Diane Duhaime
Partner

Connecticut

Email: dd@jordenusa.com
Phone: 860.392.5014
Fax: 860.392.5058

Diane Duhaime is the chair of the intellectual property and information technology practice areas. Ms. Duhaime has extensive experience with drafting and negotiating software license, content license, software development, outsourcing, web site development, application service provider products, consulting services and many other types of agreements concerning technology products and services. Ms. Duhaime regularly advises clients on trademark, domain name, unfair competition, trade secret, copyright, Internet and e-commerce issues. In addition, she has counseled insurance institutions regarding advertising injury claims and coverage litigation. Ms. Duhaime represents clients from the financial services, retail, publishing, university and other industries in the selection, clearance, registration and maintenance of their trademarks and service marks in the United States and foreign countries. Ms. Duhaime's trademark work also includes enforcing and defending the client's trademark, service mark and domain name rights.

Ms. Duhaime's technology-related transactional experience includes agreements with software licensors and developers for private labeling web sites, and for web-based applications that provide, among other features, financial account information, tracking and reporting, portfolio management, electronic-based insurance and annuity application form completion, submission and processing, distance learning university level courses, enterprise-wide intranets and real estate mortgage loans and closings. In addition, Ms. Duhaime has been involved in virtually every aspect of technology acquisitions, from developing and issuing the request for proposal, to evaluating submitted proposals and participating in the client's vendor selection process, to drafting and negotiating the transactional documentation through execution of the transactional documentation. Ms. Duhaime also counsels clients with regard to any post-contract execution issues that may arise between the parties, including failed system and other non-compliance issues.

Representative Matters

• Favorable judgments obtained in two separate copyright infringement lawsuits: one in France and one in China. Provided litigation advice and counsel to an international manufacturer that became aware its copyrighted designs were being infringed in China and France. The defendants in both China and France were ordered to stop all sales and manufacturing of the infringing designs, and to pay damages, fees and costs. The Chinese decision was identified by the Beijing No. 2 Intermediate People's Court as one of its "Top 10" intellectual property cases of 2006. The defendants have filed appeals, which are currently pending.
• Successfully enforced clients' names and marks against cybersquatters' bad faith use and registration in several legal proceedings.
• Successful representation of clients in several arbitration matters filed against foreign and U.S. companies that had registered and were using Internet domain names consisting of terms confusingly similar to marks and/or trade names of clients. The arbitration panels ordered the transfer of the domain name registrations to our clients.
• Successful representation of clients in prosecuting applications for trademark registration in the U.S. and foreign countries and in enforcing trademark rights against third parties by asserting various causes of action, including cybersquatting, typosquatting, initial interest confusion, infringement and dilution of famous trademarks. Also, successful representation and defense of clients when accused of infringing or otherwise violating another's trademarks or copyrights.
• Counsel to financial services clients in negotiating application service provider agreements for customization, implementation, hosting and support of web-based applications that perform or facilitate such functions as financial account aggregation and reporting, portfolio management, policy sales, policy issuance and policy administration for broker-dealers, registered representatives and/or customers. Financials of smaller, specialized licensors were a significant consideration in the drafting and negotiating of the transactional documentation.
• Providing counsel to financial services and other clients regarding web site terms and conditions of use and service, privacy policies, the validity of electronic signatures and enforceability of electronic agreements (such as shrinkwrap and click-wrap agreements), and the development of procedural guidelines to ensure same.
• Providing counsel to financial services client in preparing for litigation against the vendor that developed and supported a mission-critical insurance processing system, which system was substantially failing to meet the client's specifications (negotiated the resolution of this dispute to the client's ultimate advantage).
• Successfully defeated an emergency motion for a temporary restraining order that was filed in a federal district court in Connecticut to prevent the client from opening a new restaurant under a disputed trademark.

