Predictions for 2019

As I write this, 2018 has come to a close.  The stock market surges and falls on a daily basis because of China, Apple, the Government Shut down. Chance are that the issues that keep you up at night as a business or real estate owner have less to do with those issues and more to do with growth, human resources, problems with product or property and process.

  1. Hire Slow and Fire Fast.  Regardless of what happens in the world, this adage appears to remain true.  If you’re in love with your potential new business partner, one of the first questions I will ask you is how you will manage the time when your relationship ends.  This is true also for employees and vendors, so I expect that conversations about qualifying prospects will remain a top issue in 2019.
  2. Getting A No.  Choose your customers wisely.  This is a follow-on to the first note above but, I have always found that no one is a fit for everyone.  Come up with your minimum, non-negotiables or requirements for working with partners, vendors, employees.  Let them know up front.  The clearer you are to them and to yourself, the less likely you will waste time on working with someone where there is not a fit.
  3. Expect the Best, Due Diligence.  I continue to be amazed that folks plan a meeting and have not scoured the Internet to learn everything they can about what their prospect has written, said, presented.  Use the Internet, lop of the highest of self-praise and the lowest of self-deprecation (within reason), and do your due diligence.
  4. Cash.  You will be able to sleep better at night if you have more cash in the bank than debt.  Even if you don’t earn a return on that money, plan for your next great expansion, a business challenge or adversity with cash.  This is a different number for everyone but take the time to plan it out.
  5. Contingency Plans.  Data hacking, identity theft, bad actors in your company, and bad third party actor are real. Have your plan written out, know your insurance coverage, identify known risks to your network, online banking, competitive advantage.
  6. Intellectual Property.  In every meeting, I have as an investor and in every meeting with clients, having an edge from an intellectual property perspective is a huge competitive advantage.  Take the time and devote the resources to get this advantage or to determine where the holes are and do it early and often.  Enforcing IP rights is costly, hence the need for cash.
  7. Strategic Planning.  If you are of any age, you realize how fast time flies.  Without a plan, any road will take you “there.”  With a plan, you can test approaches, strategies, resources and assumptions.   Planning is as important as ever as competition has become fierce in every sector.

If you are a founder, owner, partner or investor with a focus on AI, cannabis, real estate, software, let’s discuss your assumptions for 2019 and how you will get there.

Gregory

Representative Cases

Are you in:

biotech, software development, device, game and video console and content, book publishing industry (writer side), property and casualty insurance, life insurance, real estate broker and real estate development, automotive, content development, cloud computing, fashion, manufacturing, food and/or food additives?

Some examples of the past and present clients/matters are:

1) Copyright/ Trademark infringement Litigation

a. Online and Web hosting

• Third World v. XHOT99, Inc. US DC CD. Defend web-host in contributory copyright infringement, RICO, trademark infringement claims. Affirmative defenses include DMCA and CDA.

• Jupitermedia (Fulbright Jaworski) v. Jupiter Hosting – US DC Northern District California. Defended web hosting company from injunctive relief trademark infringement and cybersquatting allegations. Successfully opposed motion for preliminary injunction. Published opinion. (Judge Claudia Wilken). Concurrently advised Jupiter Hosting on all of its commercial transactions and subsequently provided assistance regarding its sale to Navisite in 2007.

• DICK DACK LLC. Advise adult porn producer re DMCA and 2257 custodian of record issues. Review of COPPA and general business advisor.

b. Movie

• Rivera v. Does, US DC SDNY. Obtained TRO, seizure by US Marshall and preliminary injunction on behalf of filmmaker of “ENRIQUILLO” (Story of discovery of Dominican Republic) against cameraman and investor who purloined film. (Judge Kimba Woods)

• Brush Media v. Boujaklian. (2002 WL 1906620 (N.D. Cal.) US DC ND. Adult DVD movie producer. Successfully prevented copyright infringement action through motion to dismiss for lack of subject matter jurisdiction. (Judge Eliza Laporte)

• Eslinger-Galligani adv. Domingo Gutierrez. Advise movie production company on acquisition of life story rights, drafting options and partnership agreement.

c. Video Game

• Sudoku Developer adv. Danger Technologies. Advised on-line sudoku game re licensing agreement with mobile phone developer and mobile phone platform.

