Three Idea & Design Protection Tips For Interior Designers Ping® July 2015


Interior Design can be a competitive business. It is no secret that one designer may begin a project, only to have it completed by another, including a former employee. As a result, Designers need to be vigilant about protecting both their designs and relationships. The case of Hunn v. Dan Wilson Homes, Inc., 13-11297, 14-10365, 114 qUSPQ2d 2002 (5th Cir 2015) offers several lessons for Designers.


Ben Lack, who was employed as a draftsman at the Plaintiff architectural design firm Marshal Hunn Designs (HD), resigned from his job while in the middle of a project for the firm’s client, Dan Wilson Homes, Inc. (DWH). After Lack’s resignation, Lack was hired by DWH to complete the project. HD sued Lack and DWH alleging that they secretly agreed in advance with DWH to cut HD out of the business. The court ruled in favor of Lack (and DWH) finding they never entered into any “secret agreement” and there was no merit to the eight other legal claims, including copyright infringement and false designation of origin under the Lanham Act.


DWH is a custom home construction company. DWH contracted with HD to produce plans for four (4) custom homes. DWH wanted the plans drafted by Lack. Lack was the only HD employee who worked on the four custom homes for DWH and HD’s only representative at all weekly meetings with respective homeowners.

While the home construction projects were still underway, Lack informed HD of his desire to resign. Lack also requested by email that a friend of his convert some of the project files into AutoCAD versions. This conversion was required because Lack maintained his own copy of AutoCAD software on his home computer.

HD permitted draftsman to take home files because they often worked on projects on their own home computers as well as work computers. Lack had permission to work on the files at home.

After Lack’s employment ended, HD ask Lack to return physical files related to the project, but not the AutoCAD files.

The relationship between DWH and HD deteriorated. DWH offered to pay HD a prorated amount for the work completed up to the date of termination of Lack. HD refused. DWH later tendered payment for the full contract price, even covering items and services that had not been completed.

HD declined to accept payment and responded by filing a complaint alleging eight causes of action: 1) copyright infringement, false designation of origin under the Lanham Act, 3) breach of contract, 4) breach of fiduciary duty, 5) breach of covenant not to solicit, 6) tortious interference, 7) violation of the computer fraud and abuse act, and 8) conspiracy.

During his deposition, Lack indicated that he believed he would have had at least two more weeks of employment after tendering his notice of resignation, and that he would be able to complete the plans. DWH also believed that Lack would complete the plans under the employment of HD.

The District Court granted summary judgment in favor of the defendants Lack and DWH on all claims. HD appealed the judgment. The appellate court affirmed the District Court’s decision.


The District Court found that there was no breach of contract because DWH’s only duty was to pay for the services which he offered to do.

The District Court found there was no breach of fiduciary duty because any duty terminated upon termination of employment, and Lack did not disclose trade secrets or any confidential information. Although HD alleged that the AutoCAD files were confidential and proprietary information, the court held that they were not because HD had disclosed them to Lack without restriction.

The District Court found that there was no violation of the computer fraud and abuse act because Lack never exceeded his authority. HD routinely permitted employees to take files home and put them on their personal computers.

Although Lack had a non-complete clause in his at-will employment agreement, the Court found there was no violation because the clause was unenforceable. The clause states “in the event you leave or are separated from Hunn Designs’ employment, you agreed not to solicit, either directly or indirectly, business from, or undertake with any customers serviced by you while the employment of Hunn Designs, or any other Hunn Designs customers for a period of two years thereafter.”

The District Court held the non-compete clause was unenforceable do to a lack of independent consideration. Continued employment in at-will agreement is illusory.

The District Court ruled that even if the drafts of house designs were copyrightable, there was no violation of copyright because of the existence of an implied license authorizing use of the designs.

The court found particularly interesting “the fact that the home owners themselves essentially came up with their design ideas and sought to have those self designed homes built [after their ideas were] placed into the drafting stage.”

The District Court cited the 7th Circuit case of I.A.E., Inc. v. Shaver 74 F.3d 768 (7th Cir. 1996) for the proposition that an architect in a similar situation had granted an implied license. Even though the architect in Shaver testified that he did not intend for use of the drawings past the drafting stage unless he was the architect on the project, this was not supported by the record.

The court found there was no violation of the Lanham ask prohibition against false designation of origin, because there was no evidence that use of the plans had a substantial economic effect on interstate commerce, as required by the Lanham Act.

Take Aways:

Based on my review of the court’s opinion, there are potentially three (3) things the Plaintiff (Hunn) could have done differently that may have changed the outcome of this case. First, have a clear, written policy in place defining what constitutes trade secrets and other proprietary information and proper methods for handling those. Second, have policies restricting how and when employees may take company property and files home, and addressing storage and return of property and files. Third, create and enforce clear conditions for access, distribution and use of drafts, proposals, files and other works-in-progress to avoid inadvertently granting an implied license to third parties such as contractors, consultants or clients.



