and Nesson) Must be Right! – Joel Fights Back

Joel’s last chance before Massachusetts Federal District Court Judge Gertner (“Joel Fights Back”) is his post-judgment motion to set aside or reduce the damages award against him on the grounds that the judgment is unconstitutional – after all, what government would punish a student to the tune of tens of thousands of dollars for a crummy mp3 download he could have purchased for less than a buck?  Ours, of course.

Joel’s Harvard Prof. lawyers filed a motion – punitive and unconstitutional, said they.

The DOJ disagrees.  Quite proper, say they, per brief below.

It’s not for me to say, but I’m thinking that there are some pretty big egos on the defense side of this case.  Nothing wrong with that, of course ….. 😉

DOJ Tennenbaum Post-trial Brief

BLS Discovery Pilot Project to Take on Electronic Discovery

Guest post by Gesmer Updegrove attorney Nancy Cremins.


On December 1, 2009, the Massachusetts Superior Court announced the implementation of a Discovery Pilot Project in the Superior Court’s Business Litigation Session (BLS). A link to the press release announcement is here, and the text of the Project here.

The BLS Discovery Pilot Project will be implemented on January 4, 2010 and was developed as the result of a joint effort of the BLS judges and the BLS Advisory Committee, in an effort to address the increasing burden and cost of civil pretrial discovery, particularly electronic discovery.

The BLS Pilot Project incorporates some of the principles set forth in the March 2009 Final Report of the American College of Trial Lawyers Task Force on Discovery and the Institute for Advancement of the American Legal System, which (no surprise) found the civil justice system “in serious need of repair.”

The guiding principal of the BLS Pilot Project is to tie the scope of discovery to the magnitude of the claims at issue. The BLS judges will work with the parties to determine the scope and timing of permitted pre-trial discovery, taking into consideration the needs of the case, the amount in controversy, the parties’ respective resources, and the complexity and importance of the issues at stake.

In a move similar to the “automatic disclosure” that has been in effect in the federal court system for many years, each party participating in the BLS Pilot Project will be expected to produce at the outset of the case “all reasonable available non-privileged, non-work product documents and things that may be used to support that party’s claims, counterclaims or defenses.” After the initial production, the parties and the BLS judges will consider other pre-trial discovery methods, including numerical and time limitations and limiting the persons from whom discovery may be sought.

With respect to electronic discovery, the scope of such discovery will be governed by “the nature and scope of the case, relevance, importance to the court’s adjudication, expenses and burdens.” If the parties are unable to agree, the BLS judges will conduct an electronic discovery hearing, to address the scope of allowable proportional electronic discovery and allocation of its cost.

Chief Justice Rouse states that the Pilot Project will be in effect initially from January through December of 2010. Participants in the BLS Pilot Project will be asked to provide feedback so that data may be gathered and analyzed. Chief Justice Rouse states that the Pilot Project’s efficacy will then be evaluated and refined for future use.

Whether the BLS Pilot Project will have the desired affect of streamlining and reducing costs associated with the discovery process is yet to be determined, but kudos to the Massachusetts Superior Court and the BLS for at least making an attempt to fix the burdensome and expensive discovery process which, in its current state, often makes resolving a case on the merits cost prohibitive.

Westlaw, Lexis, Announce That They are Yielding to Google Scholar, Terminating Legal Search Service Effective Immediately

Just kidding, but Columbia Law School’s Altlaw, which I’ve used off and on, really is shutting down:

Nov. 19, 2009.  Earlier this week, Google announced the addition of legal cases to Google Scholar. It’s good, very good. But you don’t have to take our word for it: try it out yourself.

Everything we have done or planned to do with AltLaw, Google has does better. What else would you expect? Search is their core business; they have hundreds of brilliant engineers, a vast computing infrastructure, and billions of dollars invested in it. . . .

Therefore, we are happy to announce that Project AltLaw (Phase One) is complete. We will continue to maintain the web site and search service for a few months, but we will not be adding new features or new content., in its current form, will shut down in early 2010.

