By Jason Keith
Keith Law, PLLC is a Texas law firm focused on helping businesses protect and enhance their competitive advantages by assisting with trademark issues and identifying and protecting trade secrets. T
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The podcast currently has 24 episodes available.
In this episode, Jason talks about the basic differences between trademark, copyright, patent, and trade secret.
As always, you can schedule a call through Calendly, peruse past episodes, check out the Keith Law website, or contact me through my LinkedIn profile.
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — Overview of the basic differences between trademark, copyright, patent, and trade secret.
01:08 — Intro
01:32 — TRADEMARK—distinguishing the source of goods and services and avoiding consumer confusion.
02:19 — Generic terms are unprotectible
02:33 — Common law rights
02:38 — Registering with the USPTO gives rise to statutory rights.
02:43 — Duration of registration is unlimited, so long as use continues and registration is properly maintained.
03:05 — Tradenames are not automatically trademarks.
04:28 — COPYRIGHT
04:38 — "Author"
04:50 — "Writings"
05:21 — Scope of copyright has expanded over time and now extends to eight categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.
06:07 — Not names, logos, and slogans.
06:23 — Life of the author plus 50 years.
06:33 — PATENTS
07:03 — Duration: 20 years from filing the application for utility patents; 15 years for design patents.
07:18 — Public policy behind protecting patents.
07:37 — TRADE SECRETS
08:08 — Under Texas law, a trade secret is (1) a secret; (2) used by a business; that (3) gives the business a competitive advantage over those who don't know or use it.
08:35 — Comparing trade secrets to patents.
09:33 — Takeaways from this episode.
10:20 — Subscribe, check the show notes, and email or schedule a call with your questions.
10:54 — Outro
DISCLAIMER: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
In this episode, Jason talks about what is required for a noncompete to be enforceable under Texas law.
As always, you can schedule a call through Calendly, peruse past episodes, check out the Keith Law website, or contact me through my LinkedIn profile.
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — Two competing myths: "noncompetes are never enforceable in Texas," and "noncompetes are always enforceable."
00:20 — Intro
00:44 — Received wisdom can be wrong.
01:08 — Although many noncompetes are unenforceable, since 1989 noncompetes can be enforcible in Texas if they comply with the statute.
01:35 — To be enforceable, the statute requires a noncompete to be (1) ancillary to an otherwise enforceable agreement, (2) be reasonable in terms of time limit, geography, and scope of restriction, and (3) be supported by consideration reasonably related to the business interest sought to be protected.
02:25 — But first, some discussion of the competing public policies at play.
04:48 — Element 1—ancillary to an otherwise enforceable agreement.
06:22 — Element 2—reasonable in terms of time limit, geography, and scope of restriction.
07:44 — Element 3—supported by consideration reasonably related to the business interest sought to be protected.
12:12 — There are special rules for physicians and attorneys (not discussed in this episode).
12:36 — Why can noncompetes be important? They can help protect a business's competitive advantages.
13:12 — Third parties can have liability for employing someone who is violating a noncompete.
13:43 — Assignment of noncompetes in the context of sale of a business.
14:21 — Takeaways from this episode.
14:55 — Subscribe, check the show notes, and email or schedule a call with your questions.
15:30 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
This week, I thought about delving into a specific type of contract. But then, I figured it might make more sense to first go over the basics of what a contract actually is.
As always, you can schedule a call through Calendly, peruse past episodes, check out the Keith Law website, or contact me through my LinkedIn profile.
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — Do you really know what a contract is?
00:08 — Intro
00:31 — Check out the show notes for an outline of the episode.
00:48 — This episode is not a law school contracts course—it's only a basic overview and explanation of what constitutes an contract.
01:45 — Reminder of what a cause of action is.
02:23 — The breach of contract cause of action.
03:01 — This episode is focused on element 1—the enforceable contract.
03:42 — What does the term "enforceable contract" mean?
04:30 — The three most essential components of an enforceable contract—offer, acceptance, and consideration.
04:56 — Offer and its three elements.
06:09 — Acceptance and three of its elements.
07:05 — Consideration—"mutuality of obligation," "exchange of value," or "the bargained for exchange of promises."
08:57 — Does a contract have to be in writing? Not unless the statute of frauds says so.
10:10 — Defenses to a breach of contract cause of action.
11:24 — Takeaways from this episode.
11:57 — Subscribe, check the show notes, and email or schedule a call with your questions.
