Kevin DeBre - Stubbs Alderton & Markiles, LLP

Each month, we will feature a Stubbs Alderton & Markiles, LLP practice area to aid our readers in getting to know our firm, and providing insights into these areas of law that may impact your business most often. This month, we put the Spotlight on the Privacy & Data Security Practice team.

Tell us about your background as Privacy & Data Security attorneys. What spurred your interest in this area of practice?

I began my journey into privacy and data security law accidentally, when it was still a burgeoning, undefined field. A client inquired as to whether I could provide guidance on privacy issues his company was facing. I hesitated, but he pressed on, commenting, “no one knows what they are doing in this field yet, I’d rather have you learn it.” The skills I used then are the same I use now. These laws are constantly evolving and the ability to learn, and interpret, a new law quickly is both invaluable and essential. This is also what keeps me engaged. The practice of privacy and data security law requires adaptability and creativity. Every business operates differently and requires advice that suits their needs; there is no cookie cutter approach to this practice.

I became a privacy and data security attorney by accident. I was part of the legal team that took Geocities public in 1998. Geocities was a Web 1.0 precursor to today’s social media companies. Two days after its IPO, Geocities was sued by the FTC alleging that Geocities violated its privacy policy and misled consumers by sharing their personal information with advertisers. The company’s share price dropped 15%. It was the first FTC case involving Internet privacy and my first exposure to what would become a new body of law.

I view information and data as a fifth form of intellectual property (the others being patents, copyrights, trademarks and trade secrets). Whether it’s preparing a privacy policy for a website or app, negotiating privacy and data security representations and warranties for the seller in M&A transaction or advising a client on notifying customers of a security breach, privacy and data security has become a critical component of my practice. And, its importance will continue to grow.

I think for me, my interest in privacy and data security was spurred by my interest in technology and the impact it has had in areas like business and communications. In college I studied finance and information systems and after college, I took a job in the technology risk management group of a large global bank. I was responsible for conducting various risk assessments on new applications. It was interesting to be there at a time when the bank was moving toward developing a significantly larger mobile app portfolio. As such, there was a strong emphasis on security and privacy issues. Over the course of my time at the bank, I became more closely involved in regulatory issues that impacted the bank's technology and risk department. I enjoyed the subject matter so much I decided to go to law school and become a technology attorney.

I started my career in Europe working on transatlantic issues. Right around the time I moved back to the United States, the General Data Protection Regulation (GDPR) in Europe was passed, which affected numerous US companies. Because of my transatlantic experience, my practice naturally gravitated to the GDPR and global privacy and technology. I ultimately decided to stay in privacy and technology because it is exciting to be a part of an industry with so much innovation that affects our daily lives on a global scale.

What is the difference between privacy and data security?

The difference is an important one because although they intersect, privacy and data security do not overlap completely.

Privacy is generally viewed as protecting individuals' personal information and the rights individuals have over that information. Privacy laws concern how data is collected, shared, and stored. Privacy laws are typically highly regulatory in nature and include regimes such as the California Consumer Privacy Act, the Health Insurance Portability and Accountability Act, the General Data Protection Regulation (EU/EEA), and the Personal Information Protection and Electronic Documents Act (Canada), to name a small few. These laws create a patchwork of overlapping and sometimes contradictory rules for companies to follow.

Data security is generally viewed as a broader term that relates to safeguarding the confidentiality, integrity and availability of information. Data security applies to more than just personal information - it applies to any data that a company may hold, particularly sensitive information like trade secrets or material nonpublic information. Data security standards are often less formally regulated and can vary from industry to industry and state to state. However, in the event of a data breach, the severity of damages, fines, and other remediation measures may be dependent on the data security standards implemented at your business.

Why is it important that I have an attorney draft my company’s Privacy Policy?

One of the most important things about a privacy policy is that it accurately describes your company's practices with respect to the collection, handling and disclosure of personal information. The policy needs to be drafted to not only comply with laws such as the California Consumer Privacy Act, and General Data Protection Regulation, but also be tailored to your company's specific practices. A lawyer can help to ensure your privacy policy does both of these things.