• Doe v. Investor. Advised on-line game/personal map developer re licensing agreement risk and litigation strategy re venture investor.

• Eidos acquisition of Crystal Dynamics. Conducted IP audit on behalf of Eidos and negotiation of various commercial agreements related to acquisition of Crystal Dynamics by Eidos including domain names, game titles, content and software.

• Beeck v. Cinemaware, US DC NDCA. Represented video game development team re claims of copyright infringement, breach of licensing agreement and non-payment of royalties.

d. Computer Accessory

• Grixxxx Technology adv. Apple, Inc. Re-negotiation of Made for Ipod agreement and litigation strategy re anti-trust and breach of contract claims

• Disruptive Technology adv. Apple, Inc. Re-negotiation of Made for Ipod agreement and related commercial agreements.

• Acme Studio v. Acme Made. US DC Northern District. Defended computer laptop and accessory manufacture, owner of acmemade.com from allegations of trademark infringement and cyber squatting.

e. Dance

• Creative Station adv. Apple Seeds. US DC SDNY Advise “teach kids to dance” school re copyright litigation and commercial agreements related to licensee

f. Wireless

• General Magic adv. Consolidated Freightways. Advised Apple, Inc. spin-off re commercial licensing of its hand-held device.

• AD USA v. Automan. US DC Pennsylvania. Obtained preliminary and permanent injunction on behalf of handheld computer manufacturer in automotive industry. Resulted in significant financial settlement on behalf of client.

g. Sculptural Works

• Ohtake adv. Sculpturesite Gallery. Defended allegations of breach of contract related to sale of kinetic sculpture.

• Rader v. Sutter. US DC ND. Prosecuted TRO and pursuit of preliminary injunction in copyright infringement claim on behalf of cemetery monument design company. Case proceeded through death threat allegations, expedited discovery and an appeal to the 9th Circuit for relief. (Judge Susan Ilston)

h. Software

• PC Tools v. Contour/Elle Mae, Inc. AAA San Francisco. Successfully brought copyright infringement claim on behalf of mortgage industry software developer. Resulted in six-figure settlement in client’s favor.

• Workshare v. Litera Corp. US DC ND. Successfully defended document management software co against injunctive relief action for copyright infringement.

2) Patent and Trade Secret litigation

• Patentee v. L-3 Corp. US DC Georgia. Defended owner of multiple power utility sites from allegations of patent infringement over payment process method.

• Datapark v. GMG Systems, Inc. San Francisco District Court. Successfully prosecuted misappropriation of trade secrets related to parking garage computer equipment through three defense firms. Resulted in six-figure settlement for client.

II. Fraud litigation

• Sisters v. Brother in Family Partnership. Defended and advised brother/general partner in breach of fiduciary duty suit in LA Superior court alleging misuse of partnership funds, self-dealing.

• Shareholders v. NiftyNet, Inc. US DC ND. Successfully brought derivative action against former President of Delaware corp. on behalf of shareholder/director alleging fraud, corporate waste. Resulted in redemption of shares and a significant financial settlement for client (Judge Charles Breyer)

• Does v. Real Estate co, Inc., and President/director – San Francisco Superior Court. Defense of the President of commercial leasing agency in five separate actions alleging fraud and negligent supervision allegations by investors in multi-unit properties.

• Insurance brokerage v. Former partner– San Francisco Superior Court. Pursued computer fraud and abuse and trade secret misappropriation against former partner of general insurance broker. Resulted in financial settlement.


3) Online Torts

• CPA v. Yelp and anonymous poster. Advised CPA firm re: pursuit of claim against anonymous user on Yelp re: negative services. Consideration of privileges and “opinion” defense. Obtained a retraction by user to be less offensive.

• Jane Doe v. Armando Aguilar, LA Sup. Ct. Prosecute case alleging false light, invasion of privacy, and intentional infliction of emotional distress re: release and publication of sex tape and online harassment.

III. Anti-trust litigation

• Weinberg v. Ingenix. US DC, Connecticut. Participating plaintiffs’ counsel in class action claim of price fixing and unfair trade practices against Cigna, Wellpoint and Aetna.

IV. Outside General Counsel

• Galligani-Eslinger Productions. Outside general counsel to reality television and motion picture production company.