Speeches and Publications

• Author: Why Should Corporate Counsel Become Familiar With Virtual Environments? Aren't They Just Fun And Games?, The Metropolitan Corporate Counsel, February 2008.
• Author: If I click 'I agree' on a Web site's terms and conditions section, how binding is the contract? for Connecticut Super Lawyers in Connecticut Magazine, February 2008.
• Author: Victoria's Secret Case in 2003, Leads Nation to Trademark Dilution Revision Act of 2006, Connecticut Lawyer, October 2007
• Moderator and Co-Speaker: Business Method Patents and Other Types of IP Protection for Financial Services Products Roundtable, The Goodwin Hotel, Hartford, CT, 2007
• Speaker: STP and Compliance with E-Signature, Record, and Contract Laws, NAVA Operations & Technology Conference, Baltimore, MD, 2007
• Moderator: Trademark Dilution Revision Act, International Trademark Association, Simsbury, CT, 2007
• Author: "How can I protect my business against cybersquatters?" for Connecticut Super Lawyers in the Connecticut Monthly, February 2007
• Speaker: Vendor and Contract Management in Technology Projects, NAVA Operations & Technology Conference, Tucson, AZ, 2006
• Speaker: Contract Drafting for Technology Professionals, Hartford, CT, 2006
• Moderator: Developments in Fraud Upon the U.S. Patent and Trademark Office, International Trademark Association, Simsbury, CT, 2006
• Moderator: Trademark Licensing Issues Roundtable, International Trademark Association, Simsbury, CT, 2005
• Moderator: Panel Discussion on the Challenges of E-Discovery in the Federal and State Courts in Connecticut, The Hartford Club, Hartford, CT, 2005
• Moderator and Speaker: Fair Use or Copyright Infringement?, Jorden Burt LLP Videoconference, Simsbury, CT, 2005
• Speaker: Intellectual property law in the areas of digital music and on-demand cable, WTIC 1080 Computer Talk Radio, Hartford, CT, 2005
• Speaker: Outsourcing: Near-Shore and Offshore, and IT Contracting Issues in the New Millennium, 2004 Caucus Annual Conference, Orlando, FL, 2004 and ICN Technology Procurement Conference, New York City, 2004
• Speaker: Offshore and Near-Shore Outsourcing: Addressing Key Issues, Hartford, CT, 2004
• Moderator: Madrid Protocol and Community Trademark Roundtable, International Trademark Association, Simsbury, CT, 2004
• Speaker: Contract Negotiations: Indemnification, Limitation of Liability and Confidentiality Provisions, St. Louis, MO, 2004; Minneapolis, MN, 2004; Boston, MA, 2003; New Brunswick, NJ, 2003; Hartford, CT, 2003
• Speaker: Legal Issues with Music Downloading, WTIC 1080 LawTalk Radio, Hartford, CT, 2003
• Speaker: Advanced Contract Negotiations: Indemnification, Limitation of Liability and Warranty Provisions, United Nations Procurement Division, New York, NY, 2003
• Speaker:Top Ten Legal Issues in Cyberspace: What Every Connecticut Lawyer Needs to Know, Connecticut Bar Association Annual Meeting, New Haven, CT, 2003
• Speaker: Gaining Your Terms and Conditions; Basics of Intellectual Property Law; Tales from the Clickwrap Crypt; UCITA Update, Technology Procurement Conference, San Francisco, CA, 2003
• Speaker: Commercial Issues in Energy Operations Cyber Security, KEMA Consulting, Denver, CO, 2003
• Speaker: Technology and Intellectual Property Law Issues, WTIC 1080 Law Talk Radio, Hartford, CT, 2003
• Speaker: Legal Issues of the Internet - Patents, Copyrights, Trademarks and Domain Names, Quinnipiac University, 2002
• Speaker: The Connecticut Uniform Electronic Transaction Act ("CT UETA") - Electronic Contracts, Signatures and Records: The New Law and Its Implications for Connecticut Attorneys and Their Clients, The Hartford Club, 2002
• Speaker: Legal Developments in Electronic Contracting, Practising Law Institute's Sixth Annual Internet Law Institute, NYC, 2002
• Moderator: Trademark Policies, Enforcement, Prosecution and Other Trademark Topics, International Trademark Association, Annual Meeting 2002, Washington, D.C., 2002
• Speaker: Emerging Legal Issues in E-Commerce - Patents, Copyrights, Trademarks and Domain Names, Lally School of Management and Technology, Rensselaer Polytechnical Institute, 2002, 2001, and 2000
• Speaker: Legal Developments in Electronic Contracting, Practising Law Institute's Fifth Annual Internet Law Institute, NYC, 2001
• Speaker: Current Online Privacy Developments, Hartford, CT, 2001
• Speaker: What Do E-Commerce Clients Expect from their Attorneys?, American Bar Association Young Lawyers Division and the Connecticut Bar Association Young Lawyers Section, Northwest Regional Conference, Mystic, CT, 2001
