Around the water cooler

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Diversity in Practice: Defining and talking about race

By Arin N. Reeves, J.D., Ph.D.
The Athens Group

My mother — a first generation immigrant woman of color physician who raised her children in several countries before making America her home — finds it utterly amusing that her daughter chooses to grapple with diversity for a career.

When a Chinese Cuban associate joined her medical practice a few years ago, she challenged me with this “diversity” question: If a man, born in Cuba to a Chinese father and a Cuban-Chinese mother, grows up in Spain, immigrates to America and speaks English, Spanish, and Chinese (with a Spanish accent), is he considered a European, Hispanic, or Asian?

After a lengthy dialogue on race, ethnicity, nationality, and accent, she concluded by asking - Do racial categories enable diversity or do they limit diversity’s full expression?

Although my mother likes to engage me in such conversations to probe what I actually do for a living, the issue of defining, naming, and populating racial/ethnic categories is a very real and complex challenge facing legal workplaces striving for diversity and inclusion.

The Oxford English Dictionary defines race (partially) as: (1) each of the major divisions of humankind, having distinct physical characteristics; (2) racial origin or distinction; and (3) a group of people sharing the same culture, language, etc. such as an ethnic group.

The reference gurus, however, caution the reader that, in modern usage, “some people now feel that the word race should be avoided, because of its associations with the now discredited theories of 19th-century anthropologists and physiologists about supposed racial superiority. Terms such as people, community, or ethnic group are less emotionally charged.”

What the reference gurus fail to mention is that the constantly changing categories of race (and its various substitutes) create a semantic chaos in workplaces around which diversity and inclusion efforts are tenuously built. Whether diversity is about creating parity with national demographics or ensuring equal opportunity for all, legal workplaces struggle with the semantics in order to measure progress, and they look to three distinct definitions of diversity that sometimes overlap and often disagree with each other.

First, the U.S. Census Bureau categorizes race as American Indians/ Alaska Natives, Asians/Pacific Islanders, Black or African American, Native Hawaiian or Other Pacific Islander, White, and/or Some Other Race. Hispanics - now measured as an ethnicity instead of a race - have to select one of the racial categories above and then complete the Hispanic Origin section.

Next, the U.S. Equal Employment Opportunity Commission interprets race as “Whites, Blacks, Asians, Latinos, Arabs, Native Americans, Native Hawaiians and Pacific Islanders, multi-racial individuals, or persons of any other race, color, or ethnicity.”

Finally, the National Association of Law Placement — the main source of employment statistics in the legal profession - asks employers to report on the race of “minority” lawyers who are Black, Hispanic, American Indian/Alaskan, Asian/Pacific Islander, and Multi-Racial.

In spite of the multiple definitions, legal scholars like John Tehranian and Richard Thompson Ford argue that the existing categories do not yet fully cover or clarify racial minority groups. Tehranian argues for the creation of a “Middle Easterner” category that includes Arabs, Turks, Persians, and other ethnicities so that people from the Middle East are not forced to accept “compulsory whiteness.” Ford explores the debate on whether “African American” refers to just individuals who are descendants of slaves or all people with roots in Africa.

The research and dialogue adds to employers’ agony over how to collect racial/ethnic data on employees and who to include in the NALP forms. Minority associations are in equal agony over how to represent the diversity of identities captured under such vast umbrellas as Asian (continental category spanning many ethnicities) and Hispanic (ethnic category spanning many continents.)

Perhaps the Oxford linguists’ understanding of race as an “emotionally charged” concept sheds some light on why race endures as a critical yet indefinable signifier of difference.

Are racial differences (skin color, facial features, etc.) seen simply as “different than,” or are racial differences surrogates in helping us evaluate “better than” and “less than?” Do we focus on NALP forms because counting racial minorities is easier than talking about racial stereotypes, racial bias, racial prejudice, and racial privilege?

Maybe the reason we, as a nation and as a profession, have such difficulty defining race is because we have such difficulty talking about what race means and why that matters.

Definitions and categories may allow us to track our efforts in increasing the numbers of “racial/ethnic minorities,” but I question the merits of what we are measuring. The legal profession is rife with examples of how increasing numbers of minorities do not lead to more inclusive workplaces. If we stop trying to define race and actually talk about why race still matters, could we move toward a diversity where race no longer needs a definition?

Firm Life

Jennifer T. Nijman and Susan M. Franzetti formed Nijman Franzetti, which will handle environmental law and litigation. Nijman was chair of Winston & Strawn’s environmental law practice group, and Franzetti, formerly a partner at Sonnenschein Nath & Rosenthal, had been with the Franzetti Law Firm.

Susan Franzetti (left) and Jennifer Nijman. Photo by David Durochik

DLA Piper named William A. Rudnick managing partner of the firm’s Chicago office, succeeding Louis S. Cohen. Rudnick is the grandson of Harry L. Rudnick, who co-founded Rudnick & Wolfe in 1936. DLA Piper is the successor firm of Rudnick & Wolfe.

Nixon Peabody has named Richard F. Langan, Jr. as chief executive officer and managing partner. Langan will succeed Harry P. Trueheart III, in May.

Dykema has appointed Thomas R. Hill, former group leader of the litigation practice group, to office managing member of the firm’s Chicago and suburban Chicago (Joliet and Lisle) offices. The firm also appointed Richard E. Gottlieb as leader of its financial institutions team.

Grantland G. Drutchas has become managing partner at McDonnell Boehnen Hulbert & Berghoff, succeeding Matthew J. Sampson.

Lawrence J. Casazza has been elected to the executive committee of Vedder Price.

Chapman and Cutler has named Timothy V. McGree and M. John Trofa as co-chairs of the firm’s public finance department, replacing Daniel L. Johnson, who was named the firm’s chief operating partner.