Moreover, we have seen an increased focus on privacy issues over the past decade, which will only grow in the future. There is a real risk when it comes to privacy policies. The first place regulators will often look to evaluate your privacy compliance is your website. Regulators have opened investigations and fined companies for failing to accurately describe the company’s handling of personal information and consumers have filed claims, including class action suits, when companies fail to handle personal information in the manner described in a privacy policy. That said, your privacy policy is just the start. Privacy must be embedded into the company’s IT, marketing practices, and security. Otherwise, it is just window dressing.

If I think there has been a data breach or cyber incident at my company – what are the first steps that I need to take?

This is a tough question to answer as cyber incidents or breaches come in many forms. The most important steps should be taken even before an incident occurs. Company's should be thinking about developing an incident response plan and creating an incident response team – the team may include members from the IT, operations, HR and communications functions as well as a digital forensics team and outside counsel. The company should also test the incident response plan so that when an incident occurs, it is set up to respond quickly and efficiently.

If a company has experienced a breach, one of the first steps is to assemble of team to respond to the incident. For various reasons, this team should include outside counsel. The next steps after that can vary and may require a few different workstreams, including forensics, remediation, developing and updating a communications plan, and assessing legal obligations and notification requirements. In the event of a suspected breach, please do not delay in taking action.

For more information about our Privacy & Data Security practice at Stubbs Alderton & Markiles, contact Heather Antoine at or Kevin Debré at

SA&M Client InteliGlas Featured in LA Business Journal “InteliGlas Uses AI Program to Save Energy, Cut Costs.”

“There are a lot of companies out there that put sensors in the building and grab data ... which is half the solution,” Martin said. “The rest of the solution is our artificial intelligence, which we named Ripley, and Ripley takes immediate action.”

Ripley, for example, can scan through 40 years of weather data and adjust air conditioning in buildings based on weather patterns.

If a day is expected to be extremely hot, Ripley might start cooling the building at night instead of letting it get too warm, which would force the AC to work overtime in the morning. This approach can help users save on energy costs.

InteliGlas Corporation, represented by SA&M Partner Kevin DeBré, is an American proptech company based in Pasadena, California. InteliGlas was launched in 2018 to develop a commercial real estate autopilot for office buildings. This self-learning IoT platform integrates with virtually any preexisting building management system software.

RipleyAI - InteliGlas, a hive-mind multi-building learning system - combines the knowledge gained from the entire install base applying it to the benefit of all of the InteliGlas customer properties. They have achieved up to 65% energy savings, which is a significant achievement in the quest to lower overhead, and also because, according to the US Department of Energy, office buildings consume 73% of the US electrical energy output and produce a resulting 40% of the nation's carbon footprint.

Only a single lawyer in each practice area and designated metropolitan area is honored as the "Lawyer of the Year," making this accolade particularly significant. These lawyers are selected based on particularly impressive voting averages received during the peer review assessments.

“I love working with innovators who use technology to build businesses – and I’m honored to be recognized for it.” DeBré said of his award. More broadly, this acknowledgement from Best Lawyers is recognition of our legal community here, affirming the role Los Angeles plays as a major player in technology law.”

Receiving this designation reflects the high level of respect a lawyer has earned among other leading lawyers in the same communities and the same practice areas for their abilities, their professionalism, and their integrity.

In addition to the "Lawyer of the Year" award, Kevin D. DeBré was also listed in the 2021 Edition of The Best Lawyers in America in the following practice areas: Technology Law.

Since it was first published in 1983, Best Lawyers has become universally regarded as the definitive guide to legal excellence.

Kevin D. DeBré is the Chair of the Intellectual Property & Technology Transactions Practice group at Stubbs Alderton & Markiles, LLP. Entrepreneurs and innovators rely on Kevin for guidance in building their businesses. Kevin has been a “tech lawyer” since the mid-90’s when he was an attorney for a top Silicon Valley law firm and handled technology deals for “startups” such as Cisco systems, Broadcom and Geocities. Today, Kevin represents companies of all sizes – from pre-formation to middle market – and a broad spectrum of industries – from AI to VR.

