New California Bill Means More Time for Civil Discovery and Investigations

When it comes to the legal landscape, every new law or amendment matters because these actions change the rules (and possibly the outcomes). Such is the case in California with the newly signed Senate Bill 235 which brings important changes to the civil discovery process. Under the new law, parties will be required to provide initial disclosures within 60 days of a demand from any party. The previous deadline was 45 days.

The new law will likely have a significant impact on discovery procedures and pose new challenges for most California civil litigators starting next year when it goes into effect. And SB235 also could impact investigative work on a case.

SB235 mandates, rather than merely allowing for, certain initial disclosures to automatically be made in all civil matters. Notably, the law does not apply to unlawful detainer actions, small claims actions, matters proceeding under the Family Code or Probate Code, or any matter in which Section 36 trial preference has been ordered. Self-represented litigants are also exempt from the requirement.

SB235 creates a mandatory disclosure requirement and increases the current suggested $250 sanction to a mandatory $1,000 minimum sanction for lawyers who fail to timely respond to a document request, intend to cause unnecessary delay, and fail to meet and confer to resolve any dispute regarding the request. Specifically, parties will need to disclose persons or records that are relevant to the subject matter of the action, as well as information and records regarding insurance policies or contracts that would make a person or insurance company liable to satisfy a judgment.

Lawyers will need to be vigilant and take additional precautions to ensure clients can comply with this new section – when responding to the initial demand and to any subsequent demands to account for new information or documents identified through further investigation and discovery.

Interestingly, the provisions of SB 235 come with an expiration date. Scheduled for repeal on January 1, 2027, this sunset provision suggests that lawmakers might be testing the waters and provides an opportunity for the legislature to reassess the effectiveness of these changes after a few years.

Having more time to get information right could be a very good thing for the courts. As we’ve seen so many times, success or failure in the courtroom or during the settlement process depends on having the very best, most detailed information about a case. That’s why great attorneys and law firms across the country work with the worldwide team of Santoni Investigations who will ensure you know everything to make the right decisions and maximize the settlement process or win your case in court!

 

Know Even More (READ THE ARTICLE)

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How Investigations Can Protect Your IP from Theft

Best-selling author Kary Oberbrunner recently published an article in Forbes about IP theft stating that it costs the U.S. economy up to $600 billion annually. Oberbrunner says “according to the Visual Capitalist, Intangible assets currently account for 90 percent of the index’s total assets. This means that much of your company’s value is not found in physical assets, but rather in intellectual property.”

Oberbrunner also quotes a U.S. Patent and Trademark Office figure from 2018 estimating the total sales of counterfeit and pirated goods total between $1.7 trillion and $4.5 trillion annually. So, theft and the sale of these counterfeit goods is BIG business.

He says “Defending your ideas and intellectual property requires some knowledge. It begins with understanding the types of protection available. As I explained in my previous article, traditional avenues of IP protection include patents, trademarks, copyrights and trade secrets. Each type provides different protections and rights, so familiarize yourself with the options relevant to your creations. Keep in mind that each type of protection requires a different filing fee and estimated time for approval.”

Oberbrunner also advocates for newer methods of IP protection including blockchain and smart contracts. He says that the enforceability of smart contracts is “gaining acceptance.”

Finally, Oberbrunner advises business to avoid two common missteps in IP protection — perfectionism and procrastination. He says “some businesses feel like their IP needs to reach a state of perfection before they can protect it. This simply isn’t so. If you reflect upon past success stories, wise enterprises protected their IP while it was evolving. Look at any iconic brand’s logo, for example: They protected each iteration. IP is a moving target many times. Protect as you go. He continues, “Procrastination is the other side of the coin. It’s unwise to delay. Since 2013 in the U.S., IP rights are granted to the first to file, not the first to use. It’s to your advantage to file your IP and create an immutable timestamp immediately.”

Monitoring and enforcing your IP rights is a critical step. Failure to monitor and enforce your trademarks can cost you because it weakens the trademark which can lead to loss of distinctiveness, which can lead to the loss of a trademark.

When businesses suspect their IP is being threatened, a detailed investigation is typically needed. Santoni Worldwide provides Anti-Counterfeiting Investigations as well as Domain Name Acquisition and Trademark Investigations. And just like in the courtroom or the settlement process, our team will ensure you know everything to make the right decisions and protect your valuable intellectual property!

