GC New York 2011 Archives


Intellectual Property

Business Method Patents: A Tale of Two Decisions

By Ian G. DiBernardo and Iuliana Tanase

Recent Federal Circuit opinions suggest that business methods based on specific algorithms and computer manipulations are more likely to be found patentable.


Finding Comfort in Rule 502(b) in Inadvertent Disclosure

By Sean Sheely and Tiana McLean

If attorneys and judges better understood and more rigorously used Rule 502(b) in the spirit intended by the Advisory Committee, the costs for multiple layers of review for privilege would decrease.


Class Actions

Circuits Split on Standard For Removal Under CAFA

By Kymberly Kochis and Francis X. Nolan IV

Significant uncertainty exists as to what burden of proof should be applied in determining whether the $5 million amount in controversy threshold is met.

Copyright Enforcement

How New Breed of Copyright Plaintiff Tackles Old Problem

By Marvin S. Gittes and Joseph M. DiCioccio

While traditional copyright enforcement tactics varied, all had one common theme—curtailing infringement. Now it appears that a new breed of copyright owner has surfaced deploying highly aggressive tactics calculated to not only reduce infringement, but by using economies of scale, to make litigating these actions significantly more profitable.



Internal Investigation Strategies in a Post Dodd-Frank World

By Steven S. Sparling and Arielle Warshall Katz

How to use a company's internal controls and investigative process to encourage employees to use internal reporting mechanisms, anticipate and guard against false whistleblower complaints, and protect privileged information from being disclosed to or used by regulators.

Contract Drafting

Sandbagging Provisions; Cumulative vs. Exclusive Remedies

By Lawrence Hsieh

A review of a classic boilerplate provision allowing an aggrieved party to pursue any remedy that can lead to a common drafting blind spot when an exclusive remedy was negotiated and another intended to deal with a buyer's awareness of a problem prior to closing that is subject to an assortment of negotiating tactics from both buyers and sellers.


Mergers and Acquisitions

Effects of Mergers on Non-Assignable Agreements

By Daniel C. Glazer and Daniel P. Ashe

The Delaware Chancery Court's recent denial of a motion to dismiss casts new doubt on whether M&A lawyers can rely on a reverse triangular merger acquisition structure to avoid violating prohibitions on assignment contained in the target company's contracts.


Finding Needles in Haystacks: Reining in the Cost of ESI

By Dennis R. Kiker

Even amid the rolling waves of e-mails, text messages, spreadsheets and other digital documents that wash into and out of just about any company during the average workday, proper management of ESI need not translate into a budget-busting nightmare.


Attorney-Client Privilege

Is That Conversation Really Privileged?

By Victoria A. Kummer

The primary difficulty with the "fiduciary duty" exception lies not in its uneven application, but in the fact that one cannot know at the time of the communication that the conversation may become discoverable in an as-yet unfiled lawsuit by as-yet unknown plaintiffs at some point in the future.


Patent Cases Need Early Resolution. Here's How.

By Manny W. Schecter and Kathleen A. Bryan

When faced with an infringement case, lawyers usually refuse to even consider mediation until a court requires it or considerable litigation expense has been incurred, but many more would be resolved earlier, more effectively, and most significantly, at much lower cost.


Contract Drafting

Materiality Scrape and Force Majeure Provisions

By Lawrence Hsieh

A discussion of materiality scrape provisions, which are tricky to negotiate because they may introduce unintended ambiguity, and the innocuous-looking force majeure provision, which requires a balance between the need for specificity and the "just in case" desire to capture similar contingencies.


'DBSD': Has Confirming a Plan Become More Difficult?

By Michael Friedman and Keith N. Sambur

Alternatives for parties seeking to obtain the benefits of a gift plan without running afoul of the Second Circuit's decision.



New York City Human Rights Law: Expanding Frontiers of Liability

By Jennifer Rubin and Michael Arnold

Six years ago, the New York City Council amended the City Human Rights Law and made it one of the strongest in the nation, but the lack of clarity of the law's reach and application has left employers guessing what types of conduct will be deemed actionable and how those claims will be proven.


Is Your Arbitration Clause Helping or Hurting You?

By Victoria A. Kummer

If you want to structure the process so as to achieve the swift, efficient resolution that is (or should be) the hallmark of arbitration, it would be wise to include any desired procedural limitations within the arbitration clause itself.



Claims Risks: True Tales From the Law Department

By Susan F. Friedman

As in-house counsel continue to juggle their roles between corporate gatekeepers and confidants, they face a host of emerging risks. The passage of new statutes, creation and rejuvenation of regulatory bodies, and the revitalization of existing laws all pose new potential liabilities around compliance and due diligence.


Expanded Supervisory Liability for In-House Lawyers

By James Q. Walker, Daniel C. Zinman and Grant Mogan

Although the ALJ in In the Matter of Theodore W. Urban ultimately found that the in-house lawyer's supervision was "reasonable," the fact that the ALJ concluded that the lawyer was a financial adviser's supervisor is a disquieting development for all in-house lawyers at broker-dealers.


International Employment

Accidental Expatriates: Potential Global Mobility Hazard

By Erika Collins and John Hamlin

A significant issue facing global corporations is the potential for liability created by employees who travel overseas on what are intended to be short assignments but whose time overseas is extended long enough or cumulates over time to bring about potential violations of host country immigration, tax and Social Security laws.


Taking It Back—Recovering Transfers in Bankruptcy

By Steven J. Reisman, L.P. Harrison III, and Jerrold L. Bregman

Although by its plain language chapter 15 does not allow foreign representatives to bring avoidance actions, they have nonetheless met with some success in avoiding and recovering transfers for the benefit of foreign debtors, including by seeking relief under chapters 7 and 11.


Executive Compensation

'Say on Pay': Anticipating the Path Ahead

By Adam M. Freiman and Monika Roth

A look at UK history, where say-on-pay rules have been in effect for close to a decade, and the history of companies that implemented say-on-pay under TARP, provides a window into where the Dodd-Frank Act regime will likely lead.


'Akzo Nobel': Implications For American Lawyers

By Laila Abou-Rahme and Richard Hornshaw

The European Court of Justice's decision on the legal professional privilege re-emphasizes the need for companies to take precautions when communicating with their own legal team.