Gil M. Soffer, a partner at Katten Muchin Rosenman, has been appointed counsel to the deputy attorney general of the United States. Soffer resigned from the partnership in January, under the requirements of the appointment.

Manish K. Mehta, an associate at Brinks Hofer Gilson & Lione, has been appointed
a vice president of the Indian-American Bar Association of Chicago.

Richard Lipton, a partner at Baker & McKenzie, was elected chair of the American College of Tax Counsel. And John A. Biek, a partner at Neal, Gerber & Eisenberg, has been elected a Fellow to the ACTC.

Olson & Hierl has changed its name to Olson & Cepuritis.

Susan E. Kamman opened Susan E. Kamman & Associates, in Barrington. The new firm focuses on matrimonial and parentage matters.

Longwell Associates has changed its name to Longwell & Blair Associates, reflecting Deanna R. Blair’s elevation to partnership.

Jonathan Strauss opened The Law Offices of Jonathan Strauss, a downtown law office dedicated to business law and finance. The office is at 55 E. Monroe St., Suite 3910.

Gordon & Rees opened an office in Chicago at 1 N. Franklin St. The new office focuses on commercial liability, insurance, and professional liability. Michael P. Tone, a former partner at Ross, Dixon & Bell, serves as managing partner.

Katten Muchin Rosenman has been selected by the Chicago Committee on Minorities in Large Law Firms as the committee’s new home until 2010. The committee had been housed at Reed Smith since 2006.

Kirkland & Ellis has named 16 law students as recipients of its 2008 Diversity Fellowship Program. The two local students are Jacqueline M. James and Sanjay M. Nangia, both from Northwestern University School of Law.

The family of Allen J. Hoover, the patent lawyer killed in a shooting rampage in December 2006, has established the Allen J. Hoover Memorial Award. The $5,000 award, which is funded by Hoover’s family and his law firm, Wood Phillips, will be given to a third-year DePaul University law student who is expected to make the greatest contribution to intellectual property law.

The Center for Disability & Elder Law announced its new slate of officers: Immediate Past President, Peter J. Mone; President, Addison Braendel, Baker & McKenzie; Vice President, Erin M. Maus, Baker & McKenzie; Treasurer, Nicole Wells, FTI Consulting; and Secretary, Robert Johnson, McDonald’s Corporation.

> Partners

Baker & McKenzie has elected four new partners in its Chicago office: Elizabeth P. Fahey, corporate and securities; Lisa Parker Gates, intellectual property; Stephen M. Griesemer, corporate and securities; and Edward J. West, corporate and securities.

Wildman Harrold has named five new attorneys to the partnership: Alison C. Conlon, complex litigation and arbitrations; Matthew M. Garrett, product liability and mass tort defense; Jamie Rubin, intellectual property, advertising, marketing and promotions; Gregory M. Smith, intellectual property; and David P. Vallas, restructuring and insolvency.

Howrey has promoted 15 attorneys to partnership, including two in its Chicago office: Thomas Jenkins, intellectual property; and Steven Yovits, intellectual property.

Duane Morris has named 10 associates to partnership, including one in its Chicago office: Jeffrey Hamera, construction.

Ross, Dixon & Bell has elected David F. Cutter, insurance coverage and commercial litigation, as a partner in the firm.

Schopf & Weiss has named William B. Berndt, complex contractual disputes and business torts, a partner in the firm.

DLA Piper promoted 69 attorneys to partnership, including five in Chicago: David B. Allswang, real estate; Joseph E. Collins, complex commercial litigation; Gina L. Durham, domestic and international intellectual proprety; Robyn Goldman Koyner, corporate and securities; and Micah R. Onixt, business, corporate collaborations, life sciences, biotechnology, and information technology.

Hoeppner Wagner & Evans has named Sean E. Kenyon, civil litigation, insurance coverage, and employment; and Michael E. Tolbert, insurance defense, civil litigation, and employment law, partners in the firm.

Banner & Witcoff has elected 11 new principal shareholders and shareholders, including three in its Chicago office: principal shareholders Paul J. Nykaza and Richard S. Stockton; and shareholder Michael J. Harris.

McDermott Will & Emery has promoted 16 lawyers to partner in its Chicago office: Catherine A. Battin, state and local tax; Philip J. Castrogiovanni, health law; Sandra M. Di Varco, hospitals and health systems; Timothy J. Eloe, mergers and acquisitions; Ashley Mc Kinney Fischer, health care; Aron J. Frakes, complex commercial litigation; Jocelyn D. Francoeur, civil litigation; John P. Hammond, corporate; Ryan M. Harding, sophisticated wealth transfer and estate planning; Ryan D. Harris, mergers and acquisitions, securities; Nicole K. Mann, private client; J. Christian Nemeth, trial; John P. Schetz, mergers and acquisitions; Edward B. Tuerk, corporate finance; Jamie A. Weyeneth, employee benefits; Stephen Y. Wu, antitrust.

Stahl Cowen Crowley has elevated Lauane C. Addis to name partner. The firm is now known as Stahl Cowen Crowley Addis.

Querrey & Harrow has named Cynthia E. Garcia, corporate, a shareholder.

Nixon Peabody has elected William D. Pegg, technology and intellectual property, to partnership.

> Moves

To Foley & Lardner: partners Harold L. Kaplan and Mark F. Hebbeln, both business reorganization, from Drinker, Biddle & Reath.

To Holland & Knight: partner Robert H. Lang, litigation, from Quarles & Brady.

To Reed Smith: counsel Michael M. Geoffrey, intellectual property, from USG Corp.; and partners James M. Davis, insurance recovery, and Paul R. Walker-Bright, insurance recovery; and associate Evan T. Knott, insurance recovery, from Anderson Kill & Olick.

To Loeb & Loeb: partner Elizabeth L. Majers, corporate, from McDermott Will & Emery.

To McDermott Will & Emery: partner Eric D. Hargan, health law, from the U.S. Department of Health and Human Services, where he was acting deputy secretary.

