Welcome back to Beyond the Docket! This time we are back to interview Nancy Mertzel of Mertzel Law PLLC. Nancy is a litigator and IP attorney who left a large firm to start her own practice. We talk about her 4-year-long litigation case, her involvement with the Women-Owned Law Group, and her 2015 testimony before Congress.
Tell us a bit about your legal practice. What type of work do you focus on?
Mertzel Law PLLC is a women-owned, LGBT-certified intellectual property law firm based in New York City. I have more than 25 years' experience providing technology, copyright, trademark and related intellectual property counseling to clients across a wide variety of industries, from start-ups to Fortune 100 companies. Within those areas, I spend the majority of my time on contested matters such as trademark and copyright infringement litigation, Trademark Trial and Appeal Board disputes, and technology disputes. I also handle uncontested matters such as trademark clearance and prosecution, copyright counseling, drafting internet terms and end-user agreements, and drafting and negotiating technology agreements.
You have an extensive litigation background at different larger firms, and now you run your own practice. How long have you been running your own practice, and how has the transition from big law been?
In July 2017, I launched Mertzel Law so that I could provide clients with the benefit of my firm experience in a more streamlined and cost-efficient setting. For my clients, the transition was essentially seamless: I continued to provide them with advice and representation, just using different contact details. For me, the change was a bit more involved, from choosing and setting up technology, to learning to run a successful business, to expanding my network of resources. Overall it’s been incredibly positive and rewarding.
What was one of your most memorable (exciting, crazy, etc) litigation cases?
One of my favorite cases involved defending a big box retailer and bank in a lawsuit involving a claim of copyright in numbers. I handled that case from its inception in 2009, developing the strategy and implementing it over several years. We initially knocked out a lot of the claims on a Motion to Dismiss, but the court kept the copyright claim alive due to appellate case law suggesting certain types of numbers could be protected under copyright law. After extensive discovery, including working with my expert witness to find the key lines of relevant source code, we succeeded in defeating the copyright claim on summary judgment. It was extremely satisfying when, after 4 years of hard-fought battle, the court issued a 65-page decision agreeing with the analysis I had been pressing since the beginning.
You had the opportunity to testify in front of Congress on some copyright issues in 2015. How did you prepare for the testimony? How was it different from or similar to arguing in front of a judge or in court?
Testifying before Congress was one of the highlights of my legal career. I testified before the House of Representatives Judiciary Committee about copyright modernization on behalf of the American Intellectual Property Law Association (AIPLA). As a litigator, I am used to being in the role of asking questions, so learning how to answer questions under oath was a new experience for me. Fortunately, I had a wonderful team of colleagues, including AIPLA’s experienced staff, help me prepare.
Testifying is similar to speaking in court in that you prepare talking points and practice staying “on message.” The biggest difference is that, unlike judges, Members of Congress typically don’t interrupt your prepared remarks. Responding to questions from Members of Congress is also different since it’s less conversational. For me, the most fun was thinking on my feet and coming up with responses that were consistent with AIPLA’s position. I especially enjoyed explaining to one of the Members how everyone is a copyright author.
Your firm is recognized as being a member of the Women-Owned Law Group. Can you tell us more about your involvement with this group?
Women Owned Law (WOL) is an organization devoted to promoting women’s entrepreneurship in the law. Our members are owners of law firms, legal services providers, attorneys at majority owned firms, and corporate representatives who support diversity in the legal profession. I am Chair of the New York Steering Committee, which organizes monthly lunch programs on topics of interest, and Vice President of the overall organization. Some of my current projects include planning our inaugural WOL Symposium on Women’s Entrepreneurship in the Law, which will be held on March 11, 2020 at Drexel University’s Kline School of Law in Philadelphia as well as serving on our Member Affairs Committee. I am routinely impressed by the quality of the lawyers in the group, the substantive and practical information we share, and the business opportunities we provide each other.
What is your law firm’s technology stack? Do you use Slack? Practice management software? Trademark management software?
I’ve been a “tech nerd” and early adopter since the 1980s when I got my first Mac computer. I launched my first business during law school using a Mac and an Apple LaserWriter. To this day, I regularly draw on my tech prowess to find and implement solutions to increase the efficiency of my practice and help clients, colleagues, and friends. I use Office 365 and spend a lot of time in Word and Outlook. I use Clio Manage for practice management and Clio Grow (formerly Lexicata) as a CRM and to automate client intake. I maintain my trademark docket in Alt Legal. Other tools include Evernote for note taking and business card scanning, a password manager, wifi encryption, antivirus software and an inexpensive digital phone service that screens calls and provides SMS transcribed voice messages. I’ve used Slack for several projects, but haven’t found a need to incorporate it into my daily routine.
If you could create any legal practice-focused technology, what would it be and why?
I would love to create a better CRM for lawyers with a fantastic interface and easy to use features to help with both marketing and sales. I’m also interested in further automating my trademark clearance and prosecution practice to more efficiently educate small clients by presenting the substantive information they need to make informed decisions in an easy to read system that displays it when and where they need it.