Year in Review

Wow!  That was fast.

I”ve been running my own law firm for over a year.  It’s been a blast and I’ve been very fortunate — quite a bit of exciting and interesting work came to my door last year.

Some of the highlights include:

  • Managing a dispute from initial demand letter to arbitration award — on my first day running my own firm, one of my clients received a cease and desist letter which we believed was invalid.  We pitched the case to litigators, hired them, and I was able to act as in-house counsel for the 7 month JAMS arbitration: editing and adding factual clarity to filings, attending all depositions and hearings, and eventually delivering the news after judgment.  In general, this is not my day-to-day practice, but it was very educational and modified my perspective on how contracts should be drafted and disputes relating to contracts should be approached.
  • Acting as on-site in-house technology counsel one day a week — sitting in the legal department of one of my larger clients gave me a very different understanding of the role that attorneys play within an organization.  I supported the third party inputs to software (reviewing both open source and third party proprietary licenses) and the enterprise licensing division and often witnessed first-hand the delicate balance that must be maintained between legal risk and business risk within a corporation.
  • Negotiating against the big guys — it’s part of the typical start-up experience.  Sure, you often negotiate and partner with other start-ups, but at some point, you will need something from one of the big established players.  It may just be Internet connectivity.  Or, large companies may be your sales targets.  Regardless, negotiating against a large company who insists that *we never change our forms*,  *everyone signs this without edits* and *this is completely standard* requires the expertise of someone who has seen many *standard* offerings in the applicable industry.  Over the years, I’ve dealt with Fortune 100 and Fortune 1000 companies in almost every industry, and this year was no exception.  Examples from this year include: Advertising Agencies, Amazon, Barclays, Blue Cross Blue Shield (of America and of various States), Bank of America, Chubb, Credit Suisse, CUNA Mutual Insurance, Discover, DOE Pacific, Earnst and Young, Experian, Facebook, Fidelity, Google, Honeywell, Horace Mann, Humana, JP Morgan Chase, KPMG, Lloyds, Lockheed Martin, Mass Mutual, Microsoft, Morgan Stanley, NBC Universal, Nationwide, PWC, Safeway, Samsung, State Farm, T-Mobile, Toys R US, Viacom, Walmart, and Warner Brothers.
  • Setting up the legal side of the business (forms) — a large portion of my job is limiting the amount of work I do.  I try to get my start-up companies into a position where their internal IP creation departments, online systems, sales forces, and business development teams can function with minimal legal input.  This involves an up-front investment of time to create forms that are correct for their business models.  I talk to my clients and truly understand their businesses before drafting, which avoids the extra legal fees companies often incur when their attorney starts with a square hole for a round peg.  Examples include:  Enterprise license agreements, Software-as-a-Service Agreements, trademark license agreements (branding/endorsement/certification programs), software development agreements, click-throughs (standard terms, privacy policies, API license agreements, payment obligations, revenue share, and more), commission agreements, reseller agreements, professional services agreements, master purchase agreements, NDAs, partner program agreements and technology assignment agreements.
  • Open Source — I went to law school because I was fascinated by the legal rights issues in Open Source Software.  I even wrote an award winning student note on the topic.  This year, I continued my commitment to Open Source legal issues with projects in several areas:  (i) aided a client in cleanly open sourcing a proprietary language they had developed (open source license evaluation and selection, branding issues, IP contribution agreements); (ii) performed open source audits of client codebases with the engineering teams and cleaned up any issues found; (iii) acted as special open source counsel in an Asset Purchase and Leveraged Buy-Out to help the acquirors become comfortable with the state of my clients’ open source uses; (iv) represented (and continue to represent) two clients whose business models are built around open source software projects that they manage (with monetization through professional services, support, maintenance, priority bug fixes, and bespoke development); (v) aided clients in the development of open source policies and approval processes to maintain the codebase in the proper state.
  • Everyday advice, counseling and communications — this catch all category is where the most surprises come.  Sometimes it’s just a phone call asking for a sanity check — Can we do this?  But sometimes there are more exciting issues such as requests from law enforcement, lawsuits that have been filed against clients, high level discussions about IP strategy (should we talk to patent counsel?  Should we file a TM?), letters hinting that lawsuits may be filed, formal letter writing in response to unfortunate situations, termination of contracts, privacy concerns, and much more.

Overall, last year was a great year full of good work, great learning opportunities and wonderful clients.  I can’t wait to see what this year brings.

Slow But Steady Growth

The winter garden (a temperate climate benefit, that doesn’t even exist in many areas) is slow, but steady.  After the work of planting, not much happens for quite a while.  But, finally, there are some lovely signs of life:


All the lettuces and dark leafy greens are doing very well (although I think I’m going to add some slug bait to the beds… too much snacking by the slimy things resulting in holes in my otherwise gorgeously healthy leaves…).