To Schiller DuCanto and Fleck: partner Elizabeth Wells, retirement benefits, from her solo practice.

To Mayer Brown: partner Ray A. Dybala, tax controversy and transfer pricing, from Motorola, Inc., where he served as senior vice president and director for worldwide tax.

To Pasulka & White: new associates Lindsay M. Keenan and Erin R. Doyle, both in family law.

To Goodsmith Gregg & Unruh: senior counsel Steven N. Wayland, general commercial, from Debevoise & Plimpton.

To Katten Muchin Rosenman: partner Neal Wolf, bankruptcy and creditors’ rights, from Dewey & LeBoeuf.

To Scandaglia & Ryan: associate Seth Remy Yohalem, commercial litigation, from Kirkland & Ellis.

To Sonnenschein Nath & Rosenthal: national client services manager John T. Podbielski Jr., from Schelbe & Podbielski.

To Lewis Brisbois Bisgaard & Smith: partners Timothy J. Young and P. Chauncey Cassidy; and associates Joseph W. Substalae, Garry B. Zak, Ronald W. Payne and Dallas J. O’Day, all in general liability practice, from Chilton Yambert Porter & Young.

To Latherow Law Office: associate Bridget Duignan, personal injury, from the Illinois House of Representatives, where she was assistant counsel to House Speaker Michael J. Madigan.

To Perkins Coie: partner David M. Neff, bankruptcy and workouts, from DLA Piper.

To SmithAmundsen: partner Michael G. Cortina, financial services, in the firm’s Woodstock office, from The Law Office of Michael G. Cortina.

To Kenneth M. Sullivan & Associates: trial attorney Dennis F. Esford, commercial litigation, from Lawyer-Link, where he was director of business development.

To Banner & Witcoff: associate Louis Di Santo, from Wildman Harrold; and new associates Katie L. Becker, Katherine L. Fink, Dima N. Moussa, Timothy J. Rechtien, and Bradley J. Van Pelt.

To Shefsky & Froelich: associates Michelle L. Clauss, real estate, from Sugar, Friedberg & Felsenthal; and Roger J. Kiley, litigation, from the Illinois Attorney General’s Office.

To Kinnally Flaherty Krentz & Loran: associates Rorry Kinnally Bonifas and Nicholas A. Bonifas.

To Pircher, Nichols & Meeks: counsel Brett D. Smith, real estate, from Katten Muchin Rosenman.

To Wildman Harrold: partner W. Allen Woolley, commercial and environmental litigation, from Kirkland & Ellis.

To Thompson Coburn Fagel Haber: partner Mark Lenz, public finance and real estate, from Dykema.

To Belongia & Shapiro: partner Kelly A. Saindon, commercial and civil litigation, from Zagotta Saindon Law Offices.

> Changes

John H. Stroger, the first black president of the Cook County Board, died at age 78 on Jan. 18. Stroger was head of the board from 1994 to 2006.

Harry G. Comerford, who served as chief judge of the Cook County Circuit Court during the Greylord corruption investigation, died at age 86 on Jan. 29, of pulmonary fibrosis. Comerford was a judge for 34 years, and was chief judge from 1978 to 1994.

Operation Greylord, which started in 1980, culminated in the bribery and tax fraud convictions of 15 judges and more than 40 lawyers.

David I. Herbst, a partner at Butler Rubin Saltarelli & Boyd died Feb. 3, at age 67, following a nine-month fight against leukemia.

Q&A: Jill B. Berkeley

> Jill B. Berkeley

Family: Married with two sons.

Education: A 1972 University of Michigan graduate, and a 1975 Northwestern University School of Law graduate.

Professional: A partner and co-chair of Howrey’s Insurance Recovery practice. Her clients include Ameren Corp., Chicago Bears Football Club Inc., Humana, and Laidlaw.

1. Why did you become a lawyer?
I was in college in Ann Arbor and I was a journalism major and writing for The Michigan Daily. I was covering the Commission on Women and, of course, it was also the late ’60s, early ’70s. I was very much swept away by the idea that women need to challenge themselves by doing more than just taking the easy path. …

I just felt I should be something I never would have assumed a woman could be. Although both of my parents went to college, there were no lawyers in the family.

I was not the least bit science-oriented, so I certainly wasn’t going to medical school. I wasn’t really interested in research — laboratory or academic research — and I also felt there were a lot of women already in those fields. So I said, “Well I will try this lawyer thing.” I took the LSAT and applied to law school and that’s what got me started.

2. What is the last big deal or case you worked on that you can talk about, and what did it entail?
The Illinois Appellate Court granted a petition for rehearing in a case we had won over a year ago, which was titled American Economy Insurance Company v. Holabird & Root. We had to prepare the response to the petition for rehearing and prepare for the oral argument and we are now awaiting the decision from the appellate court.

The issue in the case was an interesting question under duty to defend principles where we were attempting to have American Economy acknowledge its obligations to defend the architect as an additional insured under a subcontractor’s general liability policy.

3. What is the weirdest thing that ever happened to you as a lawyer?
I think probably the strangest thing I’ve ever done as a lawyer was to buy an insurance publication and become the publisher, the editor, the accountant, the marketer, and the researcher all at the same time.

When I went to law school it was really because I didn’t want to go into business. I just felt I didn’t have a real head for making a profit and, of course, the law has certainly become more of a business today. Taking that leap and owning a business and running a business at the same time that I was a lawyer was a real departure from what I would have thought was my career path.

4. If you could have lunch with anyone, living or dead, who would it be and why?
Frank Lloyd Wright.

I have been fascinated with him for his work as an architect, and his work as a visionary, and his success in building not just buildings, but also the creation of ideas. I’m fascinated with people who work with tangible things as opposed to just ideas. He, to me, combined the concepts of all these fantastic ideas and art and structure and engineering, and really changed the landscape of cities.

