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The Court of Appeals for the Federal Circuit just highlighted another approach plaintiffs can use to overcome early challenges to the validity of patent claims under 35 U.S.C. §101. What is that approach? It is a classic one: show there is a genuine issue of fact. That approach saved a subset of claims from summary judgment in Berkheimer v. HP.
Berkheimer sued HP for infringement of its patent “relat[ing] to digitally processing and archiving files in a digital asset management system.” The system parses files into objects and “tags objects to create relationships between them.” “The objects are analyzed and compared … to archived objects” to find variations.
The fight between craft brewers and Big Beer (i.e. MillerCoors & Budweiser) has been ongoing for years. Ever since craft beer came to prominence in the late ‘90s, it has been stealing Big Beer’s share of the marketplace. In fact, craft beer has celebrated double-digit growth each year since then. In response, Big Beer has embarked on a course of action to recapture its share of the market.
The Neutral Solutions Team at Weintraub Tobin can help you avoid expensive and protracted litigation. We specialize in:
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A recent case out of the Ninth Circuit, Oracle USA, Inc. v. Rimini Street, Inc. (July 13, 2017), illustrates some of the risks third party software vendors run concerning copyright issues. Oracle develops and licenses proprietary “enterprise software” for business around the world. A business using Oracle’s enterprise software would pay a one-time licensing fee to download the software and then can elect to buy a license maintenance contract that provides for periodic software updates.
The U.S. District Court for the Central District of California recently issued its opinion in TCL Communications v. Ericsson (SACV 14-341 JVS(DFMx) and CV 15-2370 JVS (DFMx)) on standard-essential patents and whether a commit to license them was on terms that are fair, reasonable and nondiscriminatory, or FRAND. The Court determined Ericsson did not offer to license its standard essential patents on reasonable terms, and instead become only the fourth U.S.
By: Zack Thompson
On December 29, 2017, in Kim v. Reins International California, Inc., the Second District Court of Appeal in Los Angeles ruled that a plaintiff no longer has standing to assert PAGA claims once the plaintiff has settled and dismissed his individual claims against his employer. This decision could have far-reaching implications in PAGA litigation, changing the way both plaintiff’s attorneys and defense attorneys approach PAGA lawsuits.
By Scott Hervey
Did you ever wonder why some movies use fictional names for companies or sports teams? TV and movie producers intentionally avoid using brand or company names in order to avoid any potential of an entanglement with a trademark owner. Some studio lawyers insist that no third-party brands may be used under any circumstances without permission (I have had these discussions). How do they explain that other producers, including the producers of HBO’s series,
The Division of Labor Standards Enforcement (“DLSE”) recently issued updated guidance regarding rest breaks that reverses its previous position, which permitted employers to require that employees stay on work premises during their rest periods. In this new guidance, the DLSE states that employers “cannot impose any restraints not inherent in the rest period requirement itself,” including forbidding employees to leave the premises. This guidance follows the California Supreme Court’s determination that rest breaks,
There is no federal court jurisdiction for disputes involving patents where the claimant does not actually own the patents. The possibility that one might own a patent, if a contingent future event occurs, is not enough. This seems like an obvious rule, but it ended up before the Federal Circuit Court of Appeals.
The case is First Data Corp. v. Inselberg (Fed. Cir. 9/15/17).
Weintraub Tobin’s 2018 Labor and Employment Seminar and Training schedule is now available. Click here for a copy of the schedule.
If you have any questions on any of our seminars or would like to inquire on private, custom-tailored training, please contact:
On October 15, 2017, California’s Governor Jerry Brown signed SB 396 into law, requiring new training and posters for California employers. Currently, California law requires employers with 50 or more employees to provide at least 2 hours of sexual harassment training to supervisors every two years. This new bill requires those employers to also include training on harassment based on gender identity, gender expression, and sexual orientation. Further,
By: Eric Caligiuri
The U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods held that personal jurisdiction alone does not convey venue for patent cases under the patent venue statute. Previously, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute, 28 U.S.C. §1400(b), to allow plaintiffs to bring a patent infringement case against a domestic corporation in any district court where there is personal jurisdiction over that corporate defendant.
By Scott Hervey
According to cannabis folklore, cannabis cultivators in 2010, Josey Whales and Lone Watie created a strain of marijuana that was so sticky, Mr. Whales, during a phone call, commented that the plant made his hands “stick to things like Gorilla Glue.” From that, Whales and Watie came up with a name of their strain – Gorilla Glue#4. Since that time, the strain has won numerous competitions and has become extremely popular with consumers.
A demand letter is a formal way of telling someone, “now we got bad blood.” Recently, a Northern California blogger received a demand letter in which Taylor Swift threatened to sue the blogger. In so many words, the blogger responded, “I wish you would.”
The Demand Letter was triggered by the blogger’s September article, the Cliffs Notes to which might read something like: “Blogger characterizes T-Swizzle’s lyrics as ‘dog whistles to white supremacy.’ Alt-right is co-opting Taylor’s songs,
The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the transitional program for covered business method patents, and derivation proceedings. While patent agents are registered to practice before the USPTO, they are not attorneys. Therefore, it has been unclear whether attorney-client privilege prevents discovery in PTAB proceedings of communications between these non-attorney agents and their clients.