Kevin is both a business lawyer and an intellectual property lawyer. As a business lawyer, he structures and negotiates technology commercialization deals and IP license agreements. As an intellectual property lawyer (and a registered patent attorney), Kevin designs and helps clients implement effective strategies for aligning intellectual property protection efforts with a company’s business objectives. Kevin is the founder and Chair of the Licensing Interest Group of the California State Bar Intellectual Property Section and the author of “Licensing of Trade Secrets and Know-How,” a chapter of Trade Secret Litigation and Protection in California, an attorney’s practice book published by the State Bar of California. Kevin clerked for Hon. John G. Davies, United States District Court for the Central District of California and he received his J.D. degree from the University of California, Hastings College of the Law. Full Bio>>>

At Stubbs Alderton & Markiles, LLP, we combine extensive transactional experience, intellectual property expertise, keen business insight and a deep understanding of technology across a range of industries, within the United States and abroad. Our tech-savvy attorneys enable clients to leverage their intellectual capital to realize business objectives and achieve successful outcomes. We know current business models and industry best practices and anticipate developments in the law to adapt to new technologies. Whether we are negotiating IP-driven commercial transactions, creating online contracts, securing university licenses, implementing corporate innovation programs and patent protection strategies or developing policies and procedures to comply with privacy and data security laws and regulations, we deliver creative and pragmatic solutions for maximizing the value of our clients’ technology and intellectual property assets. Full description>>>

For more information about our IP & Technology Transactions Practice, contact Kevin D. DeBré at

Stubbs Alderton & Markiles encourages you to virtually attend UCR Founder Talks to answer your legal questions with Partner Kevin DeBré on April 22nd at 4 PM. Kevin will answer questions regarding incorporation, intellectual property strategy, venture financing, and other business legal topics.

Location
Sign up here https://calendly.com/epic-sbdc/founder-talks. Founders only, please.

Kevin leads the Intellectual Property and Technology Transactions Practice at Stubbs Alderton and Markiles, LLP, where he advises entrepreneurs and companies that use intellectual property to build their businesses. Kevin is the personal business attorney for several UCLA faculty members and represents a number of UCLA-founded companies in licensing intellectual property created on campus. He has been recognized by his peers for excellence in his practice, having been selected for Southern California Super Lawyers® for seven years. Kevin is a frequent guest lecturer in undergraduate and graduate-level entrepreneurship courses at UCLA and other universities. To view Kevin’s full bio, visit here

To find out more about the event and to register:

About Len Lanzi
Leonard M. Lanzi has over 30 years of organization management and fund development experience. He has been serving as the Executive Director of the Los Angeles Venture Association since 2007. In his capacity at LAVA, Len works with the LAVA board of directors to direct the strategic plan and organize educational and informational programs within the venture-funded startup ecosystem in the greater Los Angeles region.

Len brings a well-rounded knowledge from such diverse human service organizations as the Community Kitchen of Santa Barbara, Court Appointed Special Advocates, Junior Achievement of Southern California and the Boy Scouts of America. To view Len’s full bio, visit here.

About the Kevin DeBré:
Kevin leads the Intellectual Property and Technology Transactions Practice at Stubbs Alderton and Markiles, LLP, where he advises entrepreneurs and companies that use intellectual property to build their businesses. Kevin is the personal business attorney for several UCLA faculty members and represents a number of UCLA-founded companies in licensing intellectual property created on campus. He has been recognized by his peers for excellence in his practice, having been selected for Southern California Super Lawyers® for seven years. Kevin is a frequent guest lecturer in undergraduate and graduate-level entrepreneurship courses at UCLA and other universities. To view Kevin’s full bio, visit here.