The brassicas are coming along. Most of ’em haven’t done anything impressive yet, but the broccoli is trying:


Much like with a start-up, sometimes, you have to make do with what you’ve got and just launch. So, the first harvest was very green leaf heavy:


But, actually, it worked out perfectly. We had fresh salads with dinner every night for a week, and I put the tat soi in soup and made sarson ka saag paneer with the mustard greens, big heavy unidentified dark green spiky leaves (the ones above the mustard in the bed picture – any ideas?), and some spinach. Over rice with greek yogurt on top? Heavenly!


Getting Ready for the Next Stage

Just like start-ups have to make major changes with each new stage of their development, so do gardens…

While the summer garden is my absolute favorite stage, it had become very clear that the garden was an overgrown disaster that needed to be modified.


So, I made pickles of the last remaining fruit (mainly just green tomatoes and cucumbers).


And did a solid day of clearing.


The next weekend, I finished clearing, turned the beds, amended 4 beds for winter plants and prepped the garlic (per the Garlicmeister’s instructions).


And finally, winter seedlings are in the ground (along with the garlic bulbs), in time to soak up the rains from the latest rainstorm.


Only 2 months until it’s time to start the pepper seeds…

The Sneaky Sleepycat License

Generally, commercial entities are fairly comfortable using open source software in the products they distribute if the license is a the BSD license. Entities other than UC Berkeley often deploy the BSD license in their own name, so it is common to hear people refer to a BSD-style license, or a license that is BSD-esque when referencing the BSD license in another entity’s name.

Oracle Berkeley DB is one of the few open source software products that Oracle sells. It is dually licensed under a commercial license and an open source license. You can use the open source version for free or you can pay to use the commercial version.

A quick glance at the Oracle Berkeley DB open source license looks like a collection of BSD licenses, first from Berkeley, then from Harvard, and then from Oracle.

Visually, it would easily fall into the category of “BSD-style” or “BSD-esque.”

The standard BSD license has a copyright statement, 3 numbered paragraphs, and a big disclaimer of warranties and limitation of liability in all caps at the bottom. At a glance, it’s fairly easy to recognize (partially because it is so short and sweet compared to many open source licenses).

From 2000-2006, the top license in the Berkeley DB license was in the name of Sleepycat, and when Oracle acquired Sleepycat, they modified the copyright statement in the top license to refer to Oracle.

On closer look, the former Sleepycat and current Oracle license is most definitely *not* identical to the standard BSD license. In fact, it is very, very different.

The third paragraph in the standard BSD license states:

  • Neither the name of the [COPYRIGHT HOLDER] nor the names of its contributors may be used to endorse or promote products derived from this software without specific prior written permission.

But, the third paragraph in the Sleepycat/Oracle Berkeley DB license is quite different:

  • Redistributions in any form must be accompanied by information on how to obtain complete source code for the DB software and any accompanying software that uses the DB software. The source code must either be included in the distribution or be available for no more than the cost of distribution plus a nominal fee, and must be freely redistributable under reasonable conditions. For an executable file, complete source code means the source code for all modules it contains. It does not include source code for modules or files that typically accompany the major components of the operating system on which the executable file runs.

Both of these requirements are completely legitimate license conditions.

However, the traditional BSD license is a license that is notable for its lack of copyleft obligations — in other words, you can use software that comes to you via the BSD license without too much concern about it affecting the commercial license terms that you may put on your software that incorporates it.

On, the other hand, the Sleepycat/Oracle Berkeley DB license is an extremely strong copyleft license and requires that you distribute the source code to every piece of code you distribute that utilizes the Berkeley DB.

So, word to the wise, engineering managers and software legal departments: just because it’s a BSD-style license in the visual form, does *NOT* mean it’s BSD-style with respect to software freedom and copyleft.

As much as it’s annoying, someone with a licensing background needs to review and approve every third party in-license if the technology or software is going to be incorporated into a proprietary product or code.

Clean Tech Regulation and Government Funding

Today, I arrived at the Clean Technology Law Symposium excited to learn more about the current state of the law in clean tech.

It was an excellent event, and the organizers deserve much credit and thanks. Overall, I found myself continually impressed by how many areas of the law are implicated with clean tech law, policy, and business. Speakers touched on antitrust, international intellectual property, patent pools, compulsory licensing, economics, politics, state regulation, federal regulation, international treaties, financing, science, the current technology of the energy grids in deployment, and new developments in technology.

Arthur J. O’Donnell, executive director of CRS (the Center for Resource Solutions) gave a great keynote full of the history and culture behind the U.S. and California energy grid development and regulation. He pointed out that in most clean tech companies and industry events, there is a real dearth of folks from the existing utilities communities. And, in his opinion, leaving them out of the conversation is a big mistake. The large public utilities and the regulations that govern them are huge forces in the energy market and will continue to be so, regardless of where the clean tech revolution takes us.

Additionally, Matthew Dunne of ARPA-E (a subsidiary of the US Department of Energy) spoke about the financial assistance his organization provides to innovators in clean tech. Unfortunately, there are currently no open solicitations for competitive bids, however, he did inform us that ARPA-E does accept unsolicted proposals.