12:33 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
A statute of limitations establishes a time limit for a plaintiff to file a lawsuit based on a particular cause of action. In this episode, Jason outlines the questions that must be analyzed to determine whether a claim might be time-barred.
GENERAL LINKS:
• Calendly page to schedule a call: https://calendly.com/keithlawpllc/20minute
• Podcast Website: https://www.keith.law/category/podcast/
• Firm Website: https://www.keith.law/
• LinkedIn profile: https://www.linkedin.com/in/jason-keith-0736a931/
EPISODE-SPECIFIC LINKS:
• Episode's blog post: https://www.keith.law/business-disputes/explaining-statutes-of-limitation/
• General information on what a statute of limitation is: https://en.wikipedia.org/wiki/Statute_of_limitations
• Information on what a "cause of action" is: https://en.wikipedia.org/wiki/Cause_of_action
• EP008 (explaining laches in the trademark infringement context): https://www.keith.law/trademark/explaining-laches-an-equitable-defense-to-trademark-infringement/
• Information about the Lanham Act: https://en.wikipedia.org/wiki/Lanham_Act
• Texas Trademarks Act: https://statutes.capitol.texas.gov/Docs/BC/htm/BC.16.htm
• Texas Uniform Trade Secret Act: https://statutes.capitol.texas.gov/Docs/CP/htm/CP.134A.htm
TIMESTAMPS:
00:00 — 'SOL' stands for 'statute of limitations' in the world of civil justice.
00:10 — Intro
00:33 — Statutes of limitations are time-limit rules—deadlines for pursuing a lawsuit.
01:10 — Overview of the eight questions that should be asked to determine the latest a lawsuit should be filed.
03:14 — Question 1: what's the specific cause of action's statute of limitation?
--:-- — Question 2: not covered in this episode.
04:56 — Question 3: when did the claim accrue?
05:50 — Question 4: can the accrual date be legally deferred?
06:36 — Question 5: tolling—can the time-limit be paused? Seven general reasons that supports tolling of limitations.
09:08 — Question 6: can the defendant be estopped (prevented) from asserting the limitations defense?
10:00 — Question 7: is the plaintiff's claim cut off before it accrues through a statute of repose?
10:58 — Question 8: is plaintiff's claim subject to the equitable defense of laches which could serve as a time-limit prior to the end of the statute of limitations?
11:41 — This episode's takeaways.
12:20 — Please subscribe, check the show notes, and email or schedule a call with your questions.
12:46 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
Another of the equitable defenses is called "unclean hands." Although I mentioned the word in previous episodes, it might be helpful to explain what it means in more detail. So, in this episode, I'll try to describe the concept of unclean hands in more detail.
GENERAL LINKS:
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — Unclean Hands—a third equitable defense to trademark infringement.
00:07 — Intro
00:31 — What led to this episode topic, and the goal of this episode.
01:25 — Unclean hands and laches are equitable defenses available in both the trademark infringement and trade secret misappropriation context.
01:50 — Reminder of what a cause of action is.
02:55 — Most defenses have essential elements too—but that's not necessarily the case with unclean hands.
03:30 — Defendants may have equitable defenses to a plaintiff's trademark infringement cause of action.
04:00 — The definition of unclean hands (i.e., the clean-hands doctrine or the unclean-hands doctrine).
04:27 — Unclean hands is available under the Lanham act and unfair competition.
05:02 — The concept behind unclean hands.
05:32 — When courts will enforce the unclean-hands doctrine.
06:34 — Equitable defenses are personal defenses—meaning they are based on action or inaction with specific relation to the defendant, not with relation to the world in general.
07:25 — The party alleging unclean hands must establish personal harm or injury from the unclean hands behavior.
07:52 — The defendant also has to show a direct connection between the alleged bad behavior and the specific issue in front of the court.
08:20 — An example where unclean hands was alleged but denied by a court.
09:19 — Examples in which a trade secrets owner can be denied trade secret protection in the face of an unclean hands defense.
09:40 — A plaintiff can use the unclean-hands doctrine to prevent a defendant from benefiting from defenses that would otherwise prevent defendant's liability.
10:31 — This episode's takeaway.
11:15 — Please subscribe, check the show notes, and email or schedule a call with your questions.
11:41 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
This episode is aimed at answering the question of how protected a company’s trade secrets are in the absence of a confidentiality agreement, if at all.