About First Friday:
First Friday is an early morning event that provides an opportunity for the campus and local communities to network. The group encourages you to kick off your day with exciting presentations on topics relevant to intellectual property and entrepreneurship at UCLA. To learn more about First Friday and more of UCLA’s Technology Development Group, click here.

Thesus AI Negotiates IP License Agreement

Stubbs Alderton & Markiles client Theseus AI, founded by a UCLA neurosurgeon that aims to address the costly medical problem of unnecessary spine surgeries, has negotiated an IP license agreement with UCLA. The license agreement with Theseus AI is for technology that was developed at UCLA that used AI to examine MRI scans of the patients' spines. The founder, Dr. Luke Macyszyn is a neurosurgeon at UCLA and he collaborated on the research with Bilwaj Gaonkar, a UCLA postdoctoral researcher in bioengineering

Stubbs Alderton & Markiles' client Pelage Pharmaceuticals, a startup company founded by UCLA faculty members Heather Christofk, William Lowry, and Michael Jung, has discovered a new way to activate the stem cells in hair follicles that are responsible for hair growth. This week they have announced that the compounds and the technology have been exclusively licensed by UCLA to Pelage Pharmaceuticals.

Copyright Owners Must Obtain Registration Before Filing an Infringement Lawsuit

This week, the U.S. Supreme Court made clear what has been a gray area of copyright law – copyright owners must register their work with the U.S. Copyright Office before suing for copyright infringement. Previously, courts in some circuits (including the Ninth Circuit) permitted infringement suits to go forward before registration while applications were pending.

The Supreme Court's decision does not change the law that copyright registration is not required in order to acquire copyrights. An author of an original work acquires a copyright at the moment the work is created and fixed in a tangible medium. Copyrights provide the exclusive right to reproduce and distribute copies of the work, prepare derivative works, and publicly display, perform and broadcast the work. To enforce these rights, a copyright owner must register the copyright with the U.S. Copyright Office.

What does this mean for you? If you are in the business of creating original works entitled to copyright protection (e.g., software, videos, audio recordings, manuscripts, visual artwork, architecture), then you will need to register your copyrights with the U.S. Copyright Office in order to take legal action against infringers. Submitting your work to the Library of Congress or including a copyright notice on your work without filing a copyright application does not constitute registration. To register a copyright, you must complete an application form available at the U.S. Copyright Office website and submit the completed form, with the application fee and a copy of your work to the U.S. Copyright Office.

Why is this important? Copyright registration provides legal benefits beyond being a requirement for bringing a lawsuit. Creators who register their copyrights before infringement occurs or within three months after the first publication of their work are eligible to recover statutory damages without having to prove damages actually caused by the infringement. For example, the Recording Industry Association of America used statutory damages as a legal weapon to obtain multi-million dollar jury awards for illegally downloaded music. Prompt registration also enables copyright owners to recover their attorneys' fees and court costs.

Kevin D. DeBré is the chair of the firm’s intellectual property & technology transactions practice group. Entrepreneurs and innovators rely on Kevin for guidance when using intellectual property to build their businesses. Kevin has been a “tech lawyer” since the mid-’90s when he was an attorney for a top silicon valley law firm and handled technology deals for “startups” such as Cisco Systems, Broadcom and Geocities. Today, Kevin represents companies of all sizes – from pre-formation to middle market – and a broad spectrum of industries – from AI to VR. Kevin is both a business lawyer and an intellectual property lawyer. As a business lawyer, he structures and negotiates technology commercialization deals and IP license agreements. These include strategic alliances, research and development collaborations, trademark licensing and brand merchandising agreements and manufacturing, distribution and marketing arrangements. Kevin has extensive experience in handling technology transfer agreements, having negotiated patent license deals with numerous universities across the country. As an intellectual property lawyer (and a registered patent attorney), Kevin designs and helps clients implement effective strategies for aligning intellectual property protection efforts with a company’s business objectives. And, having been the first call from clients that have experienced a data breach, Kevin helps companies navigate the ever-increasingly complex landscape of data security and privacy laws and regulations.

