An Uber driver murdered plaintiff’s son. So plaintiff – the Uber user’s mom – sued Uber for wrongful death. The lower court threw out the case, saying that the Uber terms and conditions required the matter to go to arbitration. Plaintiff sought review with the Georgia Court of Appeals. On review, the court reversed and sent the case back to the lower court.
The appellate court found that it was improper to dismiss the case because it was not clear that plaintiff’s son – the one killed by the Uber driver – actually agreed to the Uber terms and conditions that contained the provision requiring arbitration.
First, there was a dispute as to whether he even saw the link to the terms and conditions when he signed up for Uber in 2016. That’s because he was using an Android phone, and plaintiff alleged the on-screen keyboard within the app may have covered up the link to the terms and conditions.
Second, the court noted that even though Uber submitted evidence it emailed updated terms and conditions to plaintiff’s son, and that he continued using Uber thereafter (thereby binding him to the terms), it was unclear that the email was ever sent to plaintiff’s son. If the customer never saw those terms, they would not apply, and therefore arbitration would not be proper.
Thornton v. Uber Technologies, Inc., 2021 WL 1960199 (Ct. App. Ga. May 17, 2021)
Morals clauses in talent agreements can fuel cancel culture.
Jeep featured Bruce Springsteen in an ad that aired during Sunday’s Super Bowl. Since then, news broke that Springsteen had been arrested almost three months prior for drunk driving. So Jeep pulled further use of the ad.
This scenario shines light on a key provision in the contract that celebrities and brands typically sign. An agreement of this sort will contain a “morals clause”. Here is the language of a typical clause like this (this is just an example of such a clause – not the one in the Jeep/Springsteen agreement):
Company will have the right to terminate this Agreement for cause, which includes, without limitation, . . . commission of any act (in the past or present) which degrades Talent, Company or the Products or brings Talent, or Company or the Products into public disrepute, contempt, scandal or ridicule. Upon termination for cause, Company shall have no further obligation to Talent (including, but not limited to, any payment obligations).
Companies want these provisions for obvious reasons – if the face of the company comes under public scrutiny for any bad reason, the company needs a method to part ways. Talent with more negotiating power may be able to narrow the scope of the circumstances in which the company can terminate the agreement. For example, it could require actual conviction of a serious crime.
One problem, however, particularly for talent, is how broadly morals clauses can be written. The example clause above is broad and vague. And note how the language in this example pulls in past conduct as well (old tweets, anyone?). Given the polarized character of modern public discourse, just about everything done in public is subject to contempt, scandal or ridicule by at someone. These clauses provide the means for the commercial side of cancel culture to flourish.
Evan Brown is an intellectual property and technology attorney in Chicago.
Plaintiffs were companies that sued some of their former independent contractors who worked for the companies in a “direct sales community”. The court needed to determine whether defendants had entered into a valid contract with plaintiffs. Applying Texas law, the court observed that other courts have recognized the validity of electronic contracts. It found that the agreements at issue were valid clickwrap agreements and that plaintiffs had – through screenshots they submitted – at minimum, made the requisite showing that contracts existed between plaintiffs and each defendant.
Elepreneurs Holdings, LLC et al. v. Benson et at., 2021 WL 410001 (E.D. Tex., February 5, 2021)
Let’s say you’re going to host a conference — these days that would be an online conference — and you want to invite people to give presentations. You will want to enter into a contract with those presenters to cover some of the obvious logistical items: the presenter is obligated to show up, the presentation will be on a certain topic, it will last for a certain amount of time, and there may be payment. And there are some important intellectual property issues that the speaker’s agreement should also address.
Marketing and promotion of the event
One important intellectual property issue in a speaker’s agreement has to do with the marketing and promotion of the event. This involves primarily the right of publicity. You are likely going to want to generate materials, such as social media posts, that have the name and the image of the presenter. You will want to seek to get a release from the presenter that authorizes you to use his or her name and image in connection with the marketing and promotion of the event.