5. What is your favorite book, movie or television show about lawyers, and why?
For me, in some ways, my favorite movie would be “My Cousin Vinny.” I don’t mean that in any kind of deprecating kind of way.

Of all the things you could say — the TV shows, the movies and the books - there is just something about “My Cousin Vinny” that strikes me, that says something about the goodness of people who want to help someone. And a lawyer can certainly be a flawed person, but can actually still help somebody in need.

6. What advice do you have for new lawyers or those wanting to become lawyers?
I have found that new lawyers or maybe younger lawyers have developed an attitude of trying to do the work with as little effort as possible - in other words, trying to understand how to get the best result they can with the least amount of work …

I think that is such a dangerous attitude to have for a young lawyer. What I really want to nurture in my young lawyers is the sentiment that they should do whatever it takes to get the absolute best product, whether it’s a brief, whether it’s a memo, whether it’s taking a deposition.

As a young lawyer, if you don’t put in the effort to really push yourself as hard as you can to be as excellent as you can, you’ll never have as good of an opportunity in your life to really learn what it means to really work hard to get a great result.

7. What do you like the most and the least about being a lawyer?
I really like the ability to solve intricate and complex problems. I love sort of starting with a clean slate and having a client come to you with a problem that has layers and layers of complexity to it; and having to figure out and problem-solve and strategize how to get to the best result for the client. It really makes a new client a lot of fun to work with because you have new problems that come up.

What I like least is dealing with people who like litigation just for the battle. And there are many that really are thrilled by just engaging in conflict for the sake of conflict. And I recognize in my own practice that litigation is a necessary tool to resolve disputes. But I really don’t enjoy the battle just for the sake of battle. And I should say I don’t mean that in kind of a girly-girl way. I love to battle for the right result and I’m not at all adverse to conflict and aggression. But it offends me when people just do it for the joy of the battle.

— Interviewed by Olivia Clarke

Clifford’s Notes: Zoo liability

By Robert A. Clifford
Clifford Law Offices

Americans were horrified when they heard of the three teens who were attacked on Christmas Day, one of them fatally, by a 300-pound Siberian tiger at the San Francisco Zoo.

The death marked the first time a visitor had been killed at an accredited zoo in America. The family of the young injured men hired famed West Coast attorney Mark Geragos, who charged that zoo administrators knew that the 12-foot-5-inch wall containing the tiger habitat is nearly 4 feet below industry recommendations and “couldn’t hold a house cat.”

The zoo already is facing a lawsuit by a zookeeper who was attacked last year by that same tiger, Tatiana, while the employee fed her.

That zookeeper accused the City of San Francisco, which owns the zoo property, of housing the tigers with “reckless disregard for the safety of animal handlers and members of the general public.”

Nine days after the Christmas Day attack, the zoo reopened and visitors found workers with jackhammers installing glass panels that raised the height of the tiger walls to 19 feet. The big cats were kept indoors until the outdoor enclosure improvement was completed.

I have heard callers on radio talk shows in Chicago argue that all visitors to zoos must feel safe, and predatory wild animals certainly should never be allowed to escape.

Although these listeners will not be part of Geragos’ jury pool, I think back to the famous 1996 incident where a 3-year-old boy tumbled into the gorilla habitat at Brookfield Zoo.

Captured on home video, Americans watched the female gorilla cradle the unconscious boy, protecting him from other gorillas as she brought him to her trainers. Brookfield Zoo touts on its website that the gorilla, Binti, was raised, coincidentally, at the San Francisco Zoo but, because she was never fully accepted by the other gorillas in California, a decision was made to move her to Brookfield Zoo for socialization and breeding purposes.

San Francisco’s zoo, like many others, is owned by a municipality; Lincoln Park Zoo is operated by the park district. Most cases against zoos are premises liability claims, not animal attacks, although Lincoln Park Zoo was in the news in 2006 for paying a fine to the U.S. Department of Agriculture, in part, for a gorilla attack on a zookeeper.

Courts have recognized that, because cities do not have a duty to establish a park or zoo, when it does undertake to house ferocious animals, it must be held to a strict duty of keeping them safely. Byrnes v. City of Jackson, 140 Miss. 656, 105 So. 861 (1925).

A 9-year-old boy in Mississippi was mauled by a tiger after the animal reached under a cyclone fence and pulled the boy’s leg into the cage.

The court found that the keepers of wild animals were absolutely liable for damages caused by that animal because of obvious public safety issues. Burns v. Gleason, 819 F.2d 555 (5th Cir.1987).

In Illinois, notwithstanding potential claims of tort immunity, courts have found that, where the public entity is engaged in a non-governmental function, such as operating a public arena, it is held to the same standard imposed on private parties in exercising a high degree of care toward its invitees to protect them against the likelihood of danger from reasonably foreseeable attacks. Comastro v. Village of Rosemont, 122 Ill.App.3d 405, 461 N.E.2d 616 (1st Dist.1984). See also, Roth v. Costa, 272 Ill.App.3d 594, 650 N.E.2d 545 (1st Dist.1995).

Arguably, the Illinois Animal Control Act, 510 ILCS 5/16 (2008), should apply. It provides: “[i]f a dog or other animal, without provocation, attacks, attempts to attack, or injures any person who is peaceably conducting himself or herself in any place where he or she may lawfully be, the owner of such dog or other animal is liable in civil damages” for injuries. Cf., Smith v. Lane, 358 Ill.App.3d 1126, 832 N.E.2d 947 (5th Dist. 2005).

Since the tiger escape on Christmas, a snow leopard at that same zoo ripped a small opening in its wire cage, but an employee prevented its escape, and on another day workers had to shoot darts at a polar bear there in order to goad it back into its night enclosure.