Stubbs Alderton & Markiles, LLP is pleased to announce that six lawyers have been named to the 2018 Southern California Super Lawyers. Super Lawyers is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The patented selection process includes independent research, peer nominations and peer evaluations.

Super Lawyers Magazine features the list and profiles of selected attorneys and is distributed to attorneys in the state or region and the ABA-accredited law school libraries. Super Lawyers is also published as a special section in leading city and regional magazines across the country. Lawyers are selected to a Super Lawyers list in all 50 states and Washington, D.C.

Stubbs Alderton & Markiles, LLP would like to congratulate the following attorneys named to the 2018 Super Lawyers list –

Scott Alderton is a founding partner of the Firm, Managing Partner, and a member of the Firm’s Executive Committee. Scott is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group and chair’s the Firm’s Interactive Entertainment and Video Games Group. Scott advises both public and private clients across a number of industries, including technology, manufacturing and distribution of goods in commerce, finance, the Internet, interactive video games, and new media industries.

Kevin D. DeBré is the chair of the Firm’s Intellectual Property & Technology Transactions Practice Group. Kevin advises entrepreneurs and companies that use intellectual property to build their businesses. Kevin has particular expertise in structuring and negotiating technology commercialization and patent licenses, strategic alliances, research and development collaborations, trademark licensing and brand merchandising agreements and manufacturing, distribution and marketing arrangements. He also counsels clients on compliance with data security and privacy laws and regulations.

Jeff Gersh is a Partner of the Firm. He has litigated, arbitrated, or mediated complex business and commercial matters, for both plaintiffs and defendants, whether individuals, public or private corporations, partnerships, limited liability companies and/or its members, shareholders and partners, involving various types of disputes, including contract matters, trade secrets, intellectual property (trademarks, copyrights and trade dress) negligence and fraud, employment, real estate, license agreements, the apparel and garment industry, and general business matters.

Daniel Rozansky is a Partner of the Firm in the Business Litigation Practice. Dan concentrates his practice on entertainment, privacy, First Amendment and complex business and real estate disputes. Dan’s areas of focus are entertainment finance, anti-SLAPP motions, unfair competition, trade secrets, intellectual property, surreptitious tape recording, reality television, profit participation, rights of privacy and publicity, real estate, partnership disputes and First Amendment issues. He represents clients both at the trial and appellate levels in state and federal court on a wide array of issues.

Michael Sherman is an accomplished trial lawyer in high-stakes, “bet-the-company” litigation, and has represented both large and early-stage companies as well as entrepreneurs in all facets of business and complex commercial litigation. He has evenly split his litigation practice on both the plaintiff and defense side of cases, has first-chaired numerous trials in complex matters in industries as varied as energy, securities, healthcare, environmental, consumer products, technology, project development/finance, advertising, real estate and apparel, and is highly skilled in class actions and unfair competition law.

Joe Stubbs is a founding partner of the Firm, and a member of the Firm’s Executive Committee. He is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group, and of the Firm’s Mergers and Acquisitions Practice Group. Joe practices in the areas of corporate and securities law, emphasizing the corporate representation of both publicly-held and privately-held emerging growth and middle-market companies, venture capital and private equity firms, angel investment groups and investment banks.

The official Super Lawyers 2018 publication can be read in its entirety here.

For more information about Stubbs Alderton & Markiles, contact Heidi Hubbeling at or (310) 746-9803.

Stubbs Alderton & Markiles' client Sofie Biosciences, Inc, a developer of molecular imaging diagnostics and technologies to empower widespread access to Positron Emission Tomography (PET), announced last week that it has entered into a definitive agreement under which it will purchase Zevacor Pharma (previously IBA Molecular North America) and its high performance manufacturing and distribution network of PET imaging diagnostics and radio-therapeutics.

About Sofie Biosciences
SOFIE is a molecular imaging company combining new PET imaging diagnostics with innovative imaging and synthesis systems to provide researchers and physicians with tools to better investigate the biology of disease. By empowering a wide array of people with valuable, translational imaging tools, SOFIE is making PET scans more accessible. www.sofiebio.com

Stubbs Alderton & Markiles, LLP is pleased to announce that six lawyers have been named to the 2017 Southern California Super Lawyers. Super Lawyers is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The patented selection process includes independent research, peer nominations and peer evaluations.