By: James Kachmar
The Ninth Circuit recently addressed an issue as to who may pursue claims for copyright infringement concerning stock photos in the case DRK Photo v. McGraw-Hill Global Education Holdings, LLC, et al. (Sept. 12, 2017). Apparently there has been a rise in copyright infringement claims involving stock photos and the Ninth Circuit was called upon to determine whether the non-exclusive licensing agent for stock photos had standing to pursue a claim for copyright infringement.
The latest issue in the patent world is one no one would have expected – sovereign immunity.
How did this issue arise? Allergan, the company that makes the dry-eye drug Restasis, has employed an aggressive strategy in attempting to protect its $1.5 billion market by selling its Restasis patents to a Native American Tribe. In September, Allergan sold the patents to the Saint Regis Mohawk Tribe in New York.
On October 12, 2017, California Governor Jerry Brown signed Senate Bill 63 (“the New Parent Leave Act”). Under the new law, employers may not refuse to allow certain employees to take up to 12 weeks of parental leave to bond with a new child. When the leave is taken, the employer must guarantee the same or comparable position upon the employee’s return.
Existing law prohibits an employer from refusing to allow a female employee disabled by pregnancy,
By: Eric Caligiuri
In Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, Case No. 2:15-cv-1455-WCB (EDTX October 16, 2017 Order), a Federal District Court recently invalidated several patents covering Allergan’s dry-eye drug Restasis. The ruling is notable because these are the same six patents Allegan just weeks ago transferred to the Saint Regis Mohawk Native American tribe in an effort to shield them from review at the Patent Trial and Appeal Board (“PTAB”).
By Beth V. West
On October 14, 2017, Governor Brown signed Assembly Bill 1008 (the “Fair Chance Act”). The new law puts in place some protections for those individuals with criminal backgrounds seeking employment. The new law will be contained in Section 12952 of the California Government Code.
Existing law prohibits an employer, whether a public agency or private individual or corporation, from asking an applicant for employment to disclose,
By Beth V. West
On October 12, 2017, Governor Brown signed Assembly Bill 168. Consistent with some other state laws and local ordinances passed by certain municipalities like San Francisco, the new law prohibits the inquiry and use of prior salary information except in limited situations. The new law will be contained in Labor Code section 432.3 and becomes effective January 1, 2018.The new law:
Just Google it. Can you Google the score? Have you Googled the restaurant’s reviews? These are all common phrases in today’s internet-reliant society, and it’s entirely due to the creation of Google and its widespread success. By all measures, this should be a good thing for Google. Its company’s primary trademark, Google, has become such an integral part of society that it is now ingrained in our everyday vocabulary as a verb,
Until the U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute, 28 U.S.C. §1400(b), to allow plaintiffs to bring a patent infringement case against a domestic corporation in any district court where there is personal jurisdiction over that corporate defendant.
By Lukas Clary
It happens all the time. A hard fought lawsuit results in a satisfying judgment. Then it comes time to collect and it turns out the judgment is worth no more than the paper it’s written on. For example, sometimes a party obtains a judgment against a company with little to no assets to satisfy the judgment. And since, legally speaking, companies exist separate and apart from the individuals who run them,
By Scott Hervey
Brand litigation can be extreme in the consumer products space and even more so for alcoholic beverages (legal cannabis brand owners take note and start stockpiling your war chest). It’s not uncommon for litigation to arise whenever an alcoholic beverage brand owner believes that another alcoholic beverage brand infringes. Such was the case for Sazerac Company, the maker of the high quality bourbon BUFFALO TRACE.
The U.S. Occupational Safety and Health Administration (U.S. OSHA) has established a new electronic portal for employers to file web based reports of workplace injuries or illnesses.
Read the full article at HRUSA here: http://blog.hrusa.com/blog/us-osha-opens-injury-tracking-electronic-portal/
In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner.
The patent applicant was Stepan Co., who filed a patent application for formulas of an herbicide. The herbicide was a composition of a glyphosate salt and a surfactant system.
With nearly 30% of Americans sporting at least one tattoo (up from 20% just four years ago), tattoos are becoming commonplace. This is even clearer among younger Americans, with nearly half of Millennials sporting ink. Today a majority of Americans report that they would feel comfortable seeing a person with visible tattoos in a range of industries and professions. Per the Harris Poll,
Just over two months ago, Sacramento’s beloved Firestone Public House was sued by multinational conglomerate Bridgestone Brands, LLC for trademark infringement, trademark dilution, and unfair competition based upon Firestone’s use of the FIRESTONE mark. I initially found this dispute to be quite interesting in light of what I appeared to be vastly different groups of consumers being served by the respective entities: tire consumers vis-à-vis food and beverage consumers.
By Sherry Bragg
It is not uncommon in this day of social media influence for an attorney to seek out the assistance of a public relations consultant to play a role in connection with a high profile lawsuit. Such media experts can help assess and mitigate risks, alleviate the public’s concern, manage public perception, and create leverage for settlement. The question is whether communications between a public relations consultant, an attorney,
By: Eric Caligiuri
In Eolas Technologies Incorporated v. Amazon.com, Inc., 3-17-cv-03022 (CAND August 24, 2017, Order) (Tigar, USDJ) the United States District Court for the Northern District of California recently denied plaintiff Eolas Technologies Incorporated’s (“Eolas”) motion to disqualify its former counsel, Latham and Watkins (“Latham”), as counsel for defendant Amazon.com (“Amazon”) because Eolas delayed filing its disqualification motion for over a year after it learned of the potentially conflicting representation.
