Information Technology Litigation: Law and Analysis

Barry G. Felder, Frederick L. Whitmer, Jeffrey P. Weingart

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“A useful resource for practitioners and law firm libraries that need to stay as up-to-date as possible.”Legal Information Alert

Litigating IT-related disputes successfully requires attorneys to stay current with both the latest technological developments and the constant flow of cases dealing with them. This multidisciplinary guide focuses on legal issues relating to software, digital content, and electronic data.

Information Technology Litigation: Law and Analysis examines fundamental and advanced aspects of litigation involving information technology, including: pre-suit strategic considerations in light of the fast pace of the IT industry; IT-related copyright litigation, including computer software infringement, online infringement, file sharing, and Digital Millennium Copyright Act violations; patent litigation, including software/business method patents, proving infringement, Markman hearings and claim construction; IT-specific actions for trademark violations; trade secret misappropriation lawsuits and preventive policies; laws relating to online privacy, data security and fraud; electronic discovery; alternative dispute resolution; and emerging areas.

The authors examine the pleading requirements, remedies and affirmative defenses for a wide variety of actions. With its emphasis on how the law is currently applied, Information Technology Litigation: Law and Analysis is an especially valuable resource for practitioners.

Book #00691; looseleaf, one volume, 696 pages; published in 2008, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-146-0.

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  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: 0
  • Page Count: 696
  • ISBN: 978-1-58852-146-0
  • Pub#/SKU#: 691
  • Volume(s): 1

Author Image
  • Barry G. Felder
Barry G. Felder is a Partner in the New York office of Foley & Lardner LLP. He was formerly a partner in the firm of Thelen Reid Brown Raysman & Steiner LLP where he was Co-Chair of the Commercial Litigation Department. His practice emphasizes disputes relating to the Internet, including Web-related trademark infringement and dilution claims and domain name controversies. Mr. Felder has also had extensive experience in matters involving software ownership and use and technology-related contract and licensing disputes. He received his J.D. cum laude from Fordham Law School, where he served as a Commentary Editor of the Fordham Law Review, and his B.A. magna cum laude from Hofstra University, where he was a member of Phi Beta Kappa. Mr. Felder is admitted to practice in New York, California and New Jersey and is admitted to appear before the Supreme Court of the United States and U.S. Courts of Appeals for the Second and Ninth Circuits and various U.S. District Courts.

Author Image
  • Frederick L. Whitmer
Frederick L. Whitmer is a partner in the New York office of Kilpatrick Stockton LLP. Formerly he was a partner in the firm of Thelen Reid Brown Raysman & Steiner LLP. For nearly three decades, he has tried intellectual property cases to successful verdict and appeal in cases before both judges and juries involving a wide variety of clients and industries. For many years, Mr. Whitmer’s experience has concentrated on patent infringement cases, representing both patent holders and those accused of infringement. He is also a frequent speaker at professional events and has co-chaired seminars on patent claim construction and other intellectual property topics. In 2000, The National Law Journal named him one of the top ten litigators based in New Jersey. Mr. Whitmer received his J.D. from Columbia Law School, where he was a Harlan Fiske Stone Scholar, and his B.A. cum laude from Wabash College, where he was a member of Phi Beta Kappa. He is admitted to practice in New Jersey and New York and is admitted to appear before numerous federal and state courts, including the Supreme Court of the United States, and the U.S. Courts of Appeals for the Second, Third, Seventh, and Federal Circuits.

Author Image
  • Jeffrey P. Weingart
Jeffrey P. Weingart is a partner in the Litigation Group at Meister Seelig & Fein LLP and is also active in the firm's Entertainment and New Media practice. He has extensive experience in transactional, licensing and litigation matters involving patents, copyrights, trade secrets and trademarks in the areas of information technology, computer software, the Internet, data security, and digital rights management. Significant clients include software development firms, corporate IT users, Internet companies, medical services providers, consumer goods manufacturers, insurance and financial services companies, publishing concerns and providers of educational and entertainment-related content. Prior to practicing law, Mr. Weingart was an editor at a major publisher of computer industry newspapers and magazines.

Mr. Weingart received his J.D. from St. John's University School of Law and his B.A. degree from Columbia University. He is admitted to practice in Connecticut and New York and is admitted to appear before the U.S. Court of Appeals, Second Circuit, U.S. District Court, District of Connecticut, and U.S. District Courts for the Eastern and Southern Districts of New York.