Five Best Ways to Protect Your Ideas


When I first meet a client, I am often asked “How can I protect my ideas?” While it may seem like a simple question, getting the answer right is often tricky. That’s because one can’t actually own an idea, in and of itself. Sounds confusing, I know. The five best ways to protect your ideas are 1) Identify, 2) Organize, 3) Register (or restrict), 4) Monitor, and 5) Enforce. This articles focuses on how to identify the best ways to protect your ideas.

Regardless of industry, Ideas are the keys to any successful business. While one cannot “own” an idea, one can protect one’s Intellectual Property rights that relate to the embodiment or manifestation of that idea. For example, Copyright, Patent, Trademark, Trade Secret and Publicity Rights are all forms of Intellectual Property rights that grant exclusive rights to the owner, both artistic and commercial.

Copyright protects works of creative artistic expression such as books, movies, audio-visual music, paintings, photographs, and importantly, software. Copyright protection requires that a work be “fixed” in tangible format (this includes electronic format) and gives the owner (called the “author”) of such works the exclusive rights to reproduce, distribute, publicly display, publicly perform, and modify a work for a certain period of time.

Patents (utility and design), Trademarks and Trade Secrets protect creative commercial expression sometimes known as “industrial properties,” as they are typically created and used for industrial or commercial purposes.

A Patent protects the invention or discovery of “any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.” A Patent gives the inventor “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States for a period of time.

A Trademark is any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from others, and to indicate the source of the goods. In short, a trademark is a brand name or logo that is a distinctive sign which is used to prevent confusion among products in the marketplace. A Trademark enjoys protection indefinitely, as long as it is being used.

An industrial design right protects the form of appearance, style or design of an industrial object from infringement.

A Trade Secret is an item of non-public information concerning the commercial practices or proprietary knowledge of a business. Public disclosure of trade secrets may sometimes be illegal. A Trade secret enjoys protection indefinitely, as long as it is being kept secret.

Some rights are “statutory” in that they exist because they are granted by the Constitution of the United States, e.g. Copyright and Patent. Other rights arise from “use,” e.g. Trademark and Trade Secret rights. Some arise under State law, e.g., Rights of Publicity. Not all types of intellectual property require registration in order to obtain, maintain or enforce one’s rights. However, registration is HIGHLY RECOMMENDED if available, is required in certain circumstances and, even when not required, registration often confers several benefits that enable enforcement, reduce the risk and costs of enforcement, and provide additional incentives and remedies for enforcement.

The term “Intellectual Property” denotes the specific legal rights described above, and not the intellectual work, concept or idea itself. Oftentimes, the largest value of a businesses can be traced to its intangible assets. Knowing how to identify intangible assets and understanding which Intellectual Property rights apply to these assets is critical to the ability to protect and commercialize one’s ideas. Therefore, great care should be given to maintaining and enhancing their power and value. Value can be increased through a carefully planned and executed strategy. Innovative companies that successfully leverage their Intellectual Property rights will stand to benefit most from the opportunities presented by the current economic marketplace and demand for innovation.


Focus | Vision | Perspective | Passion

Executives face a confusing and dynamic set of challenges ensuring their business remains legally compliant. Yet few can afford the highly-qualified and versatile legal staff needed to deal with today’s complex legal & regulatory environment.

Adler Law Group was created to provide clients with a competitive advantage by enabling them to leverage their intangible assets and creative content in a way that drives innovation and increases the overall value of the business.

For a FREE, no-obligation 1 hour consultation to learn the best ways to identify, protect and leverage your ideas, please call: (866) 734-2568, click:, or write: David @

Adler Law Group – Providing innovative legal counsel that elevates aspirations to achievements.™

Copyright, Fair Use & Media

Digital Media

Digital Media

Media Creation & Consumption is Challenging Traditional Legal Notions.

At a time when #media creation & consumption has transformed, two recent cases, both involving Fox News Network on opposite sides of the “fair use” defense to copyright infringement, highlights the evolving and dynamic legal challenges facing business and content creators. In each case, Fox News loses on Summary Judgment.

Photographs, Fair Use & Social Media

The first case, North Jersey Media Group, Inc. v. Jeanine Pirro and Fox News Network, LLC, involves what many recognize as the “now iconic photograph of the firefighters raising the American flag on the ruins of the World Trade Center on September 11, 2001.” The photograph – which bears a striking resemblance to Joe Rosenthal’s World War II photograph of the Iwo Jima flag-raising – has become a similarly striking symbol of American patriotism.