Stubbs Alderton & Markiles, LLP would like to congratulate the following attorneys named to the 2017 Super Lawyers list -

Jeffrey F. Gersh is a Partner of the Firm. He has litigated, arbitrated, or mediated complex business and commercial matters, for both plaintiffs and defendants, whether individuals, public or private corporations, partnerships, limited liability companies and/or its members, shareholders and partners, involving various types of disputes, including contract matters, trade secrets, intellectual property (trademarks, copyrights and trade dress) negligence and fraud, employment, real estate, license agreements, the apparel and garment industry, and general business matters.

For more information about Stubbs Alderton & Markiles, contact Heidi Hubbeling at or (310) 746-9803.

Stubbs Alderton & Markiles, LLP is proud to announce that four of their attorneys have been listed in the 2016 Southern California Super Lawyers edition. Congratulations to Scott Alderton, Joe Stubbs, Kevin DeBré, and Michael Sherman.

What is Super Lawyers? Super Lawyers is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The selection process includes independent research, peer nominations and peer evaluations. To view the digital publication, click here.

Scott Alderton - a founding partner of the Firm, Managing Partner, and a member of the Firm’s Executive Committee. Scott is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group and chair’s the Firm’s Interactive Entertainment and Video Games Group. Scott advises both public and private clients across a number of industries, including technology, manufacturing and distribution of goods in commerce, finance, the Internet, interactive video games, and new media industries.

Joe Stubbs - Joe Stubbs is a founding partner of the Firm, and a member of the Firm’s Executive Committee. He is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group, and of the Firm’s Mergers and Acquisitions Practice Group. Joe practices in the areas of corporate and securities law, emphasizing the corporate representation of both publicly-held and privately-held emerging growth and middle-market companies, venture capital and private equity firms, angel investment groups and investment banks. He acts as outside general counsel to numerous emerging growth and technology companies, advising on a wide range of legal and strategic issues at all stages of their evolutionary path. He particularly concentrates on advising companies in preparing for and successfully completing their angel, venture capital, private equity and debt financing transactions, their merger, acquisition and divestiture transactions and their initial and follow-on public offerings. He also serves as outside general counsel to various publicly-held companies, providing advice on all aspects of their business activities, including securities law compliance and corporate governance matters. His experience also includes corporate partnerships, restructurings and technology licensing.

Kevin DeBré - Kevin D. DeBré is the chair of the Firm’s Intellectual Property & Technology Transactions Practice Group. Kevin advises entrepreneurs and companies that use intellectual property to build their businesses. Kevin has particular expertise in structuring and negotiating technology commercialization and patent licenses, strategic alliances, research and development collaborations, trademark licensing and brand merchandising agreements and manufacturing, distribution and marketing arrangements. He also counsels clients on compliance with data security and privacy laws and regulations. Kevin is a business lawyer, a registered patent lawyer and a former engineer. He focuses on representing software companies, semiconductor design firms, mobile commerce businesses, e-commerce enterprises, electronics and hardware manufacturers, media companies, content developers and publishers, biotechnology companies and medical device manufacturers both in the United States and abroad.

Michael Sherman - Michael Sherman is a Partner of the Firm and Chair of the Business Litigation practice group. Michael is an accomplished trial lawyer in high-stakes, “bet-the-company” litigation, and has represented both large and early-stage companies as well as entrepreneurs in all facets of business and complex commercial litigation. He has evenly split his litigation practice on both the plaintiff and defense side of cases, has first-chaired numerous trials in complex matters in industries as varied as energy, securities, healthcare, environmental, consumer products, technology, project development/finance, advertising, real estate and apparel, and is highly skilled in class actions and unfair competition law. Michael’s trial skills and courtroom success resulted in his being named several years ago to the “Top 100 Lawyers” in California list, published by the Daily Journal newspaper chain. He has consistently been named to “Best Lawyers in America”. Michael has been recognized as a leading trial lawyer by his peers and featured in the press for some of his significant victories on behalf of clients. He is a recent past president of the Los Angeles Chapter of the Association of Business Trial Lawyers. He is a frequent speaker and writer on business litigation and trial advocacy.