Handout materials
A second issue that you will need to deal with has to do with handout materials or other accompanying documentation for the presentation. You will want to make sure that you have the appropriate copyright license from the presenter allowing you to copy and distribute those materials. You should also consider getting assurances from the presenter that those materials will not infringe any third party intellectual property rights. And you may want to have the agreement say that the presenter will indemnify you and pay the cost of the defense if you get sued by a third party because the handout materials infringe.
Video or audio of the presentation
A third intellectual property issue that you will want to think about in connection with a speaker’s agreement has to do with any content that you generate at the event. Say, for example, you film the presentation and you want to make the video available to the world so it can see what the event was like. On this point we are back to the discussion of the right of publicity. Obviously the presenter’s name and image is going to be in that content. So you want to make sure that you have a release for that.
As the host of the event, you will likely want to own the copyright in the video. The presenter may ask for a carveout — that is, clarification that though you own the copyright in the video, the presenter retains ownership of the underlying content presented.
Need help with intellectual property issues in a speaker’s agreement?
Please feel free to give me a call or send an email. Dial (630) 362-7237, or email ebrown@internetcases.com.
Nondisclosure agreements (or NDAs) are important contracts. There are a number of reasons why parties may want to enter into them.
The first reason is probably the most obvious reason. Parties have proprietary or sensitive information that they don’t want to become publicly known, or known to a competitor. So they enter into nondisclosure agreements to put restrictions on how the parties use or disclose confidential information The agreement contains provisions that give remedies such as injunctive relief if there is a breach or a threatened breach of the nondisclosure agreement. This is an important tool.
A second reason for entering into a nondisclosure agreement is related to the first one. Having a nondisclosure agreement gives the parties the confidence to meaningfully collaborate. If there is a nondisclosure agreement in place, the parties can freely exchange information, and that makes the potential innovation from their collaboration much more robust.
And a third third reason for entering into a nondisclosure agreement relates to the law of trade secrets. The parties may trust one another completely, and may not even think for a moment that the other side would misuse its confidential information or disclose it in a way that is harmful. But it is important to enter into nondisclosure agreements to protect the trade secret status of information. The law of trade secrets only protects information that has been the subject of efforts to keep secret. So the nondisclosure agreement can be important evidence that the party has taken the right steps to protect its trade secrets.
Let’s talk
Nondisclosure agreements can be complex. There are a number of issues to consider and appropriate strategies to take. If you have questions about a nondisclosure agreement, give me a call at (630) 362-7237, or send me an email at ebrown@internetcases.com.
About the author:
Evan Brown is a technology and intellectual property attorney in Chicago. This content originally appeared on evan.law.
In a recent post, we discussed how Section 230 protected a website from liability for trade libel. The court held that third parties, and not the website itself, provided the offending posts. If the court had believed the posts were written by the site itself (or one of its agents) that may have turned the site into an information content provider and thus outside Section 230’s protections.
Terms of service violation?
This case – East Coast Test Prep LLC v. Allnurses.com, Inc. – had some other interesting aspects of interest to website operators seeking to effectively regulate content. For example, plaintiff claimed the website breached its own terms of service by failing to take down content prohibited by those terms of service. And the site allegedly breached its terms by closing a discussion thread, denying plaintiff the opportunity to respond to libelous content. The court dismissed plaintiff’s breach of contract claims.
The website’s terms stated, in relevant part, that users were not allowed to post libelous information. And it said the site operator would immediately take down content violating the law or invading another’s privacy. The terms also said that the website promoted the “idea of lively debate”.
What the plaintiff claimed
When the site refused to take down the offending content, plaintiff (a member of the site who had agreed to the terms of service) claimed the site violated the terms of service. And he claimed that the site breached the terms by not allowing him to comment, thereby going against the site’s commitment to foster the “idea of lively debate”.
