Category:Law

Amazon Calls California’s Cards

Wednesday, California’s Governor signed a bill into law that modifies the definition of “doing business in the state” for the purposes of collecting sales tax.

The bill explicitly includes retailers

entering into agreements under which a person or persons in this state, for a commission or other consideration, directly or indirectly refer potential purchasers, whether by an Internet-based link or an Internet Web site, or otherwise, to the retailer, provided the total cumulative sales price from all sales by the retailer to purchasers in this state that are referred pursuant to these agreements is in excess of $10,000 within the preceding 12 months, and provided further that the retailer has cumulative sales of tangible personal property to purchasers in this state of over $500,000, within the preceding 12 months

Amazon responded today by terminating all of its California Affiliates.

Internet taxation by States is an ongoing conflict on many fronts, and no doubt there will be many battles that will be fought in the future.

For example, The Performance Marketing Association is currently challenging a similar law in Illinois on the grounds that it is unconstitutional.

For the meantime, the end result is that California will not be collecting any sales tax from Amazon, *and* it won’t be getting any income tax from the terminated affiliates either.

A Second Facebook Movie?

Paul Ceglia’s allegations regarding his role in the founding of Facebook are grandiose.

The legal response from the Facebook team is similarly fantastic.

No matter how it plays out — it’s shaping up to be a huge fight and will likely make a great story.  I can’t help but wonder if this scenario might find its way to the big screen as well.

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.

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.

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.

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.

Internet Taxation of Software-as-a-Service

Recently, several states have made attempts at expanding their taxation of out-of-state businesses who provide services or products to customers within the state. (See generally, the Tax Foundation Special Report No. 176, March 2010).

In many of the analyses I’ve read, folks have jumped straight into the state law analysis. But, unless and until federal law changes, there are constitutional limits on states’ rights to tax out of state Businesses

Federal Law

The Supreme Court of the United States has issued a long line of cases which holds that in order for a state to tax a business conducted within that state there must be a “Substantial Nexus” between the business and the state.(*1) Developments in the delivery of electronic communications over the Internet have made it easier than ever before for out-of-state businesses to deliver goods or services to customers within states where they have no substantial nexus under the traditional test.

Specifically, the Supreme Court has issued a bright line distinction between . . . sellers with retail outlets, solicitors, or property within a State . . . on one hand and those who do no more than . . . communicate with customers in the State by mail or common carrier as part of a general interstate business . . . on the other hand.(*2) The Court has consistently held that businesses belonging to the second group (e.g. those who have no agents within the state, but communicate with customers and deliver products to customers via generally available distribution channels within a state as part of a general interstate business) may not be taxed by the state where customers reside because it places an undue burden on interstate commerce.

This initial federal legal analysis is very important to complete before performing the analysis of the applicability of a state’s tax law.

State taxation of goods and services that are provided by out-of-state businesses over the Internet is an evolving area of the law. In 2007, the U.S. Congress extended the Internet Tax Moratorium until the year 2014,(*3) signaling Congress’s commitment to prohibiting multiple and discriminatory taxes on Internet usage. Recently, several states have taken aggressive stances attempting to assert the right to tax goods and services delivered to such states via Internet usage.

Amazon.com, in particular, is actively disputing several of these newly enacted tax laws. Amazon has responded to laws that claim the state has a right to assert taxes on sales to residents in the state as a result of Amazon’s affiliate program by (i) canceling the affiliate program in the applicable state; or (*4) (ii) challenging the state’s right to tax it in court (and thereby subjecting the state’s tax collections to dispute and making them difficult for the state to use).(*5)

The case law that will arise as a result of Internet-based companies disputing these state laws should provide some additional clarity. Additionally, it is important to note that it is the U.S. Supreme Court’s interpretation of the Congress’s exercise of its powers under Commerce Clause of the Constitution that provides mostt of the limits on how far states may extend their power to tax out of state businesses. It is not only future case law that may modify the law in this area — in the event that the U.S. Congress were to pass new legislation with an express position on interstate commerce and state taxation of out of state business over the Internet, the law would necessarily change.

Therefore, Software-as-a-Service providers need to be diligent about staying abreast of new developments in the law in these areas to ensure that they are in compliance with the current laws of the United States as well as the various states where they have customers.

*NOTES:
(1)Quill Corp v. North Dakota, 504 U.S. 298 (1992).
(2)National Bellas Hess, Inc. v. Dept. of Rev. State of IL, 386 U.S. 753 (1967)
(3)Tax Foundation Special Report No. 176, March 2010 http://www.taxfoundation.org/publications/show/25949.html
(4)(e.g. Colorado, North Carolina, and Rhode Island) Id.
(5)The New York trial court found for the State of New York, the case is currently on appeal to New York’s intermediate court, the New York Supreme Court, Appellate Division. Id.

Overlawyered?

I received a form license agreement from the other side (a Fortune 100 company) with this most excellent Y2K provision the other day:

Supplier represents and warrants that neither performance nor functionality of the services, Products or systems is or will be affected by dates prior to, during and after the year 2000.

It’s not like I can strike it and argue that it shouldn’t apply.

But, really?