A Texas federal court struck down a rule that would have expanded those eligible for overtime pay. The Department of Labor’s rule would have required overtime pay to most salaried employees who earn less than $47,476 annually. This would have been a dramatic increase from the current salary level of $23,660. The rule was expected to have an extensive effect if implemented, to the tune of more than 4 million workers.
Prosecuting Online Trolls Part 1: What To Do When Faced With Anonymous Online Postings
It happens all too often. You work tirelessly to promote your business by doing good work, delivering good products and services. Then you find an online posting with demonstrably false information about your business. The posting is anonymous, or even better, posted with a common name such as “John Smith.” If you are lucky enough to locate an e-mail address,
By Beth V. West
On August 29, 2017, the Office of Information and Regulatory Affairs (OIRA) issued a memo to the EEOC advising that the Office of Management and Budget (OMB) is initiating a review and an immediate stay of the effectiveness of those aspects of the EEO-1 form that were revised on September 29, 2016. Those revisions included new requirements for employers with 100 or more employees (and for employers who are federal contractors with 50 or more employees) to provide data on the wages and hours worked by their employees.
By Audrey Millemann
My last column was the first of two columns discussing some of the most common misconceptions or myths about patents. Here is the second part, starting with number five on my list.
Inventors and patent owners often assume that a patent gives them rights to practice the patented invention, i.e.,
Beginning January 1, 2018, a Nevada employee who has been employed for at least 90 days and who is a victim of an act of domestic violence or whose family member or household member is a victim of an act of domestic violence (provided the employee is not the perpetrator), is entitled to a maximum of 160 hours of leave in one 12-month period.
Domestic violence is defined under Nevada Revised Statutes (NRS) 33.018 as follows:
Domestic violence occurs when a person commits one of the following acts against or upon the person’s spouse or former spouse,
The California Court of Appeal decision in LSREF2 Clover Property 4, LLC v. Festival Retail Fund 1, LP (2016) 3 Cal.App.5th 1067, struck another blow to California’s “sham guaranty” defense – highlighting a recent string of decisions seeking to limit the defense. The sham guaranty defense has long provided guarantors of loans with a defense to lenders looking to obtain a deficiency judgment – often giving a guarantor at least a basis to defeat a lender’s attempt to obtain summary judgment and forcing the case to trial.
By Scott Hervey
California was the first state to legalize marijuana for medical use. In 1996, California approved Proposition 215, the California Compassionate Use Act. Two decades later, California voters approved Proposition 64, the Control, Regulate and Tax Adult Use of Marijuana Act (AUMA). Despite the fact that cannabis has been legal in California since 1996, you still can’t get a trademark in California for marijuana, medical or otherwise.
Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand. It is no wonder that there are a lot of misconceptions or myths about patents.
This is the first of two columns in which I will discuss a few of the most common aspects of patent law that are misunderstood.
by: James Kachmar
A plaintiff seeking to prevail on a trademark infringement claim needs to establish that there is some likelihood of confusion between its mark and that of the defendant. Generally, a plaintiff establishes that there is “forward” confusion by showing that customers believed they were doing business with plaintiff but because of a confusion in their respective marks, were actually doing business with the defendant. Sometimes, however,
By Lukas Clary
Often times, contracts contain attorney’s fee provisions. These terms allow the prevailing party in any action to enforce the contract to recover its attorney’s fees. Under California Code of Civil Procedure section 1717, the prevailing party on these contract actions can simply file a motion and have the court award the fees as costs of suit. But what happens when a party sues for breach of the contract and the only element of damages the party claims are the attorney’s fees it incurred as a result of the defendant’s breach?
Because it’s summertime, I thought we should take a break from “serious” intellectual property articles. So, instead, here are some patented inventions that you might see this summer.
A baseball with a speedometer seems like a great idea. Although I don’t know anyone who has one, I’ve seen them in toy catalogs. What could be more American? We love baseball (at least many of us do) and we love competition,
High times at Florida workplaces may or may not become more prevalent with a new law that allows the medical use of stronger marijuana by a greater number of patients.
The legal use of medical marijuana is not completely new there. In 2014, Florida legalized the medical use of low-THC cannabis by patients who are terminally ill with less than a year to live. In November 2016,
Just last week, California’s First District Court of Appeal handed a small, but meaningful, victory to businesses that resort to litigation to defend their reputations against anonymous, online attacks. In ZL Technologies, Inc. v. Does, the First District held that ZL Technologies (“ZL”) was entitled to discover the identities of persons who posted anonymous reviews of ZL on Glassdoor.com, after ZL made a prima facie showing that its libel c were factually and legally valid.
By: Eric Caligiuri
In TASER International, Inc. v. PhaZZer Electronics, Inc. et al, 6-16-cv-00366 (FLMD July 21, 2017, Order), a Florida District Court took the drastic step of entering a default judgment in favor of Plaintiff Taser, along with an award of compensatory and treble damages, an award of reasonable attorneys’ fees and costs, and injunctive relief because of Defendant Phazzer’s discovery failures and abusive litigation tactics. According to the Court,
By Beth V. West
On July 19, 2017 Mayor Lee signed the Parity in Pay Ordinance. Below is a brief summary of the Ordinance which will go into effect on July 1, 2018.