 

KNOW EVEN MORE- READ THE ARTICLE

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Avoid Doing This in Your Next Trademark Case

We’ve seen it a hundred times. A law firm gets a new trademark case and the first thing they do is start investigating websites and social feeds. This is a really big mistake—and here’s why.

Although you may not always know it, you are probably leaving a digital footprint when you review and examine websites of potential infringers, counterfeiters and litigants.

Let’s examine WHY that is true.

IP Addresses—The first thing to understand is how IP addresses work. If you’re accessing the web from your office, your firm likely has a STATIC IP address which means that the IP address doesn’t change, and it’s registered to your firm with your ISP (Internet Service Provider). If you’re working from home or from a coffee shop and you DON’T connect to your office via a VPN or other remote desktop software your IP address is likely a DYNAMIC one. This means that the IP address changes from time to time and it is more difficult for websites to identify who you are, where you and where you work.

Cookies—are bits of code inserted into your personal browser, letting a particular website collect information about your activity there assuming you OPT in or allow them to do so. This is how a website seems to “remember” you when you visit again. Now due to the privacy invasion nature of cookies and the subsequent litigation and penalties associated with these, the tech industry has been moving away from them. Other data such as your operating system and browser specifications, along with hardware such as your processor, graphics, and monitor may seem anonymous, but when assembled, that data can form a unique profile that helps companies identify you — even without cookies.

Tracking—many websites, especially those with e-commerce functionality track who is on their website and where that traffic originated. This allows them to COOKIE visitors. If you are accessing a website from a STATIC IP address websites have software that allows them quickly to conduct a reverse search and notify the website owner of companies that are on their website. This is typically for marketing purposes, but it can also reveal if a lawyer or paralegal is inspecting or examining a website. The software will reveal the time spent on the site, the number and the exact pages visited—and if any forms were completed. This software can also allow website operators to be notified about repeat visitors based on certain criteria.

Website Alert

Some websites are even running software on their website pages that allows them to see a heat map that tracks where your mouse travels and where you are clicking on the page. This means if you are thoroughly investigating a product or service on a website, they will be able to see your digital vapor trail. Kinda creepy, but especially good to know when you’re using the firm’s computers for any investigation work.

Website heat map

So, What SHOULD You Do?

Use a VPN – You might be using one already, but if you aren’t this should be your first question to your IT director or IT company at your next meeting. There are several options out there like NordVPN or Surfshark. The services allow you to connect dto the Internet from an IP address that does not tie back to your firm. You can even elect to select an IP address that is tied to another country.

Another option— Tor Browser. The Tor Project is all about protecting users from invasive technology and their browser, The Tor Browser is what you want to be using for any investigations work when you want to keep your identity very private. Again, check with your IT director or your firm’s IT company—and then, if approved, download it here: https://www.torproject.org/download/

Suggestion – The next time you are at your office go to IPChicken.com and find out what your IP address is. Then when you are working remotely or from home run the same search and confirm that the IP is different.

IP Chicken

 

Of course, outsourcing all this work is the very best way to avoid any sort of tracking on your part. There is no way to track a law firm’s involvement in this type of investigations research if no search comes from the firm. At Santoni Worldwide, we do this kind of investigations work all the time.

As we’ve seen so many times, success or failure in the courtroom or during the case or settlement process depends on having the very best, most detailed information. That’s why great attorneys and law firms across the country work with the worldwide team of Santoni Investigations who will ensure you know everything to make the right decisions and maximize the settlement process or win your case in court!

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So What’s the Difference Between Background Checks and Investigations?

Every industry has its inside language or jargon, and the investigations business is no exception. Knowing what we mean when we say certain things can make all the difference. We often see clients who mix up the terms “background check” and “investigation.” So, since we’re always trying to add extra value, we thought we’d put it out there so everyone knows the important differences between these services.

The most common type of background check is the Pre-Employment Background Check. This check requires written authorization by the job applicant along with a permissible reason to conduct the check such as being a condition of employment. This check must follow the rules of the Fair Credit Reporting Act (FCRA) and must adhere to local and state laws. At the conclusion of this background check, a copy must be given to the employee. The scope and depth of a pre-employment background check is typically limited to criminal records and sometimes they involved verification of education and employment. They can be completed in 24-48 hours or less and the typical cost is $35.00 – $75.00.