The court rejected these breach of contract claims. It held that defendant did not promise to identify and immediately remove any and all potentially false statements. Instead, it disallowed users from posting libelous information and merely informed users that it would remove illegal or inappropriate posts. And the statement that defendant promoted the idea of a lively debate was not a promise to keep the site’s discussion threads open, particularly in light of the provision that “[p]roblematic posts/threads may be deleted or closed.”
East Coast Test Prep LLC v. Allnurses.com, Inc., — F.3d —, 2020 WL 4809911 (8th Cir. August 19, 2020)
Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.
Work made for hire is an important concept for almost all employers employees, but people often misuse the term, or use it in a way that does not capture all of its nuance. We’ll take a look at this doctrine in three parts. Here are a few things to know as an introduction.
Work made for hire is a copyright concept
Work made for hire is a copyright issue. The Copyright Act defines work made for hire at 17 USC §101. The key question relates to who owns a particular creative work, whether that be written text, a photograph, a video, computer software, or any other type of work that copyright protects.
It pertains to employees and independent contractors
Another thing to know about work made for hire is that it addresses the question of who owns a creative work that is created by one party for someone else. That arise in the context of an employee working for an employer, or it could be an independent contractor working for the hiring party. In the employment situation, it is pretty straightforward – the employer owns what the employee creates within the scope of his or her employment. But in the independent contractor context, a lot depends on what the agreement says.
Work made for hire concepts address patents and trademarks differently than copyright
Work made for hire concepts apply differently to copyright than they do other forms of intellectual property. Ownership is treated differently when an employee or a contractor develops patentable subject matter, or develops material that could be used as a trademark. Patent applications list the actual employee as the inventor. And trademark rights generally do not come into existence until the company has used the mark in commerce.
Need help with a technology or intellectual property issue? Call me or send an email.
(630) 362-7237 | ebrown@internetcases.com
About the author
Evan Brown is a technology and intellectual property attorney in Chicago, helping clients with a wide variety of issues concerning copyright, trademark, domain names and technology services.
A statement of work – often called an “SOW” – is an important part of a technology contract. Here are three things to keep in mind when you are drafting and negotiating one.
Accurately define the services
The first thing to keep in mind when negotiating an SOW is to accurately and comprehensively define the scope of services. This benefits both the customer and the vendor. The vendor will know the SOW sets out a finite task list. That will help avoid scope creep. The customer can look at the statement of work and see whether the deliverables match the agreed-upon specifications.
Leave the legal language alone
The second thing to keep in mind when drafting an SOW is to focus on the technical, business and commercial issues, leaving the legal issues in the body of the agreement untouched. That way you don’t unwittingly affect the risk profile of the overall engagement.
You will amend the statement of work
The third thing to keep in mind is to recognize that you are likely going to amend the statement of work, or enter into subsequent statements of work. So you should use a good form that will enable you to add on these subsequent documents.
A lot of companies bring on independent contractors to develop content. They may be photographers, designers, writers, consultants, etc. who sign independent contractor agreements. Here are three common mistakes that you should not make if you are hiring an independent contractor.
Intellectual property ownership mistakes in independent contractor agreements
The first common mistake is to leave out language that ensures you as the hiring party own the intellectual property in the deliverables. Did you know that unless the contract specifically says otherwise, the independent contractor will retain ownership of the copyright in the deliverables? Many companies have been surprised to learn, after spending a lot of money on an independent contractor, that they do not own the rights in the content they thought they had paid for.
The agreement should have a work made for hire provision. And since the definition of work made for hire is specific, some things that the contractor may do will not qualify as work made for hire. So the agreement should also say that to the extent the deliverables are not work made for hire, the independent contractor assigns the intellectual property to the party that hired it.