By Josh Escovedo
In 2014, the Washington Redskins lost a battle before the Trademark Trial and Appeal Board (“TTAB”) where the petitioner, a group of Native American activists, sought cancellation of the “Washington Redskins” trademark, which had been used for over 80 years. Immediately after the decision, the Redskins sought recourse through the United States District Court, which is one of two appropriate venues for an appeal from the TTAB. However, the Redskins didn’t have any better luck there as Judge Gerald Bruce Lee affirmed the TTAB’s ruling in 2015,
As you likely know, Amazon is taking the world by storm. Whether it is through its convenient offering of household goods, and pretty much anything else you can imagine, to your door, or through its expansive selection of movies and television shows provided through its Amazon Prime streaming service, Amazon is a major player in multiple industries. Recently, Amazon surprised the general public when it agreed to purchase Whole Foods Market for $13.7 billion and judging from its recently trademark application,
By Beth V. West
On July 17, 2017, the United States Citizenship and Immigration Service (“USCIS”) released a revised version of the Form I-9, Employment Eligibility Verification. Instructions for how to download Form I-9 are available on the USCIS Form I-9 page. Employers can use this revised version immediately or continue using Form I-9 with a revision date of 11/14/16 N through September 17th. However, beginning September 18, 2017, employers must use the revised form with a revision date of 07/17/17 N.
By Scott Hervey
In today’s age of rapid fire social media, posting to feed the ever growing hunger of a digitally connected audience has become second nature to celebrities and other influencers. In fact, the larger the number of followers, the greater the compulsion to constantly connect. And that’s where the problems can arise.
The facts underlying the claim seemed innocuous enough. Hip hop celebrity Sean “Diddy” Combs was delivering an inspirational speech to young students at a new charter school he founded in Harlem.
Imagine this scenario – you have hired a catering company to cater an event for you. The company performs its obligations, providing both the food and catering staff to ensure your attendees are well fed and taken care of. Happy at the conclusion of the event, you pay the company in full, and provide extra payment to the catering company in the form of a tip to demonstrate your appreciation. Who owns that tip – the catering company hired to provide the services,
Several weeks ago, the U.S. Supreme Court issued its opinion in Bristol-Myers Squibb Co. v. Superior Court of Cal., No. 16-466, 581 U.S. —, 2017 WL 2621322 (June 19, 2017) (“Bristol-Myers Squibb”). The more than 600 plaintiffs seeking redress for alleged harm suffered from using a pharmaceutical drug, presented the Supreme Court with the following question: could a California state court exercise personal jurisdiction over nonresident plaintiffs joining California plaintiffs?
By Jo Dale Carothers
Simon Tam is the lead singer of the rock group call “The Slants’, which is composed of Asian-Americans. Tam applied for federal trademark registration of the band’s name. While the term “slants” is a derogatory term for persons of Asian descent, Tam adopted the name “to ‘reclaim’ and ‘take ownership’ of stereotypes about people of Asian ethnicity,” thereby hopefully removing the term’s denigrating effect. Despite the positive intention, the United States Patent and Trademark Office (“USPTO”) denied the trademark application for “The Slants” under a law prohibiting registration of trademarks that may “disparage … or bring … into contemp[t] or disrepute” any “persons,
by: James Kachmar
I admit that the title of this article may be a bit deceiving. Making films, like any other production of art, is almost always an act of free speech. However, the Ninth Circuit was recently faced with a dilemma of determining this issue in connection with an anti-SLAPP motion brought against a screen writer who claimed that the defendants had failed to pay him for using his idea to make the film,
By Beth V. West
The new regulations that expand existing protections under California’s Fair Employment and Housing Act (FEHA) for transgender individuals and others go into effect July 1, 2017. As California employers know, FEHA prohibits harassment and discrimination against individuals on the basis of many protected classes, including gender, gender identity, and gender expression. Below is a brief summary of the highlights of the new regulations.
In Catalina Island Yacht Club v. Superior Court (2015) 242 Cal.App.4th 1116, the California Court of Appeal (Fourth District, Division Three), squarely addressed the question: “May a trial court find a waiver of the attorney-client privilege and work product doctrine when the objecting party submits an inadequate privilege log that fails to provide sufficient information to evaluate the merits of the objections?” The answer, “No.” Id.
By Lukas Clary
It stands to reason that employers may not want employees recording conversations in the workplace. Recording conversations could discourage the free flow of open ideas. The recordings could also contain confidential or sensitive information that the employer does not want floating around the digital universe. In some states, recording workplace conversations may even be illegal if not all parties consent to it. Mindful of these concerns, employers may wish to enact policies precluding video or audio recording at work.
By Sherry Bragg
Business attorneys understand that complex business litigation involves complex issues, usually encompassing voluminous amounts of complicated financial data in the form of balance sheets, income statements, and cash flow summaries. It is certainly possible for jurors who own their own businesses or have accounting backgrounds to quickly synthesize financial information. However, most jurors are unfamiliar with this type of financial information and will find it difficult to comprehend,
Patent owners can no longer restrict the use of their patented products after the products are sold. Under the doctrine of patent exhaustion, a patent owner’s rights are “exhausted” once the patent owner sells the product. In Impression Products v. Lexmark International, Inc., 2017 U.S. LEXIS 3397 (May 30, 2017), the Supreme Court expanded the scope of patent exhaustion, reversing a long-standing rule that a patent owner can control the use of its patented product after the product is sold.