Also by Jeffrey P. Weingart:
Doing Business On The Internet: Forms and Analysis

Pre-Suit Considerations

§1.01  Generally
§1.02  The Client as a Resource
§1.03  Cost and Resource Analysis
§1.04  Jurisdiction
[1]  Subject Matter Jurisdiction
[2]  Personal Jurisdiction
[3]  Venue
[4]  The Internet, Web Sites, and E-mail
[5]  International Boundaries
§1.05  Jury Trials
§1.06  Identification of Potential Parties
§1.07  Legal Due Diligence and Ethical Responsibilities


§2.01  General Principles of United States Copyright Law
[1]  Originality
[2]  Fixation
[3]  Idea/Expression Dichotomy
[4]  Merger and Scènes à Faire
§2.02  Pre-Litigation Considerations
[1]  Subject Matter Jurisdiction
[2]  Standing
[3]  Statute of Limitations
[4]  Ownership
[5]  Registration of Works
[6]  Pleading Requirements
§2.03  Infringement: An Overview
[1]  Direct and Secondary Liability
[2]  Prima Facie Case
§2.04  Copyright and Computer Software
[1]  Generally
[2]  Registration
[3]  Copyright Infringement of Software
[4]  Works Made for Hire
§2.05  Copyright and the Online Environment
[1]  File Sharing
[2]  Active Inducement
[3]  Online Linking
§2.06  The Digital Millennium Copyright Act
[1]  Anti-Circumvention of Copyright Protection Systems
[2]  Civil Remedies and Criminal Penalties Under the DMCA
[3]  Online Copyright Infringement Liability Limitation Act (The DMCA Safe Harbors)
§2.07  Preemption of State Claims
[1]  Section 301 of the Copyright Act
[2]  The Extra Element Test
§2.08  Remedies for Copyright Infringement
[1]  Civil Remedies
[2]  Criminal Penalties
§2.09  Defenses
[1]  Copyright Misuse
[2]  Exhaustion (The First Sale Doctrine)
[3]  De Minimis Copying
[4]  Innocent Infringement
[5]  Permissible Copying Under Section 117
[6]  Fair Use
§2.10  Attorney Fees


§3.01  Introduction
[1]  Patent Rights
[2]  Patentable Subject Matter
[3]  Novelty and Nonobviousness Requirements
§3.02  Pre-Filing Inquiry Requirements
[1]  Generally
[2]  Issues in Enforcing Software/Business Method Patents
§3.03  Jurisdictional and Related Concerns
[1]  Subject Matter Jurisdiction
[2]  Standing; Exclusive Licenses
[3]  Venue
[2]  Federal Jurisdiction over Counterclaims
[3]  Federal Circuit Court of Appeals Jurisdiction
§3.04  Proving Infringement
[1]  Literal Infringement
[2]  Doctrine of Equivalents
[3]  Contributory Infringement
[4]  Inducement to Infringe
[5]  Willful Infringement
[6]  Infringement and Exported Software
§3.05  Preliminary Relief
[1]  Factors for Obtaining a Preliminary Injunction
[2]  Permanent Injunctions
§3.06  Markman Hearings and Claim Construction
[1]  Initial Steps
[2]  Intrinsic and Extrinsic Evidence
§3.07  Defenses to Infringement
[1]  Generally
[2]  Anticipation
[3]  On-Sale Bar
[4]  Patent Misuse
[5]  Inequitable Conduct
[6]  Inadequate Disclosure in the Specification
[7]  Obviousness
[8]  Laches and Equitable Estoppel
[9]  Patent Prosecution Laches
§3.08  Defense to Willful Infringement
[1]  Opinion of Counsel
[2]  Adverse Inference
§3.09  Remedies
[1]  Introduction
[2]  Damages
§3.10  Attorney Fees
§3.11  Effect in the United States of Foreign Patent Proceedings
[1]  Generally
[2]  Relevance and Claim Interpretation
[3]  Claim Interpretation
[4]  Statements That Mischaracterize the Invention
§3.12  Effect in the United States of Foreign Opinion Practice
§3.13  Avoiding Litigation
[1]  Cross-Licensing
[2]  Reexamination Proceedings


§4.01  Overview
§4.02  The Lanham Act and Actions for Trademark Violations
[1]  Infringement Generally
[2]  Unfair Competition
[3]  Dilution
[4]  Contributory Infringement
[5]  Counterfeiting of Trademark Goods
§4.03  IT-Specific Actions for Trademark Violations
[1]  The Anticybersquatting Consumer Protection Act
[2]  Metatags and Uniform Resource Locators
[3]  Search Terms and Keyword Advertising
[4]  Typosquatting, Mousetrapping and Pagejacking
[5]  Domain Name Hijacking
[6]  Infringing Web Site Content
§4.04  Policing Trademarks and Internet Monitoring Policies
[1]  Cease and Desist Letters
[2]  Declaratory Judgment Actions
§4.05  Pre-Litigation Considerations
[1]  Federal Jurisdiction
[2]  Potential Parties
§4.06  Survey Evidence
§4.07  Affirmative Defenses
[1]  Fair Use
[2]  Abandonment
[3]  Genericness
[4]  Laches
[5]  Fraud
[6]  Unclean Hands
[7]  Web Disclaimer
§4.08  Counterclaims
§4.09  Remedies
[1]  Preliminary and Injunctive Relief
[2]  Permanent Injunctions
[3]  Monetary Awards Under the Lanham Act
§4.10  Attorney Fees
§4.11  Practice Before the USPTO
[1]  Procedural Review of Trademark Application Decisions
[2]  Standing
[3]  Opposition
[4]  Concurrent Use Registration Proceedings
[5]  Interference
[6]  Cancellation
[7]  Letters of Protest
[8]  Appeals from the TTAB