GENERAL LINKS:
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — What if your worker leaves with your trade secrets and you don't have a confidentiality agreement in place?
00:06 — Intro
00:30 — There is trade secret protection under TUTSA and the DTSA when the statutory requirements are satisfied.
01:01 — Both statutes require taking "reasonable measures" to keep the information a secret. A signed confidentiality agreement can be an example of a reasonable measure to keep the information a secret. But, a signed agreement is not absolutely necessary.
01:40 — The longer answer to the question.
01:43 — The essential elements of a trade secret misappropriation cause of action.
03:50 — What about misappropriation in the absence of a signed agreement? This is a question about element two of the cause of action.
04:26 — A discussion of the public policy balancing act to help understand why things are the way they are.
06:11 — Use of information acquired during employment.
07:40 — Important reasons to have confidentiality agreements with your employees.
09:45 — How a signed confidentiality agreement might stop a problem before a lawsuit becomes necessary.
11:38 — Why, as a practical matter, it's important to be able to attach liability to the new employer, if possible.
12:05 — Recovering attorney's fees in the context of a trade secrets misappropriation lawsuit under TUTSA and DTSA.
16:00 — Recovering attorney's fees in the context of a breached contract—including a breached confidentiality agreement.
16:57 — Other potentially available causes of action in a trade secrets misappropriation context.
19:07 — The takeaways from this episode.
20:03 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
I often hear business owners say that they they would eventually like to register their trademarks, but that they're already protected because they have a filing entity or assumed name registered with the Texas Secretary of State. This is not true.
GENERAL LINKS:
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — Forming an entity does not protect your trademark!
00:06 — Intro
00:29 — Business owners often mistakenly think that they have trademark protection because they have an LLC in place
01:01 — This episode expands on the mention of this problem in episode 1 of the Keith Law, PLLC Podcast
01:09 — What about filing a formation document?
02:48 — What about filing an assumed name certificate or d/b/a?
03:44 — "So, how do I get trademark rights?"
04:50 — The effects of registering a trademark with the Texas Secretary of State
05:34 — When you can apply to register your trademark with the United States Patent & Trademark Office, and the effects of doing so
06:09 — Wrapping up (summarizing) this episode
07:20 — The most important take-away from this episode
07:35 — Check the show notes for more information or for how to ask questions
07:54 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
During part of episode 1 of the Keith Law, PLLC Podcast, I briefly touched on trademark infringement defenses, including equitable defenses. One of the equitable defenses is called "laches" (generally, unreasonable delay) and it was pointed out that, although I mentioned the word, It might be helpful to explain what it means in more detail. So, in episode 8, I tried to describe the concept of "laches" in more detail.
Another of the equitable defenses is called "acquiescence," and in this brief blog post and podcast episode, I will go over the elements of this defense to a trademark infringement claim.
GENERAL LINKS:
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — What is "acquiescence" in the context of trademark infringement?
00:06 — Intro
00:30 — This quick episode follows up on the "what is laches?" episode—covering equitable defenses to trademark infringement.
01:14 — What are equitable remedies? An injunction is one type.
01:33 — The three elements of an acquiescence defense.
01:56 — Element 1: assurance
02:37 — A couple examples where acquiescence has been used
02:54 — Is silence enough to constitute assurances?
03:25 — Element 3: undue prejudice
04:05 — The takeaway from this episode
04:47 — Final thoughts and reminder to check the show notes
05:16 — Outro
DISCLAIMER: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
In episode six of the Keith Law PLLC Podcast, I explained how a business can address false negative online reviews. In that episode there was uncertainty about the effect of failing to send a timely request for retraction and correction. In this episode I go through a recent Texas Supreme Court opinion that (for now) answers the uncertainty expressed in episode six regarding the legal effect of failing to timely and sufficiently send the request for retraction or correction required by the Defamation Mitigation Act.
GENERAL LINKS:
EPISODE-SPECIFIC LINKS:
TIMESTAMPS:
00:00 — What happens when you sue for defamation or business disparageent but fail to send the request for retraction or correction under the Defamation Mitigation Act? The Texas Supreme Court just answered this question.