By: Eric Caligiuri
In SANDOZ INC. v. AMGEN INC. et al., the United States Supreme Court in a unanimous opinion ruled that biosimilar makers can give their required 180-day statutory notice of sales before their products win approval by the United States Food and Drug Administration (“FDA”). In short, the Court held a biosimilar maker “may provide notice either before or after receiving FDA approval.” If biosimilar makers had to await FDA approval before giving notice,
By Lukas Clary
The California Supreme Court has struck back in its ongoing battle with the United States Supreme Court as to the enforceability of arbitration agreements in consumer contracts. On April 7, 2017, in McGill v. Citibank, the California Supreme Court held that a contractual waiver of the right to seek public injunctive relief—i.e., relief that serves primarily to benefit the public at large rather than redress private wrongs—is contrary to public policy and thus unenforceable under California law.
By: Katie A. Veatch
On May 30, 2017, the Mayor of New York City (“NYC”) signed into law five bills related to workplace reform in the retail and fast food industries. These laws are set to take effect on November 26, 2017.
New Laws Applicable to Retail Industry in NYC
Intro 1387 (On-Call Scheduling), bans the practice of on-call scheduling for retail employees in NYC.
By: James Kachmar
Under California law, non-complete provisions are generally unenforceable. But what happens when the non-compete provision appears in an employment contract that is governed by another state’s law with a forum selection clause limiting any dispute to that particular state? All California courts in the past have refused to enforce a choice of law provision (absent a forum selection clause) that requires a California court to apply the law of a state that may be more favorable to non-competes on grounds that it violates California’s public policy concerning such restrictions.
Recently, Eagles Ltd. (the “Eagles”), the entity in control of legendary rock band The Eagles’ business affairs, filed a lawsuit against Hotel California Baja, LLC for trademark infringement. While I’m sure most of us are familiar with the Eagles’ song Hotel California, it may come as a surprise to most trademark aficionados that the Eagles have never registered HOTEL CALIFORNIA with the USPTO. Although this is shocking, and many intellectual property practitioners might even say reckless,
Since the passage of the California Fair Pay act in late 2015 (effective January 1, 2016) and its recent amendments, many employers and commentators have criticized the statute for imposing a vague and dangerous standard on California employers.
The California Fair Pay Act replaces the former “equal work” standard of the Equal Pay Act with a “substantially similar” standard. The California Fair Pay Act (Labor Code section 1197.5) states: “(a) An employer shall not pay any of its employees at wage rates less than the rates paid to employees of the opposite sex for substantially similar work,
In Green v. Dallas County School District, a Texas jury found that a Dallas County School District (the “School District”) violated Texas disability discrimination laws when it fired a bus monitor who lost control of his bladder on a school bus. The bus monitor, Paul Green, suffered a known disability – congestive heart failure – and had disclosed that he was taking a diuretic drug for his heart condition.
Despite increasing sophistication amongst contracting parties and evermore common use of attorney fee clauses, the “American Rule” endures. The American Rule is that each side pays its own attorney fees in litigation, win or lose. In California, statutory exceptions to the American Rule are limited, leaving private parties to modify the American Rule, if they so desire, through contract. For those contracting parties, the recent California Supreme Court decision in DisputeSuite.com,
By: Scott Hervey
The Copyright Act provides that “Registration” of a copyright is a precondition to filing suit for copyright infringement. 17 U.S.C. § 411(a). We are still trying to figure out exactly when registration occurs.
While copyright registration is voluntary, the Copyright Act provides several incentives for a copyright owner to register a copyright, one of which is the right to enforce a copyright in an infringement action: 17 USC 411(a) provides:
[N]o civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.
By Beth V. West
On April 13, 2017, Governor John Hickenlooper approved Colorado House Bill 17-1021 (“HB 17-1021”) which amends Section 8-1-115 of the Colorado Revised Statutes. In summary, HB 17-1021 provides that the information an employer provides to the Colorado Department of Labor and Employment (“CDLE”) in connection with complaints and investigations into violations of the State’s wage and hour laws can be treated as a public record and released to the public pursuant to the Colorado Open Records Act,
The use of private email servers and communications devices by government officials was a major issue in the 2016 election, from the investigation of Hillary Clinton’s email practices to the hacking of a private email account Mike Pence used for official Indiana state business. The California Supreme Court has recently entered the fray, holding that government officials must search their private email accounts in connection with public records act requests.
For over 25 years, the Court of Appeals for the Federal Circuit and the United States district courts have interpreted the patent venue statute 28 U.S.C. §1400(b) to allow plaintiffs to bring patent infringement cases against a corporation in any district court where there is personal jurisdiction over that corporate defendant. The U.S. Supreme Court just overturned that interpretation in TC Heartland v. Kraft Foods.
By: James Kachmar
“I googled it …” has become ubiquitous in every day conversation. Many of us refer to “googling” as the act of searching the internet regardless of whether we use the Google search engine to do so. But has our everyday use of the verb “googling” rendered the Google trademark unprotectable? “Nope,” said the Ninth Circuit in the recent case of Elliott v. Google, Inc., decided May 16,
Orange County is a hotbed for development and real estate. Lenders work hand-in-hand with real estate professional to make these deals happen. When using out-of-state financing, contractual jury waivers are commonplace. Under such terms, the parties essentially agree that any dispute will not be tried to a jury, but instead, the court (i.e. “bench” trial). However, a recent decision from the California Court of Appeal may have far reaching implications regarding the enforceability of jury waiver provisions in California courts.