The second type of background check is a Due Diligence Background Check. This is something that an attorney may do during a merger or when a company is thinking of acquiring another company. These do not require authorization but may be authorized as part of the transaction. The work here involves looking at assets and liabilities as well as the executive team’s background. Sometimes this involves looking into positive or negative media coverage and situations. Really during these checks, we are looking for anything that could impact the value of the pending transaction. The Due Diligence Background Check is not limited in scope and will uncover everything from criminal cases to civil cases going back as far as possible. These types of investigations usually take a few days and run anywhere from $395.00 to over $1,000.00.

The third type of background check is a Legal Background Check. This is done when we need a lot of detailed information about a defendant, plaintiff, or witness to be deposed. The work includes looking at criminal records (State & Federal), civil records (State & Federal), driving records, consumer public filings (bankruptcies, judgments & liens), professional licenses, business affiliations/ownership as well as social media channels. As with the Due Diligence Check, this check does not require authorization and is conducted discreetly without the subject learning that it is being conducted. The Legal Background Check usually takes a few days but can be expedited when necessary. The cost is anywhere from $350.00 to $750.00 or more depending on how many counties the subject has lived in and how deep the client wants to go.

So those were the background checks. Now, Legal Investigations are generally more broad and can involve any number of variables as it relates to a particular case. This research-based work is usually a very detailed examination to ascertain the truth regarding some aspect of a legal case. Legal Investigations can involve but are not limited to the following.

Surveillance & Activity Checks
Asset & Liability Investigations
Locate / Skip-Trace Investigations
Interviews / Statements
Scene Investigations
Canvassing
Evidentiary Buys / Undercover Buys
Stakeout
Computer & Cell Phone Forensics

And there you have it! As we’ve seen so many times, success or failure in the courtroom or settlement process depends on having the very best, most detailed information. That’s why great attorneys and law firms across the country work with the worldwide team of Santoni Investigations who will ensure you know everything to make the right decisions and maximize the settlement process or win your case in court!

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Common Mistakes Attorneys Make When Hiring Private Investigators

Common Mistakes Attorneys Make When Hiring Private Investigators

Fiction writer William Petersen once wrote, “A smart person is not one who knows the answers, but one who knows where to find them…”  This is so true, particularly when it comes to hiring private investigators. Most attorneys and law firms are pretty smart, but still make quite a few basic mistakes when hiring PIs to work on a case. So we asked the investigations guru, Tim Santoni of Santoni Worldwide to list a few of them that he encounters. Santoni says that sometimes attorneys:

  1. Don’t match the case to the specific type of investigator. Santoni says “specialization of experience” is very important and we always want to make sure the investigator being hired has done this specific type of work before—and many attorneys just don’t check this.
  1. Don’t get a clear outline or engagement agreement. Santoni advises, “you have to know the parameters of the work for it to be successful so you always want to request something in writing.”  Santoni continues, “We always provide new clients with a no-cost investigative plan—which includes transparent pricing.”
  2. Don’t understand the specific methodologies that will be used by the investigator. Santoni says, “Again, the attorney needs to know what we’re going to do, how we’re going to do it and most importantly, what we are going to say (or not say) during the course of the investigation.
  3. Don’t do conflict checks. Santoni says it’s very important to make sure the investigator doesn’t have any conflicts on the other side that could affect the outcome of the investigation. So it’s important to specifically ask if the investigator has ever done work for any of the parties involved in the current case.
  4. Don’t know the difference between getting raw data and the comprehensive results of a full investigation. There are some investigators who just do a very basic data dump and send that to the client while calling it an “investigation.” Santoni says. “Great investigations begin with data, but provide deeper analysis and conclusions so the attorney is well informed and able to make the best decisions during the case. So if you’re just getting data, get another investigator,” he says.

And there you have it! As we’ve seen so many times, success or failure in the courtroom or during the settlement process depends on having the very best, most detailed information about a case. That’s why great attorneys and law firms across the country work with the worldwide team of Santoni Investigations who will ensure you know everything to make the right decisions and maximize the settlement process or win your case in court!

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Taco Tuesday Trademark Dispute is Over

The Taco Tuesday trademark dispute is over

The phrase Taco Tuesday that was trademarked by Taco John’s is now free to be use by all. Taco John’s has given up its trademark rights after a brief battle by Taco Bell. The Taco Tuesday trademark dispute is over. The phrase “Taco Tuesday” was trademarked by Taco Johns and had been registered as a trademark since 1989, except in the state of New Jersey.