For more information about Stubbs Alderton & Markiles, contact Heidi Hubbeling at or (310) 746-9803.

As the Internet Corporation for Assigned Names and Numbers (ICANN) has released new generic top-level domains (gTLDS), clients concerned about protecting their trademarks and famous names need to review their positions with respect to “defensive” domain name registrations. The new gTLD receiving a surprising amount of attention is “.sucks”. Owners of registered trademarks who register prior to June 19, 2015 ( end of ‘Sunrise Period) with the Trademark Clearing House of ICANN will have the first opportunity to purchase the “.sucks” gTLD domain names. Those trademark owners who do not register or are not registered may still have an opportunity to acquire this gTLD . Unfortunately they may also face having to buy the “.sucks” gTLD from cybersquatters or those who seek to criticize the business or activities of the trademark owner.

The Trademark Clearing House fee to acquire the “.sucks” domain name during the Sunrise Period is higher than after the window closes as no priority is guaranteed. So the rights holder must consider how far it needs to go in defensively protecting its reputation or famous marks. Is it important to stop all gTLD’s using your trademark or name? Do you want to have to manage a portfolio of non-productive domain names? While critics of a company or individual might use the new “.sucks” gTLD to launch a website that contains criticism, how much of a difference would such a website make to the business or career of the target? Couldn’t the same critics more easily use social media such as TWITTER or FACEBOOK to communicate the same criticism and possibly with greater impact and less effort? A rights holder must also consider how difficult it will be under the current law to be able to stop such websites based on trademark infringement as such websites have been found not to violate owners’ trademark rights. Although the content of the site may be the basis for other legal claims.

Nevertheless, there are certain businesses and personalities for whom the existence of a critical or seemingly defamatory web presence cannot be tolerated. In such instances, obtaining the “.sucks” gTLD as well as “.XXX, .porn, and .adult” gTLD’s makes sense and provides a comfort level knowing that someone cannot post on these websites or hold up the rightful name owner for large sums of money to acquire these gTLD’s.

Please contact your principal attorney at SAM or SAM’s Intellectual Property Group to assist you in obtaining any of the new gTLD’s during the sunrise period or thereafter.

Kevin DeBré's article "Let Your Business Strategy Drive IP Protection" has been featured in today's edition of the online WSJ column, The Accelerators.

Kevin discusses how a startup company can protect their innovation while furthering their business objectives.

Kevin DeBré advises entrepreneurs and companies engaged in building businesses based upon technology or intellectual property assets and he has particular expertise in structuring and negotiating intellectual property-driven deals. A business lawyer, a registered patent lawyer and a former engineer, Kevin handles a wide range of transactions, develops IP protection strategies and advises management teams on compliance with privacy and data security laws and regulations.

What Every Entrepreneur Needs to Know to Turn the
New Law into a Business Advantage

On March 15, 2013, U.S. patent law will change favoring inventors who first file a patent application over earlier inventors of the same invention who file a patent application later. This is a part of the patent law reform enacted in 2011. With this change, entrepreneurs will need to change the way they think about obtaining patent protection for their inventions. Here are some suggested business practices for adapting to the new law:

Companies should consult experienced intellectual property counsel to ensure their patent protection policies are up to date with the recent changes in U.S. patent laws.

How Stubbs Alderton & Markiles, LLP can help. We are a business law firm with particular expertise in intellectual property law. Our attorneys have extensive experience in developing intellectual property protection strategies to enable businesses to maximize the value of their inventions. We inform our clients how to best update their IP strategies, patent filing procedures and invention assignment agreements and how to use today’s U.S. patent laws to their competitive advantage.