Compensatory time off or “comp time” is paid time off that is provided to employees instead of overtime pay. Comp time has been used by public employers for decades. There have been several attempts in the past to legalize comp time for private sector employers. So far, no changes to the law have been passed.
On May 2, 2017, H.R. 1180, the Working Families Flexibility Act of 2017,
*This line is the title of a song written by Peter Allen and Carole Bayer Sager that was performed in Bob Fosse’s movie “All that Jazz.” The song was a hit, and the phrase has a lot of relevance to everyday life, but the Federal Circuit isn’t buying it.
In RecogniCorp, LLC v. Nintendo Co. (Fed. Cir. 2017) 2017 U.S. App. LEXIS 7528,
By Sherry Bragg
Businesses at every level – from Fortune 500 companies to solo-inventor enterprises – rely on trade secret protections to safeguard their intellectual property trade secrets. American companies and innovators now have additional protections for their valuable intellectual property assets in the newly enacted federal Defend Trade Secrets Act (DTSA). This legislation represents the most significant trade secret reform legislation in years.
Essentially, the DTSA extends the current Economic Espionage Act of 1996,
A recent National Labor Relations Board (NLRB) decision affirmed the Board’s position on employer email policies under the National Labor Relations Act (NLRA). In Purple Communications, Inc. and Communications Workers of America, AFL-CIO the Board held that employees who may use their employer’s email system for work-related communications have the right to send off-the-clock email communications through their work email system that are protected under the NLRA.
By: Eric Caligiuri
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the United States Court of Appeals for the Federal Circuit recently ruled that the America Invents Act’s (“AIA”) did not change the meaning of the on-sale bar provision in 35 U.S.C. § 102. The on-sale bar provision holds that sales of an invention one year prior to the patent filing are prior art even if the sale is made by the patent owner and does not publically disclose the invention.
The California Department of Industrial Relations (DIR) updated all but Wage Order 14 and 17 recently. The DIR regulates wages and hours for employees. The Division of Labor Standards Enforcement (DLSE) enforces the provisions of the wage orders, including the posting requirements. The Wage Orders are numbered 1 through 17.
The most recent updates were made to reflect the increases in California’s minimum wage. (To read more on the minimum wage increase,
Companies are no strangers to litigation. In California, it is a cost of doing business. Unfortunately, it is not uncommon for litigants to try to gain leverage in a dispute with a corporate party by attempting to depose its high-level executives to harass and embarrass them, and force the company into a quick and aberrant settlement. The strategy employed by a litigant may go like this: (1) put pressure on a company by noticing the deposition of an officer or director,
By Scott Hervey
Whenever there is a report of a YouTube creator being sued for copyright infringement, the response from the creator and the community seems to be one of shock and surprise. The truth is, successful YouTube content creators should not be surprised when they get sued for copyright infringement. Any person or company that creates content professionally, whether that’s a television network, a motion picture studio or a YouTuber,
Imagine this: Your business lies within a zone that is subject to a mandatory evacuation order from emergency response and law enforcement officials. Imagine that the evacuation order arises from a fire or imminent flooding. What do you do? Shut your business and get out of course. Most evacuation orders are short lived and the hazardous conditions are realized or not within a short period of time.
By Scott Hervey
When a winery wants to tell consumers the geographic source of its wine, it includes on the label the wine’s “appellation of origin.” An appellation of origin tells the consumer where the wine grapes were grown. Appellations are either the name of a county or state, or a federally-recognized growing region called American Viticultural Areas (AVAs). California has 138 AVAs. The value of an AVA designation is significant;
For the first time, a federal appellate court has determined that discrimination on the basis of sexual orientation is a form of sex discrimination under Title VII of the Civil Rights Act of 1964 (“Title VII”). Under Title VII, an employer may not take an adverse employment action against an employee on the basis of a protected characteristic, such as race, color, religion, national origin,
Intentional torts committed by employees are difficult for employers to both anticipate and protect against. When an employee commits a criminal act against another employee or a third party, the law generally considers whether the employer knew or should have known that the employee posed a danger in deciding whether a duty to protect against the harm was owed. However, an employee’s dangerous propensity is often difficult to predict.
The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review. In fact, in April 2016 the PTAB’s Motion to Amend Study reported that only 6 of 118, or about 5%, of such motions to amend claims had been granted. We have not seen a substantial change since that report,
As the national controversy continues to swirl around immigration issues, a federal appellate court this week faulted an employer for demanding that an employee provide information to prove “‘legal right to work in the United States … as required by the Immigration Control and Reform Act of 1986.’” The U.S. Circuit Court of Appeals for the Ninth Circuit (“Ninth Circuit”) ruled in Santillan v. USA Waste of California,
Pennsylvania’s Wage Payment and Collection Law requires employers to pay all wages, other than fringe benefits and wage supplements, due employees on regularly scheduled paydays designated in advance by the employer in cash, bank check, or direct deposit. As of May 4, 2017, Pennsylvania employers will have another option to pay employee wages each pay period.
On November 4, 2016, Governor Tom Wolf signed Senate Bill 1265 which amends the banking code to allow employers to use a payroll debit card on which an employer can load an employee’s wages each pay period.