Taco Bell filed a petition with the United States Patent and Trademark Office (USPTO) arguing that no one should have the rights to a commonly used phrase.

Taco John’s CEO, Jim Creel, said “We’ve always prided ourselves on being the home of Taco Tuesday, but paying millions of dollars to lawyers to defend our mark just doesn’t feel like the right thing to do.”

Taco John’s has 400 locations in 23 states, while Taco Bell has more than 7,200 locations in the US and 1,000 restaurants across 30 countries.

The interesting part about this dispute is the fact the phrase Taco Tuesday has been used by taco shops and Mexican restaurants throughout the United States for years. The vast use of the trademark appears to have gone with opposition or litigation by Taco John’s. That said in the trademark world if you own a trademark, but fail to enforce and protect your rights you can lose your rights to the trademark.

In this case the villain is Taco Bell, but that was likely because they knew that the lack of protection by Taco John’s would be the evidence they needed to get the trademark cancelled. It is possible that Taco John’s was also aware of this fact and thus stopped the legal battle.

A thorough trademark investigation and trademark litigation search would be a useful tool to deploy to uncover this type of information.

 

READ THE ARTICLE

 

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The Trademark Modernization Act- Takeaways

The Trademark Modernization Act- Takeaways

 

The USPTO implemented the Trademark Modernization Act in December of 2021. The act provides a tool for individuals and businesses to clear away unused registered trademarks from the federal trademark register.

The act provides two new mechanisms for expedited cancellation of Federal Trademark Registrations. The party seeking cancellation must provide evidence of non-use of the mark in question.  This can be challenging as developing evidence of the negative/non-use is always more challenging.

Numbers to date…
As of April 2023, there have been 818 petitions filed. There have been 401 expungements and 417 re-examination requests filed.

The process is taking three to four months for the USPTO to address the petitions and the process thereafter can take an additional two months for them to render a decision. The wait time for cancellation due to non-response is 40 days.

Takeaways…

The USPTO has not provided much in the way of guidance on why a petitioner’s requests have failed. However, the USPTO does state that petitioners must demonstrate that they made a bona fide attempt to establish that the mark has not been used in commerce or use has ceased. A verified statement that the petitioner conducted a REASONABLE investigation is required.

The USPTO provides some tips and best practices on its website

READ MORE CHECK OUT THIS ARTICLE FROM THE  WORLD TRADEMARK REVIEW

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Amazon is disrupting and stopping counterfeiters

Amazon is working to disrupt and stop counterfeiters selling on their platform. This is good news for brands and for consumers.

The Amazon marketplace can be a very convenient and insulated place for counterfeiters to sell products. Recently Amazon has become very active in pursuing counterfeiters selling on their site. They have made headlines filing lawsuits in cases involving well known brands including Cisco, Yeti, Canon and Therabody.

The problem with counterfeit products is that they are often inferior products that break easily or don’t function properly. This causes brands to deal with warranty and product defects on products that they didn’t actual make. The public harm caused by these counterfeit products is also a concern. Counterfeiting is a billion dollar problem. Organized crime groups and terrorist have funded their operations by selling counterfeit goods.

Counterfeiters have been able to sell on the Amazon marketplace without leaving a trace.  Amazon seller profiles are often lacking any identifiers like a business name, business owner, physical address, phone number or email address. The products sold on Amazon are very often fulfilled by an Amazon warehouse, so there is no shipping address to trace back to the counterfeiters.

Amazon has created a team internally to investigate, disrupt and file lawsuits against infringers and counterfeiters to protect brands. They have also created the Amazon Brand Registry which allows brands to register with Amazon and provide further details in the fight against counterfeits.

For a behind-the-scenes look at Amazon’s Counterfeit Crimes Unit at work CLICK HERE

When brand owners, their law firms and Amazon work together counterfeiters can be stopped. The sharing of information, making targeted test purchases and tracking payments are just a few ways in which counterfeiters are identified and stopped.

To read more about the disruption of counterfeiting and lawsuits filed CLICK HERE

As a consumer it is really important to evaluate sellers of branded products. Make sure you are getting the real thing. Many brands have dedicated pages on their site that give you insights about how to spot a FAKE and what marketplaces they sell legitimate products on and those sites that they don’t sell on. Do your homework and protect yourself.