• Speaker: Naughty Net Surfing, Egregious E-mail & Web Woes: What Do You Advise Your Clients and Your Employees - Review Prophylactic Polices & Legal Implications, Hartford County Bar Association, Hartford, CT, 2001
• Speaker: Internet Basics for the Connecticut Attorney, National Business Institute, Hartford, CT, 2001 and 2000
• Speaker: E-Commerce In Banking - Network Security, Patents, Copyrights, Trademarks and Domain Names, Connecticut Bankers Association, Cromwell, CT, 2000
• Speaker: Our Clients are Conducting Business on the Web - Are You Giving Them "Yellow Pages" Advice?, Hartford County Bar Association, Hartford, CT, 2000
• Speaker: Trademark Registration Practice, Trademarks in Cyberspace II, International Trademark Association, San Francisco, CA, 1999
• Speaker: Intellectual Property Law - Protecting the Company's Ideas and Inventions, General Counsel Conference, NYC, 1999
• Speaker: Corporate Policies for Internet E-mail and Web Usage, Boston, MA, 1999, Hartford, CT, 1999
• Speaker: Email, the Internet and Confidentiality, Stamford, CT, 1999
• Speaker: Commercial General Liability Insurance and Intellectual Property Coverage Disputes, Connecticut Bar Association, Wallingford, CT, 1995
• Author: What's New with the CAN-SPAM Act of 2003?, Mondaq, 2005 and Connecticut Lawyer, Vol. 15, No. 7, April 2005
• Author: U.S. Supreme Court Resolves Confusion Over Trademark Fair Use Doctrine, Mondaq, 2005
• Co-Author: Mitigating the Risk When Selecting a New Trademark or Domain Name (Part II), Mondaq, 2005
• Author: Landmark Patent Ruling-Federal Circuit Overturns 20-Year Old "Adverse Inference" Rule in Patent Litigation, Mondaq, 2005
• Co-Author: What Are the Madrid Protocol and Community Trademark Systems and How Can They Benefit My Clients?, Connecticut Lawyer, Vol. 15, No. 3, November 2004
• Contributing Author: Does My Company Need to Conduct a Trademark Search Before Using a Trademark or Domain Name?, Legal Horizons, Vol. II, 2004
• Contributing Author: Does the CAN-SPAM Act Apply to My or My Clients' Businesses?, The SciTech Lawyer, Vol.1, Issue 1, pgs. 14-15, Summer 2004
• Author: GEICO vs. Google and Overture Trademark Lawsuit, Mondaq, 2004
• Co-Author: Do You Know A Trademark When You See One?, Walk Softly And Carry A Strong Trademark, United States: Does My Company Need to Conduct a Trademark Search Before Using a New Trademark or Domain Name?, and Mitigating the Risk When Selecting a New Trademark or Domain Name, Mondaq, 2004
• Author: CAN-SPAM Act Update - Is Spam Here to Stay, or Will it Eventually Diminish or Go Away, Mondaq, 2004
• Co-Author: Heard The News? - European Community Joins the Madrid Protocol, Mondaq, 2004
• Author: Risk Assessment Considerations in Offshore Outsourcing, Legal Horizons, Vol. II, 2004
• Co-Author: An Overview of the CAN-SPAM Act of 2003, Connecticut Lawyer, Vol. 14, No. 5, February 2004
• Co-Author: The Spam Battleground, Connecticut Lawyer, Vol. 14, No. 1, August/September 2003
• Author: Connecticut Lawyers: Are You Ready for a pro Domain Name?, Connecticut Lawyer, June/July 2003
• Author: No Victory for Victoria's Secret at U.S. Supreme Court, Connecticut Lawyer, Vol. 13, No. 8, May 2003
• Author: UCITA, UETA, and E-Sign, Including Recent Amendments to UCITA, Computer Law Reporter, Vol. 36, No. 3, November 2002
• Author: Uniform Computer Information Transactions Act ("UCITA"), Uniform Electronic Transactions Act ("UETA"), and Federal Electronic Signatures in Global and National Commerce Act ("E-Sign"), Practising Law Institute's Sixth Annual Internet Law Institute, Vol. Two, July 2002
• Author: Legal Developments in Computer and Electronic Contracting: Uniform Computer Information Transactions Act, Practising Law Institute's Fifth Annual Internet Law Institute, Vol. Two, July 2001
• Author: Site Operators Must Obtain Parental Consent, The Connecticut Law Tribune, December 4, 2000
• Author: Registering Domain Names as Federal Service Marks and Trademarks, e-Commerce Law & Strategy, Vol. 16, No. 12, April 2000
• Co-Author: The Old Boat of Copyright Law; Still Afloat in the Digital Sea, The Connecticut Law Tribune Intellectual Property Magazine, 1999
• Contributing Author: Nationwide Survey on Unconventional Trademarks, ABA Intellectual Property Law Section, April 1998
• Contributing Author: Misappropriation of Trademarks, Personality and Rights of Publicity, Connecticut Bar Association, June 1997
• Contributing Author: Nationwide Survey on Trademark Dilution, ABA Intellectual Property Law Section, April 1997
• Author: It's Fair Use, Isn't It?, Connecticut Lawyer, Vol. 5, No. 8, May 1995