The Association of Zoos and Aquariums, which accredits zoos throughout the country, sent an inspection team to look into the specifics of these incidents, and San Francisco’s mayor is conducting a series of public hearings about the deadly tiger attack to examine the operations and safety of the zoo, as well as the protocol of the city’s emergency services department.

The city’s Recreation and Parks Commission has been ordered to conduct an outside audit of the zoo’s safety procedures and policies, and the city has asked zoo officials to prepare a plan to improve security and emergency response, and have the city controller audit the zoo’s finances and performance.

All of this review is good, but it is tragic that it took the death of that teenager to get officials to examine any deficiencies. Perhaps it will serve as a wake-up call for other zoos to do the same before another tragedy strikes.

Info Tech Law: DMCA provides pitfalls and remedies

By Alan S. Wernick
Wernick & Associates

The Digital Millennium Copyright Act (DMCA) contains many remedies, as well as some pitfalls, for copyright owners. However, it also provides protections for alleged infringers.

Among other things, if an Internet service provider (ISP) - which has been broadly construed by the courts to include most website owners/operators - has designated with the U.S. Copyright Office an agent to receive notifications of claimed infringement, then the DMCA provides a safe harbor provision shielding the ISP from liability for copyright infringement under certain circumstances.

If your company has not recorded a DMCA designated agent filing with the U.S. Copyright Office, and receives a valid DMCA notice, without any misrepresentations, it may be liable for the copyright damages available to the copyright owner. But, if your company complies with the DMCA, has done the requisite filing, and acts promptly and appropriately upon receipt of the notice, then it may avoid liability for damages for copyright infringement on your company’s website.

In addition, the DMCA provides a sword to the ISP in the form of a damages remedy available to the ISP, and the alleged infringer, for misrepresentations by a copyright owner in a takedown notice under the DMCA.

The DMCA defines a “service provider” broadly to mean “an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received.” 17 U.S.C. Sec. 512(k).

An ISP is generally a “service provider” under the DMCA, but many other website owners/operators have found refuge in the broad variety of Internet activities included under Sec. 512(k)(1)(B).

Recently, the U.S. District Court for the Southern District of New York considered the DMCA notices sent by a copyright owner to two ISPs and issued a preliminary injunction against the copyright owner, stopping the copyright owner from sending further takedown letters without court approval.

In Biosafe-One Inc., et al. v Hawks, et al., the plaintiffs alleged that the defendants copied the plaintiffs’ website, among other things. The plaintiffs, prior to the preliminary injunction hearing, submitted two DMCA notices to the defendants’ web hosting companies, resulting in the shutdown of the defendants’ website, and ultimately forcing them to host it overseas at a higher cost.

The defendants argued that filing these notices violated the DMCA’s prohibition against misrepresentation. Both parties moved for preliminary injunctions, including a request by the defendants for damages based on alleged misrepresentations in the plaintiffs’ DMCA notices.

The court held that the plaintiffs failed to demonstrate that they are likely to prevail on their infringement claim, and denied their motion for a preliminary injunction. The court then granted the defendants’ motion for a preliminary injunction and ordered the ISP to reinstate the defendants’ website.

The court then turned its attention to the defendants’ request for damages under DMCA 17 U.S.C. Sec. 512(f), which provides:

“Any person who knowingly materially misrepresents … that material or activity is infringing … shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.”

The court, after reviewing the test of 17 U.S.C. Sec. 512(f), held that the defendants failed in their motion for a preliminary injunction to present sufficient evidence to prove a violation of Sec. 512(f): “While defendants have not demonstrated their likely success on the merits, they have demonstrated sufficiently serious questions going to the merits to make them fair grounds for litigation and a balance of hardships tipping in their favor. To succeed on their claim, defendants need only prove plaintiffs knew defendants were not infringing when they submitted the DMCA notices. Defendants have not yet had the opportunity to fully develop this theory.”

The court went on to say that portions of a plaintiff’s testimony lacked credibility, and a fair issue exists as to whether his statements that the defendants’ website infringed when the plaintiff sent the DMCA notices were intentionally and knowingly false.

This opens the door to the defendants’ potentially receiving a Sec. 512 damages award upon a full hearing on the merits. As in some other cases, the copyright owner in this case may find itself liable for damages for misrepresentations made in the copyright owner’s DMCA takedown notice.

The bottom line is that while the DMCA provides some powerful remedies to copyright owners, it also presents some potential pitfalls, and potential liabilities.

© 2008 Alan S. Wernick

Tinder joins the big leagues with seat on 7th Circuit

By Maria Kantzavelos

The 1992 baseball card featuring a mustachioed John Daniel Tinder in a Los Angeles Dodgers uniform could, perhaps, use some updating — particularly in the space referring to one of the favorite activities of the player nicknamed ‘The Judge.’

“One of John’s favorite activities is being affirmed by the 7th Circuit Court of Appeals,” notes the statement on the backside of the mock baseball card.

The card — which “probably would trade on eBay for about two cents,” Tinder said — is a memento from his second visit to Dodgertown in Vero Beach, Fla., where Tinder ran bases and rubbed shoulders with some of the retired players and coaches of his all-time favorite major-league baseball team as a participant in Dodgers’ fantasy camp.

That was also around the time when Tinder was playing out a long career as a trial judge on the U.S. District Court for the Southern District of Indiana, where he handled an average of 400 civil cases and 50 criminal cases at any one time.

After 20 years on the federal bench in Indianapolis, in December Tinder went from being the next in line for the position of chief judge of the district to becoming the “tail of the dog” as the most junior of the judges on the 7th U.S. Circuit Court of Appeals.

“It’s an exciting time for me, personally, to go through this,” Tinder said recently from a vacant office in the Dirksen Federal Courthouse. “Here I am at 57, approaching 58. Starting a whole new phase of a career is really energizing. It’s something that’s hard to stop smiling about.