00:21 — Intro
00:46 — Throwback to episode 6 question that the Texas Supreme Court just addressed this month in Hogan v. Zoanni
02:00 — Remember that sending a good DMA is still the best practice and the time limits are very strict
02:15 — Overview of the organization of this episode
02:40 — Factual background
03:35 — The procedural background
06:38 — The Texas Supreme Court's plurality opinion - abatement and loss of punitive damages permitted, but not dismissal
07:45 — Digging into the Texas Supreme Court justices votes in Hogan v. Zoanni (4-1-3)
09:27 — The practical effect of the plurality opinion for Hogan
09:44 — The legal effect of this plurality opinion based on the vote
11:05 — The concurring justice's opinion more closely aligns with the dissenting opinion
11:34 — The dissenting opinion
12:09 — What the practical outcome would be if the dissenting opinion was the rule
12:30 — The reason DMA requests should be focussed on
13:02 — Check the show notes for links
13:39 — Why it's important for businesses to have a sense of this information
14:25 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
In this episode I explain the unfolding drama pertaining to the notoriously unreliable ice cream machines at McDonald's restaurants and the lawsuit recently filed by Kytch, a company that developed technology aimed at solving these ice cream problems.
LINKS:
Episode's blog post: https://www.keith.law/trade-secret/mcdonalds-ice-cream-machine-drama/
Podcast Website: https://www.keith.law/category/podcast/
Firm Website: https://www.keith.law/
Calendly page to schedule a call: https://calendly.com/keithlawpllc/20minute
LinkedIn profile: https://www.linkedin.com/in/jason-keith-0736a931/
The Wired article: https://www.wired.com/story/they-hacked-mcdonalds-ice-cream-makers-started-cold-war/?fbclid=IwAR25i2srFysSg5sDHMSOuatD_rmWdLAJmKVziEz2pySRa1y0f0wjuwSDWDY
An applicable Techdirt article: https://www.techdirt.com/articles/20210420/19062946646/captive-markets-are-just-hostages-why-your-mcdonalds-never-seems-to-have-functioning-shake-machine.shtml
An applicable Eat This, Not That article: https://www.eatthis.com/news-mcdonalds-soft-serve-machines/
From MSN: <https://www.msn.com/en-us/money/other/theres-new-legal-drama-around-mcdonalds-soft-serve-machines/ar-BB1fZVi4>
Episode 1 of the Security Ledger podcast with Kytch co-founder, Jeremy O'Sullivan: https://securityledger.com/2021/05/episode-215-1-jeremy-osullivan-of-kytch-on-the-tech-serving-mcdonalds-ice-cream-monopoly/
Episode 2 of the Security Ledger podcast with Kytch co-founder, Jeremy O'Sullivan: https://securityledger.com/2021/06/episode-215-2-leave-the-gun-take-the-mcflurry/
Kytch's lawsuit: https://securityledger.com/wp-content/uploads/2021/06/20210510-complaint-kytch-v-tyler-gamble-tfgroup-llc-and-taylor-company.pdf
Kytch's home page: https://kytch.com/landing
Kytch's terms of service: https://kytch.com/tos
McDonald's master franchise agreement available on SEC.gov: https://www.sec.gov/Archives/edgar/data/1508478/000119312511077213/dex101.htm
Wikipedia article on Taylor: https://en.wikipedia.org/wiki/Taylor_Company
TIMESTAMPS:
00:00 — Unreliable McDonald's Ice Cream Machine Lawsuit
00:08 — Intro
00:32 — Recent misappropriation of trade secret lawsuit related to unreliable McDonald's ice cream machines, and the company that tried to fix the problem
01:30 — Outline of the episode
01:45 — Factual background - a listener asked about this issue after listening to the misappropriation of trade secrets Keith Law, PLLC Podcast episode.
02:35 — Factual context for the lawsuit
06:05 — The "tangled web of contracts" in this situation
06:49 — The agreements between McDonald's and Taylor
08:38 — The McDonald's Master Franchise Agreement with its franchisees
09:59 — The Kytch contract with McDonald's franchisees using Kytch technology
10:52 — Kytch's lawsuit
11:20 — Breach of contract, the cause of action elements and allegations
12:13 — Tortious interference with contract, the cause of action elements and allegations
13:32 — Misappropriation of trade secrets, and the and allegations
14:35 — The court's docket for this lawsuit
15:10 — I'm looking forward to seeing the answers to the complaint
15:25 — McDonald's has not been made a party to the lawsuit, and speculation as to why
16:00 — Let me know if you're interested in my digging deeper into this situation
16:55 — How NDAs and confidentiality agreements work in practice
18:00 — Thank you for listening and letting me know your questions
18:30 — Outro
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
The podcast currently has 24 episodes available.