By: James Kachmar
Generally, the issue of copyright infringement presents issues of fact to be decided by a jury. However, when evidence that a design is so “substantially similar” to a copyrighted design, the trial court can find infringement as a matter of law and grant summary judgment to the copyright owner. The Ninth Circuit recently approved of a district court doing exactly that in the case: Unicolors, Inc. v.
Apple just escaped a $533 million jury verdict by invalidating the plaintiff’s patents on the grounds that the patents cover abstract ideas.
The case is Smartflash, LLC v. Apple Inc., decided by the Federal Circuit Court of Appeals on March 1, 2017. Smartflash owned three patents for technology that limited Internet access to data (video, audio, text, and software) to users who had paid for access.
By Lukas Clary
Federal law has long prohibited discrimination based on a person’s sex. In recent years, several courts have held that discrimination based on failure to conform to a gender stereotype is a form of prohibited sex-based discrimination. But courts across the country have been more divided about whether those same laws preclude discrimination based on one’s sexual orientation. According to a federal court in Georgia, the answer is no.
By: Eric Caligiuri
In SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al., the United States Supreme Court held that laches cannot be invoked as a defense against a claim for patent infringement damages brought within U.S.C §286’s 6-year limitations period. The U.S. Court of Appeals for the Federal Circuit had previously held in a 6-5 en banc decision that laches should apply in patent cases because U.S.C.
They say that everything is bigger in Texas. That now may be true for the risk that an employer’s change to its overtime policies will result in a claim filed by an employee alleging retaliation in violation of the Fair Labor Standards Act (“FLSA”). That increased risk stems from a ruling by the Texas Court of Appeals for the Fourteenth District in January 2017. In that case,
For several years, California law has required that whenever an employer hires an employee and “the contemplated method of payment of the employee involves commissions … the contract shall be in writing and shall set forth the method by which the commission shall be computed and paid.
Let me rant a bit. I will say it again. Any written commission agreement must simply and clearly express the terms of the commission.
By: Josh Escovedo
I’ve written on numerous occasions in the past about celebrities who registered their own names as trademarks with the United States Patent and Trademark Office. Just the other week, I wrote about how UFC superstar Conor McGregor had filed an application to register his name as a trademark, and in that same article, I mentioned that undefeated Floyd “Money” Mayweather also has his name registered with the USPTO.
Over the past several years, many municipalities have taken labor and employment matters into their own hands, passing local laws requiring a higher minimum wage or paid sick leave beyond that required by the state or federal government. Florida and Pennsylvania are pushing back on these local laws.
On February 12, 2015, Philadelphia instituted an ordinance requiring employers with 10 or more employees to provide 40 hours of paid sick leave in a calendar year.
In May 2016, North Carolina governor Pat McCrory signed into law a bill (HB2) that required transgender people to use restrooms corresponding to their biological sex. On May 13, 2016, the Obama administration’s Justice Department and the Department of Education responded by sending letters to U.S. public school districts directing them to allow students to use the restrooms (and locker rooms) that matched their gender identity, even if it is different than their gender assigned at birth,
By Scott Hervey
The City of New York has reignited the battle over the trademark TAVERN ON THE GREEN. Last month the City of New York filed a lawsuit for trademark infringement against Tavern on the Green International LLC, the successor-in-interest to Tavern on the Green operator, LeRoy Adventures, Inc. LeRoy Adventures operated Tavern on the Green from 1976 until approximately 2009 under a license from New York City.
In 1973 New York City and LeRoy entered into a license agreement for the operation of Tavern on the Green as a “restaurant and cabaret.” The license agreement provided that New York City had various rights over the operation of the facility,
A California appellate court ruled this week in Vaquero v. Stoneledge Furniture, LLC (No. B269657, filed February 28, 2017) that employees paid on commission are entitled to separate compensation for rest breaks. In a decision that frustrates employers that view the employment relationship through the lens of contract law, the Vaquero Court held that Stoneledge’s commission plan that paid sales associates a percentage of sales or a guaranteed draw in excess of minimum wage against earned commissions failed to properly compensate sales associates for rest breaks and non-productive time.
In Life Technologies v. Promega Corporation, the U.S. Supreme Court addressed whether supplying a single component from the United States of a multicomponent invention assembled abroad constitutes patent infringement under 35 U.S.C. §271(f)(1). Under §271(f)(1), a party can be liable for patent infringement if it supplies from the United States “all or a substantial portion of the components of a patented invention.” Interpreting this statute in Promega,
In a decision just two weeks after Valentine’s Day, the Ninth U.S. Circuit Court of Appeals (“Ninth Circuit”) has ruled that hugs and kisses may decrease, rather than increase, feelings of affection in the workplace. Specifically, the Ninth Circuit overturned a lower court decision dismissing a lawsuit filed by a county correctional officer who alleged that the county sheriff had sexually harassed her in violation of federal and California law.
The Equal Employment Opportunity Commission (EEOC) recently reported that between fiscal years 2012 and 2015, private sector charges of harassment increased to account for 30% of all charges of discrimination received by the EEOC. These numbers indicate that harassment liability and prevention continue to be important. The EEOC’s most recent guidance on harassment focused primarily on sexual harassment and vicarious employer liability for harassment by supervisors, both published in the 1990’s.
By: James Kachmar
Liability for copyright infringement can result when one downloads protected software without the copyright owner’s authorization. The Ninth Circuit was recently tasked with exploring the scope and reach of copyright protection in such cases in Design Data Corp. v. Unigate Enterprise, Inc.