“There’s no particular magic to it, but you can imagine after doing something for 20 years and being very comfortable in doing that and enjoying that, and to walk away from that and do something that might even be more interesting and more enjoyable — it’s a great opportunity.”

And while the old baseball card from fantasy camp also points out that his goal in life is “to become the Commissioner of Major League Baseball,” Tinder said his appointment to the appeals court is a point in his career where he had not, even in his “wildest dreams,” thought he would reach from his early years as a federal prosecutor arguing his first cases before the 7th Circuit.

“This is well beyond any success I thought I would have,” Tinder said. “I don’t usually look back; I live in the present. But I suppose, if I take a minute and look back, I have to chuckle. I am a bit amazed that I am here doing this. Who, realistically, could ever aspire to this? The opportunities to do this are very rare. There is no certain job path that leads somebody from the places I’ve been to where I am now. I just feel very fortunate that all of these different things have happened to me.”

Tinder fills the vacancy created by Judge Daniel A. Manion, who has opted to take senior status while continuing to carry a full caseload. Tinder was sworn in on Dec. 28, after a unanimous confirmation vote by the U.S. Senate, and a formal investiture is scheduled for April 11 in Indianapolis.

Innovation goes hand-in-hand with client service

By Olivia Clarke

Many Chicago law firms are taking client service to new levels with interactive websites, networking events, think tanks, and virtual deal rooms.

Gone are the days when law firms were rewarded for simply providing excellent legal service. Clients also want their lawyers to help them network and improve their businesses. They want legal services to be efficient, cost-effective, and technologically advanced.

There are law firms and outside legal companies that get it. They are adopting new internal and external programs, workshops, and technology to meet these demands. Here are a few examples.

Legal outsourcing to India

When George Hefferan and Ganesh Natarajan practiced together at McGuireWoods, they often discussed business ideas on client trips to India.

They discovered the possible benefits of outsourcing basic legal work to lawyers in India. They turned this brainstorm into Mindcrest, a company they started in 2001 with two other people.

Chicago-based Mindcrest now employs 440 Indian lawyers who attended Indian law schools and are licensed in India. And the company’s clients are a mix of in-house legal departments of Fortune 500 companies and law firms, Hefferan said.

“The client base on the corporate in-house side has always been strong for us,” said Hefferan, Mindcrest’s vice president and general counsel. “It’s a very logical pitch to them because they are constantly constrained by budgets and often have more work than they have bandwidth to complete.”

Law firms didn’t initially embrace the idea of outsourcing legal work to India because they wanted their associates kept as busy as possible, he said.

But many firms now recognize that this idea can enhance associate retention because associates no longer need to handle the more routine and least challenging work.

Outsourcing shows clients that their firms value cost-effective solutions, he said.

Tom Baldwin, Reed Smith’s chief knowledge officer, addresses the staff on knowledge management issues.

“We knew from the outset that we couldn’t sacrifice quality,” Hefferan said. “We make our work of the same high quality that a law firm might produce, and we don’t take on work we can’t do.

“We aren’t providing sophisticated legal advice,” he said. “U.S. law firms are the ones best suited for that. It’s really a way of doing some of the work that really is largely administrative by using offshore resources, and keeping the high-level legal work onshore where the legal expertise is.”

Meeting with technology

Brinks Hofer Gilson & Lione’s main conference room used to seat only about 30 people.

But for a firm that has grown to about 323 employees in its Chicago office alone — that setup no longer works, said Rod Sagarsee, Brinks’ chief information officer.

The firm cut the ribbon on its new conference center in November, and now has 10 conference rooms and a lunchroom with varying levels of advanced technology.

This technology includes an integrated services digital network (ISDN) and high-speed IP video (people plus content) conferencing, automatic ceiling lift projector systems, automatic projector screen systems, Crestron touch-screen presentation, and room lights and shading systems.

There are high-definition CATV LG flat-panel displays throughout and LCD CATV projector systems, wiring in conference table tops, wireless portable convenience printers and wireless Internet, and more than 80 individual audio microphone connection systems.

Lawyers can now communicate with the firm’s other offices through high-speed video conferencing and Avaya VoIP Meet-me Conferencing, which provides audio conferencing. Clients can participate in firm meetings through the web, Sagarsee said.

The firm’s electronic conferencing scheduling system allows lawyers to book a conference room without leaving their desks.

And if Brinks hosts a staff-wide Chicago office meeting, it can connect a conference room to the lunchroom through video and audio conferencing.

Sagarsee’s team of 12 people helped bring the conference center’s technology to fruition, and they also maintain it on a daily basis.

“The bottom line is, it’s just better service for your client,” he said. “You are able to allow your client to have every option, from a technology standpoint. The client doesn’t even need to physically come here. It is just a tremendous advantage.”

Providing greater client service

Like corporations, law firms must use technology to enhance the customer experience, said Doug Caddell, chief information officer at Foley & Lardner.

For example, airlines created systems so that a person booking a flight can go online and easily select the exact seat, check-in ahead of time, and book ground transportation at the destination, Caddell said.

“Foley & Lardner is looking at how we can use our technology to have a competitive advantage,” Caddell said. “People may say they have an extranet or another piece of technology, but having it and using it effectively are two different things.”

The firm created FOLEY ClientSuite, which provides clients with the ability to instantly access information on any matter through a secured extranet website.

Through this site, clients can learn about different laws that they regularly use when making business decisions, Caddell said. General counsel can visit the site to stay informed on how much of the legal budget the firm has spent, or they can stay updated on where their lawyers are on particular matters, he said.

The resource module can be customized to contain the content clients want, including: policies and procedures; privacy guidelines; tax regulations; employee benefits; human resource information; and model documents.

“No longer do they have to play telephone tag with a lawyer to figure out what’s up,” Caddell said. “They can log on from home, and see what’s going on.”