Aiding and Abetting Prostitution?  Wa?! I’m an Internet Executive – I Sure Hope My Mom Doesn’t Read That!

Aiding and Abetting Prostitution? Wa?! I’m an Internet Executive – I Sure Hope My Mom Doesn’t Read That!

“We opened an investigation at 5:01 on Friday, as promised. . . . We are preparing for a prosecution. We are investigating. We are moving forward. . . . . The #1 defendant is Mr. Jim Buckmaster, who is the man in charge of Craigslist.. . . . Craigslist is a big promoter and facilitator of prostitution.”

South Carolina Attorney General, on Sunday, according to the Craigslist Blog.

Hmmm, this is the kind of thing that is protected by Section 230 of the Communications Decency Act, assuming that the South Carolina AG is referring to third party postings.  Somehow I doubt that Mr. Buckmaster has become a South Carolina pimp.

Apparently, law enforcement authorities in SC have been particularly aggressive in their comments about Craigslist. Why did Craigslist file this suit? The most obvious reason, from a semi-legal perspective, is to get into federal court in that state, rather than be subject to the whims of a state court judge that may not “get” the CDA. After all, SC is south of Mason Dixon, and these guys in California may have seen My Cousin Vinnie one time too many.  And, they be a little unclear on the geography of the American Southeast. Not to mention Easy Rider.

The other reason may just be to fight publicity with publicity, rather than just sit around and take it.

Whether a case like this is procedurally proper, I’m not sure, but I tend to doubt that you can preempt a threatened criminal prosecution that would be brought under state law with a civil action for declaratory relief in federal court.

Charlie Nesson on Second Life

Now that Prof. Charlie Nesson has grabbed a lot of attention with his defense in the RIAA v. Tenenbaum case, it may be worth recalling this video, which was posted on YouTube in August 2006.

Can I Say That? Based on the First Circuit’s Interpretation of a 1902 Law, Maybe Not

It’s perfectly monstrous the way people go about nowadays saying things against one, behind one’s back, that are absolutely true”

Oscar Wilde

“Gossip needn’t be false to be evil – there’s a lot of truth that shouldn’t be passed around.”

Frank A Clark

“The defendant in an action for writing or for publishing a libel may introduce in evidence the truth of the matter contained in the publication charged as libellous; and the truth shall be a justification unless actual malice is proved”

Entire text of Mass. Generals Laws, Chapter 231, Section 92, enacted in 1902


“The truth is an absolute defense to a claim of defamation.”  This is something that all lawyers know, and we have told this to clients countless times.  However, we will have to temper this advice following a recent decision from the  First Circuit U.S. Court of Appeals.  The case, for reasons that should be apparent, is attracting a lot of attention.

First the case, then the law, then a few brief observations.

Facts of the Case

Alan Noonan was an employee of Staples. After an investigation, Staples concluded that Noonan had padded his expense account, and terminated him for cause. The day after the termination a Staples executive sent the following email to 1500 Staples employees:

It is with sincere regret that I must inform you of the termination of Alan Noonan’s employment with Staples. A thorough investigation determined that Alan was not in compliance with our [travel and expenses] policies. As always, our policies are consistently applied to everyone and compliance is mandatory on everyone’s part. It is incumbent on all managers to understand Staples[‘s] policies and to consistently communicate, educate and monitor compliance every single day. Compliance with company policies is not subject to personal discretion and is not optional. In addition to ensuring compliance, the approver’s responsibility to monitor and question is a critical factor in effective management of this and all policies.

Noonan sued for defamation. Staples responded that the statement regarding Noonan was true. The federal U.S. judge found that the statement was true, and dismissed the claim.

The Appeal

On appeal, the Court of Appeals reversed. The court applied the Massachusetts defamation statute, enacted in 1902, which states in its entirety as follows:

The defendant in an action for writing or for publishing a libel may introduce in evidence the truth of the matter contained in the publication charged as libellous; and the truth shall be a justification unless actual malice is proved. (M.G.L. c. 231, Section 92)

The court took as true the lower court’s finding that Noonan had been out of compliance with Staples’ travel and expense policies.  Taking an “originalist” approach to the 1902 statute (a legal philosophy that takes the view that the the text of a written law should be understood according to what was meant by those who drafted and enacted it – think Supreme Court Justice Anton Scalia), the court held that “actual malice” meant “malevolent intent” or “ill will.” The court concluded that whether the Staples executive who published the email did so with “malevolent intent or ill will” was a question of fact, and sent the case back to the trial court for a jury trial.