Trade Secrets

§5.01  Overview
§5.02  The Uniform Trade Secrets Act (UTSA) and the Restatement of Torts
§5.03  Misappropriation: Generally
[1]  Employee or Licensee Bound by a Duty of Confidentiality
[2]  Inevitable Disclosure Doctrine
[3]  Parties Not Biund by a Duty of Confidentiality
[4]  Trade Secret Protection Policies
§5.04  Trade Secrets in the IT Environment
[1]  Misappropriation of Software
[2]  Trade Secrets and the Internet
[3]  Maintaining Trade Secret Status
[4]  Checklist for a Trade Secret Policy
[5]  Patent Considerations
§5.05  Pleading Requirements
[1]  Statute of Limitations
[2]  Subject Matter Jurisdiction
[3]  Potential Parties
§5.06  Defenses
§5.07  Remedies
[1]  Preliminary Relief
[2]  Permanent Injunctions
[3]  Damages

Privacy and Data Security

§6.01  Introduction
§6.02  Selected Federal Laws
[1]  The Computer Fraud and Abuse Act
[2]  The Electronic Communications Privacy Act
[3]  The Childrens Online Privacy Protection Act
§6.03  State Data Security Laws
[1]  The California Data Security Breach Notification Law
[2]  Other State Security Breach Notification Laws
[3]  Data Security Litigation
§6.04  Industry Standards
§6.05  Spam
[1]  The Controlling the Assault of Non-Solicited Pornography and Marketing Act
[2]  Short Message Service, Wireless E-Mails, and Applicable Laws
§6.06  Spyware
§6.07  Personal Information and Identity Theft
[1]  Federal Laws
[2]  State Laws
[3]  Spoofing and Phishing
§6.08  Tracking Technologies
[1]  Cookies and Web Bugs
[2]  Data Mining and Other Technologies
§6.09  E-Mail and the Workplace
[1]  E-Mail Monitoring
[2]  E-Mail Communication and Attorney-Client Privilege
[3]  The Importance of E-Mail Policies

Electronic Discovery

§7.01  Overview
[1]  Electronic Evidence
[2]  Litigation Holds and the Role of Counsel
[3]  Spoliation
[4]  Production and Cost Allocation
§7.02  Federal Rules of Civil Procedure
[1]  Applicability to Electronic Discovery
[2]  Specific Electronic Discovery Rules
§7.03  Protective Orders
§7.04  Subpoenas
[1]  Claims Involving the Stored Communications Act
[2]  Identifying Anonymous Defendants
§7.04A  Section 230 of the Communications Decency Act
§7.05  Issues Concerning Patent Litigation
[1]  Third Party Subpoenas
[2]  The Importance of Local Rules
§7.06  Computer Forensics
[1]  Generally
[2]  Data, Hard Drives, and P2P Networks
[3]  Computer Hard Drive Examination
[4]  P2P and the "First Propagator"

Alternative Dispute Resolution

§8.01  Arbitration
[1]  Generally
[2]  Enforceability of Agreements
[3]  Software License Agreements
[4]  Discovery and the Availability of Injunctive Relief
[5]  Review of Awards
§8.02  The Uniform Dispute Resolution Policy (UDRP)
[1]  Generally
[2]  Proceedings and Related Litigation
§8.03  The International Trade Commission
[1]  Section 337 Violations
[2]  Section 337 Investigations
[3]  Remedies
[4]  Interplay Between ITC and Federal Court Litigation

Emerging Areas

§9.01  Click Fraud
[1]  Generally
[2]  Early Litigation
[3]  Industry Response
§9.02  Digital Cataloging
§9.03  Virtual Worlds and Virtual Property
[1]  Generally
[2]  Regulating the Intangible
[3]  Intellectual Property-Related Litigation
[4]  Jurisdictional and Related Issues
[5]  Virtual Theft and Cybersecurity
§9.04  Voice Over Internet Protocol (VoIP)
[1]  Generally
[2]  Regulation and Litigation
§9.05  Computer Trespass and Unauthorized Access to Web Sites
[1]  Computer Fraud and Abuse Act Claims
[2]  Computer Trespass Claims
[3]  Web Site Terms of Use
[4]  Limitations
§ 9.06  Social Networks
[1]  Privacy Concerns
[2]  Behavioral Advertising
[3]  FTC Involvement
[4]  Evolving Litigation
§ 9.07 Net Neutrality
[1]  Generally
[2]  Evolving Law
§ 9.08 Cloud Computing