Another program the firm uses is Private Equity Matchmaker. Through its automated search function and deal-matching capability, it connects clients who are seeking capital with those who are actively pursuing private equity investment opportunities.

As Foley lawyers populate the Matchmaker program, the tool evaluates and searches for matches based upon such attributes as transaction size, development stage, geographic region, and industry. When a match is identified, the system generates an e-mail notifying the firm’s lawyers of a potential compatibility.

Bell, Boyd & Lloyd has become a premier sponsor of the MIT Enterprise Forum of Chicago. Ted Wallhaus, the MIT volunteer who coordinated the event, is speaking to those who attended the monthly forum, which started at Bell Boyd on Feb. 12.

“It used to be that lawyers practiced law with companies who were local to them or at least regional to them,” Caddell said. “The advent of [globalization] really identified a need for law firms to address how we serve a client who is no longer in our backyard. Technology was one way to do that.”

Think tanks

Gemma Allen and Ronald Ladden began organizing think tanks in 1997, when they worked together as co-heads of the family law division at Pretzel & Stouffer.

They opened their own firm, Ladden & Allen, in 2000 and continue to spearhead think tanks that bring lawyers, mental health experts, and other professionals together to discuss topics associated with marriage and divorce, Allen said.

“Our goal is to make marriage more successful and try to put ourselves out of business,” she said.

She said the firm wants to help people develop stronger marriages. And if a marriage must end, it wants to help create a smoother divorce process.

“We have come to the conclusion as a firm that the divorce rate could probably be lowered by about a third if people had better information and better tools,” she said.

Allen said lawyers receive wonderful educations, and family law lawyers receive unique exposure to societal problems. By participating in these think tanks, they can help society deal with these issues, she said.

The firm’s October think tank, for example, discussed intimate terrorism, which refers to actual or inferred physical or mental violence against a spouse, she said.

“We owe it to people to bring our knowledge to their attention so they can benefit from it,” Allen said. “We owe it back to society and I think we all benefit from the exchange of ideas.”

Chief knowledge officer

When Reed Smith hired Tom Baldwin this year as its chief knowledge officer, Baldwin faced the task of showing lawyers how he will tangibly help improve their professional lives.

Though he’s not a lawyer, Baldwin has a background in law firms.

He was chief knowledge officer at Sheppard Mullin Richter & Hampton, which has offices in California, New York, Washington, D.C., and China. Before that, he was a technology consultant at Foley & Lardner, and he also has been a consultant to other firms and corporate legal departments.

According to Reed Smith, Baldwin will help assess technology tools that increase efficiency, streamline processes and improve productivity within the firm.

Baldwin said he faces three core challenges.

First, what the firm knows as a firm. For example, a team of lawyers may be going on a pitch for a potential client. They need to know which lawyers they should bring on this pitch and who possesses the type of experience the client is looking for. The firm needs to know who knows what when a client needs help on a task, Baldwin said.

Secondly, the firm needs to know who it knows, he said. The firm’s network of contacts can be very important to clients, especially financial institutions and corporate clients. Instead of lawyers sending countless e-mails to each other when searching for information about things like who knows a particular opposing counsel or a certain judge, that information should be readily available, he said.

Third, the firm must figure out what it needs internally to do its job. Lawyers need such things as new management reports, industry news feeds, and internal processes. Lawyers internally generate reports and statistics and the firm needs a central location for this information, he said.

“[Clients] are looking for firms to come to them with innovative ways to deal with their problems,” Baldwin said. “How do we, as a firm, distinguish ourselves from competitors, and provide better services?

“Clients are asking law firms for innovative approaches to reducing their expenses for their legal department’s budget.”

Family-friendly policies

While law firms have discussed diversity for years, it wasn’t until around 2000 that concerns about things like family-friendly policies really began to evolve and pick up steam in larger law firms, said Janine Landow-Esser, the diversity partner at Quarles & Brady’s Chicago office.

Landow-Esser said her law firm has been
a leader in providing parents with helpful options. And in recognition for those efforts, Yale Law Women named Quarles & Brady in September as the No. 1 law firm in the U.S. for its family-friendly policies.

The firm, for example, has an “ease back in” policy that allows lawyers to use extended maternity and paternity leave to work part-time after the birth of a child.

Its flexible schedule program allows lawyers to designate a percentage commitment to the firm, usually at least a 60 percent commitment, and to work a reduced schedule that meets everyone’s needs. Currently, nine associates, one of counsel attorney, and six partners are taking advantage of this opportunity.

The firm also has a backup child provider through all its offices if a parent’s primary childcare falls through, Landow-Esser said.

All of the firm’s expectant parents receive a new parent packet about 90 days before the anticipated birth or adoption. The packet contains informational material relating to leave, childcare, dependent care (flexible spending account), college savings plans, as well as a checklist of benefits to review.

The firm also added a dedicated room in each office for mothers who are nursing. The rooms are outfitted with comfortable chairs, magazines and low-level lighting.

These programs help retain lawyers so that clients do not experience much turnover, and they help to positively impact the work-life situation for the firm’s lawyers, she said.

“Clients hate having to educate a new lawyer on a crucial project,” she said. “There is much more institutional support for a variety of programs that help women and others balance their life within the law with their life outside the law.”

Sharing information

Robert Barrett, vice chairman of Bell, Boyd & Lloyd and head of the patent practice group, said law firms must offer their clients more than great legal service.

Bell Boyd has become the premier sponsor of the MIT Enterprise Forum of Chicago, a monthly forum fostering innovation and entrepreneurship. It’s a chapter of the Massachusetts Institute of Technology’s Global Enterprise Forum - a network of technology executives, entrepreneurs, scientists, and investors.

Barrett, a member of the forum’s executive committee, said the forum gives clients and potential clients the ability to directly interact with, and have access to business leaders and entrepreneurs at different stages of their careers. They can benefit from the opportunity to network, he said.