I left with a very real sense that clean tech is an exciting area for disruptive technology and, a very dynamic area of the law due the number of intersecting legal subspecialties it touches.

You Don’t Have to Talk to Their Lawyer

Occasionally, a client calls me to tell me that the other side’s lawyer reached out directly to them and wants to have a quick direct conversation to discuss the outstanding issues.

In California, Rule 2-100 of the Professional Conduct Rules says that a lawyer may not speak with the opposing party directly (if the opposing party has counsel) without getting the opposing party’s lawyer’s consent.

ABA Rule 4.2 says roughly the same thing.

In litigation or active disputes, this rule is almost always scrupulously observed. But in business deals, where things are less contentious, sometimes people forget.

So, in short, no, if their business folks decide it’s time to bring in their lawyer, you don’t have to take the call without your own lawyer to back you up. The other side’s lawyer can talk to you, but only if you (and your lawyer) consent.

Negotiating Against the White House

One of my clients is in the process of entering into a deal with the White House.

Typically, my start-up clients find it very frustrating to try to do business with government agencies. Start-ups and government agencies operate on two very different time scales.

So, it’s a pleasant surprise to learn that the White House is actually much more nimble and flexible than most federal agencies. They understand more about the world my clients live in than any other governmental agency I’ve ever worked with.

And, I must say, the folks who represent the White House are some of the nicest and most reasonable opposing counsel with whom I’ve ever dealt.

The Techiest Use of a Garden

Recently, we were invited to dinner at our friends’ home. They pulled out what appeared to be a chemistry set to make dessert:


Clearly, this was going to be a *very* technical dessert.

Apparently, our hosts were fans of molecular gastronomy. You know, like El Bulli. And the use of such fun ingredients as alginate, and sodium calcinate, plus a scale, mental math, a Vitamix for purées and high velocity hand-whisking:


First, we made the fake roe — aka, apricot peach purée boules:



Then, we made the faux nori (aka rolled chocolate over crushed tin foil):


We filled the rolls with rice pudding, aka sushi rice, and we sliced some “ginger” aka, Georgia peaches:


With the addition of pistachio-nut butter “wasabi” and raspberry purée “soy sauce” our desserts were complete:


Truly, this is one of the techiest things you can do with things that come from a garden:


The Best Part of Summer

Fresh Tomatoes Galore.

After an uncommonly cool summer, we’re finally getting some heat (it’s over 100F outside right now), and the plants are finally starting to produce like mad.


In clockwise order in all of their gorgeous glory above, there’s green zebra, thessoloniki, white oxheart, ananas noir, and sweet horizon.

But wait, there’s more…


…orange russian 117, thessoloniki, top sirloin, green zebra, ananas noir, and green giant.

In fact, now that they have the sun they’ve been waiting for, the plants will wait for no one.  Over the weekend, several of the wooden stakes I’d been using to support the tomato plants broke under the weight of the fruit that seems to grow while you watch it.  Yesterday, in an effort to limit my chores, after picking all of the cracked tomatoes for gazpacho, I picked only cucumbers and white oxhearts:


With the addition of time, heat, spices and acid these became a lovely golden rosemary tomato sauce and pickles.


And now, I just have to come up with a plan for the remaining hundred or so pounds of ripe tomatoes that need attention.

It’s a good problem to have!

Oracle is *not* going to play nice

I spend quite a bit of time talking through *theoretical* risks associated with using third party software in products, particularly with respect to software that’s been developed in connection with some type of promise of openness.

I try to explain to my clients that just because things have gone smoothly thus far with respect to a particular piece of code does not mean that it will continue to go smoothly.

Oracle has just made this explanation *much* easier for me by suing Google for its use of Java in Android.

The complaint is pretty straightforward (I guess he likes it here, because after spending so much time here with respect to the Prop 8 litigation, David Boies is named as pro hac vice on behalf of Oracle).

The complaint alleges infringement by Google in its use of Java technology in the Android Platform. 7 patents held by Oracle America (the new name of the former “Sun” subsidiary) are asserted. It also alleges copyright infringement.

In many ways, this move is shocking. The entire Java mobile development community is going to be reeling. But, in other ways, I think there will be some closure. Many of my clients have been waiting to see how Oracle would treat Java. And now we know…

In particular, I’m curious how the release of Java (including the Hotspot JVM upon which the Google JVM may very well be based) under the GPL v 2.0 by Sun prior to the Sun-Oracle acquisition will play into this. Does the GPL v 2.0 license contain an implicit patent license and/or create an argument for patent exhaustion?

**UPDATE: I have been informed that the Google JVM Dalvik is a completely new implementation, written from scratch by Google, which, assuming it’s true means that any arguments based on the GPL release of the Hotspot JVM are going to need to be much more complicated (e.g. it may play into the damages calculation, or perhaps they will still try to make the patent exhaustion argument).

Stay tuned.

This should be VERY interesting.