Kevin D. DeBré leads the firm’s Intellectual Property and Technology Transactions Practice Group advising entrepreneurs and companies on how to use technology and intellectual property in building successful businesses. Kevin is a registered patent attorney and has over 20 years of experience in structuring and negotiating intellectual property-driven deals.

Below is an article from September 27, 2011 written by Kevin DeBré, Chair of Stubbs Alderton & Markiles' Intellectual Property Practice, regarding the America Invent Act and how it affected the protection of inventions.

On September 16, 2011, President Barack Obama signed into law the most sweeping changes to U.S. patent laws in nearly 50 years. These changes included:

• Giving patent ownership to inventors who are the first to file a patent application instead of those who were the first to invent the same invention (beginning March 16, 2013).
• Recognizing a defense to patent infringement based upon having manufactured or sold the patented invention in the U.S. at least one year prior to the patent application filing date.
• Implementing new procedures within the U.S. Patent and Trademark Office (USPTO) for third parties to challenge pending patent applications and granted patents.
• Allowing patent holders to satisfy patent marking requirements by marking patented products with the Internet address where information about their patents can be found.
• Limiting the ability of patent owners to bring industry-wide infringement actions against multiple unrelated companies in a single lawsuit.
• Requiring the USPTO to implement a process for reviewing business method patents when requested by parties charged with infringing these patents.
• Enabling assignees of inventions to file patent applications if the inventor refuses to cooperate.

Why are these new laws important? Companies will need to adopt procedures to avoid losing patents on their inventions to competitors. Until now, U.S. law awarded patents to first inventors of novel, useful and non-obvious inventions. This will change in 18 months – the inventor who is the first to file a patent application will be entitled to the patent for an invention that somebody else invented earlier, leading to a race to the patent office. Those who are not first will need to employ new USPTO proceedings to try to win patents for their inventions or invalidate those awarded to competitors.

What should businesses do? Any business that creates inventions will need to update its intellectual property protection procedures to reflect these recent changes in U.S. patent law. Companies should consult experienced intellectual property counsel to:

• Devise and implement an internal IP strategy and procedures for identifying patentable inventions and minimizing infringement risk, including liability risk of willful infringement.
• Update employee, independent contractor and joint development agreements to reflect the “first-to-file” patent ownership rule.
• Understand the USPTO’s new procedures for challenging competitors’ patent applications and issued patents.

Kevin D. DeBré leads the firm’s Intellectual Property and Technology Transactions Practice Group advising entrepreneurs and companies on how to use technology and intellectual property in building successful businesses. Kevin is a registered patent attorney and has over 20 years of experience in structuring and negotiating intellectual property-driven deals.

Stubbs Alderton is featured in the November 12th LA Business Journal story: "Catching the Wave - Service providers flock to Westside to shore up Silicon Beach clients." The article specifically features SAM PartnersLouis Wharton, Greg Akselrud and Kevin DeBré, as they discuss our launch of a Santa Monica office and commitment to the LA startup scene. See more here.

Stubbs Alderton & Markiles, LLP announced that it advised stealth startup Linqia in its first round of funding, pulling in $3.4 million. Javelin Venture Partners' managing director, Jed Katz led the round. To view the full VentureBeat article about the funding, click here.

Linqia which has been in stealth mode since 2011, is a marketing platform that makes it easy for community leaders to earn money from trusted brands for sharing authentic stories. They review every campaign to ensure the brand’s story is built on relevant and quality content. When a brand partner thinks your community is a good fit, you make the choice to run the campaign and decide how and where you’ll share the story with your community.

Linqia’s cofounders are Australian entrepreneur Maria Sipka, formerly the COO for XING, the European social network for businesses; and Nader Alizadeh, the former cofounder and SVP of Sales for Lithium Technology.

The Stubbs Alderton & Markiles, LLP counsel advising Linqia in the transaction were Kevin DeBré, partner and chair of the Intellectual Property Practice Group, Louis Wharton, partner and Sean Greaney, associate.