Diane Duhaime
Partner

Connecticut

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

Diane Duhaime, a partner in the Connecticut Office of Jorden Burt LLP, 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, technology, manufacturing, 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 work also includes enforcing and defending the client's trademark, service mark, patent, copyright 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 counsels 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. 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 in representing an international manufacturer against copyright infringers in France and China. 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 declared one of the "Top 10" intellectual property cases of 2006 by the Beijing No. 2 Intermediate People's Court.
• Successfully enforced clients' names and marks against cybersquatters' bad faith use and registration in several legal proceedings.
• Successful representation of a client in a lawsuit filed against a foreign-based company that had registered and was using an Internet domain name identical to the name used by our client since 1996. The panel of arbitrators ordered the owner of the infringing domain name to transfer ownership of the domain name to our client.
• 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.
• 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.
• 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).

Speeches and Publications

• Speaker: "What legal questions do you have about using social media sites, such as LinkedIn®, Twitter® and Facebook®?," WTIC 1080 Law Talk , Hartford, CT, April 10, 2010
• Author: Facebook usernames: are your company's marks protected from infringement?, Lexology, June 2009
• Speaker: Understanding What You Should & Should Not Do When Marketing Your Company via Social Networking Such as Facebook, Twitter, LinkedIn & Others, Reed Seminars, May 2009
• Moderator: "LinkedIn®, Facebook® and Twitter Understanding Online Social Networking for Lawyers," Hartford County Bar Association CLE Program, Hartford, CT, 2009
• Moderator: E-Discovery in Trademark Disputes, International Trademark Association, Simsbury, CT, July 2008
• Author: Threat of Real Crime in Virtual World, The Connecticut Law Tribune, April 2008
• Author: Virtual environments: all fun and games for trademark practitioners?, World Trademark Yearbook, 2008
• 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? 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?" Connecticut Magazine, 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
• Speaker: Intellectual property law in the areas of digital music downloads and copyright law, WTIC 1080 Law Talk and Computer Talk Radio, Hartford, CT, 2003, 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, Trademark Protection, University of Connecticut, Storrs, 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: Advanced Contract Negotiations: Indemnification, Limitation of Liability and Warranty Provisions, United Nations Procurement Division, New York, NY, 2003
• 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
• 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
• Author: UCITA, UETA, and E-Sign, Including Recent Amendments to UCITA, Computer Law Reporter, Vol. 36, No. 3, November 2002