Confidential information mistakes
The second common mistake that you should avoid in engaging with an independent contractor is being vague or loose when it comes to confidentiality. The independent contractor could learn a lot about your business – its vendors, its customers, its plans, and how the company operates. The confidentiality provision should adequately restrict how the independent contractor discloses that information or uses it outside of the engagement with the company. If not, that information may lose its trade secret protection. Or the contractor could take the information it learns about your company and use it while working for one of your competitors.
Indemnification mistakes
A third common mistake that you should avoid in independent contractor agreements is being silent on defense and indemnification. If a third party sues you over something that the independent contractor has done, you would likely want to look to the independent contractor to pick up the costs of defense and pay the amount of any judgment that results. Say, for example, the independent contractor copies a photograph from somewhere else and then provides that to you as his or her original work. If the true owner of the copyright in that work sues you for using the photo, it is only fair that you can turn to the contractor for relief. The agreement should say that.
About the author:Evan Brown is a technology and intellectual property attorney in Chicago. Follow him on Twitter and Instagram. Subscribe to his YouTube channel.
As a technology vendor, you may be eager to get that new customer relationship started. Don’t let that tempt you to get underway without taking care of the details first. Technology vendors should avoid working without a signed contract. Here are three reasons why.
Working without a signed contract makes it harder to deal with overly-needy customers.
Working without a signed contract makes it hard to deal with overly-needy customers. Say you have entered into an arrangement where you are going to provide support and maintenance services. You get into the relationship on a handshake basis, and after a few months, the continues making requests, never satisfied, and always wanting services performed “on the cheap”. You finally recognize this business relationship is not bearing fruit and that you need to walk away. If there is no written contract in place making clear the conditions under which you as the vendor can terminate the relationship, when you try to disengage from this customer, you might run into trouble.
A situation like this happened recently in a case that came from Kansas (Straightline HDD Inc. v. Smart E-Solutions, Inc., 2020 WL 2296941 (Ct. App. Kansas, May 8, 2020). In that situation, the parties litigated for several years over the question of whether there was an implied contract for the defendant software reseller to continue to provide support to its customer (with whom it did not have a signed contract).
The trial court found that defendant had to provide some value for the software customer. Fortunately, the appellate court overturned that on appeal, finding that there really was no implied contract, so the reseller was able to separate from that needy customer. In that situation, the reseller ultimately avoided liability. But it is unfortunate that the parties spent all those years and all those resources litigating the issue. If there had been a written contract in place from the beginning of the relationship, there would have been more clarity and there wouldn’t have been those issues to litigate. The parties could have handled the situation much more quickly and efficiently.
Having no signed contract means missing out on protective contract provisions.
A technology vendor should not want to start work before it has a signed written contract because that written contract that was not signed should protect the vendor. For example, you want to make sure that the agreement has the appropriate disclaimers of warranty. A vendor does not want to promise that the technology solution is going to solve all the world’s problems. There should be certain express warranties, and that is all.
Another kind of provision that you want to make sure is in the agreement is a limitation of liability. Let’s say you as the vendor are only getting a small amount of revenue from this engagement with the customer. If the technology solution fails for some reason – maybe even through no fault of yours – and the customer suffers millions of dollars worth of damage or business loss or some other form of consequential damage, you want to make sure that you are not on the hook for that just. It does not make sense for a vendor to enter into an arrangement where it is only going to get a little bit of revenue while at the same time putting the company on the line with the exposure to potentially large damages.
Going without a signed contract makes it more difficult to get paid.
A third reason for having that written contract in place before you start doing the work is so that you will get paid. The contract should be clear on how much customer will pay, what the payment is for, and when the payment is due. If it does not, do not be surprised if your customer remembers differently about cost, deadlines and specifications.
About the author: Evan Brown is a technology and intellectual property attorney in Chicago. Follow him on Twitter and Instagram, connect on LinkedIn and subscribe to his YouTube channel for videos on interesting topics about law and technology.
Evan Brown is a technology and intellectual property attorney in Chicago. This content originally appeared on 