That similarity was not lost on a production assistant for a Fox News program “Justice with Judge Jeanine” who posted the two images, unaltered, on the show’s Facebook Page, along with the phrase “#neverforget,” allegedly to commemorate the twelfth anniversary of the attack.

The case is noteworthy for its analysis of the “fair use” defense in a social media context. While the Copyright Act grants authors certain exclusive rights, including the rights to reproduce the copyrighted work and to distribute those copies to the public (17 U.S.C. § 106(1), (3)) one often quoted and widely misunderstood limit to those rights is the doctrine of “fair use,” which allows the public to draw upon copyrighted materials without the permission of the copyright holder in certain circumstances. The fair use doctrine is an after-the-fact defense to infringement, not a pre-emptive justification to use another’s work without permission.

Educated in journalism and media studies, the production assistant acknowledged that she understood a copyright to be something that is owned by someone else although she had no training in copyright law either in college or during her tenure at Fox News. She had been working at Fox News for approximately three years, had previously sought legal advice regarding use of photographs on the broadcast, but never in connection with posting images to the program’s Facebook page.

The key take-away for businesses and digital marketers alike is the need for vigilance when using third-party content on social media. Employee education and training on what copyright protects, what it doesn’t, and how it works may help prevent your business form facing a similar situation.

Media Monitoring, Digital Content & Copyright Fair Use

The second case, Fox News Network, LLC v. TVEyes, Inc., involves a company that monitors and records all broadcasts by more than 1,400 television and radio stations twenty-four hours per day, seven days per week. This content is indexed and organized in a searchable database that allows subscribers to search terms, determine when, where, and how those search terms have been used, and obtain transcripts and video clips of the portions of the television show that used the search term.

Fox News Network, LLC sued to enjoin TVEyes from copying and distributing clips of Fox News programs. TVEyes asserted that its system and services are permitted under the doctrine of “fair use.”

The court found that TVEyes service was a fair use. Unlike other services that simply “crawl” the Internet, culling existing content available to anyone willing to perform enough searches to gather it, the indexing and excerpting of news articles, where the printed word conveys the same meaning no matter the forum or medium in which it is viewed, the service provided by TVEyes is transformative. By indexing and excerpting all content appearing in television, every hour of the day and every day of the week, month, and year, TVEyes provides a service that no content provider provides. Subscribers to TVEyes gain access, not only to the news that is presented, but to the presentations themselves, as colored, processed, and criticized by commentators, and as abridged, modified, and enlarged by news broadcasts.

The key take away for technology companies that rely on content is what the court says about features of the Services (as opposed to the technology itself, e.g. the software/platform): the issue of fair use is for the full extent of the service, TVEyes provides features that allow subscribers to save, archive, download, email, and share clips of Fox News’ television programs. The parties have not presented sufficient evidence showing that these features either are integral to the transformative purpose of indexing and providing clips and snippets of transcript to subscribers, or threatening to Fox News’ derivative businesses.”

In other words, evidence that certain features are essential to the use of a service, may be sufficient to show how the features (service) exist above- and-beyond what stale or static content can show.

You Don’t Have to Muddle Through

When it comes to understating evolving technology legal risks, your business can’t simply muddle through. The professionals at the Adler Law Group can help you adopt conduct risk assessments, provide employee training and methodologies for approaching these challenges by setting objectives, determining scope, allocating resources, and developing practices that will efficiently and effective manage risks, while keeping pace with the business.

For a free consultation, call us at (866) 734-2568, send and email to or visit our web site

The New Wave of Data-Breach Outrage

You can almost feel it, like a power-line buzz in the air. If 2014 was the year that consumers and legislators woke up to the real threat to privacy and information security, 2015 may be the year that sees a shift in both enforcement and penalties.

On February 5, Anthem, Inc., the country’s second-largest health insurer by market value announced a security breach resulting in unauthorized access to tens of millions of current and former customer and employee accounts, Bloomberg reports.

Of particular concern is that the compromised data included social security numbers and birth dates, etc. Very different than having a credit card number stolen.

Last week, a group of 10 state attorneys general (AGs) sent a letter chastising Anthem for the length of time it took to notify the public of the breach. The letter was written on behalf of Arkansas, Connecticut, Illinois, Kentucky, Maine, Mississippi, Nebraska, Nevada, Pennsylvania and Rhode Island.

Some observers have commented that current encryption technology can limit the amount of data that even “authorized users” can view at one time, making it more difficult to compromise massive amounts of data.

In this situation, the breach occurred through misuse of an authorized user’s credentials, so encryption alone would not have worked. While most companies give universal access to data to some employees (senior level or IT), for the encryption approach to work, no one person or set of credentials should allow access to all data.

In the end, the new “best practices” approach may be a combination of encryption plus controls to limit the amount of data that any one set of credentials can access.