“Our firm has a very strong intellectual property group and a very strong corporate technology group,” he said. “This [forum] is the marriage of technology and business, which is, in part, what our firm stands for, and which is also MIT - being very strong in technology as well as one of the best business schools.”

Bell Boyd also created client support groups where the firm’s clients can gather together to discuss various topics, or to gain additional training. These groups help in-house lawyers who may not have someone they can turn
to within their company when they need to bounce an idea off someone, Barrett said.

It allows in-house counsel to network with other in-house counsel, and creates a true partnership not only between the law firm and an individual client, but also a partnership among clients, he said. It creates a community atmosphere, he said.

“From the firm’s standpoint, it gets clients invested in you as a firm,” Barrett said.

Flat fees

When Marc Gugliuzza worked at a firm in the Loop, he sometimes hated the part of the conversation when he needed to tell clients what his legal services would cost.

When he opened his law firm - Delta Law Group in LaGrange, Ill. - he decided to offer flat fees for certain legal services, such as estate planning. Now clients who come across his ad purposely call him because he offers flat fees.

Estate planning is a perfect area for flat fees, he said. He sets disclaimers so that clients do not take advantage of the flat fee and, for example, call 20 times a day or demand too much legal advice.

Most families seeking estate-planning assistance ask for the same type of service, he said. Flat fees work out perfectly for people who do not have estate tax issues, he said.

“I kind of always looked at the business of law differently than other attorneys,” he said. “Having worked in financial services, the goal is to get in front of people. Some people need a lawyer for life.”

Immigration software

Through a software partnership with INSZoom, Laner Muchin’s clients can gain access 24 hours a day to the status of their immigration cases.

The extranet allows the firm to track international employee migration, and to provide information for each employee and dependent family member - including detailed biographic information, such as visa status and expiration date information.

The software can also be used for customized status report generation, and case tracking for those client representatives granted secured access to the information, according to the firm.

The interactive database allows the firm to send and receive information and documentation to and from its clients to process immigration cases.

“The benefit is that both the employer, as well as the individual who is the subject of the immigration request, can check on the status of their file 24/7,” said Joseph M. Gagliardo, managing partner and chair of the litigation department.

“That becomes important when you have people from other countries,” he said. “They don’t need to worry about the time difference. It is very important that they have access to the information when they feel necessary.”

Virtual deal rooms

Jonathan Carson and Eric Kurtzman spent their legal careers representing companies that needed financial restructuring.

These companies often hired claims agents when they went through Chapter 11.

But Carson and Kurtzman experienced times when they weren’t fully satisfied with the work these agents did, Carson said. They believed technology could be used to make the process easier, he said.

They entered the claims and noticing industry in 2001 and created Kurtzman Carson Consultants (KCC), a claims and noticing agent that provides administrative-support services and technology solutions to companies undergoing corporate restructuring.

As part of its services, the company offers virtual deal rooms and virtual data rooms to its clients. A virtual deal room is an online, secure environment that enables efficient document exchange and review, said Carson, president and co-founder.

KCC’s virtual deal room users can brand their own custom deal rooms to increase deal management control, and build brand awareness for their respective firms, according to the company.

He said using a virtual deal room can reduce clients’ costs by taking due diligence online.

Some firms may be concerned about whether these deal rooms are secure, but he said KCC ensures that the security is top-notch. The company appreciates the sensitivity of the information and doesn’t want anything to be vulnerable, he said.

Law firms are now big businesses, and more than ever they understand the importance of innovation, Carson said.

“The legal industry is not any different than any other modern industry,” he said. “[Law firms] have to remain innovative to remain competitive.”

Building upon the innovations of yesterday’s and today’s law firm

By Olivia Clarke

When Gary Ropski started practicing law in the mid-’70s, his firm’s documents were typed on IBM Selectric typewriters.

The typewriters’ memory cards could remember maybe a paragraph of information and the signature, he said.

In the ’80s, his firm, which is today Brinks Hofer Gilson & Lione, became one of the first Chicago firms to give every attorney a computer.

But these computers did not have hard drives or operating systems, and did not connect with other computers. After he typed a document, his secretary needed to retype it because their computers weren’t electronically connected.

Times are different today. When Ropski takes a business trip to Japan, he can open his laptop computer and access his office phone, his e-mail, and the Internet from his hotel room. He can participate in a firm meeting on his computer, and research patents or court cases online from across the world. He is able to access documents located in his office’s files.

“It permits me to provide good client service no matter where I am, no matter what time of day it is,” said Ropski, president of Brinks. “I can be in touch with my clients and colleagues … That permits us to be much more responsive, sometimes much more efficient, and get better, quicker results for clients.

“I literally have a virtual office no matter where I am working.”

Law firms face new horizons due to innovation, whether it’s improvements in technology, updates in philosophies, or changes in management principles. Today’s innovations help lawyers practice law at a quicker pace, and manage their growing firms in new and different ways.

Technology tops most lawyers’ lists when they describe innovations in their law practices, but they also recognize that significant advancement has occurred in firm policies and in the management of their offices.

“A lot of lawyers who practiced a long time ago like to be nostalgic of the good old days when you had lots of turnaround time on drafts of documents,” said Richard Kohn, a senior partner and founder of Goldberg Kohn. “But I think in many ways the new technology is quite exciting.

“One can only imagine what technology will be like 100 years from now, and how it will transform the practice of law again.”

Around the water cooler

Calling all questions 

Do you ever wish that you could get a general counsel or in-house lawyer in a conference room so that you could pump them for information about improving your relationship with them — well you can. Sort of.

We are having a roundtable discussion with a group of general counsel attorneys and we want to know what we should ask them. What general questions do you have for them? What topics are you curious about? If you’ve got some ideas please email me, Olivia Clarke, at oclarke@lbpc.com.

We want your ideas and we want to provide you with the most useful and interesting story possible.

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