Design Data is the creator of a computer aided design (CAD) software program SDS/2. SDS/2 is promoted by Design Data as offering a high quality steel in connection design and drawing production for 3D steel detailing.
In 2015, the Federal Circuit Court of Appeals cast the net of patent infringement liability even more broadly, to cover direct infringement by “divided” (or “joint”) infringement. Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (“Akamai V”). In that case, the Federal Circuit established that a defendant can be liable for direct infringement of a method claim even when the defendant does not personally perform all of the steps of the method,
On January 9, 2017, New York Governor Andrew Cuomo announced his new “New York Promise” agenda, a sweeping package of reforms that the Governor promises will “advance principles of social justice, affirm New York’s progressive values, and a set a national standard for protections against all forms of discrimination.” As part of that agenda, the Governor signed two executive orders aimed at eliminating the state’s wage gap affecting women and racial and ethnic minorities.
By: Eric Caligiuri
On January 17, 2017, the United States District Court for the Northern District of California issued revisions to its Local Patent Rules requiring early disclosure of damages-related discovery and contentions. The revised rules are effective immediately in all patent cases pending in the Northern District. Local Patent Rules are rules that apply to all civil actions filed in or transferred to the specific District Court which allege infringement of a utility patent or which seek a declaratory judgment that a utility patent is not infringed,
Whether you like him or not, Conor McGregor’s business savvy cannot be disputed. The UFC superstar, in just over year, has become a household name known to people who may not even watch the sport. His quick rise to superstardom is no coincidence. He knows how to market himself and he knows how to sell the events he’s involved in.
In my opinion, McGregor single handedly crippled the UFC’s landmark UFC 200 event when he was removed from the fight card as the result of a contract dispute.
By Beth V. West
In November 2016, Washington voters approved Initiative Measure No. 1433 (“IM 1433”) which provides for an incremental increase to the state minimum wage as of January 1, 2017 and also provides for paid sick leave benefits beginning January 1, 2018. The stated intent behind IM 1443 is expressed in the initiative as follows:
“BE IT ENACTED BY THE PEOPLE OF THE STATE OF WASHINGTON: …
It is the intent of the people to establish fair labor standards and protect the rights of workers by increasing the hourly minimum wage to $11.00 (2017),
The Neutral Solutions Team at Weintraub Tobin specializes in Mediating employment disputes both pre and post litigation. Employment disputes are some of the most contentious and aggressively litigated cases in federal and state courts. The employee is adamant that the employer treated him or her unjustly and violated the law, and the employer reasonably believes that it acted fairly and the employee’s claim is without merit. Based on the disruption and negative impact this type of aggressive and protracted litigation can have on the lives and businesses of those involved,
By Scott Hervey
Paramount and Star Trek Fan Film Producers Settle
The copyright infringement lawsuit between Star Trek fan film producer, Axanar Productions, and Paramount Pictures came to an end less than two weeks before trial. The settlement was undoubtedly triggered by the court’s early January ruling that the fan fiction film, Prelude to Axanar, is not protected by fair use.
Prelude to Axanar is a documentary style short that tells the story of Garth of Izar,
While the Department of Labor may have stayed any national increases to the minimum exemption salary thresholds for the time being, New York employers have not been granted the same reprieve. Effective December 31, 2016, the New York Department of Labor announced incremental increases to its minimum wage laws. With the increased minimum wages, increases were also made to the corresponding salary thresholds applicable to the executive and administrative exemptions to New York’s overtime laws.
Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an unfavorable decision. In Phigenix v. ImmunoGen, the Federal Circuit clarified that while there is no standing requirement to challenge a patent at the USPTO via an inter partes review (“IPR”),
The United States Supreme Court decided last week to resolve a split in the lower courts as to whether the National Labor Relations Act (“Act”) preempts class-action waiver clauses in arbitration agreements between employers and their employees. This is an important development, as the use of such waivers in arbitration agreements (if permissible) can drastically reduce an employer’s exposure to costly class actions alleging overtime violations, missed meal-and-rest periods,
By Lukas Clary
Count the Fifth Circuit among the latest to allow emotional distress damages to employees who successfully sue for retaliation under the Fair Labor Standards Act. In a December 19, 2016 opinion, the Fifth Circuit held that the district court should have allowed the jury to receive an instruction on emotional distress damages when it was considering an employee’s FLSA retaliation claim. In the same opinion, however, the Fifth Circuit did clarify that only employees can bring claims under the FLSA.
By Patent Attorney Audrey A. Millemann
The Federal Circuit Court of Appeals has reminded the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office in no uncertain terms that covered business method review has limits. In Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 2016 U.S. App. LEXIS 20764 (November 21, 2016), the court held that the PTAB had improperly instituted covered business method (“CBM”) review of Unwired’s patent.
Happy New Year! The new year frequently marks new changes in the law, and this year is no exception. There are several important changes that went into effect on January 1st. Here are some of the major changes that went into effect on January 1, 2017:
A recent Ninth Circuit decision in Antonick v. Electronic Arts, Inc. (filed Nov. 22, 2016), shows some of the proof issues that a plaintiff may encounter in prosecuting claims for copyright infringement in connection with software. A jury found in favor of plaintiff’s claims of infringement; however, the trial court granted the defendant’s motion for judgment as a matter of law because plaintiff had not offered the “source code” for the software games at issue into evidence during the trial.