When it comes to addressing data privacy risks, it is often difficult to determine whether you should slow down, change course, signal for help, or simply muddle through. Often, teams tasked with managing privacy need to quickly identify potential issues, assess the risk, and implement controls to steer clear of unneeded exposure. The privacy professionals at the Adler Law Group can help you adopt Privacy Impact Assessments – or similar tools – and standardize a methodology for approaching these challenges by setting objectives, determining scope, allocating resources, and developing practices that will efficiently and effective manage privacy, while keeping pace with the business. For a free consultation, call us at (866) 734-2568, send and email to or visit our web site


Do You Understand Your Data Privacy Rights?

Data Privacy Day was started in 2007 in response to widespread lack of understanding about how personal data was being protected. Today, 91% of adults “agree” or “strongly agree” that consumers have lost control over how personal information is collected and used by companies, according to a recent Pew Research Center Survey.

Data is one of the natural resources of the 21st century. It should be treated like all other precious resources. Understanding, responsibility, and accountability are key. Ubiquitous Internet connections, unprecedented processing power and speed combined with staggeringly large databases have the ability to help both the private and public sectors. However, there is a growing split between the benefits of data-driven activities and perceptions of decreased privacy rights needs to be addressed. There is a balance that needs to be found between the responsibility of governments and that of businesses in ensuring an adequate level of protection to citizens and consumers, while supporting technological innovation.

The purpose of Data Privacy Day is raise awareness among digital citizens and empower them with understanding how their data is being collected, stored and consumed. Often, that starts with being educated about the privacy policies of online companies and web properties.

The National Cyber Security Alliance (NCSA) officially kicked off today’s Data Privacy Day events with a broadcast from George Washington University Law School featuring Federal Trade Commissioner Maureen Ohlhausen and privacy and security experts from industry and government.

Whether you are a consumer, an application developer, a technology platform provider, consultant, or enterprise that relies on the collection, analysis and commercialization of data (who doesn’t these days) Adler Law Group can help you navigate this emerging area by 1) assessing and prioritizing privacy risks, 2) creating a baseline understanding of data assets, data flows and contractual commitments, 3) developing internal Privacy Polciies and processes, and 4) creating and delivering training programs for executives and employees that increases awareness and mitigate risk.

Contracts & Copyright: Issues for Authors, Writers & Creative Professionals

To find out more about how the Adler Law Group can help your business identify risk and issues related to intellectual property ownership, corporation or LLC formation, or just assess risk associated with your business, contact us for a freeno-obligation consultation by emailing David @, visiting our web site, or calling toll free to (866) 734-2568.

Failure to Mind Corporate Details Leads to Loss of Copyright, Infringement Lawsuit

The case of Clarity Software, LLC v. Financial Independence Group, LLC is a great example the serious, negative consequences to intellectual property ownership when business owners and legal counsel fail to ensure that tasks are completed.

The short version is that the creator of computer software, Vincent Heck, sold the copyright in his software to settle a debt to a creditor, Eric Wallace, who intended to form Clarity Software, LLC to own and distribute the software. The lawsuit was for infringement of the copyright in the software.

As they say, “the devil is in the details.” In this case, the detail that became a devil, and ultimately prevented Wallace from enforcing a copyright in the software, was the fact that Clarity Software, LLC was never properly formed and therefore lacked standing to sue for infringement.

Forgive me for employing yet another trite phrase, but “truth is often stranger than fiction.” The Defendant proved that a veritable comedy of errors had occurred resulting in no record of the formation, including 1) the Department of State of Pennsylvania losing the certificate of organization, along with all records of the submission and filing of the certificate of organization, 2) the Plaintiff’s bank (PNC Bank) losing its copy certificate of organization provided when Wallace opened a bank account (even though PNC Bank still had the signature card completed when the account was opened), and 3) Wallace, himself a former President of the Pennsylvania Institute of Certified Public Accountants, losing his copy of the certificate of organization and all records of his communications with his attorney.

Defendant successfully moved for summary judgment based on its argument that Plaintiff did not own the copyright at issue in the litigation since it was not properly organized as a Pennsylvania limited liability company and never acquired valid ownership of the copyright.

Hat tip to Pamela Chestek and her blog, Property Intangible, where she first wrote about this case October 13, 2014. The opinion and order can be found here: Clarity Software, LLC v. Financial Independence Group, LLC, No. 2:12-cv-1609-MRH (W.D. Pa. Sept. 30, 2014).

To find out more about how the Adler Law Group can help your business identify risk and issues related to intellectual property ownership, corporation or LLC formation, or just assess risk associated with your business, contact us for a free, no-obligation consultation by emailing David @, visiting out web site, or calling toll free to (866) 734-2568..