This case will be analyzed six ways from Sunday by the defamation experts, of which there are many, so I’ll keep my observations brief.

First, it begs the obvious to observe that sending this email to 1500 Staples employees was poor judgment.  Apparently, there had been other expense account incidents at Staples before this, and one implication that readers could have taken from this email was that Noonan had engaged in fraudulent conduct (or so Noonan argued).  However, for all we know the Staples exec that sent the email had consulted with legal counsel and been told “truth is an absolute defense, ” so don’t worry about it.

Second, when I was studying for the Bar Exam I recall that we touched on this statute.  Our discussion reflected the widely held assumption that the “actual malice” exception to the “truth defense” was likely unconstitutional under the First Amendment. I’m not sure why the First Circuit didn’t address the constitutional legality of the statute before applying it. The law is more than 100 years old, and its enactment precedes the development of defamation in light of First Amendment law, all of which was deemed irrelevant under the court’s approach to statutory construction.

Third, taking the case at its literal meaning, anytime a person gossips about another person in a manner that is damaging to reputation it is actionable if it is accompanied by “ill will,” even if true (I take the “ill will” standard to be much easier to met than “malevolent intent”).  Not to overstate things, but the implications of this could be significant.  If you speak ill of your enemy in such a way that damages her reputation in the community, you may be liable for defamation, whether your statement is true or not.

Some examples:

  • You learn that someone in your community (your town, school community, church or temple, or workplace, for example), was once charged with a crime, and you share this fact with others.
  • You share the fact that someone in the community had been terminated from an earlier job based on suspicion of theft, sexual harassment or other reputation-harming conduct.
  • You share the fact that long ago, one of the attorneys in your law firm failed the bar exam on the first try, before passing it on the second try.
  • You share the fact that one of your co-workers whom no one knows is gay visits the local “gay” bar most weekend nights.

Assuming that the victim of this speech can claim that you bear her ill will, you could be liable for defamation under this decision.  And why would you share these facts if you didn’t hope to to injure the person?  In other words, ill will may not be that difficult to prove.

The issues associated with a decision like this are complex, as is the balance between freedom of speech and the harm that speech can cause.  The Supreme Court has struggled to establish the line between defamation and permissible speech when “public figures” are involved and the speech is false, but much less attention has been paid when the victim of alleged defamation is a private person, as was Mr. Noonan in this case.

The picture is complicated even further by the right of privacy.  In Massachusetts, as in many other states, the right of privacy has been interpreted to encompass a prohibition against the publication of “private facts,” which are facts of a “highly personal or intimate nature” that are “of no business of the public.”  It appears that the Noonan v. Staples decision extends the reach of that protection to a level somewhere beyond “private facts,” although this extension is based on the law of defamation according to the 1902  Massachusetts statute, not the law of privacy.

The First Circuit decision in Noonan v. Staples is here.

An article by Dan Kennedy on MediaNation (“A Chilling Decision About Libel”) critiquing this decision is here.

Patent Case Management Judicial Guide

A number of private-practice lawyers, along with an extensive Judicial Advisory Board, have published a Patent Case Management Judicial Guide. The document is labeled “draft,” but it appears final in most respects, and is freely available for use. Perhaps the authors are using the term “draft” in the same way that Google uses the term “beta” – even when the product is mature and in widespread use, the beta label remains.

Although this 500-plus page document has not been formally adopted by the federal courts, it is likely to serve as an important procedural and substantive guide to federal judges, and therefore is well worth including in any patent litigation library, particularly if a party is before one of the advisory judges. The judges involved in the Advisory Board (a “who’s who” of patent judges) includes Judge Patti B. Saris in the District of Massachusetts.

Link to the SSRN page here.