Kudos to Amazon for their efforts to disrupt and stop the sales of counterfeit goods.

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Taco Tuesday Trademark Dispute

Taco Tuesday Trademark Dispute

Taco Bell has filed a petition with the United States Patent & Trademark Office (UPSTO) arguing that the phrase “Taco Tuesday” should be cancelled, which would make the phrase available for anyone to use.

The Taco Tuesday trademark was registered in 1989 and is owned by Taco John’s which is based in Wyoming. Taco John’s began as a Food Truck and now operates and franchises almost 400 restaurants in 23 states.

The filing by Taco Bell states that too many businesses and others refer to “Taco Tuesday” for Taco John’s to be able to have exclusive rights to the phrase.

Taco John’s has enforced their trademark for Taco Tuesday aggressively. Reports show they even sent a Cease & Desist to a brewery located five blocks from their corporate headquarters with a warning to stop using the phrase Taco Tuesday on the brewery’s food truck.

Taco Bell which is operated by Yum! Brands along with Pizza Hut, KFC and The Habit Burger Grill and has more than 7,200 locates across the US and internationally.

The petition filed by Taco Bell is interesting. Are they filing the petition to avoid a potential infringement situation because they have used the mark Taco Tuesday, or are they truly trying to free up the widely used phrase by restaurants, food trucks and eateries everywhere. One could argue that Taco John’s could send cease & desists letters to thousands of establishments who are using the mark on their websites, signage, advertisements and marketing materials. Once Taco John’s replies and the filings begin we will likely learn more about the legal standing for this argument and a little more of the WHY behind this move by Taco Bell.

Taco John’s will have 40 days to respond to the petition, but the battle could drag out for over two (2) years, so stay tuned as this one could get very interesting.

READ THE ARTICLE

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Sin Eater – Pellicano a Private Investigators Takeaway

In this BLOG post Tim Santoni discusses what he saw and his takeaways from the Sin Eater – Pellicano Documentary.

The recent FX documentary “Sin Eater” presented by the New York Times that sheds light on the clients and practices of Anthony Pellicano. The documentary is quite revealing in the sense that it reveals not only the practices of Pellicano, but who he was working with. The show tries to paint the attorneys and clients that Pellicano worked with in a bad light. In the end many of the attorneys and clients that Pellicano worked with did not get charged.

The producers of this documentary appear to have gotten their hands on actual recordings of Pellicano and his clients which they play on the show. This is interesting because many of the calls involved well known celebrities and attorneys. A few of the clients and cases discussed on the documentary include the following: Michael Jackson, Michael Ovitz, Brad Grey, Steven Seagal, John McTiernan, Garry Shandling, and Bert Fields.

Pellicano was a Private Investigator, but things did were above and beyond what a typical private investigator would even think of offering or executing. The documentary shows evidence that Pellicano recorded calls, paid phone company employees to run wiretaps, and intimated and scared people through violence. There is no discussion of any conventional investigative research that Pellicano might have done as a Private Investigator like background checks, asset searches, surveillance, and public records research.

During the documentary many of the Pellicano clients are asked if they knew what Pellicano was doing and if they asked him to do anything illegal. It is clear that the clients of Pellicano never asked for anything illegal but understood he would do whatever it took and if that meant bending or breaking the law, he would do it. This is significant because the high-profile attorneys and law firms that hired him, really could have been on the hook for his activities and methods. Pellicano took on assignments and was willing to do whatever it took to win for his clients no matter the cost to his life, reputation, and license. He makes it clear that he knew what he was doing and that everyone in the Private Investigation industry was bending or breaking the law. He was getting hefty retainers, typically starting at $25,000.00 just to initiate these types of investigations. Reports show that he was paid $2 million for his work in the Michael Jackson case.

The documentary shows a computer laboratory that Pellicano had in his office that was blanketed with devices and computers that were used to carry out many of his investigations. This is not something that would be required if he was really just doing typical private investigation work.

If you need documented evidence that holds up in court then you should hire a licensed private investigator that understands civil code of procedure, federal code of procedure, evidence handling guidelines and the business professions code. It is clear that the work Pellicano conducted was typically not for use in court, it was used for intimidation and manipulation.

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