Background

Background

After college Gregory was a financial analyst in Tokyo for two years where he learned to speak and read Japanese. He was one of the youngest foreigners to sit for the Japanese language equivalent to the Series 7 securities exam.  Although Gregory chose Temple Law School in Philadelphia, the then Dean, Robert Reinstein had helped Temple University develop a campus in Tokyo and Gregory began to collaborate with the Dean on a Temple Law Japan program, now in its 15th year. Under Dean Reinstein’s tutelage, Gregory wrote an analysis of the role of rice in Japanese politics. 

Gregory has practiced law in various environments. 

After returning from his Fulbright in Tokyo in the Fall of 1993, Gregory was invited to publish some of his findings in a work entitled Japanese Research Projects and Intellectual Property Rights (US Commerce Department, 1996).  In 1993, Gregory formed the Arts and Technology Group® in New York City to combine work with clients in the arts (namely film), software and information technology. Gregory’s earliest work was as a litigator. Gregory worked with the Volunteer Lawyers for the Arts in New York City representing independent songwriters, film producers and arts entities. One of his first cases resulted in obtaining a temporary restraining order and injunctive relief on behalf of a Dominican Republic filmmaker seeking to screen her version of Columbus’ discovery of the New World. Judge Kimba Wood resided. 

From 1994, Gregory continued his practice as an associate with Ostrolenk, Faber, Gerb and Soffen in New York City, a firm that celebrated it’s 80th year anniversary in 1994 with a focus on patent, trademark and copyright litigation. Gregory’s practice there focused on the learning to prosecute semi-conductor patents and trademarks, and on copyright litigation. In addition to learning the basics of trademark application work, drafting patents and marketing the firm to Japanese and Korean technology companies, Gregory was permitted to continue to work on behalf of the film maker.  Rutchik successfully leveraged the temporary restraining order into a seizure order and permanent injunction for my client.

Gregory also began leveraged his relationships in Japan’s government and his experiences in US trade to work on US-Japan trade disputes. In 1991, after an internship at the USTR’s office of Japan and China, Gregory was hired to represent Allied Stamp, a US wholly-owned subsidiary of the Blue Chip Stamp Company in Japan to assist to ease the effects of a Japanese anti-trust law that prohibited the sale of “buy-one get one free” type promotions in small retail shopping districts. The client was gracious enough to have Gregory work directly with Senator Don Nickles, members of DOJ’s Anti-trust group and Gregory continued to communicate with his former superiors at USTR.   Gregory’s job was to meet with many of the Japanese government regulators he had gotten to know during his Fulbright year, to meet stakeholders in retail including woman’s rights groups and consumer groups, and to forge relationships in the industry with the hopes of lessening any objections to the proposed changes.  The result was that this non-trade barrier was included inside talks between the US and Japan and eventually led to an easing of these barriers.  Read more here.  Additional engagements followed. 

In the Winter of 1997, Gregory moved to California, took the California bar and joined the Information Technology Practice Group of Cooley Godward LLP in Palo Alto, California, to work on software and information technology clients. Gregory’s focus there was on drafting, negotiating and advising on licensing, distribution, development, spinouts and other agreements. Gregory then joined two Cooley Godward clients as assistant general counsel – noosh.com a web-based procurement entity and at Loudcloud, an infrastructure managed services company. Loudcloud became Opsware (was on Nasdaq as OPSW) and was ultimately sold to Enron and HP after Gregory left.

The Arts and Technology Law Group reformed in San Francisco and ultimately became a partnership with the firm of Richard J. Idell.   

Education
Gregory received a J.D. in 1992 from the Beasley School of Law, Temple University, Philadelphia, Pennsylvania where he was a member of the Dean’s List. Gregory received a B.A. in American Studies from Skidmore College, Saratoga Springs, New York, in 1987.

Gregory was a Fulbright Fellow at the University of Tokyo, Graduate School of Law from 1992 – 1993. Gregory’s focus was the Licensing of technology by Japanese information technology companies. Gregory has traveled throughout the world, lived in Tokyo for four years after college and law school and speak fluent Japanese. He is also conversant in French.

In 2005, Gregory received his LLM in Taxation from Golden Gate University School of Law.